8.01  No specific rule for intellectual property matters was to be found in the Commission’s preliminary draft proposal.² Art 8(1) of the Commission Proposal, favouring the law of the country for which protection is sought (lex loci protectionis‎), appears to have been inspired by the comments³ on that preliminary draft of the Hamburg Group for Private International Law, a collaboration of German scholars.⁴

8.03  The Commission also recognized, however, that its special rule favouring the lex loci protectionis‎ was not appropriate for Community intellectual property rights, which apply to the territory of the Community as a whole.⁸ Accordingly, the Commission proposed that the law of the country in which the act of infringement is committed should apply to questions not determined by the Community instrument creating the right in question.

8.04  At an early stage in discussions in the Council’s Rome II Committee, the German delegation proposed that non-contractual obligations relating to (p. 449) intellectual property rights should be excluded from the Regulation entirely on the following grounds:⁹

• •  international arrangements opting in effect for the same connection already exist;

• •  intellectual property rights must be accorded special treatment in Article 9;¹⁰

• •  an overlap with the rules of applicable law with respect to acts of unfair competition¹¹ is conceivable;

• •  discussions are in progress concerning the appropriate connection for modern communication technologies, and their outcome should not be pre-empted.

8.05  As to the first of these reasons, it may be supposed that the German delegation had in mind the ‘national treatment’ provisions in Arts 2 and 3 of the 1883 Paris Industrial Property Convention,¹² Arts 5 and 6 of the 1886 Berne Copyright Convention,¹³ and Arts 3 and 4 of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs).¹⁴ Closer examination of these provisions suggests, however, that they do not lay down any rule of applicable law for infringements of intellectual property rights, let alone one that favours the lex loci protectionis‎.¹⁵ Indeed, ‘the only private international law implication of Article 3 TRIPs (and similar provisions in inter alia‎ the Berne and Paris Conventions) is that nationality cannot be used as a connecting factor because this may lead to a different degree of protection granted to national and foreign right owners’.¹⁶

In Pearce v Ove Arup, a copyright case, the English Court of Appeal suggested (obiter‎) that the reference to ‘national law’ in Art 64(3) was a reference to ‘the law of the state in respect of which the patent was granted’.¹⁹ As the Court contrasted this with the position under Art 5(2) of the Berne Copyright Convention (for which, in its view, there was no reason for concluding that the references to ‘the laws of the country where protection is claimed’ do not include that country’s own rules of private international law), it appears that the Court took the view that Art 64(3) of the EPC required application of the lex loci protectionis‎ without the possibility of renvoi‎. Professor Pertegás disagrees, however, with this interpretation of the EPC. She argues forcefully that:²⁰

In the first place, reference is made to ‘national law’ and not to ‘substantive’ or ‘internal’ law. In order to exclude the working of the choice of law rules, international conventions generally refer to the expression ‘internal law’, or state that the term ‘law’ does not include choice of law rules. In the absence of an express indication to the contrary, there is no reason to interpret Article 64(3) of the EPC as excluding the use of private international law rules in order to determine the relevant substantive rules.

(p. 451) Furthermore, the harmonisation of the choice of law rules of the EPC Member State clearly goes beyond the ratio of Article 64(3) of the EPC. Indeed, this provision must be read in combination with Article 64(1) of the EPC, which provided that the European patent is to have the effects of a national patent in the designated states. Article 64(3) of the EPC ensures that the post-grant life of a European Patent is ruled by national law in the same way as a national patent. The private international law rules of the forum apply in disputes concerning the enforcement of national patents, and hence the same rules must apply in cases involving European patents.

