Center for Advanced Study & Research on Innovation Policy


CASRIP Newsletter - Autumn/Winter 2007, Volume 14, Issue 1

Enforcement of Foreign Patents in European Courts

by Annette Kur1

I. Introduction

Jurisdiction for enforcement of patents against persons or companies domiciled in Europe is determined by the system established under the Brussels Convention and Regulation. Courts in EU Member States have developed different approaches toward so-called cross border injunctions, and toward the possibility to join claims against several defendants. The legal uncertainties were addressed and resolved by two landmark decisions handed down by the European Court of Justice (ECJ) in July 2006. As a result, the possibilities for adjudication of foreign patents and for the joinder of claims against several infringers were severely curtailed.

Following a general overview on the Brussels jurisdiction system, the article gives account of the two ECJ judgments. After a critical analysis of the Courts reasoning and of the consequences the judgments may entail for practice, the article concludes by pointing out proposals for amendment of the present Brussels system.

II. The Legal Bases for Jurisdiction

The competence of European courts to adjudicate infringement of foreign patents is determined by the following legal instruments:

-Brussels Regulation No. 44/2001 of December 22, 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (“Brussels Regulation”), which has entered into force on March 1, 2002 in all EU Member States except for Denmark (and for the 12 new members, on the date of their accession).

-Brussels Convention on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters of 1968 (“Brussels Convention”), which still applies in Denmark. The Brussels Convention is the predecessor of the Brussels Regulation, and, in the aspects which are of interest here, it is largely congruent with the Brussels Regulation.

-Lugano Convention on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters of 1988 (“Lugano Convention”). The Lugano Convention was concluded as a parallel instrument to the Brussels Convention, to be applied among European Community and former European Free Trade Agreement member countries. At present, it applies in Switzerland, Norway and Iceland. Negotiations are pending to bring the Lugano Convention in accordance with the Brussels Regulation.

The rules set out in those instruments are applied by European courts when claims are brought against a defendant who is domiciled2 in an EU (or Lugano Convention) Member State,3 irrespective of nationality. If the defendant is not domiciled in a Member State, jurisdiction is determined according to the domestic rules applying in the state where the claim is brought.4

It is the aim of all three instruments to enhance legal security by harmonizing the rules governing jurisdiction in Europe, and to facilitate the enforcement of foreign judgments. To that effect, a decision handed down by a court in a Member State whose competence has been established according to the rules set out in the Regulation/Conventions will be recognized and enforced without further special proceedings in other Member Countries, with a reservation being made only with regard to violation of ordre public or other fundamental principles of fair process.

Another important feature of the system established by the Brussels/Lugano rules is that it leaves no room for application of the forum non conveniens principle. A seized court whose competence is grounded on the rules established by the Regulation/Conventions cannot deny jurisdiction of its own motion, but must accept and adjudicate the case on its merits.

III. The relevant rules5

In the system established by the above-mentioned instruments, a distinction is made not between personal and subject matter jurisdiction, but between general, special and exclusive jurisdiction.

A. General jurisdiction (forum rei)

General jurisdiction is vested in the courts of the country where the defendant is domiciled (forum rei). The relevant provision, Article 2.1, states:

Subject to this Regulation, persons domiciled in a Member State shall, whatever their nationality, be sued in the courts of that Member State.

It has been emphasized repeatedly in the jurisprudence of the ECJ that this rule incorporates a fundamental principle, which shall only be deviated from for specific reasons, and which regularly prevails in case of doubt.6

B. Special jurisdiction

The rules concerning special jurisdiction, jurisdiction of courts other than the courts in the country of defendant’s domicile, are set out in Section 2 of the Brussels Regulation. Of those provisions, two are of specific interest for intellectual property (“IP”) cases.

1. In Article 5, it is stipulated that:

A person domiciled in a Member State may, in another Member State, be sued
3. in matters relating to tort, delict or quasi-delict, in the courts for the place where the harmful event occurred or may occur.

With regard to patent infringement, this provision grants jurisdiction to the courts in the country where the alleged infringement has taken place, which is the country where the right has been registered or is deemed to have been registered. Thus, the practical result of applying Article 5.3 to patent cases is regularly the same as would follow from an application of Article 22.4 for exclusive jurisdiction.

It is unclear for the time being whether Article 5.3 can also be used as a basis for filing claims for negative declaratory judgments. With a strictly literal interpretation of the article, claims for negative declaratory judgements seem to be excluded because the essence of such claims is that no harmful event has occurred or may occur. If this interpretation is followed, claims for declaration of non-infringement of a patent could only be filed with the courts in the country where the alleged infringer is domiciled.7 The same consequences would follow for incidental claims of invalidity.

2. According to Article 6:

A person domiciled in a Member State may also be sued

1. 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 to avoid the risk of irreconcilable judgments resulting from separate proceedings.

This provision allows the joinder of claims against several infringers domiciled in different Member States before the courts in the country where one of them is domiciled, provided that “the claims are so closely connected that it is expedient to hear and determine them together.” It is worth emphasizing that under the original wording of Article 6.1, which was set out in the Brussels Convention of 1968, no such requirements were stipulated. They were introduced by jurisprudence to prevent a misuse of the provision,8 so as to avoid a clash with the fundamental rule anchored in Article 2 for general jurisdiction.

For patent cases, Article 6.1. is of paramount importance, because infringements, in particular those having cross-border implications, are often carried out by way of collusion of several parties located in different countries.9

C. Exclusive jurisdiction

Whereas the previously cited provisions are general rules that apply in all civil and commercial matters, patents and other industrial property rights are expressly addressed in Article 22 of the Regulation (Article 16 of the Brussels Convention) concerning exclusive jurisdiction:

The following courts shall have exclusive jurisdiction, regardless of domicile: . . .

4. 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.

It is important to note that the wording of the proviso in the English version deviates from the other language versions in that it uses the words “proceedings concerned with” and thereby distinguishes paragraph 4 of Article 22 from paragraphss 1 – 3 of the same Article, where the phrase “proceedings which have as their object” is used. In the Dutch, German, French, and Italian versions of the text, the same phrase – corresponding to “proceedings which have as their object” – is used in all four paragraphs. This is one explanation for the diverging attitudes toward the possibility to adjudicate infringement claims of a foreign patent, which can be found in the different member countries.

As is expressly set out in the provision, exclusive jurisdiction prevails over all other rules on which a court’s competence may be founded, including the fundamental rule in Article 2.

