As interpreted by Advocate General Cruz Villalón in his opinion of 29 March 2012, Council Regulation 44/2001 on the jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (the “Brussels I Regulation”) does not preclude cross-border injunctions in patent cases in specific “nuanced” circumstances.
The Advocate General issued his opinion in case C-616/10 pitting Solvay against three Honeywell companies. Solvay had filed an action for infringement of national parts of its European patent by two Belgian entities and one Dutch entity of the Honeywell Group (“Honeywell”) before the District Court of The Hague. In the course of the proceedings, Solvay brought an action before the same court seeking an interim cross-border injunction pending the duration of the proceedings on the merits of the case.
Honeywell contested the Court’s competence to hear the claims, thereby dismissing Solvay’s argument that all infringements should be dealt with by the District Court in order to avoid irreconcilable judgments between the courts of various members of the Brussels I Regulation. In light of the conflicting views on its competence to hear the case, the District Court sought a preliminary ruling from the Court of Justice of the European Union (“ECJ”) on the interpretation of Article 6 (1), Article 22 (4) and Article 31 of the Brussels I Regulation.
Article 6 (1) of the Brussels I Regulation provides that defendants domiciled in different Member States may be sued in one of the Member States when the claims are closely connected in order to prevent irreconcilable judgments. In cases C-4/03, GAT v. Luk, and C-539/03, Roche v. Primus, the ECJ had earlier ruled that Article 6 (1) does not apply to actions for infringement of national patents based on the same European patent. Advocate General Cruz Villalón qualified this decision stating that cross-border claims can be brought on the basis of Article 6 (1) against companies established in different Member States when the actions relate separately to acts carried out in the same Member State and infringing the same national part of a European patent governed by the same law.
Moreover, the Advocate General is of the opinion that Article 22 (4) of the Brussels I Regulation does not necessarily preclude the jurisdiction of the Dutch court in the case at hand. Article 22 (4) of the Brussels I Regulation provides that the courts of the Member State of registration have exclusive jurisdiction for dealing with validity claims of intellectual property rights. According to the Advocate General, this provision does not apply when the invalidity of a patent is raised in interim proceedings, provided that such proceedings are not likely to have a final effect. In most cases, the judge presiding over interim proceedings will only express a preliminary view on the validity issue. As a result, it should not be excluded that preliminary proceedings could be brought before the Dutch court although Solvay also relied on the national part of its European patent registered in Belgium.
In addition, the referring court sought preliminary guidance on Article 31 of the Brussels I Regulation which provides for overriding extraterritorial jurisdiction of national courts to impose provisional measures. The possible jurisdiction based on this provision would only be relevant in the case at hand if the ECJ were to hold that the Dutch court does not have jurisdiction based on its interpretation of Articles 6(1) and 22 (4) of the Brussels I Regulation. In that case, the Advocate General explained that Article 31 of the Brussels I Regulation means that a national court can only authorise provisional measures that produce effects in the territory of the court addressed.
The Advocate General’s opinion advocates a more nuanced position with regard to cross-border injunctions compared to the ECJ position in GAT v. Luk and Roche v. Primus. This would give more flexibility to national courts to impose preliminary measures on the basis of foreign intellectual property rights.
