Territorial Jurisdiction in Negative Declaratory Actions for Infringement: Analysis of Order No. 22453 of 2024

In the context of industrial property disputes, the recent Order No. 22453 of August 8, 2024, offers important clarifications on territorial jurisdiction in negative declaratory actions for infringement. The Court of Cassation, presided over by Judge A. V., examined the relationship between the 'forum commissi delicti' criterion and the type of action brought, highlighting how these factors influence the choice of the competent court.

The 'Forum Commissi Delicti' Criterion

The 'forum commissi delicti', provided for by Article 120, paragraph 6, of Legislative Decree No. 30 of 2005, is a fundamental principle for identifying the competent judge in industrial property disputes. However, as emphasized in the ruling, this criterion can only be applied when a harmful act to a right of the patent holder is alleged. This means that if the action concerns a negative declaration of infringement, the plaintiff does not act as an injured party but merely seeks to demonstrate that their conduct is not harmful.

• Art. 120, para. 6, Leg. Decree No. 30/2005: forum commissi delicti
• Art. 120, para. 3, Leg. Decree No. 30/2005: forum of elected domicile
• Art. 42 Code of Civil Procedure: territorial jurisdiction

In general. Regarding the determination of territorial jurisdiction in industrial property actions, the concurrent criterion of the "forum commissi delicti" under Art. 120, para. 6, of Leg. Decree No. 30 of 2005, can only be applied where a harmful act to a right of the patent holder is alleged and not when only a negative declaration of infringement is sought, because in such cases the plaintiff does not act as a purported injured party but solely requests a declaration that their conduct is not harmful to the defendant's right. In such cases, the forum of the defendant patent or registration holder's elected domicile applies – as per Art. 120, para. 3, of Leg. Decree No. 30 of 2005, in conjunction with paragraph 6 bis of the same provision – which prevails, where domicile has been elected, over the first three forums listed in paragraph 2.

Practical Implications of the Ruling

This order has significant practical implications for industrial property rights holders. In particular, the emphasis placed on the need to demonstrate a harmful act to a right to invoke the 'forum commissi delicti' implies that negative declaratory actions cannot benefit from this criterion. Consequently, defendants in such actions can rely on the forum of their elected domicile, thus offering greater protection against potentially unfounded legal actions.

Conclusions

In summary, Order No. 22453 of 2024 represents an important guide for managing industrial property disputes. It clarifies that the 'forum commissi delicti' is applicable only in cases of alleged harm, while in the absence of such claims, the forum of the defendant's elected domicile applies. This offers greater legal certainty and protection for all parties involved in these types of disputes.