D. Lis pendens and torpedoes

Finally, another provision needs to be addressed in this context, although it operates as an obstacle rather than a tool for the enforcement of patent rights. Article 27, the lis pendens rule states:

1. Where proceedings involving the same cause of action and between the same parties are brought in the courts of different Member States, any court other than the court first seised shall of its own motion stay its proceedings until such time as the jurisdiction of the court first seised is established.
2. Where the jurisdiction of the court first seised is established, any court other than the court first seised shall decline jurisdiction in favour of that court.

A similar rule can be found in Article 28, concerning related actions. However, in contrast to Article 27, Article 28 only provides a court with the option to stay proceedings, without obliging it to refrain in favour of the court first seized; it is therefore considered to be less “dangerous.”

Article 27 has given rise to a practice that has become notorious under the name of “torpedoes.”10 When faced with a threatening claim for patent infringement, an alleged infringer may try to escape fast and efficient prosecution by filing a claim for declaration of non-infringement in a country whose courts have a reputation for proceeding claims rather slowly. Pursuant to the lis pendens rule in Art. 27.1, any other court who is seized with a claim for substantive remedies concerning the same infringement11 must wait until the court first seized has decided on its competence, which may take more time than the rightowner is willing to spend waiting.

There are a lot of questions relating to the torpedo problem, in the first place concerning the question of which court(s) actually is(are) competent to exercise jurisdiction with regard to negative declaratory actions, and also concerning the way in which a court seized second might motivate its decision that Article 27 does not pose an obstacle against handling a claim for substantive remedies. However, these issues shall not be treated any further in this article.

It only remains to say that the pertinent problems with torpedoes could be one of the topics for the European Commission to include in the report on the application of the Brussels Regulation, which according to Article 73 shall be delivered to the European Parliament, the Council and the Economic and Social Committee no later than five years after the entry into force of the Regulation, by March 2007. As it is foreseen in Article 73, the report may be accompanied by proposals for adaptation of the Regulation. It could be proposed therein that a solution should be chosen corresponding to that of the (now obsolete) proposal for a Hague Jurisdiction Convention (1999) as well as in the draft IP Principles Governing Jurisdiction, Choice of Law and Judgments in Transnational Disputes elaborated in the current ALI project, namely that an action for substantive remedies for IP infringement prevails over a claim for declaration of non-infringement, even if the latter was filed earlier.

IV. Ensuing problems

A. Cross-border injunctions

The primary basis for enforcement of foreign patents before European courts can be found in Article 2, the fundamental rule concerning defendant’s forum. Under the general system of the Regulation/Conventions, it appears clear that claims for patent infringement can always be raised against an alleged infringer before the courts in his/her country of domicile, even if that is different from the country where the right has been registered and is infringed. For example: X, a German company, is charged with selling technology in France which allegedly infringes a French patent. On the basis of Article 2, the claim can be brought in Germany, irrespective of the fact that the patent is registered in France.

Looking back, it is astonishing that the potential of the Brussels system to provide a basis for enforcement of foreign IP rights in the defendant’s forum was only put into practice 20 years after the Convention had come into force. The first, of what then turned out to be a line of subsequent judgments, was handed down by a Dutch court in a trademark case12 . A number of other cases, practically all of which concerned patents, have followed, both in the Netherlands13 and in other countries such as Germany.14

It is not surprising that the first cases were decided in Dutch courts because the attractiveness of Dutch courts as a possible venue for patent litigation was considerably enhanced by the fact that Dutch procedural law offers a special kind of summary proceedings. The “kort geding,” which, although being quite thorough and leading to results that as a rule prove to be final, from a plaintiff’s point of view are pleasantly fast and inexpensive compared to what is available in other European countries. On the other hand, in view of their summary nature, these proceedings are not apt for decision of issues that prove to be very complicated legally or technically.

While Article 2 as a matter of principle appears to provide a secure legal basis for adjudication of foreign patents in the defendant’s country of domicile, the matter becomes more complicated when the defendant raises the defense of invalidity. For claims that are “concerned with” or “have as their object” the registration or validity of industrial property rights, it is set out in Article 22.4 that the courts in the country of registration have exclusive jurisdiction15 , meaning that their competence prevails over all other courts, including those in the defendant’s country of domicile. This is uncontested when (in)validity of the patent is raised as the principal claim in the proceedings. However, when validity issues are only involved as an incidental question in proceedings where the principal claim concerns infringement, the result appears less clear. Court practice in the Member States was split on this point:

- If the defendant claimed invalidity of the patent as a defense, Dutch courts generally regarded the issue as incidental matter which did not affect the court’s competence. However, when cancellation proceedings had been initiated in the country of registration, and the court, upon a preliminary assessment of the invalidation claim, arrived at the conclusion that it had a chance to succeed, the proceedings were stayed until the matter was finally decided16 .
- In Germany, courts have held that irrespective of Art. 22.4 (or Art. 16.4 of its predecessor, the Brussels Convention), the validity of foreign patents could be assessed as an incidental matter within the framework of infringement proceedings, if such assessment was permitted in terms of the law applicable in the country where the right existed.
- In the UK, the view has been endorsed that adjudicating patent infringement claims is inseparable from the assessment of patent validity, with the result that infringement claims are regularly “concerned with” validity in the meaning of the (English version of) Art. 22.4, thereby entailing exclusive jurisdiction of the courts in the country of registration17 .

Quite obviously, these discrepancies call for clarification by the ECJ. When the issue was referred to the Court for the first time,18 however, the adversaries in the underlying dispute reached an agreement and withdrew the matter. It took a couple of years before the issue was brought to the fore again and finally led to the GAT v. LuK judgment, which will be treated in more detail below.

B. Claims against multiple defendants

Much concern in practice also has been raised by the rule about the joinder of claims against multiple defendants, Article 6.1. Systematically, the rule is in conflict with Article 2 – because it allows a plaintiff to file claims against a defendant outside his/her country of domicile – and potentially also with Art. 22.4, if and in as far as the claims raised do not only concern infringement of a patent, which is protected in the forum state, but also of other, foreign patents and thereby possibly involving foreign validity issues. Again, it was for the Dutch courts for some time to make the most extensive use of the provision, by allowing consolidation of claims for infringement of national bundle patents deriving from a European patent application against multiple defendants, whenever one of them was domiciled in the Netherlands.

These practices were somewhat restricted by the Expandable Grafts/Boston Scientific decision by the Appeal Court in the Hague.19 The court held that the mere fact that the infringed rights shared a “common past” was not sufficient as such to meet the requirements imposed by ECJ jurisprudence for the application of 6.1,20 but that it must be established that the defendants belonged to the same group of companies pursuing a joint action, and that the proceedings must be brought in the country where the head office, or “spider in the web” is established.

However, even in its somewhat reduced form, the application of Art. 6.1 to consolidated claims against multiple patent infringers remains problematic. It is therefore little wonder that the issue also has been referred to the ECJ for a preliminary ruling.

