European Court of Justice, Decision of 12 July 2012, No. C-616/10

The European Court of Justice (CJEU) rendered a judgment between Solvay and Honeywell on the admissibility of preliminary cross-border injunctions in IP infringement cases in the Netherlands.

Solvay, the owner of a European patent for a product called HFC-245 fa, claimed patent infringement by a Dutch and two Belgium Honeywell companies (Honeywell) who were marketing an identical product, also called HFC-245 fa. In the proceedings before the District Court of The Hague, Solvay applied, inter alia, for a preliminary injunction with cross-border effect for the duration of the proceedings on the merits. Honeywell raised invalidity of the patent as a defense without, however, taking action in relation to the invalidity claim.

The District Court of The Hague stayed the proceeding and referred questions to the CJEU on the interpretation of Articles 6(1), 22(4) and 31 of the Council Regulation (EC) 44/2001 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (Regulation), seeking guidance on the admissibility of cross-border injunctions in both, interim proceedings and proceedings on the merits.

Irreconcilable Judgments - Article 6(1) Regulation

According to Article 6(1) of the Regulation, a defendant can be sued together with another defendant based in a different Member State before the same court in order to avoid irreconcilable judgments resulting from separate proceedings, provided the claims are so closely connected that it is expedient to hear and determine them together.

The CJEU said that it was for the national court to assess whether there was a connection between the different claims and a risk of irreconcilable judgments if those claims were determined separately. In order for a judgment to be at risk of an irreconcilable divergence, it was not only required that there might be a divergence in the outcome of the dispute, but a divergence had also to arise of "the same situation of fact and law". Such situation could occur if proceedings were brought against different defendants in different Member States' courts in which they were separately accused of committing the same infringement of the same national part of a European patent in force in any Member State with regard to the same product.

Preliminary Injunction - Articles 22(4) and 31 Regulation

Pursuant to Article 22(4) of the Regulation, in proceedings concerned with the validity of patents and other IP rights, the courts of the Member State in which the IP right is deposited or registered, have exclusive jurisdiction. According to Article 31 of the Regulation, a national court may order provisional and protective measures, notwithstanding the jurisdiction of another court. So the question was what should happen if a provisional measure was requested before a court other than the court with exclusive jurisdiction?

The CJEU said that according to its decision in GAT v. Luc (C-4/03), the rule of exclusive jurisdiction was applicable to all proceedings regarding the validity of patents, regardless of whether the invalidity had been claimed as a defense. However, the court before which an interim proceeding was brought did not give a final judgment on the validity of the patent but only assessed how the court having exclusive jurisdiction under Article 22(4) would rule in that regard. If there was a possibility that the patent would be declared invalid, the court would reject provisional measures. Therefore, the rule of exclusive jurisdiction Article 22(4) of the Regulation did not preclude the court from issuing a provisional injunction with cross-border effects.


The judgment of the CJEU is an interesting development with regard to the Dutch practice of granting preliminary injunctions with a cross-border effect. In Bettacare v. H3[1], the District Court of The Hague had already ruled that cross-border injunctions in interim proceedings can be granted with regard to Dutch defendants. The decision of the CJEU may go one step further and even provide the basis for granting cross-border injunctions in interim proceedings with regard to non-Dutch defendants.

This development makes the Netherlands an outstanding choice of forum for obtaining interim cross-border relief in cases regarding IP rights.