OJ EPO 2014, A55 - I T Italy

Corte Suprema di Cassazione (Italian supreme court), joint civil divisions, order No. 14508 dated 10 June 2013

Full Text (translation)




composed of:

F. Trifone

President of the chamber:
R. Rordorf

F. Forte, E. Bucciante, A. Ianniello, A. Spirito, G. Travaglino, S. Petitti

Judge Rapporteur:
P. D'Alessandro

gives the following:


on Appeal No. 10332/2011 brought by:

THE GENERAL HOSPITAL CORPORATION (MASSACHUSETTS GENERAL HOSPITAL), PALOMAR MEDICAL TECHNOLOGIES INC., in the person of the respective legal representatives pro tempore, with an address for service in ROME, VIA DELLE QUATTRO FONTANE 15, at the chamber of C. SCAPICCHIO and M. STERPI, who represent the appellants along with F. JACOBACCI, A. CAMUSSO, by virtue of the Special Power of Attorney already filed;

  • Appellants -


ASCLEPION LASER TECHNOLOGIES GMBH, in the person of its legal representative pro tempore, with an address for service in ROME, VIA GUIDO D'AREZZO 2, at the chamber of A. NESPEGA, who represents the respondent along with M. TRAVERSO, by virtue of the Power of Attorney in the margin of the counter-appeal;

  • Respondent -

on the preliminary issue of jurisdiction concerning case No. 55747/2010 pending before the Tribunale di Roma;

after hearing the lawyers M. FRANCETTI on behalf of C. Scapicchio, M. TRAVERSO;

having regard to the report of the hearing in chambers on 28 May 2013 presented by P. D'ALESSANDRO;

after reading the written Opinion of the Sostituto Procuratore Generale I. PATRONE, who requests the Court, on a preliminary basis, to declare the appeal inadmissible on the grounds of infringement of Article 366 of the Code of Civil Procedure; in the alternative, to uphold the appeal by declaring that the Italian Courts lack jurisdiction.

Proceedings - grounds

Considering that the US companies Palomar Medical Technologies Inc. and The General Hospital Corporation file a request for an order on the preliminary issue of jurisdiction by stating:

that an action for negative declaration was brought against them by the German company Asclepion Laser Technologies GmbH before the Tribunale di Roma as regards the counterfeiting of industrial products covered by a European patent, of which the second company is the proprietor and the first one the exclusive licensee;

that they challenged the Italian jurisdiction in due time on the ground that the action was brought by a foreign company against two other foreign companies which are not located in Italy, and do not even have a secondary establishment there;

that they consider Article 3 of Law No.218/1995 applicable to the present case and therefore, by virtue of the express reference provided for in the Law, the Brussels Convention of 27 September 1968 and, now, Council Regulation (EC) No 44/2001, whose Article 5(3) does not provide any linking factor between the case at issue and the Italian courts, which, according to the appellants, has neither been indicated or proved by the applicant;

that in view of the above, the appellants request the Corte di Cassazione to declare the lack of jurisdiction of the Italian courts;

that the German company, applicant in the main proceedings, lodged a counter-appeal;

that, on the assumption that the law applicable to the present case is Article 5(3) of Council Regulation (EC) No. 44/2001, the respondent considers that the Italian courts have jurisdiction with regard to both the "Italian fractions" and "German fractions" of the European patents claimed by the appellants;

that the appellants submitted observations for the hearing initially fixed on 28 February 2012 (and subsequently cancelled) for the acquisition of the report of the Ufficio del Massimario by means of a decision of the Primo Presidente Aggiunto dated 21 February 2012;

that the parties also submitted observations for the hearing of 28 May;

that the Procuratore Generale requested the Court to declare the appeal inadmissible pursuant to Article 366 of the Code of Civil Procedure or, in the alternative, to uphold the appeal.

Considering that the objection of inadmissibility of the appeal raised by the Procuratore Generale must be rejected in so far as the appeal provides a concise summary of the facts of the case (and not of the ancillary acts) which is sufficient to determine its subject-matter;

that, on the merits, Article 3 of Law No. 218/1995 refers to the Brussels Convention, as subsequently amended, in force in Italy, also in the case where the defendant is not established in a Contracting State and thus considers the rule of the agreement as the criterion of Italian private international law to be adopted in order to determine the jurisdiction;

that it is not relevant here to assess whether the Brussels Convention or the following Regulation (EC) No 44/2001 applies (as both parties seem to believe), since the rule applicable to this case (Article 5(3) of both the Convention and the Regulation), according to which in matters relating to tort the jurisdiction belongs also to the courts for the place where the harmful event occurred, is identical in both texts;

that, therefore, the appellants' argument that Italian courts lack jurisdiction only because the appellants are not located in Italy must be rejected as unfounded;

that the Court of Justice of the European Union, in the recent judgment of 25 October 2012 (case C-133/11), under the preliminary ruling procedure concerning the interpretation of Article 5(3) of the Regulation, ruled that the mentioned Article must be interpreted "as meaning that an action for a negative declaration seeking to establish the absence of liability in tort, delict, or quasi-delict falls within the scope of that provision";

that, therefore, in relation to the request for a negative declaration submitted by Asclepion to the Tribunale di Roma, the jurisdiction of the Italian courts as the court for the place where the harmful event may occur is confirmed; such jurisdiction is to be considered extended to the "German fraction" of the European patent;

that it is for the court of first instance to decide on the costs of these proceedings.

On those grounds

The Joint Divisions of the Court, on hearing the appeal, declare that the Italian courts have jurisdiction, and shall also decide on the costs.

So decided in Rome by the Joint Civil Divisions sitting in chambers, on 28 May 2013.

Deposited in Registry on 10 June 2013.