8.08  Accordingly, it would have been possible, in theory at least, for the Community to adopt a solution concerning the law applicable to intellectual property rights other than the one favoured in Art 8(1) of the Commission Proposal, for example in favour of the law of the country of infringement. Despite early hesitation among the members of the Council’s Rome II Committee,²¹ the Commission’s view that the lex loci protectionis‎ should apply to infringements of national intellectual property rights was never seriously challenged²² and, subject to minor textual changes, the text of Art 8(1) of its Proposal was carried through the legislative process.²³ Doubts among the Member States about the need for a separate solution for Community intellectual property rights and the connecting factor proposed by the Commission for these rights²⁴ were also eventually dispelled.²⁵ The exclusion of party choice for intellectual property rights, originally contained within the text of Art 10 of the Commission Proposal (freedom of choice) was brought within Art 8 as a separate sub-rule.²⁶ The European Parliament did not make any material amendments to Art 8 at either the first or second reading stage.²⁷

(p. 452) 8.09  In the following commentary, for convenience, the abbreviations ‘IPR’ and ‘Community IPR’ are used, respectively, to refer to national (non- Community) intellectual property rights and unitary Community intellectual property rights.

8.12  Art 8(1) covers infringements of all of the rights named, but does not deal with matters of unfair competition generally, as these are dealt with separately within Art 6. The English tort of passing off should be considered as a non-contractual obligation arising out of an act of unfair competition, within Art 6(1) rather than one arising out of infringement of an intellectual property right, within Art 8(1).²⁹

8.13  The use of the words ‘for instance’ in Recital (26) emphasize that the list is non-exhaustive. Although it is, no doubt, easier to identify an intellectual property right than to define one, the concept seems capable of encompassing any right arising under national law which positively enhances, rather than merely protects, the value to the right-holder of the intangible products of the time and resources expended in developing ideas or (p. 453) expressions of ideas. Examples under English law include patents,³⁰ copyright,³¹ registered and unregistered design rights,³² trade marks,³³ and plant breeders’ rights.³⁴

8.14  Art 8(2) refers to ‘unitary Community intellectual property rights’. The following reference to ‘the relevant Community instrument’ confirms that the provision is concerned with rights generated by a Community legislative instrument. At present, the following Community IPRs have been created by Community Regulations:³⁵

1. 1. Community trademarks;³⁶

2. 2. Community design rights;³⁷

3. 3. Community plant variety rights.³⁸

8.15  In addition to these rights, EC Directives have required the Member States to create new kinds of national intellectual property right concerning, for example, the protection of databases³⁹ and the artist’s resale right.⁴⁰ It is doubtful, however, whether non-contractual obligations arising out of (p. 454) infringements of these rights⁴¹ also constitute ‘unitary Community intellectual property rights’ falling within Art 8(2). In putting forward its proposal, the Commission appeared to have had in mind only rights created by means of a Regulation. Having referred to the sui generis‎ right for the protection of databases as an example of an IPR falling within Art 8,⁴² the Commission did not include this right in its list of examples of ‘unitary’ Community IPRs, instead referring only to the Community trade mark, Community designs and models, and the proposed Community patent.⁴³ Those rights, as well as the Community plant variety right, are explicitly described in the Regulations creating them as ‘unitary’ or ‘uniform’ rights.⁴⁴ Moreover, although rights arising from the implementation of EC Directives can justifiably be described as rights under EC law,⁴⁵ it seems artificial to describe IPRs arising from the implementation of a Directive as ‘unitary’ Community IPRs. As Directives leave to the Member States the form of choice and methods of implementation,⁴⁶ a separate right is created under the law of each Member State by its implementing rules. The non-unitary character of a right arising from a Directive becomes even clearer if, as in the case of the Directive for the legal protection of databases,⁴⁷ the legislation gives Member States a margin of appreciation as to the scope of the right itself. Desirable as it might be for Art 8(2) to apply to rights of this kind, identifying a single Member State whose rules apply to an infringing act, that interpretation does not appear open under Art 8(2) as it stands. Instead, Art 8(1) will apply.

