UK: Cross-border Injunctions : An Update

Last Updated: 20 July 2004
Article by Bart J. Van Den Broek


More often than not, infringement of intellectual property rights takes place in several countries at the same time. If the intellectual property holder wants to end the infringement, in principle, he has to start separate proceedings in the various countries where the infringement occurs. This may be a cumbersome operation.

Already in the 1980s, the Dutch courts recognized this problem and worked towards finding a solution: after establishing that the intellectual property rights were being infringed (according to the respective laws of the countries concerned) the Dutch court would issue an injunction, not only covering the Dutch territory, but also the territories outside The Netherlands. These so-called cross-border injunctions made it possible for the IP owner to fight the infringer in one court only, instead of having to chase him throughout Europe and beyond.

At first, cross-border injunctions were mainly granted in trade mark and copyright cases. In fact, the first decision in which the Dutch Supreme Court acknowledged the possibility of cross-border relief related to trade mark infringement in the Benelux (Interlas/Lincoln; Supreme Court, November 24, 1989). Thereafter cross-border relief slowly entered the domain of patent law.


After the landmark-decision in Interlas/Lincoln, in the early 1990s cross-border injunctions were first awarded in disputes between Dutch parties who were competing on foreign markets. Gradually, however, the courts showed willingness to extend their powers and even in the absence of strong links to The Netherlands the District Court in The Hague found that it had jurisdiction over Dutch and foreign defendants to issue cross-border relief. The first of these cases involved a dispute between a US company, Cordis Corporation, and a Swiss company, Schneider, member of the US based Pfizer Group. The second concerned a dispute between two US companies, S.R. Bard Inc. and Advanced Cardiovascular Systems Inc. After these cases a number of similar cases followed.

In all these cases, the plaintiff sued the competitor’s Dutch distributor, along with the foreign competitor itself and its distributors in the other designated countries. The plaintiff then asked for a cross-border injunction against all defendants. The District Court held that it had cross-border jurisdiction with respect to the different defendants on the following grounds:

With respect to the Dutch defendant(s), the District Court derived jurisdiction from article 2 of the Brussels convention (as of March 1, 2002: Regulation 44/2001) or the Lugano convention. This article stipulates that the court of the country of domicile of the defendant has jurisdiction.

With respect to the European defendants, the District Court derived jurisdiction from article 6 (1) of the Brussels or Lugano conventions. This article provides that when there are several defendants, all of them may be sued before the courts of the country of residence of one of them. In the case of Kalfelis/Schröder (ECJ case 189/87), the European Court of Justice has held that article 6 (1) is only applicable when there is such a connection between the claims against the various defendants that a joint treatment is justified to avoid irreconcilable decisions were the cases to be treated separately. The District Court considered such a connection to exist when the allegedly infringing products are the same in all designated countries and the patents invoked stem from the same European patent. According to the District Court the scope of protection of a European patent should be determined in a uniform manner under article 69 of the European Patent Convention and its protocol, which makes joint treatment desirable and justified; irreconcilable decisions should thus be avoided.

Finally, with respect to the non-European defendants, the District Court derived jurisdiction from article 126 par. 7 of the Dutch Code of Civil Procedure. The text and interpretation of this article is similar to article 6 (1) Brussels and Lugano conventions.

After some time, a storm of criticism against the "crazy Dutch" who ruled Europe from a court room in The Hague, was beginning to gather in various parts of Europe. This resulted in a more limited interpretation of the Brussels and Lugano conventions.


In the second half of 1998 the Court of Appeal in The Hague rendered a decision in the case of Expandable Grafts Partnership et al/Boston Scientific et al (April 23, 1998). Unlike the District Court in its earlier decisions, in that case – and the cases that followed – the Court of Appeal decided that there is not a sufficient connection within the meaning of Kalfelis/Schröder when the claims against the Dutch defendant are based on alleged infringement of the "Dutch" European patent and the claims against the foreign defendants are based on alleged infringement of the foreign European patents out of that European bundle. In principle, therefore, the Court does not accept jurisdiction on the basis of article 6 (1) of the Brussels convention (or Regulation 44/2001) or the Lugano convention. The Court of Appeal accepts one exception to this rule: cross-border jurisdiction may be derived from article 6 (1) if the foreign defendants belong to the same group of companies as the Dutch defendant(s) and the European head office ("the spider in the web") is located in The Netherlands. In that case the acts are considered as one joint action based on one joint strategy which originates in The Netherlands and cross-border jurisdiction is also accepted with respect to the foreign defendants. With respect to Dutch defendants cross-border jurisdiction is also accepted without a "spider" in The Netherlands.

In view of the importance of this issue and the sharp (and questionable) departure from past practice, it would have been preferable for the Court of Appeal to have referred questions on the interpretation of the relevant provisions of the Brussels convention to the European Court of Justice. In the final analysis, only the European Court of Justice can harmonize the law on this point. Perhaps the Court considered this unnecessary in view of the questions, which at that time had already been posed to the European Court of Justice by the UK Court of Appeal in Fort Dodge Animal Health et al/Akzo Nobel (and thereafter in Cordis/Boston Scientific). However, both cases were settled before the European Court of Justice could render a decision and the questions were never answered.


Recently the European Court of Justice has been given a new chance to shed its light on this issue. On December 19, 2003 the Dutch Supreme Court in the case Roche/Primus et al referred the following preliminary questions to the European Court of Justice:

A. Does a connection exist as required for the applicability of article 6 (1) Brussels Convention between the claims for patent infringement, which a holder of a European patent has instituted against a defendant established in the country of the solicited court on the one hand and against different defendants, located in other Member States than the country of the solicited court on the other hand, whom the patentee accuses of infringing the patent in one or more different Member States?

B. In the event that the answer to question A is not or not immediately affirmative, under which circumstances is such a connection present, and is it, for example, of importance

  • whether the defendants belong to the same group of companies?
  • whether the defendants jointly act on the basis of a joint strategy and if so, whether the place where this strategy originates is important?

With these questions, the Supreme Court has asked the European Court of Justice’s opinion both on the broader interpretation of the Brussels convention followed in the early 1990s (Question A) and with respect to the spider-in-the-web approach developed by the Court of Appeal (Question B). It will be very interesting to see how the European Court of Justice will resolve this issue.


Until the European Court of Justice has rendered its decision, the spider-in-the-web approach is likely to be followed. It is noted in this respect that on several occasions the District Court and the Court of Appeal have refused to grant cross-border injunctions in preliminary injunction proceedings (kort geding), even if jurisdiction exists "in view of the far-reaching consequences of cross-border injunctions" (see e.g. Medinol/Cordis; Court of Appeal, July 3, 2003). It remains to be seen, however, whether this practice can be upheld. In a very recent decision in the case Philips/Princo (March 19, 2004), the Supreme Court has decided that if the Court has jurisdiction with respect to a (non-European) foreign defendant, it should in principle issue a cross-border injunction if infringement abroad has been established. According to the Supreme Court this also applies in preliminary injunction proceedings and irrespective on which ground the Dutch Court has jurisdiction. Although the Supreme Court did not follow the same reasoning with respect to a foreign European-based defendant, there does not seem to be a convincing justification to decline cross-border relief against these defendants in preliminary injunction proceedings if the "spider in the web" is located in The Netherlands and the court has jurisdiction pursuant thereto.

Prof. Willem Hoyng of Howrey’s Amsterdam office represented Primus et al and Koninklijke Philips Electronics N.V. before the Supreme Court in the cases Roche/Primus et al and Philips/Princo.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.