PAN-EUROPEAN INJUNCTIONS FOR ENFORCEMENT OF I.P.-RIGHTS

Contribution for NYSBA IP Section

Fall Meeting

New York, September 15, 2012

TJEERD F.W. OVERDIJKAttorney-at-Law

Vondst Advocaten

Outline

Introduction – the basics; Various fundaments for jurisdiction:

Brussels Regime; National procedural laws; Community Regulations for regional unitary rights;

Case law leading the way; Conclusions.

Various fundaments for jurisdiction (1)

National rights (including ‘bundle rights’) EEX Regulation 44/2001 (Brussels Regime): Lugano Convention -> IS, NO, CH

National Codes on Civil Procedure

Community and regional unitary rights (CTM, RCD, CPVR): Applicable EU Regulations

Various fundaments for jurisdiction (2) – Unitary Community Rights

CTM Reg: articles 92 et seq. CD Reg: articles 82 et seq. CPVR Reg: article 101 para 2

Para 1: place of domicile or establishment; Para 2: domicile of plaintiff; Para 3: seat of Office; Para 4: agreement designating one court; Para 5: place of infringement.

Various fundaments for jurisdiction (3) – landmark national cases (NL)

SC 1989: Lincoln v Interlas: No limitation on cross-border obligations – even if

under foreign laws;

SC 2004: Philips v Postech & Princo: Competence rules also apply to injunctive actions; In case jurisdiction is based on Brussels Regime

(Reg 44/2001): ‘jurisdiction with restraint’ In case Brussels Regime does not apply: no

restraints by way of analogous application.

Brussels Regime (1)

Brussels I Regulation 44/2001: Art. 2 – Courts in member state of domicile of

defendant; Art. 4 - preserves the ‘traditional’ rules for

defendants who are not domiciled in a member state + application of ‘exorbitant bases’: e.g. courts in member state of domicile of plaintiff;

Art. 5 – Place of contracts or torts (etc.); Art. 6 – Multiple defendants & expedience to hear

claims together because of close connection.

Brussels Regime (2)

Brussels I Regulation 44/2001 – other relevant provisions: Art. 22 (4) – exclusive jurisdiction, regardless of

domicile, in proceedings concerning registration or validity of national rights for courts of the MS in which deposit or registration has been applied for;

Art. 31 - Applications to the courts of a MS for such provisional, including protective, measures as may be available in that State, even if courts of another MS have jurisdiction as to the substance of the matter.

Brussels Regime (3) – Scope of Art. 22 (4)?

CJEU July 13, 2006, C-4/03 (GAT v LuK): Art. 22 (4) – the rule of exclusive jurisdiction concerns all

proceedings relating to the registration or validity of a patent, irrespective of whether the issue is raised by way of an action or a plea in objection

Dutch courts: GAT v LuK does not prevent cross-border rulings in P.I.

proceedings or claims for a provisional restraining order; CJEU July 12, 2012, C-616/10 (Solvay):

In case the court only evaluates the chances of nullity arguments in the main action and makes no final decision on validity, there is no risk of irreconcilable decisions.

Art. 22 (4) does not always preclude the application of Art. 31.

Jurisdiction for Unitary Community Rights

Unitary character may lead to all-or-nothing decisions;

This risk calls for nuanced approach; Court needs to look at both:

Territorial competence; Territorial scope of the right;

Pan-European scope can be limited in light of: Limitation by plaintiff; ‘Scope’ of infringement;

ECJ 04-12-11 DHL v Chronopost

“Web Shipping” for processing

express deliveries; As a rule injunction should

be pan-EU; Exception in case no prejudice

to essential functions of tm;

Example 1

P has EP in 7 EU MS: NL, DE, AT, UK, FR, IT, ES;

D1 (NL) infringes in NL, DE, AT, UK; D2 (FR) infringes in FR; D3 (ES) infringes in IT, ES; Ds are all unrelated; P sues all Defs in NL with claim for

infringement in their respective territories; Will Dutch court assume jurisdiction?

Example 2

P has EP in 7 EU MS: NL, DE, AT, UK, FR, IT, ES;

D1 infringes in NL, DE, AT, UK; D2 infringes in FR; D3 infringes in IT, ES;

All Ds are part of the same group of co’s; P sues all Defs in NL; CJEU C-539/03 (Roche v. Primus): article 6 BR does

not provide basis for jurisdiction against different defendants in several countries who infringe the same basic patent – no close connection, not even when defendants are related to each other or in case of spider in web.

Example 3

P has EP in 7 EU MS: NL, DE, AT, UK, FR, IT, ES;

D1 (NL) and D2 (BE) infringe in all 7 designated states;

P sues both Defs in NL – o.k.? CJEU 07-12-12, C-616/10 (Solvay v. Honeywell): article 6 BR does provide basis for jurisdiction

against different defendants in several countries if they are each separately accused of infringing the same national part of a European patent with the same products.

Example 4

P has RCD for shape

of SatNav equipment; Claim for declaratory judgment

re nullity RCD is Pan-EU; Counterclaim for infringement:

by UK Def = limited to NL; by non-EU Defs = Pan-EU.

Conclusions

Pan-EU injunctions are possible for all I.P. rights, whether bundle or community rights – under certain conditions;

Community level I.P.-rights are generally a good basis for Pan-EU enforcement actions;

Sometimes restrictions apply, also for Community I.P.-rights;

Brussels Regime provides for limited options to initiate Pan-EU enforcement actions;

Rules concerning exclusive jurisdiction not always exclude provisional cross-border measures.

Questions?

Contact details:

tjeerd.overdijk@vondst-law.com

+31(0)20 504 2000