8.16  Brief reference should also be made to the Commission’s proposal, originally made in 2000, to create a Community patent.⁴⁸ Although the proposal led to a measure of political agreement between the Member States,⁴⁹ certain aspects of the Proposal have been strongly opposed by stakeholders on the grounds of high costs of translation requirements and (p. 455) the excessive centralization of the proposed jurisdictional system.⁵⁰ Negotiations have stalled since 2004, with little prospect of a successful outcome in the short term.⁵¹

8.17  This proposal to establish a unitary Community patent right is not to be confused with the bundle of national rights that arises from registration of a European patent in accordance with the terms of the European Patents Convention.⁵² The EPC is a separate initiative between the EC Member States and several non-Member States, and does not depend for its effectiveness on Community law.

8.18  Both Art 8(1) and 8(2) concern ‘infringement’ of IPRs. It may be doubted, therefore, whether IPRs that only generate a right to receive a sum of money on a particular event (for example, the resale right conferred by EC law for the benefit of artists⁵³) fall within the scope of the Regulation, there being no relevant infringement even if the sums due are not paid. Neither provision applies, in any event, to questions concerning the creation, registration, validity, or transfer of IPRs. Not only are such matters logically prior to any question as to whether there has been an infringement, they are also matters of status, which fall outside the material scope of the Regulation.⁵⁴ Accordingly, if infringement proceedings are defended on the ground that the IPR relied on is invalid, the law applicable to the question of validity must be determined otherwise than by reference to Art 8. As questions of validity will almost certainly be referred to the law of the country of origin of the relevant IPR (coinciding with the lex loci protectionis‎) or, in the case of a Community IPR, EC law, this point as to the boundaries of Art 8 may be of largely theoretical significance.

8.20  This provision, corresponding to Art 9(6) of the Commission Proposal, was explained by the Commission as being ‘to ensure that several different laws are not applicable to one and the same dispute’, with specific reference to the possibility of an ‘obligation based on unjust enrichment arising from an infringement of an intellectual property right’.⁵⁵ This provision appears to have been influenced by the broader concept of unjustified enrichment recognized under German law.⁵⁶ It may be questioned, however, whether this provision was necessary, as both Art 8(1) and Art 8(2) refer generally to ‘infringements’ of intellectual property rights, without distinguishing according to the character or remedial consequences of the infringement and Art 15 refers to the law applicable under the Regulation both ‘the existence, the nature and the assessment of damage or the remedy claimed’ (Art 15(c)) and ‘the measures which a court may take to prevent or terminate injury or damage or to ensure the provision of compensation’ (Art 15(d)). That question is closely linked to the question whether claims for what an English lawyer might refer to as ‘restitution for wrongdoing’⁵⁷ (i.e. gain-based responses to tort/delict) fall within Chapter II (as arising out of tort/delict) or Art 10 of the Regulation (as arising out of unjust enrichment). It has been submitted in Chapter 4 that the tort/delict characterization is correct.⁵⁸ On this basis, Art 13 is best seen as a clarification, for the avoidance of doubt, that Art 8 has priority over the rules of applicable law in Chapter III.⁵⁹ It also has priority over the general rule for tort/delict in Art 4.⁶⁰

8.22  The suggestion that the lex loci protectionis‎ is a ‘universally acknowledged principle’ goes too far.⁶¹ Indeed, prior to the Regulation, there was no consistent practice even among the Member States.⁶² The ‘principle’, however, would appear to originate in the idea that intellectual property rights are sovereign in character and operate within territorial limits, with each State having the exclusive power to regulate such rights within its territory. As the editors of Dicey, Morris and Collins recognize:⁶³

The essence of an intellectual property right is the owner’s right to take action to prevent others from engaging in certain types of activity in a given territory without the owner’s permission. Although patents, trade marks and copyright are classifi ed as movables, they share some of the characteristics of immovables in the sense that the rights which they confer are territorially limited.

