On 12 July 2012, the European Court of Justice ("CJEU") rendered a judgment between Solvay and Honeywell relating to the admissibility of cross-border injunctions in Intellectual Property cases in the Netherlands (case C-616/10).
Solvay is the proprietor of a European patent protecting, in essence, a product called HFC-245 fa. Solvay found out that one Dutch and two Belgium entities of the Honeywell group were marketing a product called HFC-245 fa, which is identical to the product covered by the patent3. In this respect, Solvay instituted legal action against said Honeywell entities before the District Court of The Hague for patent infringement claiming a preliminary injunction with cross-border effect for the duration of the proceedings on the merits. In view of the cross-border preliminary injunction requested by Solvay, the District Court of The Hague referred questions to the CJEU concerning the interpretation of, inter alia, articles 6(1), 22(4) and 31 Council Regulation (EC) 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (the "Regulation"). In other words, the District Court referred questions to the CJEU seeking guidance regarding its jurisdiction to grant a cross-border injunction in both interim relief proceedings and proceedings on the merits.
Irreconcilable judgments - article 6(1) Regulation
The CJEU, in essence, observes that article 6(1) of the Regulation provides, in order to avoid irreconcilable judgments resulting from separate proceedings, that a defendant may be sued, where he is one of a number of defendants, in the courts for the place where any one of them is domiciled, provided the claims are so closely connected that it is expedient to hear and determine them together. Furthermore, according to CJEU it is for the national court to assess whether there is a connection between the different claims instituted before said national court and to assess whether a risk of irreconcilable judgments exists if those claims were determined separately. In this regard, the national court must take into account all the necessary factors in the case. The CJEU, however, ruled that in order for judgments to be regarded as at risk of being an irreconcilable divergence, it is not sufficient that there will be a divergence in the outcome of the dispute, but that divergence must also arise in the same situation of fact and law. With regard to the assessment of the existence of the same situation, the CJEU has ruled:
- that the existence of the same factual situation cannot be inferred in the event that the defendants are different and the infringements they are accused of, committed in different Member States, are not the same
- that the same situation of law cannot be inferred in the event that infringement proceedings are brought before a number of courts in different Member States regarding a European patent granted in each of those Member States and those actions are brought against defendants domiciled in those Member States in respect of acts allegedly committed in their territory
On the basis of the aforementioned, the CJEU considerers that a situation of irreconcilable judgments resulting from separate proceedings in different Member States can occur in proceedings pending before a court of one of those Member States, in which defendants are each separately accused of committing an infringement of the same national part of a European patent which is in force in yet another Member State by virtue of their performance of reserved actions with regard to the same product. It is for the referring court to assess whether such a risk exists, taking into account all the relevant information of the case.
Preliminary injunction - articles 22(4) and 31 Regulation
The CJEU, briefly, observes that the District Court of The Hague seeks guidance to ascertain whether or not the rule that national courts of the Member State, in which the deposit or registration of an intellectual property right has been (deemed to) applied for, have exclusive jurisdiction in proceedings (article 22(4) Regulation), must be interpreted as precluding, in circumstances such as those at issue, that an application for provisional measures may be made to the courts of a Member State. Even if another Member State has jurisdiction as to the substance of the matter (article 31 Regulation).
The CJEU considered that it, in essence, already follows from the GAT v Luc case (C-4/03) that said rule of exclusive jurisdiction relates to proceedings regarding the validity of a patent, regardless of the fact whether the invalidity of said patent has been invoked by way of defence against an infringement claim. The CJEU considers it to be relevant that the court before which the interim proceedings have been brought, does not make a final judgment on the validity of the patent invoked but makes an assessment as to how the competent court in the proceedings on the merits would rule in that regard, as a result of which the court refuses to adopt the requested provisional measure sought if it considers that there is a reasonable, nonnegligible possibility that the patent invoked would be declared invalid by said competent court. The CJEU considers that, in those circumstances, it is apparent that there is no risk of conflicting judgments, since the provisional judgment taken by the court before which the interim proceedings have been brought, will not in any way prejudice the judgment to be taken on the substance by said competent court. Subsequently, the CJEU ruled that "Article 22(4) of Regulation No 44/2001 must be interpreted as not precluding, in circumstances such as those at issue in the main proceedings, the application of Article 31 of that regulation", i.e. the exclusive jurisdiction rule comprising that national courts of the Member State in which the deposit or registration of an intellectual property right has been (deemed to) applied for, does not affect jurisdiction of the court before a provisional measure is sought.
The judgment of the CJEU is an interesting development with regard to the Dutch practice of granting preliminary injunctions having cross-border effect. The District Court of The Hague already accepted in the Bettacare v H3 case4 that there is room for cross-border injunctions in interim relief cases as regards Dutch defendants. The present decision of the CJEU, however, may go one step further and may even provide basis for the acceptance of granting cross-border injunctions in interim relief proceedings as regards non-Dutch defendants. Such development makes the Netherlands an outstanding choice of forum to obtain interim cross-border relief in cases regarding intellectual property rights.