Netherlands: The Country Of Cross-Border Injunctions In IP (Part 1 Of 3)

Part 1: Patents, trademarks and design rights

Intellectual property ("IP") rights are territorially limited rights. To enforce your IP rights in different territories (usually countries) you traditionally have to address courts in each territory separately. Dutch courts have allowed exceptions to this rule by granting cross-border injunctions covering other countries as well. This has been a trend with the Dutch courts since 1989¹ but met with considerable criticism and was rejected by the Court of Justice of the European Union ("CJ") in 2006. Recently, however, the winds seem to have changed once again: the cross-border practice has been endorsed conditionally by the CJ. Although the CJ case law mainly pertains to patent rights, we see cross-border injunctions being granted in other fields of IP as well, notably in trademark and designs cases. This newsletter provides an overview of the possibility to obtain cross-border injunctions in the Netherlands for the aforementioned IP rights. It is the first in a series of three; in part two we will address cross-border measures for other IP rights (such as copyright) and in part three we will give an update on 'pre-trial cross-border enforcement' and securing evidence in the Netherlands for the infringement of IP rights outside the Netherlands.

1. Cross-border measures in IP cases - legal background

Apart from several specific provisions for certain IP rights[ii], jurisdiction in IP cases within the European Union ("EU") is governed by Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments (the "JRER") and by national procedural rules and practice. National procedural rules are especially important for interpretation of the JRER and for situations not governed by the JRER such as defendants not domiciled in an EU Member State. Once (international and cross-border) jurisdiction has been established, there is general consensus regarding the applicable law for judging whether infringement takes place: this is the law of the country or territory of the allegedly infringed IP right (lex loci protectionis). The crucial step for granting cross-border injunctions is therefore to establish jurisdiction.

The basic rule is that the court of the country where the defendant is domiciled has jurisdiction (Article 2(1) JRER). Based on this rule several European courts - including Dutch courts - accept cross-border jurisdiction to handle infringements of foreign patents and other IP rights by a defendant based in the region where the court has its seat. There are four exceptions to the basic rule that are relevant for IP cases, which were clarified by the CJ in several - mostly patent - cases. These rules are summarised in the first two columns of Table 1. The most relevant CJ case law pertaining to each article is recapitulated briefly in the third column. The last column of Table 1 highlights the Dutch interpretation where relevant. In short, only Art. 2 (for national defendants), 6 (closely connected cases against multiple defendants to avoid irreconcilable judgements) and 31 (provisional measures) JRER can create jurisdiction to grant cross-border injunctions.

Footnotes

1. Interlas v Lincoln, Dutch Supreme Court 24 November 1989

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