8.24  In addition, one cannot ignore the extent to which IPRs are also influenced by extra-legal considerations. In particular, they are used by States as a tool of economic policy for the promotion (or inhibition) of trade and enterprise. Professor Basedow, a member of the Hamburg Group,⁶⁶ makes the following point:⁶⁷

By their nature, intellectual property rights are legal artifacts, created by a given state as monopolies limited in time and designed to determine the competitive conditions in the relevant markets of that country.

8.25  For these reasons, it is perhaps inevitable that legal systems characterize and equip similarly named IPRs in different ways and that, in particular, the definition of an infringing act, the defences to infringement actions and the remedies may vary greatly. The rule of applicable law in Art 8(1) of the Rome II Regulation is neutral as to the achievement of those objectives in that it does not specify what element of activity connected with the territory of a country justifies the application of that country’s laws regulating intellectual property. An important consequence of the application by Member State courts of the lex loci protectionis‎ principle is that, so far as those courts are concerned, each State in defining its national IPRs may choose its own set of unilateral connecting factors describing, in each case, the required connection to its territory. As the product of a process engaging over twenty Member States, each of which sets its own economic priorities, Art 8(1) in its final form may owe more to pragmatism than to theories of sovereignty or jurisdiction under international law.

8.26  So far as Community litigants are concerned, the adoption of the lex loci protectionis‎ principle allows claimants to choose the IPR (or bundle of IPRs) that best serves their interests and objectives, subject only to the requirement that the protection that they seek must pertain to the territory (p. 459) of the country whose law it is sought to apply. In other words, the national IPR relied on must apply to the facts relied on as establishing an infringement on the basis of a connection to the territory of its country of origin, and not because of an extra-territorial connection. The relevant connection may, however, relate to an act of the defendant or another person or to the consequences of such act. All that the claimant need show is that the protection is claimed ‘for’ a particular country. Although Art 8(1) refers to the law of the country for which protection is ‘claimed’, the rule should apply equally to actions by alleged infringers for declarations of non-infringement, a common tactic in intellectual property litigation. The connecting factor should here be taken to refer to the law of the country for which the availability of protection is denied.

8.27  Even in a straightforward cross-border case, an act in one country having consequences in another may enable the claimant to claim protection under one or more national IPRs in each country. The court or courts seised of the dispute must of course take steps to avoid over-compensation of the claimant. In other cases, identical conduct or consequences in several countries may allow the claimant to pursue several distinct claims simultaneously, with each claim relating only to the conduct or its consequences in a particular country.⁶⁸

8.28  Application of national IPRs under Art 8(1) must be consistent with the requirements of the EC Treaty concerning, in particular, the free movement of goods. In particular, under the so-called ‘exhaustion of rights principle’ a right-holder who has consented to the marketing of goods in one Member State may not generally rely on a national IPR in order to restrict the importation marketing of those goods elsewhere in the Community.⁶⁹

8.29  From the viewpoint of those advising the parties to intellectual property litigation, there is no doubt that Art 8(1) produces greater certainty as to the law applicable, one of the primary objectives of the Regulation. The tradeoff for that certainty, however, is an increased regulatory burden for commercial parties, requiring more extensive investigation of national IPRs both when planning new cross-border business activity and, in the event of a dispute, prior to commencing or defending litigation. Adoption in the Rome II Regulation of the lex loci protectionis‎ principle may yet prove to be (p. 460) a stop-gap solution pending further consolidation of IPRs or the associated rules of private international law at a European or international level.⁷⁰

8.30  Under Art 8(2), the law applicable to a non-contractual obligation arising from an infringement of a unitary Community intellectual property right is the law of the country in which the act of infringement was committed, but this law applies only to ‘any question that is not governed by the relevant Community instrument’.⁷¹ The effect of this rule must, therefore, be determined by reference to the terms of the legislative instrument creating the relevant Community IPR. For the time being, as noted above, there are three such instruments: (1) the Community Trade Mark Regulation, (2) the Community Design Regulation, and (3) the Community Plant Variety Regulation.⁷² Each of these Regulations, and its relationship to Art 8(2), will be considered in turn.