V. The ECJ decisions

A. GAT v. LuK

1. Background

The first of the two seminal cases decided on July 13, 2006 by the ECJ concerns the conflict between two German firms about alleged infringement of a French patent.21 The alleged infringer raised a claim for declaration of non-infringement before the Düsseldorf district court. In conformity with its prior practice, the court considered itself competent to adjudicate the case, including an incidental assessment of the validity issue, and dismissed the claim. Upon appeal, the Düsseldorf appeal court used the opportunity to refer to the ECJ the question whether exclusive jurisdiction (in the meaning of Art. 16.4 Brussels Convention which applied at the relevant date) only applies when a claim is raised for declaration of patent invalidity with effect against everyone (erga omnes effect), or also when the issue of validity or invalidity is raised by one of the parties in proceedings concerning the infringement of a patent. In its decision, the Düsseldorf appeal court made express reference to the possible impact of the different wording to be found in the English compared to other language versions of the Brussels Convention/Brussels Regulation.

2. The Advocate General’s opinion

The opinion of the Advocate General (Geelhoud) in this case was handed down on September 16, 2004. With regard to the differences in the wording, the Advocate General declared that the stricter concept reflected in the English version should not be regarded as guiding, meaning that the formulation used in the other languages as well as in paragraphs 1-3 of Article 16 – “proceedings having as their object” – should be considered as the governing basis for the interpretation (no. 33). On the other hand, he stressed that this does not mean the legal purpose of Article 16.4 is restricted to application in cases in which the object of the principal claim raised in the proceedings concerns the validity or invalidity of the patent (no. 35).

For the legal assessment, he distinguished between the following possible interpretations:

  1. Applicability of Art. 16.4 only if the principal claim concerns invalidity22
  2. Because of the inseparability of infringement and (in)validity issues, Art. 16.4 also applies to infringement proceedings23 .
  3. Only the court designated in Art. 16.4 is competent to adjudicate issues of (in)validity, whereas all other matters do not fall into the ambit of the provision24 .

Only the third alternative was endorsed by the Advocate General. The second alternative would be incompatible in his view with prior case law, where it was expressly held that it was not intended by Art. 16.4 to submit all litigation concerning patents to the courts in the country of registration, but that a distinction should be made in that regard between validity issues and all other issues arising in litigation concerning patents or other industrial property rights25 . With regard to the first alternative, it was argued that such an interpretation, although compatible with the wording of the provision, would result in a circumvention of the binding rule incorporated in Article 16.4. According to the Advocate General’s opinion, an alleged infringer should not have the freedom to choose between raising a claim for declaration of non-infringement and installing a cancellation claim against the patent holder in the country of registration.

Finally, the opinion expanded somewhat on the practical consequences of the solution it endorsed. It was emphasized that the competence of the court should be assessed irrespective of whether invalidity issues would be involved at a later stage. Thus, the courts at the defendant’s forum would regularly have to accept their competence in infringement proceedings or negative declaratory actions (there being no possibility for a court under the Brussels system to deny jurisdiction on the basis of the forum non conveniens-principle). When (in)validity becomes an issue – by way of a simple defense or by counterclaim -, according to the Advocate General, the court may choose to “hand over” the case to the court competent to adjudicate the validity issue, or it may stay the proceedings until the matter has been decided. Furthermore, it was suggested that in case of a defendant acting against honest practices, the court may even choose to hand down a final decision.26

3. The decision

Considering that it took the ECJ unusually long to ponder this case – with a lapse of 22 months between the Advocate General’s opinion and the decision being handed down – the legal reasoning appears amazingly brief and straightforward. The essential points, according to the ECJ, are the following:

- There is no way to infer the intended reach of Article 16.4 from its wording. Instead, “it must be interpreted by reference to its objective and its position in the scheme of the Convention” (no. 20 of the decision).

-Exclusive jurisdiction in proceedings concerned with the registration or validity of patents is justified by the fact that those courts are best placed to adjudicate upon the validity of the patent or the existence of the deposit or registration, all the more as this necessitates the involvement of the administrative authorities (nos. 22, 23).
-As regards the position of Article 16.4 in the scheme of the Convention, it has to be noted that its effects need to be observed strictly, meaning inter alia that it cannot be abrogated by the parties (no. 24).

Therefore, the Court concluded that “the view must be taken that the exclusive jurisdiction provided for by that provision should apply whatever the form of proceedings in which the issue of a patent’s validity is raised, be it by way of an action or a plea in objection, at the time the case is brought or at a later stage in the proceedings” (no. 25).

Furthermore, it added the following considerations:

-First, to allow a court seized with infringement proceedings to adjudicate on validity as an incidental matter would amount to a circumvention of Article 16.4, (no. 26).

-Second, this “would have the effect of multiplying the heads of jurisdiction and would be liable to undermine the predictability of the rules of jurisdiction laid down by the Convention, and consequently to undermine the principle of legal certainty” (no. 28).

-Third, it would “multiply the risk of conflicting decisions which the Convention seeks specifically to avoid” (no. 29).

Finally, the ECJ considered and rejected the argument that an incidental decision on invalidity would only have legal effect between the parties and therefore would not be irreconcilable with the legal objectives of Article 16.4. As the Court pointed out, “the effects flowing from such a decision are in fact determined by national law. In several Contracting States, however, a decision to annul a patent has erga omnes effect.” No further effort was made to substantiate that contention, such as by identifying those member states where such unwanted effects would occur.

As a conclusion, the ECJ’s position can be summarized as follows. 27 While it remains possible in principle to raise a claims for infringement of a foreign patent before the courts in the defendant’s country of domicile, the domicile court loses its competence and must decline jurisdiction in favour of the courts in the country of registration whenever invalidity is raised in the proceedings, be it by counterclaim or as a mere defense.

B. Roche Nederland v. Primus

1. Background

The second case28 concerned a European patent owned by two American citizens, which was valid in ten EPC Member States. It was claimed that the patent was infringed by Roche Nederland and members of the Roche Group having their seats in eight different countries, namely the USA, Belgium, Germany, United Kingdom, France, Switzerland, Austria and Sweden. The infringement claim was brought against all defendants before the court in Den Haag (partly on the basis of the Brussels Convention, partly the Lugano Convention, and partly domestic Dutch law). The defendants contested jurisdiction, denied infringement and challenged the validity of the patents. Both the court of first instance and the appeal court confirmed jurisdiction of the Dutch courts, but arrived at different conclusions concerning the infringement issue. While the claim was rejected in the first instance, it was granted by the appeal court. Against that decision, Roche Nederland appealed to the Dutch Supreme Court, who referred to the ECJ the following questions:

1. Does a close connection in the meaning of Article 6.1 exist between claims concerning a patent infringement which are raised, by the owner of a European patent, on the one hand against a defendant who is domiciled in the forum state and on the other hand against several defendants domiciled in other (EPC) member states than the forum state, who allegedly infringe the patent in one or several other contracting states?
2. Under which circumstances does a close connection exist, if the first question can not, or not entirely, be answered in the affirmative, and is it decisive e.g.
- whether the defendants belong to the same group,
- whether the defendants have coordinated their actions on the basis of a common business strategy - and whether in such case, the place where the strategy was conceived is decisive,
- whether the allegedly infringing actions are the same or nearly the same?

