25 February 2025
BSH Hausgeräte v. Electrolux, CJEU Case C-339/22
Introduction
1. Until 40 years ago most IP lawyers thought with respect to enforcing IP rights that that should happen in the country and under the national law of the patent. A court should not deal with foreign patents. In the US this is still the law.
2. In The Netherlands the so called crossborder injunction was then invented helped by the so called ‘kort geding’ (Dutch PI proceedings) and by famous judges as Jan Brinkhof and Jan Willems. The practice flourished to the dismay from some especially UK lawyers which branded it as cowboy justice.
3. It was all based on the idea that the Brussels Convention (and as far as non EU defendants were concerned: national law) granted jurisdiction also with respect to the infringement in other countries against a domiciled company and its codefendants. With respect to Art. 16(4) (now Art. 24(4)) it was thought that the court in PI decisions did not give a decision about invalidity but only looked at the chances that in invalidity proceedings the patent would be invalidated.
4. In Roche/Primus the ECJ stated that Art. 6(1) (now Art. 8(1)) was not applicable in a situation where each defendant infringed only in his own country. This decision was heavily criticized because in all these EP countries Art. 69 EPC was direct or indirect applicable to the infringement question.
5. In Solvay/Honeywell after questions formulated by judge Kalden (now the presiding judge of the second panel of the UPC Court of Appeal) the ECJ endorsed the Dutch crossborder practice in situations where more defendants infringed in the same foreign country.
6. However, it remained unclear what would be the situation in cases on the merit especially because in GAT/LUK the ECJ had ruled that a court could also not deal with the invalidity of a foreign patent if it was raised as a defense against an infringement claim.
7. This lead to different solutions in cases on the merit. The UK (then still an EU member) ruled in Coins Control that after such defense the court would also loose its competence for the infringement case. In The Netherlands the Supreme Court ruled that the court in that case had to give the plaintiff the possibility to withdraw its infringement claim and if not to suspend the case until the foreign court had dealt with the invalidity. That was basically also the dead of the case as no infringer would start invalidity proceedings because there was no incentive to do so as long as the case was suspended.
8. Now in 2025 we finally have the solution of the (now called) CJEU and it is a victory for the supporters of crossborder cases and therewith for the possibility of enforcing European (and foreign) patents in an efficient way in the home court of the defendant.
The facts
9. BSH sues Electrolux (a Swedish company) for the Patent and Commercial Court in Sweden alleging infringement of its European Patent 1434512 (validated for certain EU states (at that time including the UK) and Turkey in all these countries and asking for an injunction and damages.
10. Electrolux argued that the patents were invalid and that the court had no jurisdiction as Art. 24(4) Brussels Regulation (BR) meant that if invalidity was raised the court had no jurisdiction for the infringement.
Questions
11.
1. Does Art. 24(4) BR means that if invalidity is raised the court also loses jurisdiction (which it has pursuant Art. 4(1) BR) for the infringement case?
2. Is it for question 1 relevant that under Swedish law if you raise invalidity as a defense you also have to start invalidity proceedings?
3. Is Art. 24(4) also applicable to Turkey?
Answer / Comment
12. Question 2
1. National Rules do not play a role for the interpretation of Art. 24(4) BR.
Hoyng: This is of course not surprising. EU law is the same in all EU countries and not dependent on local law.
13. Question 1
1. CJEU:
a. Interpretation of EU law is not only based on the wording but also the context in which it occurs and the objectives pursued.
b. Continuity of interpretation is necessary as to predecessors (Art. 16(4) BX; Art. 22(4) Brussels I).
c. CJEU cites Art. 4(1). This (suing the defendant in its domicile etc.) is a rule of principle. Art. 24 provides an exception.
d. Validated EP patents are national patents.
e. It is clear from Art. 24(4) that Art. 24(4) is applicable whether invalidity is raised by way of an action or as a defense.
Hoyng: this is indeed clear. As Art. 24(4) is reflecting the GAT/LUK decision which means that the CJEU cannot overturn that unfortunate decision as also the AG remarked.
f. The CJEU emphasis as the ratio for Art. 22(4) the fact that a foreign court should not interfere with the administration of another country (such as the patent register)
Hoyng: This limited objective comes back in the interpretation of Art. 24(4).
g. As the CJEU has already established Art. 24(4) is an exception to the general rule of Art. 4.1 and should therefor interpreted strictly.
Hoyng: The same is true but to a lesser extent (?) with respect to codefendants for which there is jurisdiction on the basis of Art. 8(1) BR where there is the argument of avoiding irreconcilable judgments.
h. The CJEU following the AG clearly sees and says that Art. 4(1) would become a dead letter for patent disputes as most of the time invalidity will be raised which makes the question of jurisdiction highly unpredictable certainly if invalidity can be raised at any stage of the proceedings.
i. The CJEU also referring to the AG cites as advantage to have the dispute in one court avoiding the risk of diverging decisions.