8.31  The Community Trade Mark Regulation concerns trade marks for goods and services that are registered in accordance with its provisions.⁷³ A Community trade mark may consist of any signs capable of being represented graphically, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.⁷⁴ Under Art 9(1) of that Regulation, and subject to the restrictions in Art 12 and the principle of exhaustion of rights⁷⁵ in Art 13, (p. 461) the proprietor of the mark may prevent a third party from using in the course of trade, without the proprietor’s consent:⁷⁶

1. (a)  any sign which is identical with the Community trade mark in relation to goods or services which are identical with those for which the Community trade mark is registered;

2. (b)  any sign where, because of its identity with or similarity to the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;

3. (c)  any sign which is identical with or similar to the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark.

8.32  Art 9(2) prohibits the following acts in particular:

1. (a)  affixing the sign to the goods or to the packaging thereof;

2. (b)  offering the goods, putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder;

3. (c)  importing or exporting the goods under that sign;

4. (d)  using the sign on business papers and in advertising.

8.36  The first question to be addressed is whether Arts 97(2) and 98(2) of the Community Trade Mark Regulation (8.34–8.35 above) exclude Art 8(2) of the Rome II Regulation. This argument that they do may be presented in two ways. First, as Art 8(2) applies only to questions not governed by the Regulation creating the IPR, it cannot apply if the Regulation exhaustively regulates infringements of the right in question even if it does so by referring to national law.⁷⁷ Secondly, under Art 27, the Rome II Regulation cannot override provisions of Community law which, in relation to particular matters, lay down conflict-of-law rules relating to non-contractual obligations.⁷⁸ Arts 97(2) and 98(2) may be argued to create rules of applicable law, favouring the law of the country in which protection is sought (i.e. the lex fori‎) with a renvoi‎ in accordance with that country’s rules of private international law, and to have overriding effect under Art 27. Neither of these arguments is convincing. As the opening words of Art 97(2) make clear, the reference that these provisions make to national law specifically concerns matters ‘not covered by’ the Community Trade Mark Regulation, and the argument that the provision somehow incorporates by reference rules of national law so as to create an exhaustive regulatory regime contradicts this wording. Further, with reference to Art 27 of the Regulation, (p. 463) it seems artificial to describe either Art 97(2) or 98(2) as laying down confl ict-of-law rules relating to non-contractual obligations, given that they expressly require the forum Member State to apply its own rules of private international law. Instead of creating harmonized Community rules of applicable law, the two provisions simply clear the way for Member States to choose and apply their own rules.⁷⁹ Finally, if Arts 97(2) and 98(2) were treated as containing rules of applicable law and as overriding Art 8(2), difficult questions would arise as to whether the private international law rules to which they refer now include the Rome II Regulation and, if so, how it should be applied. In particular, could the rule in Art 8(2) apply at this stage, or would it be necessary to apply the general rule in Art 4? Given that all of the existing Community IPR instruments contain provisions corresponding to Art 97(2)⁸⁰ there is no reason to believe that it was intended that Art 8(2) should not apply to any of them by reason of arguments of this kind. Instead, Art 8(2) should be seen as imposing a uniform rule as to the law applicable to infringement matters not dealt with in the Regulation, replacing the formerly applicable national rules.⁸¹

8.37  Turning to the application of the connecting factor in Art 8(2), pointing to the law of the country in which the act of infringement was committed, the concept of an ‘act of infringement’ must be an autonomous one drawn from the provisions of the Regulation and, in particular, Art 9.⁸² Under the Community Trade Mark Regulation, therefore, the law applicable will be that of the country or countries within the EC in which a third party uses or threatens to use the proprietor’s mark. If the proprietor complains of unlawful use of his mark in more than one country, each country’s law governing infringement must be applied separately to use in that country.⁸³