2. The Advocate General’s opinion

In the Roche case, the opinion of the Advocate General (Léger) was published on December 8, 2005. In his initial remarks, the Advocate General emphasized that although the referring court did not pose a question as to the relationship between Articles 6.1 and 16.4, the issue was nevertheless of importance, because if the infringement and validity of a patent were exclusively to be adjudicated in the country where the right is registered, this would mean that for European bundle patents, each of them must be litigated in the country where it exists in its national phase, and where the infringement is claimed to take place, so that application of Article 6.1 would be excluded already for that reason.

He then continued to analyze the meaning of the requirements set out in Article 6.1, in particular the aspect that the joinder of claims must be called for in order to avoid a risk of irreconcilable judgments. With a view to the cases in which the ECJ has introduced the notion of irreconcilable judgments for the purpose of applying Article 6, he emphasised that in the course of transformation of the Brussels Convention into the Brussels Regulation, the wording used in the Kalfelis decision29 was expressly and deliberately inserted into Article 6.1, meaning that the more liberal approach in the Tatry decision30 – where it was held that decisions can be considered as irreconcilable even when they can be enforced separately and are not mutually exclusive with regard to their consequences – can no longer be considered as governing.

He then compared Article 6.1 with Article 22 of the Brussels Convention (now Article 28 of the Brussels Regulation), which incorporates a very similar provision. According to Article 22.1, a court may stay proceedings pending before it, if related actions are already pending before another court in a contracting state.31 In paragraph 3 of the same Article, related actions are defined as actions that “are so closely connected hat it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings.” Thus, the same wording is used as applies to Article 6.1. Nevertheless, the Advocate General concluded that the interpretation does not necessarily have to be the same. He reasoned as follows:

(95) The decision about application of Article 6 no. 1 Brussels Convention is taken by the plaintiff alone, and not by the court. On account of that, the decision may rest upon a legitimate striving for procedural efficiency, but also on considerations which, under aspects of due process or appropriate conduct of proceedings are more questionable than those on the ground of which a plaintiff raises his claim based on Article 5 no. 3 before the court at the place where the harmful event and/or the damage have occurred, and not before a court in the country where the defendant is domiciled.
(96) Thus, the decision of a plaintiff to raise a claim on the basis of Article 6 no. 1 before a court in the Contracting State (where one defendant is domiciled) and not in one or several other Contracting State(s) where another or all other defendant(s) is/are domiciled, may be motivated by the purpose to avail himself of a law or even a line of jurisprudence which favours his own interests to the detriment of the interests of the defendants, and not by an objective need regarding issues of evidence or a sound administration of justice.
(98) With regard to the litigation at stake here, it can be supposed that the efficiency of “kort geding”-proceedings and the state of Dutch jurisprudence since the 1990s (in favour of a wide interpretation of Article 6 no. 1 of the Brussels Convention) have not been without interest to the plaintiffs (who are domiciled in the USA and not in the Netherlands) when they made their decision to raise their claims before a Dutch (instead of a Belgian, German, French, British, Swiss, Austrian or Swedish) court. (99) This is not to say that the plaintiff in a patent suit ought to be blamed for engaging in “forum shopping” in order to defend his interests in the best possible manner, but that does not change the fact that regarding the conspicuous differences between the considerations underlying Article 6 no. 1 on the one hand and Article 22 on the other, the requirements ensuing from aspects of due process and justifying a consolidation of proceedings are not as compelling for Article 6 no. 1 as they are for 22.

(Translation from the German text of the AG’s opinion, A.K.).

On the basis of that reasoning, it is further analysed whether adjudication of European bundle patents in different national courts would lead to a risk of irreconcilable judgements. Not surprisingly, the answer is negative. It is emphasized that after entering into the national phase, European patents are legally independent of each other and are governed, subject to the provisions in the EPC, by national law, which may be quite different with regard to a number of procedural and substantial issues. The argument that even in the national phase, the scope of European patents is to be determined according to the protocol concerning the interpretation of Article 69 EPC is rejected by pointing out that the protocol only regulates how the content of the patent, i.e. the technical object for protection, should be defined, which is a different issue from determining the legal scope of the protection conferred to the patent owner.

According to the Advocate General, this result does not change even if the defendants belong to the same group. If that would make a difference, he argued, the aim of legal security, which ranks very prominently in the Brussels system, would be severely jeopardized:

(128) Even if the defendants belong to the same group and the allegedly infringing actions are identical or similar, it is not easy for the plaintiff or the court to establish that the commitment of these actions is based on a coordinated action between the companies or on a common strategy defined within that group.
(129) This applies in particular to determination of the role played by the relevant companies in the definition of an alleged common strategy in order to identify the “spider in the web”. This issue entails a considerable risk of becoming an “incubator” for litigation, i.e. a trigger for numerous conflicts among the parties, even including the defendants….

(Translation from the German text of the opinion, A.K.).

Finally, the Advocate General addressed the problem posed by exclusive jurisdiction with regard to validity issues. Referring to GAT v. LuK and Advocate General Geelhoud’s opinion of September 2004, he pointed out that also in the light of those considerations, consolidation of claims against multiple defendants is not feasible or not very helpful in patent cases anyhow. If validity is or becomes an issue, the court seized on the basis of Article 6.1 would have to deny jurisdiction or to stay the proceedings, meaning that the aim of enhancing procedural efficiency would not be reached.

3. The decision

Again, the ECJ’s decision in the case was rather brief, given the complexity of the question. The Court remarked initially that it is not necessary to solve the question whether the meaning of the term “irreconcilable judgments” in Articles 6.1 and 22 (plus, the Court adds, Article 27) of the Brussels Convention are actually different, as was suggested by the Advocate General. According to the Court, Article 6.1 would not be applicable in the situation at stake here, even if the provision were interpreted in the broad sense of the judgments being simply “contradictory” (no. 25). Even then, the Court argued, the fact that a divergence exists as to the outcome of two decisions regarding a given dispute would not be sufficient for those decisions to be considered as contradictory. Instead, a contradiction would only have to be found if that divergence arises in the context of the same situation of law and fact (no. 26), and this, the argument continued, was not the case with regard to infringements of European bundle patents:

-First, as the defendants as well as the acts that they have allegedly committed in the various Member States are not the same, any divergences in the decisions would not arise in the same situation of fact (nos. 27, 28). Second, Articles 2(2) and 64(1) of the EPC make it clear that European patents continue to be governed by the national law of the Member States for which it has been granted, divergences between the decisions granted by the various national courts would not arise in the same legal context.

