Rome II Regulation

The Rome II Regulation is Regulation (EC) No 864/2007 of the European Parliament and of the Council on the law applicable to non-contractual obligations. In disputes with a foreign element, it determines the law that the court of a Member State must apply to torts and delicts, including infringement and unfair competition. Article 8 lays down a special rule for infringements of intellectual property rights, and Article 6 governs acts of unfair competition. The Regulation applies whatever law it designates, including that of a third State.

The special rule in Article 8

The law applicable to a non-contractual obligation arising from an infringement of an intellectual property right is the law of the country for which protection is claimed. This rule, known as the lex loci protectionis, expresses the principle of territoriality of intellectual property rights: a French court hearing a case of infringement committed in Germany applies German law to assess whether there is infringement, its conditions and its sanctions. For unitary Union titles, such as the European Union trade mark, the Community design or the unitary patent, questions not governed by the Union instrument are subject to the law of the country in which the infringement was committed. Article 8 excludes any freedom of the parties to choose the applicable law, unlike the general rules of the Regulation.

Scope of the applicable law

The applicable law governs the basis and extent of liability, the grounds for exemption, the existence and nature of damage, the measures the court may take to bring the damage to an end, the assessment of compensation, the transferability of the right to compensation, the persons entitled to compensation and limitation. It does not, however, govern procedure or evidence, which fall to the law of the forum, subject to the rules of the applicable law on presumptions and the burden of proof. The existence, validity and ownership of the right itself fall outside the Regulation and are governed by the conflict rules specific to each right, which generally designate the same law.

Impact in litigation

The rule operates alongside the jurisdiction determined by the Brussels I bis Regulation. A court with jurisdiction over the whole dispute, because it is the court of the defendant’s domicile, may have to apply as many laws as there are countries for which protection is claimed, which is characteristic of multi-jurisdictional patent litigation. For online infringements, the country for which protection is claimed depends on the targeting of the public, assessed according to the criteria developed by the Court of Justice.

Key points

Rome II subjects infringement to the law of the country for which protection is claimed, with no choice possible, and unitary Union titles to the law of the country of infringement for questions not governed by Union law. From the writ of summons onwards, identify for each territory concerned the applicable law and its rules on evidence and compensation, since the compensation obtained will vary from one country to another.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats litigates patent disputes before the Paris Judicial Court, the Paris Court of Appeal and the Unified Patent Court. When the question arises in a real case, the right moment is almost always before proceedings are issued.

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