In an increasingly connected and dynamic world where many transactions and interactions for information take place across international borders, the potential for civil and commercial disputes is inevitable.
Efficient and robust dispute resolution structures for the recognition and enforcement of foreign judgements are required. The system as it stands, is based on a framework whereby regions/states employ their own rules in the absence of an international convention. Consequently, the Hague Conference on Private International Law has made significant progress in reaching the conclusion of an international convention regarding the recognition and enforcement of foreign judgements.
The ‘Judgements Project’ refers to the work undertaken by the Hague Conference since 1992 on two key aspects of private international law in cross-border litigation in civil and commercial matters:
- The international jurisdiction of Courts
- The recognition and enforcement of their judgements abroad
The project has had many progress updates: in 2011, 2012, and 2016 with the most notable in 2017.
For entities obtaining remedies (damages) across a range of international territories, this potential new structure is important and can amount to billions of dollars. If an agreement is reached, this will have significant impact on businesses in how and where they litigate.
Why the Judgements Project is of Importance to Australia?
In short, the new structure will ensure an elevated level of certainty and hopefully establish a judicial framework that better supports international transactions.
The IP context
Two important questions arise in the IP context:
- The extent to which Hague Convention applies to IP at all.
- Australia’s position on the Hague Convention
Does Hague Convention apply to IP at all?
Currently, no by express exclusion, though this is currently under discussion at the Hague Conference, with some countries/regions (for example Europe) seeking complete inclusion of IP rights and other countries and non-government organizations arguing for complete exclusion of IP rights. A November 2017 draft for an amended Hague Convention seeks to accommodate both positions.
There is a case for including copyright and trade mark rights within the Hague Convention because of substantial harmonisation of copyright and trade mark laws globally and the serious issue of online infringement of such rights which is, just about always, trans-border in nature. Actually, there has long been possibility for securing remedies in some important trans-border scenarios for both these IP rights – even absent the Hague Convention.
There is more controversy over whether patents and designs should be included within the scope of the Hague Convention. One reason is the grant of patent and design rights by sovereign entities following national law, so there is a comity issue, especially – where as is usual – validity is an issue.
Patent and design validity criteria, though substantially the same in principle globally, are applied differently and inventive step/originality criteria, in particular, have different thresholds with the potential for differing results. Claim construction can raise issues too. For example, a German court may reach a different decision in a patent matter from a UK court even where an international agreement (the European Patent Convention) applies to claim construction. The November 2017 amendment seeks to address this sort of situation.
The scene is set for vigorous discussion of these issues at diplomatic meetings on the draft Hague Convention in May-June 2018.
Watch this space.