Having reached that conclusion, the Court further announced that the result is not called into question even in the situation referred to by the national court in its second question, that is where defendant companies, which belong to the same group, have acted in an identical or similar manner in accordance with a common policy, so that at least the factual situation would be the same. It was held that although to apply Article 6.1 in those cases may hold advantages for procedural efficiency, the advantages for the sound administration of justice would be limited and would constitute a source for further risks. It “would lead to a multiplication of the potential heads of jurisdiction and would therefore be liable to undermine the predictability of the rules of jurisdiction laid down by the Convention, and consequently to undermine the principle of legal certainty” (no. 37), which “would be even more serious if the application of the criteria in question gave the defendant a wide choice, thereby encouraging the practice of forum shopping which the Convention seeks to avoid” (no. 38).

In addition, having to establish specific criteria justifying a joinder of claims between several infringers of European patents before a given court might lead to additional costs and a prolongation of the proceedings, if it turns out that another court were competent to hear the claim(s) concerning the foreign patents. Lastly, the Court emphasized that even with a generous interpretation of Article 6.1, if the issue of validity is raised in the proceedings concerning the foreign patent(s), all other courts than the courts in the country of registration must decline jurisdiction in accordance with the GAT decision.

VI. Critical evaluation of the decisions

A. GAT v. LuK

The ECJ decisions come as a serious blow to the established practice in certain Member States to enforce foreign patents. It is true that the ECJ left unimpeded the possibility of raising infringement claims in the courts of defendant’s domicile, as long as validity does not become an issue. Contrary to the Advocate General’s opinion, however, the Court did not state this base-line expressly. Moreover, the Court’s reasoning regarding the objectives of the provision reflects a certain tendency to consider the courts in the registration country as the sole appropriate forum for the adjudication of claims concerning the validity and effects of a patent.

Nevertheless, there is nothing in the judgment seriously suggesting that to preclude the defendant’s forum even for “pure” infringement claims should be the rule in the future. First, the question as to whether exclusive jurisdiction under Article 16.4 should apply to infringement claims had not been posed to the ECJ by the referring court, and as a matter of principle, the ECJ cannot, on its own motion, answer questions it has not been asked. Second, by stretching the ambit of Article 16.4 to include even infringement claims, the ECJ would have placed itself in juxtaposition to previous decisions holding that Article 2 is the general rule, meaning that exemptions, including those imposing exclusive jurisdiction for certain types of claims, should be interpreted rather narrowly.32 The latter principle has been confirmed inter alia in a dispute involving ownership and registration of patent rights that had arisen in the relationship between an employer and his former employee33 .

It is indeed somewhat astonishing that the ECJ did not acknowledge in its reasoning that the general principle granting competence to the courts at defendant’s forum has its own weight within the structure of the Convention and should not be discarded easily. Viewed from that perspective, the arguments used by the Court in regard of the structural position of Article 16.4 become rather doubtful. The aspect that exclusive jurisdiction constitutes an exemption from the general rule, and that its legal consequences are so severe as to preclude any choice of forum for the parties, would rather speak in favour of limiting the ambit of the provision precisely to those cases for which it was meant to apply, taking care not to go beyond the intended scope.

It is also difficult to understand why the ECJ speaks with such disdain about the possibility for the plaintiff to choose between two or maybe even more competent fora, and even goes so far as to claim (in Roche) that “forum shopping” is something the Convention tries to avoid. That contention stands in obvious conflict with the very structure of the Convention. By establishing defendant’s domicile as the appropriate venue for all claims raised against him/her alongside the other fora identified in the relevant jurisdictional rules, the text precisely provides for the option to raise a tort claim either in the country where the harmful event occurred, or in defendant’s home country.34 To claim that the existence of that choice would constitute an additional reason for interpreting the ambit of Article 16.4 rather broadly, therefore, contradicts the Convention itself.

The only ponderous argument in the judgment is the Court’s concern that adjudicating patent (in)validity as an incidental matter would amount to a circumvention of Article 16.4. For a thorough evaluation of the issue, however, it would have been necessary to embark into a serious enquiry as to whether and which Member States’ procedural laws actually do attribute erga omnes effect to an incidental ruling which results in a judgment resolving an infringement claim raised between two parties. The Court’s rather cursory remark as to that aspect does not reveal any details, nor can such indications be found in the Advocate General’s opinion or in the position statements of Member States cited by him.

B. Roche v. Primus

Like GAT v. LuK, the Roche decision appears unsatisfactory for a variety of reasons. On the basis of the assumption submitted by the Court, that to apply Article 6.1 is justified in order to avoid a risk of contradictory (instead of irreconcilable) judgments, the conclusion that such a risk does not exist in the situation to which the referring court relates in its second question is hard to understand. As the ECJ admits, if affiliated companies act according to a common strategy devised by one central office, the factual situation from which the conflict arises is the same for all of them. The Court therefore places the emphasis on the legal divergences, but also here, the analysis fails to be convincing.

No mention is made that while European patents are indeed subject to the law of the countries for which they are granted, those laws are not fully autonomous instruments. Instead, their contents are largely determined by the obligation to comply with the binding rules of the EPC. For patent infringement proceedings, this impacts in particular Article 69 EPC and the protocol guiding its application. It remains a mystery why the Court embraces the argument that, if courts in different Member States came to different conclusions as to what is the impact of Article 69 for the scope of the allegedly infringed patent, the divergences are owed to a different legal situation in the Member States. Would the Court also assume that if courts in different Member States came to different conclusions concerning the interpretation of provisions in national trademark law that have been harmonized on the basis of the trademark directive, this would be a natural consequence of national trademark laws being formally independent of each other?

As was previously stated, the Advocate General did make an effort to overcome the obvious flaw in the argument by pointing out that Article 69 only concerns the content, and not the legal scope of the patent. Even if the argument might be correct as such, it is plain that to identify the “meaning” of the patent according to Article 69 will always be an indispensable, and most often also the crucial, issue to be decided in the proceedings. Meaning, that although national law may come into play to a certain extent (and will consequently have to be respected by any court adjudicating a foreign right), the legal assessment of what constitutes the object of the alleged infringement needs to be the same in all Contracting States.

