On 12 July 2012, the Court of Justice of the European Union (“ECJ”) confirmed the admissibility of interim cross-border injunctions in patent disputes under limited conditions. It did so in a preliminary ruling clarifying the provisions of Council Regulation 44/2001 on the jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (the “Brussels I Regulation”).
The case before the ECJ pitted Solvay against two Belgian entities and one Dutch entity of the Honeywell Group (“Honeywell”). Solvay had initiated infringement proceedings against Honeywell before the District Court of The Hague claiming that Honeywell had infringed national parts of Solvay’s European patent. Solvay sought to obtain an interim injunction with cross-border effect until a decision on the merits of the case was taken. In its defence, Honeywell, counterclaimed that the respective national parts of Solvay’s European patent were invalid.
In these circumstances, the District Court sought a preliminary ruling from the ECJ on the interpretation of Article 6 (1), Article 22 (4) and Article 31 of the Brussels I Regulation. The ECJ followed the reasoning of its Advocate General (See, VBB on Belgian Business Law, Volume 2012, No. 4, pp. 6-7, available at www.vbb.com) thereby opening the door for cross-border injunctions that some thought it had closed in earlier case law (See, cases C-4/03, GAT v. Luk and C-539/03, Roche v. Primus).
The first question before the ECJ related to Article 6 (1) of the Brussels I Regulation, which states 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. The ECJ ruled that irreconcilable judgments are likely to result when separate proceedings are carried against defendants from different Member States that are separately accused of an infringement of the same national part(s) of a European patent in the same countries. In such cases, it would be allowed to bring infringement proceedings in one court.
The second question deals with reconciling Articles 22 (4) and 31 of the Brussels I Regulation. Under Article 22 (4) the courts of the Member State of registration have exclusive jurisdiction over validity claims of (national) intellectual property rights. By contrast, Article 31 of the Brussels I Regulation provides for overriding extraterritorial jurisdiction of the national courts seized to impose provisional measures. Under this provision, the court can impose the measures available under the law of the State in which the court is located. Pursuant to Dutch law, the court can impose cross-border injunctions.
Again, the ECJ followed the opinion of the Advocate General holding that the scope of Article 22 (4) of the Brussels I Regulation does not affect the application of Article 31 of this Regulation. According to the ECJ, there is no risk of conflicting decisions when a national court deals with the prima facie invalidity of a patent in interim proceedings, provided that such proceedings do not have a final effect on the merits of the case which will be decided upon by the national court of registration.
