A recent ruling of a panel of Milan IP judges offers a useful perspective on the views of Italian courts on “forum shopping” in the context of IPR infringement proceedings.
The plaintiffs in a trademark infringement and unfair competition case had chosen the Milan Court as the venue of the litigation against a competitor established in nearby Brescia, which has its own IP Court. Having purchased an allegedly infringing product marketed by the competitor at a Milanese reseller shop, the plaintiffs relied on a provision of the Italian IP Code permitting the establishment of IPR infringement proceedings – which, as a general rule, should be brought in the forum where the alleged infringer is established – before the IP Court “in whose districts the activities were committed” (locus commissi delicti).
After having successfully sought preliminary interim measures, the plaintiffs instituted proceedings on the merits to pursue damages; the defendant, however, raised an improper venue exception and sought to have the Court decline its jurisdiction in favour of the Brescia IP Court and revoke the preliminary measures granted to the counterparties.
The 3-judge ruling panel sided with the defendant. The deciding factor was the fact that the Milan retailer, a non-exclusive reseller, had not been summoned as a co-defendant to the proceedings. In confirming precedents of the Milan court itself and of other Italian IP courts (one of which we discussed here), the judges ruled that the forum commissi delicti criterion can be validly relied upon by the plaintiff only when the party responsible for the fraction of the infringing conduct that took place in the district of the chosen venue has been made a party to the proceedings; otherwise, IPR holders would have too free a hand to pick a venue of their preference by simply purchasing an infringing item in the relevant district.
There is, therefore, a sort of procedural burden for the plaintiff willing to rely on theforum commissi delicti criterion in Italian IPR infringement cases to summon the reseller together with the manufacturer (or the main infringer).
However, the Court dismissed the defendant’s request that the interim remedies granted to the plaintiffs in preliminary proceedings be revoked as a consequence of the court’s lack of jurisdiction, noting that interim remedies may be voided only by a ruling deciding the merits of the case.
On these grounds, the Court, leaving the interim remedies standing, declined its jurisdiction in favour of the sister court of Brescia, granting a three-month term for the reinstatement by either party of the proceedings at such venue.