Concerning the interests of the non-resident defendants, it is true that they are put in jeopardy by a joinder of claims as provided by Article 6.1. Those interests, therefore, have to be weighed carefully against the aspects of procedural efficiency forming the background of the multiple defendants rule. Again, it deserves to be pointed out that contrary to the Court’s insinuations, the legitimacy and importance of the efficiency aspects are not tainted by the fact that the provision does allow for the plaintiff, within a certain margin, to choose the forum which he/she considers the most convenient and appropriate. Before this backdrop, the “spider in the web” rule, as developed in Dutch jurisprudence in consequence of Boston Scientific, has laid a solid groundwork for a balanced and pragmatic solution, taking due consideration of both sides concerned. Even though the solution does entail a certain amount of insecurity which is generally at odds with the concept and objectives of the Brussels system, the approach appears manageable – and it seems an acceptable price to pay for the gain in procedural efficiency and flexibility.

VII. Consequences – where to from here?

A. Impact on other issues

It remains to be asked whether and which consequences the judgments will entail on other contentious issues within the Brussels system. For instance – will they be helpful in solving the torpedo problem addressed above? No definite answer can be given to that question. When in a suit for declaration of non-infringement and the plaintiff bases its claim on the contention that the patent is invalid, it follows from GAT that the seized court must declare itself incompetent to adjudicate the claim. However, according to Article 27 of the Brussels Regulation, the court second seized would still have to wait for the first court to decline jurisdiction, and that alone may lead to considerable procrastinations. Furthermore, GAT is of no avail when the plaintiff does not raise the invalidity issue at all, but confines him/herself to contesting infringement. And finally, there has been no clarification of whether in the latter situation – when a claim for declaratory judgment is filed that does not involve a contention of invalidity – the courts in the registration courts are nevertheless competent to exercise jurisdiction on the basis of Article 5.3 (irrespective that according to the claim, the infringement does not occur in that state), or whether the sole competent forum is that of defendant’s domicile.

B. “Ways out” under pertinent law?

While the restriction of the possibility to enforce foreign patents in EU countries ensuing from the ECJ decisions will certainly please those who have always argued that no national court should be allowed to adjudicate foreign rights, it will probably not prove to be beneficial for practice in the long run.I Instead, it will lead to more litigation and an increase in costs.

This invites the question whether the Brussels system in its present form does provide for options that might still allow to continue with the present practice.35 One such option might be for the court seized with a foreign patent infringement claim in the defendant’s country of domicile, to refuse to hear and decide, even incidentally, an invalidity defense raised by the defendant, and to limit itself strictly to the infringement issue. However, serious doubts exist as to whether that would be feasible under national and European law – or whether under the Regulation, other Member States would be entitled to deny recognition and enforcement of such judgments on the ground of a violation of defendant’s right to be heard.

A second option to be considered – that the parties agree to refer the case to a court whom they both trust and where they expect the proceedings to be conducted in a fair and efficient manner – is excluded by the Regulation to the same extent as the issue falls into the ambit of exclusive jurisdiction; this point was particularly emphasized by the ECJ. In consequence of the ECJ’s interpretation of Art. 16.4 (Article 22.4 of the Brussels Regulation), the Convention imposes a more restrictive regime on the parties than what is foreseen in the new Hague Convention on choice of court agreements. The latter applies to litigation involving industrial property rights, if the conflict arises in the framework of a contractual relationship between the parties, and it allows the chosen court to adjudicate invalidity as an incidental issue, with the legal effect of the judgment being confined to the parties and to the conflict resolved. If the Hague Convention should enter into force, it is foreseen that it would be given precedence over existing European regulations if one of the parties involved is not domiciled in the EU. By contrast, the more rigid system of the Brussels Regulation would apply if both parties are EU residents.

Finally, it is of some practical importance to take notice of Article 31 of the Brussels Regulation, which states:

Application may be made to the courts of a Member State for such provisional, including protective, measures as may be available under the law of that State, even if, under this Regulation, the courts of another Member State have jurisdiction as to the substance of the matter.

The option ensuing from this rule proves interesting because the specific feature which made and still makes Dutch courts so attractive for enforcement of foreign patent claims is the availability of the “kort geding.” Indeed, also in the Roche case that has led to the ECJ’s judgment concerning Article 6.1, the lawsuit had started as “kort geding”. As is noted in Advocate General Léger’s opinion, no question was posed by the Dutch Supreme Court concerning the relationship between Article 31 of the Brussels Regulation (at the relevant time Article 24 of the Brussels Convention) and Article 6.1 (or Article 22.4 of the Brussels Regulation). Without therefore receiving clarification in Roche about the potential reach and impact of Article 31, it seems quite likely from the wording of the provision that whatever the ECJ’s rulings on Articles 6.1 and 16.4 (22.4) might be, Dutch Courts can, on the basis of the broad competence granted with regard to provisional measures, continue their previous practice to adjudicate infringement of foreign patents against one or several, including non-resident, infringers in the framework of those fast and efficient proceedings which have become a Dutch landmark and a main point of attraction for patent holders worldwide. On the other hand, the advantages that route may entail for the interests of plaintiffs are somewhat qualified by the fact that according to the ECJ’s jurisprudence, such decisions would not be entitled to the benefits of the Regulation. They would not have to be recognized and enforced on a quasi-automatic basis in other Member countries.

C. Options for the future

A different way out from what is discussed above is mentioned by Advocate General Léger at the end of his opinion in Roche . He refers to the pending negotiations concerning the European Patent Litigation Agreement (EPLA) and the Community Patent Regulation proposal, which includes provisions for a Community Patent Judiciary. Of those two instruments, the latter can be safely excluded from further considerations, at least for the time being, as the intention to establish a Community Patent system on the basis of the pertinent proposal finally seems to have been abandoned for good. As sad as that may be, it is good news for the other option, the EPLA. Being faced with the obvious failure of the Community patent proposals, the Commission appears to have given up their long-standing resistance against progress being made in the other field, meaning that the prospects for installing the EPLA have become rather favourable. If it should materialize in the form of the latest publicly available draft of 2004, claims for infringement of one or several European patents could always be brought before (one regional chamber of) the European Patent Court, who would also be competent to adjudicate (in)validity issues. This further implies that claims against several infringers acting together could be combined more easily.

While the prospect of EPLA becoming a reality in the not so distant future is certainly comforting, it does not disperse all concerns about the impact of the two ECJ judgments. First, even if the negotiations that are necessary for the finalization and acceptance of the EPLA run smoothly (which is by no means a given thing), it will take several years before the system is established and working. Second, the decisions do affect other areas of IP law as well. Although not of equal importance and immediate interest as in patent law, this may also cause certain problems36 .

