On 23 April 2014, the Court of Genova issued a decision on the admissibility and width of a “torpedo action”.
On a general basis, torpedo actions are those filed in one jurisdiction to obtain a declaration of non-infringement also in connection with foreign IP registrations. Their main purpose is to delay any infringement action relating to the same IP registrations brought by the right holder in other jurisdictions. In a number of cases, European courts (especially German courts) have decided to stay the proceedings started by the right holder in wait of the decision on the torpedo action previously started in another jurisdiction by the alleged counterfeiter.
In the case pending before the Court of Genova, Agilent brought action against three companies of the Oerlikon group to obtain a declaration of non-infringement also in connection with some foreign patents and utility models.
The Court of Genova held that the plaintiff’s action was aimed also at challenging the validity of counterpart’s foreign IP registrations. In this respect, the Court clarified to be prevented from taking a decision on these claims, pursuant to article 22.4 of Regulation (EC) 44/2001. Under said provision “in proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered, the courts of the Member State in which the deposit or registration has been applied for, has taken place or is under the terms of a Community instrument or an international convention deemed to have taken place [shall have exclusive jurisdiction].”
Based on this decision, Italian Courts may still decide non-infringement actions filed also in connection with foreign IP registrations only where no claim is brought in connection with their validity.