UK: Cross-Border Injunctions. Where Are We And Where Should We Go?

Last Updated: 29 June 2005
Article by William Hoyng

It is now 20 years ago that I argued for the first time in Monsanto v DSM that a Dutch Court could grant an injunction, which later became known as a cross-border (the better name) or pan-European injunction.

Many other countries of the EU, including Germany, France and Italy, have now accepted the view that Article 2 of the Brussels Convention (EEX) (now Regulation 44/2004) and Article 2 of the Lugano Convention (EVEX) give a national court jurisdiction over a defendant established in the territory of that court and the ability to deal with infringements of patents by that defendant in other EU or EVEX countries.

In Primus v Roche, the District Court of The Hague and then the Court of Appeal held the following (as summarized by the Dutch Supreme Court in its decision of 19 December 2003):

"- Based on the text of Article 6(1) EEX, Article 6(1) EVEX and Article 126 of the former Dutch Code of Civil Procedure, the District Court had jurisdiction to hear the claims against the Roche companies that were also summoned. . . .

- With reference to the decision of the ECJ of 27 September 1988, no. 189/87. . . . those companies have alleged that a proper administration of justice does not require simultaneous handling and adjudication in order to prevent irreconcilable decisions from being rendered in case of separate adjudication. As an explanation they asserted that a separate patent applies in each country. This argument cuts no ice. Pursuant to Article 69 EPC, the patent must be interpreted in the same manner in all affiliated countries. Inconsistent with this would be if in one country one would hold infringement and not in another country. Moreover, all the Roche companies are part of the same group of companies, which emphasizes the connection between the claims....

- In paragraphs 11 and 12 of the Decision of 27 September 1988, the European Court of Justice drew a connection with the term ‘related claims’ in Article 22 EEX. In a decision regarding Article 22 EEX, the Court of Justice found that:

‘To ensure a proper administration of justice, this interpretation must be broad and encompass all instances in which there is a danger of conflicting decisions, even if the decisions may be enforced separately and the legal consequences are not mutually exclusive.’

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.

As the Court of Justice in that case found that there was sufficient connection, it is not clear why the present claims, which pertain to asserted infringements of different but identically worded European patents, would not be sufficiently connected to justify invoking Article 6(1) EEX."

Another important article is Article 16(4) E(V)EX (Article 22(4) of EEX) which reads as follows:

"16. The following courts shall have exclusive jurisdiction, regardless of domicile: . . .

(4) in proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered, the courts of the Contracting State in which the deposit or registration has been applied for, has taken place or is under the terms of an international convention deemed to have taken place".

Article 16(4) E(V)EX in conjunction with Article 19 did lead the UK Courts to the conclusion that in cross-border patent infringement cases, the Court should decline jurisdiction as soon as the invalidity of the patent is raised as a defence (re Coin Controls v Suzo). Article 19 provides that a court should decline jurisdiction in relation to claims which are "principally concerned with a matter over which the courts of another Contracting State have exclusive jurisdiction by virtue of Article 16".

This view has not been followed by other countries.

From the above it becomes clear that there is still a lot of uncertainty and disunity in Europe in respect of the cross-border injunction. However, after 20 years, the ECJ will now finally determine if and under what circumstances cross-border injunctions are possible, as two relevant cases are pending before the ECJ. These cases are GAT v LUK (C-4/03), in which Advocate General Geelhoed issued an opinion on 16 September 2004, and Primus v Roche (C-539/03), which was argued on 27 January 2005.


GAT (a German company) requested the German Oberlandesgericht in Düsseldorf to rule that it was not infringing a French patent owned by the German company LUK.

The question that is to be answered by the ECJ is whether or not the German Court has to refuse jurisdiction on the basis of Article 16(4) EEX. In his opinion, Advocate General Geelhoed mentions three possible interpretations of Article 16(4):

    1. Article 16(4) only applies if the principal issue of the claim concerns the validity of the patents;
    2. Article 16(4) applies to invalidity and infringement (the UK view expressed above); or
    3. Article 16(4) applies only on invalidity. The other issues such as infringement fall outside the scope of Article 16(4).

Unfortunately the Advocate General, although admitting that the first interpretation is compatible with the strictly grammatical interpretation of Article 16(4), opts for the third possibility. The Advocate General declines to accept the first interpretation because "it would allow the plaintiff in a civil action to circumvent the mandatory choice of jurisdiction intended by Article 16(4)".