Third, the ECJ’s rigid attitude may produce a chilling effect on present efforts to devise international rules on jurisdiction and applicable law, with the aim of creating a fair and efficient system for the adjudication of transborder IP conflicts. This concerns in the American Law Institute’s project “Intellectual Property: Principles governing Jurisdiction, Choice of Law, and Judgments in Transborder Conflicts”37 , as well as the work undertaken in a European study group established by the Munich Max-Planck-Institute for Intellectual Property, Competition and Tax Law together with the Hamburg Max-Planck-Institute for Civil and Private International Law (European Max-Planck-Group for Conflict of Laws in Intellectual Property – “CLIP”). Both projects are still works in progress, but in their present stage, they do embrace rules on jurisdiction that would allow for adjudication of foreign intellectual property rights, including registered industrial property rights like patents and trademarks, and they would also permit, under certain circumstances, that claims against multiple (including non-resident) defendants are consolidated in one forum. It is indeed believed that both features are of eminent importance in any new system addressing the challenges of today’s largely globalized markets. And, as was attempted to demonstrate in the analysis above, none of the arguments employed by the ECJ does furnish a convincing reason why adjudication of foreign rights would necessarily lead to detrimental or even only unsatisfactory results. The only serious obstacle in the present Brussels system appears to result from uncertainties concerning the legal effects of incidental rulings, i.e. whether they will arise only between the parties and for the conflict decided. The obvious remedy against such misgivings would be to complement the legal rules on international jurisdiction with an express provision stipulating that incidental decisions on (in)validity have only inter partes effect and are not enforceable as such. This is the approach taken in the new Hague Convention, and the same technique is endorsed in the two scientific projects mentioned above.

It might prove a lucky coincidence that the Commission is obliged to report, in spring 2007, to the European Parliament, the Council and the Economic and Social Committee on the application of the Brussels Regulation including possible proposals for amendment.38 As a contribution to the report, CLIP has submitted proposals39 to the effect that (1) it is clarified in Article 22.4 that exclusive jurisdiction only applies when the principal claim raised in proceedings is concerned with validity etc., (2) incidental rulings on validity have no effect against third parties, and that (3) judgments are to be considered as irreconcilable in the meaning of Art. 6.1 when the legal and factual situation is essentially the same, which includes the situation that formally separate intellectual property which are determined in their contents by the same rule of European law are infringed by companies implementing a common, centrally administered business plan. It is hoped that the proposals find support from practice as well as in academic circles.


