Ulf Maunsbach

The general aim of this doctoral thesis is to analyse under what circumstances a Swedish court might adjudicate a cross-border trademark infringement case. Due to the recent technological developments (e.g. Internet) an underlying aim is to specifically identify so called Internet-related problems when it comes to ascertaining jurisdiction in cross-border cases.

The study adopts a Swedish court perspective. The question raised, put simply, is whether the holder of a trademark could enforce the trademark right against a foreign defendant in a cross-border infringement case. The underlying question is if (and to what extent) foreign, as well as national, trademark infringements can be adjudicated in a Swedish court. The study is primarily concerned with registered national trademarks but Community Trademarks and unregistered trademarks are covered as well. The study begins with an analysis of the existing rules of private international law. It then proceeds with an examination of the relevant rules for ascertaining jurisdiction in cross-border cases. When the legal grounds for jurisdiction in a traditional (un-plugged) environment have been analysed the discussion then focuses on Internet-related problems.

The following general conclusions were reached after analysing the questions raised. Firstly, the Internet-related problems in the area of cross-border trademark infringements are not as serious as first imagined. However, there are some problems of a general nature. These problems are related to the fact that actions and effect are not easy to demarcate on the Internet. As a consequence, jurisdictional rules based upon such grounds are difficult to adopt. In regards to this problem the study concludes that there is a need to amend the jurisdictional rules as they exist today.

Secondly, the existing rules on exclusive jurisdiction when it comes to questions about registered intellectual property rights are in need of clarification. One of the main questions is whether or not a negative declaratory judgement could be regarded as concerned with the validity of a disputed intellectual property right. Another important question is whether or not questions about validity, raised as a defence during an infringement proceeding, should be handled as exclusive questions, or if it is possible to try such questions preliminarily. In this regard it was concluded that an action for a negative declaratory judgement might be regarded as a case covered by the applicability of the exclusive rules. It was also concluded that questions of validity, raised as a defence, might be tried by courts preliminarily, without conflicting with the exclusive rules on jurisdiction.