8.38  The Community Design Regulation protects both registered and unregistered designs, provided that they are new and have individual character.⁸⁴ (p. 464) For these purposes, ‘design’ means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture, and/or materials of the product itself and/ or its ornamentation.⁸⁵ A design that meets the requirements for protection enjoys protection, without registration, for a period of three years from the date on which it was made available to the public.⁸⁶ Protection for a longer period may be secured only by registration.⁸⁷ A registered Community design confers on its holder, subject to the restrictions in Art 20 and to the exhaustion of rights principle⁸⁸ in Art 21, the exclusive right to use it and to prevent any third party not having his consent from using it, in particular, by making, offering, putting on the market, importing, exporting, or using a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.⁸⁹ An unregistered design confers more limited protection against use involving copying.⁹⁰

8.39  Title IX of the Community Design Regulation contains provisions similar to those in Title X of the Community Trade Mark Regulation.⁹¹ Arts 79–83 concern matters of jurisdiction. Art 84 regulates counterclaims for a declaration of invalidity. Art 85 creates a presumption of validity. Arts 86–87 deal with the consequences of judgments on invalidity. Art 89(1) requires Member State design courts, on a finding of infringement, to impose particular sanctions (including prohibiting infringement and seizing infringing products and equipment used in their manufacture) unless there are strong reasons for not doing so. Art 89(2) requires those sanctions to be enforced by measures available under national law. Art 90(1) requires Member States to offer the same provisional or protective measures as are available for cases involving national design rights.

8.41  The position under this Regulation would appear to correspond to that under the Community Trade Mark Regulation. Accordingly:

• •  Art 88(2) of the Community Design Regulation should not be treated as excluding Art 8(2) of the Rome II Regulation.⁹²

• •  The ‘country in which the act of infringement was committed’ under Art 8(2) will be each country in the EC in which a third party used the design without the proprietor’s consent.⁹³

8.42  The Community Plant Variety Regulation raises slightly different issues from the other two Regulations. The right granted under the Regulation protects varieties of all botanical genera and species,⁹⁴ provided that they are (a) distinct, (b) uniform, (c) stable, (d) new, and (e) designated by a denomination.⁹⁵ Subject to certain qualifications⁹⁶ and the exhaustion of rights principle,⁹⁷ the right-holder may require authorization of the following acts in respect of variety constituents, or harvested material of the protected variety:⁹⁸

1. (a)  production or reproduction (multiplication);

2. (b)  conditioning for the purpose of propagation;

3. (c)  offering for sale;

4. (d)  selling or other marketing;

5. (e)  exporting from the Community;

6. (f)  importing to the Community;

7. (g)  stocking for any of the purposes mentioned in (a) to (f).

8.44  Part Six of the Community Plant Variety Regulation, immediately following Art 93 (above), contains provision relating to infringement proceedings that are far more detailed and sophisticated than those contained in (p. 466) the Community Trade Mark or Design Regulations. In particular, (1) Art 94(1) confers a right of action on the right holder to enjoin infringement by, or to obtain reasonable compensation from, a person performing any of the proscribed acts without consent, (2) Art 94(2) requires a person who intentionally or negligently violates the right to compensate the holder for any further damage resulting from the act in question, (3) Art 95 provides for the payment of reasonable compensation for performance of any of the proscribed acts between publication of the holder’s application for a plant variety right and grant of the right, and (4) Art 96 contains a uniform limitation period for claims under Arts 94 and 95.

8.45  Art 97 (entitled ‘Supplementary application of national law regarding infringement’) then provides as follows:

1. 1. Where the party liable pursuant to Article 94 has, by virtue of the infringement, made any gain at the expense of the holder or of a person entitled to exploitation rights, the courts competent pursuant to Articles 101 or 102 shall apply their national law, including their private international law, as regards restitution.

2. 2. Paragraph 1 shall also apply as regards other claims that may arise in respect of the performance or omission of acts pursuant to Article 95 in the time between publication of the application for grant of a Community plant variety right and the disposal of the request.