  1. Anette Kur is senior member of research staff and head of unit at the Max-Planck-Institute (MPI) for intellectual property, competition and tax law, Munich; associate professor at the University of Stockholm. Executive committee member, president-elect of ATRIP (Association for Teaching and Research in Intellectual Property), Hauser global professor, NYU. Representative of the MPI in the WIPO Standing Committee on the Law of Trademarks, Industrial Designs, and Geographical Indications (SCT). Advisor in the ALI project Intellectual Property: Principles Governing Jurisdiction, Choice of Law, and Judgments in Transnational Disputes. Lecturer in trademark law, intellectual property law and private international law at Munich University (LMU), Munich Intellectual Property Law Center (MIPLC) and Swedish School of Economics, Helsinki. Member of foreign faculty, Santa Clara University (CA). A. Kur is the author of books and numerous articles in the field of national, European and international trademark, unfair competition and industrial design law as well as international jurisdiction and choice of law.
  2. For the definition of “domicile” with regard to companies or other legal persons, see Article 60 Brussels Reg.:1. For the purposes of this Regulation, a company or other legal person or association of natural or legal persons is domiciled at the place where it has its:(a) statutory seat, or(b) central administration, or(c) principal place of business.2. For the purposes of the United Kingdom and Ireland "statutory seat" means the registered office or, where there is no such office anywhere, the place of incorporation or, where there is no such place anywhere, the place under the law of which the formation took place.3. In order to determine whether a trust is domiciled in the Member State whose courts are seised of the matter, the court shall apply its rules of private international law.
  3. For the determination of nationality, see Article 59 Brussels Reg.: 1. In order to determine whether a party is domiciled in the Member State whose courts are seised of a matter, the court shall apply its internal law.2. If a party is not domiciled in the Member State whose courts are seised of the matter, then, in order to determine whether the party is domiciled in another Member State, the court shall apply the law of that Member State.
  4. Cf. Article 4 Brussels Regulation:1. If the defendant is not domiciled in a Member State, the jurisdiction of the courts of each Member State shall, subject to Articles 22 and 23, be determined by the law of that Member State.2. As against such a defendant, any person domiciled in a Member State may, whatever his nationality, avail himself in that State of the rules of jurisdiction there in force, and in particular those specified in Annex I, in the same way as the nationals of that State.
  5. In the following, only the provisions of the Brussels Regulation will be addressed. Unless stated otherwise, the Brussels and Lugano Convention rules are presumed to be congruent.
  6. See decisions cited in footnotes 32 and 33.
  7. See decision by the Swedish Supreme Court, (Högsta Domstolen), Decision June 14, 2000 - Case No. Ö 2095-99 („Flootek“), 32 IIC, 231 (2001), and the article by L. Lundstedt, Jurisdiction and the Principle of Territoriality in Intellectual Property Law: Has the Pendulum Swung Too Far in the Other Direction? 32 IIC 124-141 (2001). A similar position has been adopted in Italy, see the references in footnote 10 to articles summarizing Italian case law on this point.
  8. C-189/87 – Kalfelis v Schröder, [1988] ECR, 5565; C-406/92 – Tatry, [1994] ECR, I-5460; C-51/97 – Réunion Européenne and Others, [1998] ECR I-6511.
  9. On the concerns to which the application of Article 6.1 may give rise, in particular if it is used so extensively as in prior Benelux court practice, see below.
  10. The name was apparently “invented” by Prof. Mario Franzosi, see Franzosi/de Sanctis, AIPLA 1997, 67 et seq.
  11. This consequence would not ensue if the view is endorsed that negative declaratory actions do not concern the same cause of action as claims for substantive remedies. Concerning Italian jurisprudence on this point see Jandoli, The Italian Torpedo, 29 IIC 783 (2000); Franzosi, Torpedoes are Here to Stay, 31 IIC 156 (2002).
  12. Lincoln v. Interlas, (1) BIE 1991, 23.
  13. E.g. De Boer Staalinrichtingen v.Cewaco, 28.8.1990, BIE 1992,78; Philips v.Hermogram, 30.12.1991, BIE 1992, 80; Pipe Liners v.Wavin, 16.1.1992, BIE 1993, 9; Vredo v. Veenhuis, 15.4.1992, BIE 1994, 77; Wiener v. Llovera, 30.11.1993, BIE 1995, 2; De Groot v. Euro Agra, Aqual, Tigra, 12.12.1993; Applied Research Systems v. Organon et. al., 3.2.1994 (IER 1994, 8); Chiron v. Organon Teknika-UBl, 22.7.1994 (IER 1994, 24); Chiron v. Organon Teknika-UBl, 1.12.1994 (IER 1995, 15); Cordis v. Schneider, 22.12.1994 (IER 1995, 6); British Telecommunication v. Plumetazz, 31.3.1994 (docket nr. 94/269); Minnesota Mining v. Professional Diamond Tools Elsburg, 24.10.1994 (docket nr. 94/1044); Brard v. ACS 26.1.1995 (docket nr. 95/87); Chiron v. Murex, 8.5.1995 (AZ K695/303) and 7.12.1995 (BIE 1998, 879) and 12.12.1996 (BIE 1997, 319); Hoffmann-La Roche v. Organon Teknika, 14.12.1995 (IER 1996, 6); Raychem Corp. v. Thermon, 22.5.1995 (IER 95,3). This list has been adapted from Tilmann/v. Falck, EU-Patentrechtsharmoniserung und Torpedos, 2000 GRUR, 579-586.
  14. See in particular decisions by the Düsseldorf district court, 1.2.1994, docket nr. 4 O 193/87; 1.6.1996, docket nr. 4 O 5/95 and other decisions reported in the court’s annual reports 1996, I - Reinigungsmittel für Kunststoffverarbeitungsmaschinen; 1998, I – Kettenbandförderer III; 1998, 92 – Schussfadengreifer.
  15. See above, C III. Whether Article 22.4 is applicable in cases “concerned with” or “having as their object” registration or validity, depends on the different language versions; see above.
  16. The position of the Dutch courts is special insofar as the rulings were handed down in summary proceedings (kort geding) which allow for a more flexible assessment than regular proceedings.
  17. See Fort Dodge v. Animal Health, Chancery Division - Patent Court (Laddie J.) F.S.R 1998, 222, 226 and Court of Appeals, F.S.R. 1998, 22, 237.
  18. In Fort Dodge v. Animal Health (previous footnote).
  19. Decision pronounced April 23, 1998. docket nr. 97/1296.
  20. See above, footnote 7; the cases did not concern patents or other IP rights.
  21. C-4/03 – Gesellschaft für Antriebstechnik mbH & Co. KG (GAT) v.Lamellen und Kupplungsbau KG (LuK).
  22. This attitude coincides with the position of German jurisprudence, see above.
  23. This reflects the attitude of the UK courts, see above.
  24. The third alternative roughly corresponds to the practice observed by the Dutch courts, see above.
  25. Duijnstee v. Goderbauer, C-288/82, [1983] ECR 3663.
  26. It is hard to imagine how that option should operate in practice. Given the necessarily subjective character of assessing what is to be understood by “honest practices”, such an evaluation would be basically alien to the principle of legal security, which is one of the major objectives of the Brussels system. It might be argued that the Dutch courts have also taken the seriousness of invalidity defenses into account when adjudicating patent infringement claims in kort geding proceedings, see above. However, while this may be an acceptable practice for summary provisions which, after all, are considered to be provisional in their result (even if in practice, they very often prove to be final), it is much more difficult for a court to justify that the same route is embarked upon in the framework of ordinary, main proceedings.
  27. The caveat must be made here that the exact implications of the ECJ’s judgment are still open to doubt and will certainly give raise to creative interpretation; see also below VII B,
  28. C-539/03 – Roche Nederland et al v. Frederick Primus and Milton Goldenberg
  29. footnote 7.
  30. footnote 7.
  31. On Article 28 and its more “dangerous”, torpedo-generating companion, Article 27 concerning proceedings involving the same cause of action, see above, III D.
  32. See Case 73/77 – Sanders, [1977] ECR 2383, para. 17/18; Case 115/88 – Reichert I, [1990] ECR, I-27, para. 9; C-261/90 – Reichert II, [1992] ECR I-2149, para. 25; C-292/93 – Lieber, [1994] ECR I-2535 para 12; C-8/98 – Dansommer, [2000] ECR I-393 para 21; C-518/99 – Gaillard, [2001] ECR I-2771 para 14; C-73/04 – Klein, [2005] ECR I-8667 para 15; C-343/04 – Land Oberösterreich, [2006] ECR I-0000 para 26 s. (all decisions concerning Article 16.1 Brussels Convention).
  33. Case 288/82 – Duijnstee v. Goderbauer, [1983] ECR 3663, in particular para. 23. Quite remarkably, the ECJ omits any reference to that particular paragraph of the Duijnstee decision in the references made in GAT v. LuK.
  34. The notion of torts also includes patent (and other IPR) infringements. For claims concerning declarations of non-infringement, it is contentious even whether they can be raised before the courts in the country where the harmful event, according to the claim raised, has not occurred and/or is not threatening, or whether such claims can only be raised before the courts in the defendant’s country of domicile; see the Flootek decision by the Swedish Supreme Court (above, footnote 6). See also below, VII A.
  35. In one of the first decisions to be published after GAT, the Commercial Court of Zurich has ordered to stay the proceedings in a lawsuit brought against a Swiss defendant for infringement of a Community trademark, after the defendant raised the defense of invalidity. A fixed time period was set out for the defendant to initiate cancellation proceedings before OHIM or a competent Community court; otherwise, the proceedings will be resumed and a judgment on the merits will be passed (decision published in [2006] sic! 854). As Switzerland is not a member of the EU, the Brussels Regulation does not apply, but the decision was handed down on the basis of the parallel Lugano Convention, and GAT was taken into account.
  36. For trademarks and industrial designs, the problems are less urgent, because of the existence of genuine Community rights (Community trademark and Community design) having their own, although imperfect, litigation systems (which is not binding on non-EU countries; see the case referred to in the previous footnote). However, if the acquisition of e.g. a CTM fails because of an obstacle against protection existing in one member state, the application will usually be transformed into a number of parallel national rights, creating essentially the same situation as in patent law under the EPC. For copyright, invalidity claims don’t pose a problem, but the Roche decision might become an obstacle against consolidation of claims when the right is infringed by several persons or entities in different EU countries acting together.
  37. Reporters: Rochelle Dreyfuss, Jane Ginsburg and François Dessemontet.
  38. See Article 73 Brussels Regulation.
  39. CLIP - Exclusive Jurisdiction and Cross Border IP (Patent) Infringement - Suggestions for Amendment of the Brussels I Regulation. To be published in E.I.P.R.; also available on the MPI website,

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