This motivation, however, is not convincing. In my opinion, there is a difference between Article 16(1) and Article 16(4). It may be correct for Article 16(1) (dealing with real property) that the court of the Member State where the real property is located of its proximity, is most able to obtain knowledge of the factual situation and to apply the rules and customs in effect on the subject". However, this of course does not apply to Article 16(4), which deals with registered intellectual property rights. It is clear that such property is not in the vicinity of the Court and cannot be visited; nor do local customs exist. The national rules on invalidity are fully comparable to the national rules on infringement. In the EU Member States, both are the same due to the harmonizing effect of, inter alia, the European Patent Convention and the Treaty of Strasburg and due to the harmonization obligation which followed from the Community Patent Convention, which never came into force but nevertheless effected an almost total harmonization of the rules on infringement and invalidity.

This is supported by the fact that Article 16(4) is not applicable to intellectual property rights that are not registered, such as copyright, unregistered design right and database rights.

So what then is the objective for the existence of Article 16(4)?

The Oberlandesgericht stated the following: The granting of a patent is a sovereign act. A patent, just as the other intellectual property rights envisaged by Article 16(4), is obtained by an act (the registration) by the national authority. It is undesirable (and one could say impossible) that a foreign judge (who has not been given the power to do so by that national authority) can undo such an act of a national authority. One could say it in a different way: a judge should not interfere with the sovereignty of another country.

Let us look at the solutions suggested by the Advocate General as to the claim for infringement. The Advocate General states three possibilities:

    1. The court can transfer all or part of the case. My question then is: how can a court under EEX transfer a case if no case is pending in another country? Why and on what basis should the national judge also refer the infringement part to these different jurisdictions? One would then be back at a de facto interpretation of Article 16(4) which the Advocate General himself rightly considers as clearly contrary to the EEX. Finally, the Advocate General did apparently not realize that in a number of countries (e.g. Germany, Austria) infringement and invalidity is handled by different courts.
    2. The court would suspend the proceedings until the national courts have decided on validity. One would assume that this also requires that the defendant has (very expensively) filed a claim for invalidity in each jurisdiction. Otherwise, a suspension seems impossible or would lead to nonenforceability of the patent as the defendant will have no incentive to file.
    3. The only solution proposed by the Advocate General which appears to me to be efficient, is the third solution: the court itself can deal with the invalidity if the respondent acts in bad faith. But what is bad faith?

In my opinion, the interpretation chosen by the Advocate General does not take into consideration the practical implications. It leads to ineffective and costly enforcement of patents with an inefficient use of the courts in the EU and all without good reason. It forces defendants to file invalidity actions in all the Member States in which infringement is alleged.

Primus v Roche

The Primus v Roche case is an example of a classical cross-border case. Primus offered Roche a license under its European patent. Roche refused to take a license. Primus did not have sufficient resources to start infringement proceedings in each of the designated countries and brought a cross-border injunction case before the District Court of The Hague. As discussed above, the Court of Appeal adopted the District Court’s reasoning. The Supreme Court referred the following questions to the ECJ:

    1. Is there a connection, as required for the application of point 1 of Article 6 of the Brussels Convention, between a patent infringement action brought by a holder of a European patent against a defendant having its registered office in the State of the court in which the proceedings are brought, on the one hand, and against various defendants having their registered offices in Contracting States other than that of the State of the court in which the proceedings are brought, on the other hand, who according to the patent holder, are infringing that patent in one or more other Contracting States?
    2. If the answer to Question A is not or not unreservedly in the affirmative, in what circumstances is such a connection deemed to exist, and is it relevant in this context whether, for example,
    • the defendants form part of one and the same group of companies?
    • the defendants are acting together on the basis of a common policy, and if so is the place from which that policy originates relevant?
    • the alleged infringing acts of the various defendants are the same or virtually the same?

- In their submissions, the Dutch and French governments supported the decision of the Court of Appeal, while the UK government submitted that Primus should have gone to the courts of all the designated countries.

The Commission, inter alia, advised that the problem of inefficient enforcement would be over if the Member States would adopt the EU Patent Regulation.

Therefore, currently the hope of all the users of the system lies in the hands of the ECJ. The case at hand is a perfect example of where, without cross-border injunctions, patent enforcement is practically impossible.

It is hoped that the ECJ decides as quickly as possible in both cases (preferably on the same date). Dutch and German courts have recently suspended decisions in cross-border cases waiting for these decisions. Let’s hope that the ECJ follows its own case law, which would result in a much desired efficient enforcement system.

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.

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