3. 3. In all other respects the effects of Community plant variety rights shall be determined solely in accordance with this Regulation.

8.46  Accordingly, the Community Plant Variety Regulation deals comprehensively with actions for injunctions and compensatory damages. The only infringement matters that it does not govern and which fall, therefore, within Art 8(2) of the Rome II Regulation are those matters listed in Art 97(1) and (2) and, in particular, claims for restitution (i.e. to reverse unjust enrichment). In cases falling within these two provisions, the law applicable under Art 8(2) of the Rome II Regulation will be the country or countries in which the defendant performed, without consent, an act requiring the holder’s authorization under the Community Plant Variety Regulation (8.42 above).

8.47  The scope of the law(s) applicable under Art 8(1) or 8(2) of the Rome II Regulation, like other rules in Chapters II and III, will be fixed by Art 15 (p. 467) and the other common rules in Chapter V. In particular, the applicable law(s) will govern (1) the existence, the nature, and the assessment of damage or the remedy claimed (Art 15(c)), and (2) within the limits of the Member State court’s procedural powers, the measures which a court may take to prevent or terminate injury or damage or to ensure the provision of compensation (Art 15(d)). These provisions are considered in further detail in Chapter 15 below. One aspect of the vertical scope of the Regulation that may be of particular significance for IPRs generally is the question whether the claimant’s entitlement to an interim injunction to restrain infringing conduct, or for the seizure of infringing articles pending trial falls, within the province of the law applicable under the Regulation, or should be considered as a matter of procedure excluded by Art 1(3). In the explanatory memorandum accompanying its Proposal, the Commission referred specifically to ‘an interlocutory injunction’ as an example of a measure to halt or prevent damage within what is now Art 15(d) of the Regulation.⁹⁹ This provides strong support for the view that the law applicable under the Regulation should be applied to determine the availability of all such measures, an approach which seems correct in principle given the significance that the grant or refusal of an interim restraining order may have in terms of putting pressure on a party to settle.¹⁰⁰ Although, in practice, arguments as to the law applicable may not play a significant role in pre-trial proceedings, claimants must be prepared to justify the grant of an interim injunction or temporary seizure by reference to the law of the country or countries whose national IPRs they wish to invoke.

8.51  Claims by the organizations referred to in this Recital should also fall within the scope of the Rome II Regulation. Their position, in this respect, is very similar to that of consumer associations who bring private proceedings to enforce the collective interests of consumers under laws established for their protection.¹⁰⁸

8.53  At the time that the IP Enforcement Directive was passed, the second sentence referred, for example, to the rules of jurisdiction in the Brussels I Regulation. It may now, equally, be taken to refer to the Rome II Regulation.

8.54  The law applicable under Art 8 may not be derogated from by an agreement pursuant to Art 14.¹⁰⁹ This is consistent with the Commission Proposal, which expressly excluded obligations to which Art 8 applies from the scope of the provision allowing (limited) party choice.¹¹⁰ The Commission considered that to allow such choice would be ‘inappropriate’.¹¹¹ So far as Art 8(1) is concerned, that conclusion may be justified both on the grounds (p. 470) that (a) it should not be open to the parties to derogate from rules that perform an important economic policy objective, and (b) the limited territorial effect of national IPRs¹¹² means that a choice in favour of any law other than that of a country for which protection is to be sought would result in a legal vacuum.¹¹³ The second argument, however, overlooks that in some cases the protection afforded by IPRs of different countries will overlap, giving the claimant the option under Art 8(1) of relying on one or both national IPRs to support his claim. Here, in order to improve legal certainty, Art 8 might have allowed the parties to restrict the claimant’s choice. Moreover, these arguments do not provide a convincing explanation why, in the case of Community IPRs, the parties are not allowed to choose the law of a particular Member State for all infringements.¹¹⁴ Neither of these options was pursued.