Smoothing the Path of Cross-Border Litigation


Uldduz Larki

In November 2017 discussions on updating a multilateral treaty governing foreign judgments will resume at the Hague Conference, an intergovernmental organization. Its First Secretary, Marta Pertegás, speaks with Uldduz Larki about the potential impact on trademarks

Cross-border litigation can bring multiple challenges, but work is underway to ease the pressure in this area.

A new Convention is being negotiated and may become the successor to the 1971 Hague Convention on the Recognition and Enforcement of Foreign Judgments in Civil and Commercial Matters.

This multilateral treaty is managed by the Hague Conference, an intergovernmental organization established in the 19th century.

Marta Pertegás, First Secretary of the organization, is one of the lawyers with primary responsibility for the commercial law and litigation area. This means she oversees a number of projects and leads the ongoing legislative initiative that may result in a new Hague Convention.

“The Hague Conference is an organization that dates back to 1893. It started with 13 states as participants in the first conference and became an intergovernmental organization in the 1950s,” Ms. Pertegás says.

The Hague Conference is now a group of 81 states plus the European Union.

Trademark Matters

Ms. Pertegás says there are other Hague Conventions dealing with trademarks, for example, one on “taking evidence abroad.”

This can apply to a trademark infringement case where the evidence is located in another jurisdiction. In this case, Ms. Pertegás explains, the Convention would make it possible to launch a request from state A to state B so that state B can collect evidence and transmit it back to the country where the litigation takes place.

“When a judge in country A decides, for example, that there has been a situation of wrongful termination of a licensing agreement, it often has to be recognized somewhere else because some of the parties are in some other jurisdictions, or because there is a monetary fine that has been imposed and the money has to be collected in another jurisdiction.”

For this reason, the future Convention will facilitate the circulation of judgments and ensure that judgments have a cross-border effect.

Ms. Pertegás clarifies that the Convention deals only with civil and commercial cases, so it does not extend to criminal matters.

She adds: “In some jurisdictions, trademark infringements can also be fought by means of criminal procedures, but that is beyond our remit.”

INTA's Role

INTA has been an observer of the work of the Hague Conference, a status that has been granted to a number of nongovernmental organizations with particular expertise. INTA represents the trademark branch.

“This in itself is an interesting development, that from a trademark perspective, INTA has been closely watching our ongoing work to conclude a new Convention,” she says.

“They are hopeful, as we are, that the new Convention will be useful for trademark litigants, generally speaking, and they have been very instrumental in explaining trademark matters to the negotiators of the Convention. These negotiators are officials specializing more generally in international litigation and do not have a background in IP.”

A task force within INTA’s Enforcement Committee—General Trademark Enforcement Matters Subcommittee is currently working on comments related to the Convention (see box). 

According to Ms. Pertegás, INTA has been very helpful in trying to bridge this gap and has provided information on the important IP elements, in particular trademark litigation, that could influence the rules of the future Convention.

IP matters were thoroughly discussed in February 2017, but Ms. Pertegás is aware that more work is required to reach common positions about the treatment of IP judgments.  

“There were diverging views in a number of delegations on how to handle IP. Most IP matters are still subject to further considerations in the separate jurisdictions,” she says, and when the discussions resume in November this year, IP will no doubt be prominent on the agenda.

“Trademarks are less controversial than patents. One of the positions is that patent litigation should be excluded from this Convention’s scope.

“One delegation doesn’t see the relevance of cross-border patent enforcement,” she explains.

Another proposal on the table relates to the nature of disputes, Ms. Pertegás adds.

“Another delegation could only see contractual litigation as part of the Convention, so if you’re having a dispute on a trademark licensing agreement, recognition of enforcement of the resulting judgment is within the Convention. However if it is a trademark infringement case, they would not want it to be within the Convention.”

The Hague Conference hopes that INTA’s Annual Meeting in Barcelona will be an opportunity for people with views on cross-border trademark enforcement to discuss this further, says Ms. Pertegás.

“We need to make an effort and come up with compromises in that area. If that’s too difficult the most likely outcome is probably that it is excluded from the scope of the new Convention.”

Enforcement Committee—General Trademark Enforcement Matters Subcommittee Task Force

A task force within INTA’s Enforcement Committee—General Trademark Enforcement Matters Subcommittee (GTMEM SC) is presently working on comments to the draft text of the Hague Convention on the Recognition and Enforcement of Foreign Judgments from the perspective of trademarks that are the subject of judgments in cross-border enforcement cases. This entails balancing the generally territorial nature of trademark rights and registrations against the advantages of facilitating cross-border enforcement activities.

The draft Convention as prepared in 2015 is subject to comments and discussions among all stakeholders before the Special Commission, the first meeting of which took place from June 1–9, 2016, in The Hague. INTA was invited to participate in this meeting as an observer and was represented by Geert Johann Seelig (Luther Rechtsanwaltsgesellschaft, Germany), the GTMEM SC Task Force leader, and Iris Gunther, INTA’s Senior Advisor, External Relations – Enforcement, on June 6 and 7, when the discussions on IP took place.

  1. Pertegás will be addressing the full GTMEM SC about the Convention and the importance of supporting its development during the INTA Annual Meeting. 

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