Hoyng: This is (very different from Roche) an implicit reminder that the law of infringement (Art. 69) and damages (see the Enforcement Directive) is the same in the different EP respectively EU countries.
j. The CJEU makes clear that a court cannot disregard the fact that an invalidity case has been brought in the country/countries of the patent. The Court proposes the possibility of a stay, if appropriate, if there is a reasonable, non negligible possibility that the patent is declared invalid.
Hoyng: it seems that the CJEU expects that alleged infringer at least starts invalidity proceedings in the foreign countries. However, the CJEU refers also to Solvay (in which case no invalidity cases were started in the foreign countries). What is very clear is that courts cannot suspend simply because they do not like crossborder cases. However, on the other hand I do not think that filing invalidity cases is a requirement. Very often the court will have to decide upon the validity in their own country. The outcome of that case could be leading for the decision to suspend or not.
The court does not address the question what would happen if injunctions are granted and damages awarded and later (one of) the foreign patents is invalidated. In practice this will very seldom happen but it could be resolved by granting a conditional judgment (under the condition that the patents are not invalidated). See for the UPC for instance Rules of Procedure R.118.2(a).
14. Question 3
a. As the Advocate General the CJEU not surprisingly rules that Art. 24(4) BR is not applicable to non EU member states and deals with the defense inter partes which does not affect the registration of the patent.
Hoyng: This is different from the AG’s opinion which suggested that the court would also have the possibility to decline jurisdiction or act as with respect to EU states (suspension if there is a likelihood of invalidity).
The CJEU chose here -where it is possible- the route which because of GAT/LUK it could not take for the EU.
I think that this solution is a very good one as it does not interfere with the grant or invalidity erga omnes and the administration of foreign patents.
This is a clear hint in my opinion that, as the AG, the CJEU disapproves of GAT/LUK and it sends a message to the Commission to change 22(4) BR making it possible to allege invalidity inter partes as a defense. At the same time the Rules of Procedure of the UPC have to be changed to make such defense possible without having to start a cross complaint for revocation.
The future
15. The decision is about Art. 4(1) defendants which infringe a European Patent in their country of domicile and/or other EP countries both EU and non EU countries.
16. It is clear the decision is also applicable to a defendant domiciled in the UPC. In my view, since the UPC has to be seen as one territory with one court of first instance (which is to be considered as a court common to the different member states) such defendant can be sued in any Local Division.
17. I also think that the reasoning of the court is also valid with respect to foreign non EP patents (f.i. suing a French company in France for infringement of a German national patent and/or a UK and/or US national patent). In these cases the court will have to apply the law of the patent.
18. The decision is silent about Art. 8(1) of the Brussels Regulation which can together with an Art. 4(1) defendant give jurisdiction against non domiciled companies in case there is the possibility of irreconcilable decision. If such non domiciled company is domiciled outside the EU the national law of the court will be applicable with respect to the question of jurisdiction. However, in the UPC this will be (also) the Brussels Regulation (Art. 71(2)b). As known the UPC has in Art. 33(1)(b) further requirements which is that there has to be a commercial relationship and the same infringement. In my opinion these limitations have only an internal effect (within the Court of First Instance) but do not restrict for the UPC the jurisdiction under Art. 8(1) BR.
19. From Roche it becomes clear that if the infringements in the different countries are committed by different legal entities then (even in the case of a – same – European Patent and even if these different legal entities belong to the same concern) Art. 8(1) is not applicable all assuming that Roche is still good law which I doubt.
20. From Solvay it becomes clear that if the Art. 4(1) defendant and the Art. 8(1) infringe the same foreign patents Art. 8(1) is applicable (f.i. the domiciled company delivering products to its subsidiaries).
21. However, if the domiciled company is involved in or can prevent infringements in other countries (without itself infringing in such countries) such acts (f.i. making available a marketing authorization) may be seen under the law of the domiciled company as an unlawful act and under the present decision the domiciled court has jurisdiction to deal with the question of infringement in such countries which is necessary as that is the basis for acting unlawfully.
22. It remains to be seen if such action is also possible in the UPC as the UPC can only deal with the European Patent(applications) but in my opinion this should be possible as this would also be a case where decisions are made about the validity and infringement of European Patents.
23. The above are just a few (of the many) possibilities, questions which are raised by this decision.
Conclusion
In my opinion this is a very well reasoned decision which fully endorses this time the crossborder practice started 40 years ago and which makes an even more efficient enforcement of patents possible which in my opinion can only enhance innovation.