ECJ to uphold cross-border injunctions in preliminary proceedings? - International Law Office

Article 22(4) of the Brussels Regulation provides for exclusive national jurisdiction regarding the validity of patents and other registered rights. In its GAT/LuK(1) decision the European Court of Justice (ECJ) held that the article applies to all proceedings relating to the validity of a patent, irrespective of whether the issue is raised by way of an action or a plea in defence.(2) In cross-border infringement suits the defendant invariably defends by claiming that the relevant parts of the European bundle patent are invalid. In light of the GAT decision, this defence may not be treated by the infringement court, resulting in either a denial of the claim for cross-border injunctive relief or a stay in proceedings pending foreign invalidity litigation.(3)

In Bettacare(4) the District Court of The Hague considered that the GAT decision had deprived it of its power in main proceedings, but that it retained the power to grant cross-border injunctions notwithstanding a nullity defence in preliminary proceedings, as long as the defendant was domiciled in the Netherlands. Notwithstanding the Bettacare decision, preliminay measures judges in the district courts rarely uses their cross-border powers in preliminary injunction proceedings and the debate about the legitimacy of relevant powers continues.

In its December 22 2010 decision in Solvay/Honeywell, the district court seized the opportunity to refer several questions on the interpretation of Article 22(4) (and of Articles 6(1) and 31) of the Brussels Regulation to the ECJ. One of those questions was whether the GAT decision also applies in provisional (ie, preliminary) proceedings.(5)

In Berliner Verkehrsbetriebe/JP Morgan(6) the ECJ held that the GAT decision does not apply when the validity of a decision by an organ of a legal entity is challenged in defence. The scope of the GAT decision is limited to the facts underlying that decision. According to the court, in particular during the course of a patent infringement dispute, the validity of the relevant patent is an essential premise. Therefore, it is in the interest of due process to allow the registration state courts have an exclusive say in any dispute where the validity of a patent is at issue, because those courts are best placed to take cognizance of such matters.

In a trademark case(7) the Court of Appeal of The Hague first held that Article 22(4) of the Brussels Regulation and the GAT decision equally apply to trademark matters. There is nothing to suggest that it was aware of the Berliner Verkehrsbetriebe decision when it rendered its decision. The court subsequently held that Dutch courts have cross-border jurisdiction against Dutch domiciled defendants, and that they can exercise that jurisdiction in provisional proceedings notwithstanding a foreign invalidity defence, until such time that the ECJ in the pending Solvay case holds otherwise.

Based on the authority of this appeal decision, the preliminary measures judge of the District Court of The Hague, in a kort geding decision (a kort geding ruling is of a strictly preliminary nature and has no bearing on full proceedings) in the Apple/Samsung matter,(8) granted a cross-border preliminary injunction against the three Dutch Samsung defendants based on the relevant parts of an Apple European bundle patent.

On November 30 2011 the Solvay case was pleaded in Luxembourg before a five-member panel. The advocate general's opinion is expected on March 1 2012. A decision may then be expected from the ECJ in the summer of 2012.

Until and unless the ECJ decides otherwise in the Solvay case, patentees and trademark holders can obtain cross-border injunctions against Dutch defendants in The Hague in preliminary proceedings notwithstanding a foreign nullity defence (whether those proceedings be part of merit proceedings or be kort geding proceedings). A decision in the Solvay case may be expected – but is not certain to be rendered – in the summer of 2012.

For further information on this topic please contact Richard E Ebbink at Brinkhof by telephone (+31 20 30 53 221), fax (+31 20 30 53 201) or email (richard.ebbink@brinkhof.com).

Endnotes

(1) July 2006.

(2) C-4/03.

(3) It should be noted that the GAT decision did not eliminate the practice of granting cross-border relief as this had developed before the courts of The Hague.

(4) September 2006, H3.

(5) The case is pending before the ECJ under case number C-616/10.

(6) C-144/10, May 12 2011.

(7) Yellow Page/Yell, July 15 2011.

(8) August 24 2011.