European courts have taken different approaches to cross-border injunctions in patent cases for many years, despite the harmonising jurisdictional influence of the Brussels and Lugano Conventions and Regulation 1215/2012 (the Brussels I bis Regulation). While Dutch courts have been quick to grant cross-border injunctions, at least in certain situations, other EU member state courts have been far more reluctant to do so.
The upcoming ECJ decision in BSH v Electrolux (C‑339/22) will likely provide a new framework for cross-border injunctions in European patent infringement cases. This may spark more competition between patent courts in the EU, particularly if national EU member state courts are given greater freedom to grant cross-border remedies in the face of validity challenges, reducing the advantages of the Unified Patent Court (UPC).
1. Cross border injunctions against defendants domiciled in the same country as the court?
Patents are territorial rights. The idea of a Swedish court deciding over an Italian, Spanish or even Turkish patent and issuing an injunction in case these ‘foreign’ patents are infringed raises eyebrows for many as a matter of international law and comity. That is, however, exactly what BSH asked of a Swedish court in its case against Sweden-based company Electrolux. The Swedish court has asked the ECJ, Europe’s highest court, to clarify when it can rule over said foreign patents under the Brussels I bis Regulation. If the ECJ follows the non-binding opinions of Advocate General Emiliou, the decision could well make cross-border remedies available more broadly in European patent litigation.
Art. 4(1) Brussels I bis Regulation provides that defendants domiciled in an EU member state can always be sued in courts of that member state. That also applies for patent infringement actions. In addition, Art. 7(2) Brussels I bis Regulation opens up the possibility of suing a company seated in the EU in the courts of the country where the patent infringement occurs.
However, Art. 24(4) Brussels I bis Regulation grants exclusive jurisdiction over a patent’s validity to the courts of the member states in which the patent is registered. That seems common sense: whether a patent was rightfully granted should be up to the courts of the country where the patent was granted or validated. But to what extent does Art. 24(4) Brussels I bis Regulation force EU member state courts to dismiss infringement suits concerning the foreign patents for lack of jurisdiction once the defendant claims these foreign patents are invalid?
Advocate General Emiliou concluded that should not be the case, proposing to construe Art. 24(4) Brussels I bis Regulation in a narrow sense and effectively overturn the previous ECJ decision in GAT (C-4/03). If the ECJ agrees, this will pave the way for EU member state courts to issue cross-border injunctions against defendants domiciled in the same member state as the court. According to the Advocate General, a broader understanding of Art. 24(4) Brussels I bis Regulation undermines the predictability and legal certainty that the Regulation sought to create and at the same time deprives patent holders of effective measures to stop patent infringement which in many cases will not halt at the border. However, the Advocate General also points out that the right to a fair defence would require member state courts to consider staying the infringement proceedings until the foreign patent’s validity has been decided; at least if “that [validity] challenge has a genuine prospect of success”. If that is also followed, the right may be limited to cases where the attack on validity is a mere sham. However, if this effectively forces a defendant to challenge each and every asserted foreign patent in its respective country of registration, this will significantly increase the cost of litigation which will be particularly troublesome for SMEs.
In any event, the problem identified by the Advocate General appears already to have been solved. Creating a pan-European patent court to obtain effective patent protection in many European countries through one joint litigation was the very purpose of creating the UPC. Indeed, unlike EU member state courts, the UPC is also competent to rule on the validity of European patents in all UPC member states. That removes the concerns relating to right to a fair defence and the need for a stay save in cases of sham validity defences.
2. Cross-border injunctions even against foreign defendants?
What Advocate General Emiliou did not address (and did not have to address) is whether cross-border injunctions should also be available against defendants domiciled in other countries, as long as the case features a so-called ‘anchor defendant’ domiciled in the respective EU member state the court is located in which is alleged to infringe. That could be attempted simply by suing the anchor defendant alone, or potentially together with defendants domiciled in EU member states seeking to rely on Art. 8 No. 1 Brussels I bis Regulation.
Critics of this practice will claim that the ECJ already decided in Roche Nederland BV v. Primus and Goldberg (C-539/03) that cross-border injunctions against a number of defendants domiciled in different EU member states based on one anchor defendant should not be possible based on Art. 8(1) Brussels I bis Regulation. It remains to be seen whether the ECJ decision in BSH v Electrolux will also consider and potentially shed further light on such litigation. Once again, the courts in the Netherlands have been frontrunners in that context of cross-border remedies, claiming jurisdiction against different defendants domiciled in the EU at least in preliminary injunction proceedings based on an anchor defendant in the Netherlands if there is a connecting element, seeking to rely on the ECJ decision in Solvay v Honeywell (C‑616/10).
3. Long-arm jurisdiction beyond EU member states
What about patent infringement outside the EU, whether in other member states of the European Patent Convention (such as the UK, Turkey or Switzerland) or further afield (the United States, China, Japan or Korea)? As Article 24(4) Brussels I bis Regulation is on its face limited to EU member states, is injunction relief available regardless of validity? That would even raise more eyebrows in light of international comity and the fact that those countries never agreed to the harmonised framework of the Brussels I bis Regulation.
Should the ECJ follow the Advocate General, EU courts could have jurisdiction here as well but would have to respect international law by giving so-called “reflexive effect” to Article 24(4) Brussels I bis Regulation – essentially applying it to those countries too. It is less clear from the Advocate General’s opinions whether the same standard should be taken to validity defences as within the EU, or whether the courts should consider them more carefully but only “inter partes”. Hopefully the judgment of the ECJ will clarify this important issue.
Looking at the UPC, one Local Division of the UPC took the first step in exercising such long-arm jurisdiction over the UK-part of a European patent in Kodak v Fuji, although it did not need to consider the further issues as it granted no relief in light of its view was that the German designation of the patent was invalid and there was no reason to think the UK designation would be different (LD Düsseldorf, UPC_CFI_355/2023). However, another Local Division indicated a preference to stay the whole issue pending the outcome in the BSH case (LD Mannheim, UPC_CFI_365/2023).
Watch this space for an update after 25 February 2025.