Introduction

Under the Enforcement Directive, it is possible to claim compensation of reasonable legal fees in intellectual property litigation. This has led to numerous debates, both inside and outside the courtroom, on the scope of the right to such compensation. For example, in which types of cases can compensation be claimed (which intellectual property rights are covered)? How should "mixed" cases be dealt with? What amount of compensation is reasonable? In a judgment rendered on 15 November 2012, the Court of Justice of the EU (ECJ) has added a new twist to the ongoing debates.

Do invalidation proceedings fall within the scope of the Enforcement Directive?

Plastinnova filed an application for registration of an industrial design with the Hungarian Patent Office, followed by an application for protection by means of a utility model. Bericap then sought the invalidation of the protection of the utility model on the grounds of lack of novelty and underlying inventive steps. Following years of litigation between the parties, preliminary questions were referred to the ECJ by a Hungarian court. In its judgment of 15 November answering those questions (which are not discussed here), the ECJ held that the Enforcement Directive does not govern invalidation proceedings.

The ECJ stated that the Enforcement Directive only ensures the enforcement of intellectual property rights of right holders and does not govern measures or proceedings available to others who challenge those rights without holding any intellectual property rights of their own. In the ECJ's view, invalidation proceedings such as those between Plastinnova and Bericap have been made available to parties who do not have intellectual property rights of their own; therefore, such proceedings do not seek to protect the intellectual property rights of right holders as intended by the Directive.

From the ECJ's reasoning, it follows that compensation of legal fees cannot be claimed or awarded in invalidation proceedings, or in any other proceedings that do not deal with the infringement of intellectual property rights.

The ECJ's reasoning will undoubtedly lead to further debate, as much can be said to the contrary. Both the name of the Enforcement Directive and its stated purpose indicate that it deals with measures which are necessary to safeguard the enforcement of intellectual property rights. It can be argued that such enforcement includes the protection of those rights against, e.g., invalidation actions or cancellation actions for non-use. The recitals of the Directive speak of the protection of intellectual property rights and state that the Directive's scope should be defined as widely as possible. It is true that the claimant in invalidation proceedings would not be invoking an intellectual property right of its own (the ECJ speaks of the claimant not being an owner of such a right, but we think the relevant criterion should be whether the claimant invokes such a right). In our view, however, by seeking invalidation of the right holder's intellectual property right, the claimant is forcing the right holder into a position where the latter has to protect and enforce its right by seeking to maintain or safeguard that right.

In pending proceedings between Samsung and Apple in the Netherlands, the District Court of The Hague has already stated that the ECJ decision in Bericap might affect the compensation awarded, and that it will rule on this in the near future.

Conclusion

Even though the issue of compensation of legal fees was not raised in the preliminary questions put to the ECJ, the court's reasoning in addressing those questions has already produced an added – but perhaps unwanted – side effect that will certainly lead to further debates, not to mention court rulings.