Courts in the Netherlands assume jurisdiction to grant cross-border injunctions in infringement cases involving intellectual property rights under certain conditions. This practice is not uncontroversial in Europe. The discussion regarding the admissibility to grant cross-border injunctions revolves around the interpretation of the rules on jurisdiction set out in 8364;" what is now - Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments (the "Regulation"). On 29 March 2012, the Advocate General ("AG") of the Court of Justice (8364;SCJ8364;) rendered an opinion endorsing the on-going Dutch cross-border practice in preliminary injunction proceedings and possibly reopening the door for cross-border injunctions in main proceedings under limited conditions.

Legal background - jurisdiction

There are several exceptions to the basic rule that a defendant has to be sued before his court of domicile (article 2(1) Regulation). Insofar as relevant to determine jurisdiction relating to intellectual property rights, these exceptions gave rise to different interpretations. Although some of the differences have been resolved in 2006 in GAT v LuK (C-4/03) and Primus v Roche (C-539/03), questions still remained. For example it remained unclear whether these decisions entail that national courts should refrain from granting cross-border relief all together, and in particular in preliminary injunction proceedings, and whether different factual circumstances than those at hand in Primus v Roche could warrant the handling of an alleged infringement in several countries by a single Court. This is at issue in Solvay v Honeywell. Pending the outcome of the case, Dutch courts continue to render cross-border injunctions in preliminary injunction proceedings (e.g. Yellow Page v Yell; Court of Appeal of The Hague 12 July 2011 and Apple v Samsung, District Court of The Hague, 24 July 2011). 


Solvay v Honeywell (C-616/10): referral to the CJ

In Solvay v Honeywell, pending before the District Court of The Hague, Solvay seeks relief with cross-border effect against defendants from different Member States (including the Netherlands). The District Court referred questions to the CJ on 20 December 2010 concerning the interpretation of articles 6(1), 22(4) and 31 of the Regulation in view of the requested cross-border injunctions in both main and interim proceedings. AG Cruz Villalón delivered his well-motivated opinion in Solvay v Honeywell on 29 March 2012. In this opinion the AG endorses the current Dutch cross-border practice. A decision of the CJ on this matter can be expected later this year. In about 60% of cases, the CJ follows the AG⦣8364;"s opinion. The AG's opinion will be outlined below for each of the articles at issue.

Article 6(1): avoidance of irreconcilable decisions

Article 6(1) pertains to situations where several defendants are domiciled in different Member States. It stipulates that such defendants may be sued in the courts of a Member State of one of the defendants if this is necessary in order to avoid the risk of irreconcilable judgments. In Roche v Primus, the CJ was read to have ruled categorically that the conditions of article 6(1) are not met when actions for infringement are based on a European patent. This decision was strongly criticised. The AG contemplated to overturn this case law but came up with a "more nuanced approach" pointing out that the scope of Roche v Primus should be circumscribed to the factual situation of that case: when different companies, established in different Member States, all infringe the same European patent but different national parts thereof, each in their own country, article 6(1) does not apply. However, the AG takes the view that when the action against defendants in different Member States relates 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, article 6(1) applies without limitation by existing CJ case law. The consequence of this position is that when, as in Solvay v Honeywell, alleged infringement takes place in multiple Member States by multiple defendants in each country including a Dutch company, the Dutch Court can assume jurisdiction to avoid irreconcilable decisions. It is noteworthy that the nuanced approach to article 6(1) proposed by the AG is not expressed to be limited to preliminary injunction proceedings.

Does article 22(4) apply to preliminary injunction proceedings?

Article 22(4) affords exclusive jurisdiction in proceedings concerned with the validity of registered intellectual property rights to the courts of the Member State of registration. In GAT v LuK the CJ decided that this rule of exclusive jurisdiction concerns all proceedings relating to a patent's validity, also if raised by way of a defence in infringement proceedings. In Solvay v. Honeywell the District Court of The Hague questioned the applicability of this rule to preliminary injunction proceedings. The AG again chose a "nuanced" approach in interpreting existing CJ case law: he holds the opinion that the exclusive jurisdiction rule of article 22(4) is not applicable when the invalidity of a patent is raised in preliminary injunction proceedings, as long as the decision likely to be adopted in those proceedings has no final effect (on validity, we presume).

Extraterritorial scope of provisional measures (article 31)

Article 31 Regulation affords an autonomous right of jurisdiction regarding provisional measures:

"Application may be made to the courts of a Member State for such provisional, including protective, measures as may be available under the law of that State, even if, under this Regulation, the courts of another Member State have jurisdiction as to the substance of the matter."

The CJ developed several criteria in order for this rule to apply. In this case the ratione loci criterion developed in Van Uden (C-391/95) was further explained. This criterion stipulates that there must be a real connecting link between the subject matter of the measures sought and the territorial jurisdiction of the court before which those measures are sought.  The AG takes the view that this should be interpreted in such a way that a measure can have extraterritorial effect, as long as the measure also has effect in the territory of the court addressed.

Practical Consequences?

This opinion - if followed by the CJ - is excellent news for holders of intellectual property rights, and in particular European patents, as it endorses the current Dutch practice of granting cross-border injunctions. It makes it possible to continue to economise substantially on costs of litigation in preliminary injunction proceedings, and in some cases, in proceedings on the merits as well. The combination of the possibility to obtain quick, relatively low cost injunctions dealt with by specialised judges makes the Netherlands an excellent choice of forum to obtain cross-border relief.

We are more than happy to discuss the possible impact of this decision on your industrial property enforcement strategies with you.

This publication describes the legal situation as of 2 April 2012.

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.