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A European perspective on Remedies

A European perspective on Remedies. Injunctions and border detention. New York, 29 April 2011 Gertjan Kuipers. European Remedies – Injunctions. Injunctions in the EU partially harmonized by IPR Enforcement Directive Differences still remain UK: injunction is a discretionary remedy

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A European perspective on Remedies

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  1. A European perspective on Remedies Injunctions and border detention New York, 29 April 2011 Gertjan Kuipers

  2. European Remedies – Injunctions • Injunctions in the EU partially harmonized by IPR Enforcement Directive • Differences still remain • UK: injunction is a discretionary remedy • Continental Europe: matter of law • FRAND-defence (Orange Book decisions) • Germany: may prevent injunction (BGH, 5/6/2009 – KZR 39/06) • The Netherlands: no license  injunction is justified

  3. Preliminary injunctions • The Netherlands (kort geding) • mini-trial • urgency always presumed in IP enforcement actions • quick (injunction can be obtained within 1 or 2 months or even a day) • UK: injunction only in exceptional circumstances • irreparable damage • balance of convenience • Germany: injunction only if: • urgent • infringement is clear • Belgium • European patent is presumed to be valid

  4. Cross-border injunction (1) • The European patent: a bundle of national patents • Some European Courts (in particular Dutch Courts) used to grant cross-border relief • ECJ: Gat v Luk and Roche v. Primus – limit possibilities cross-border relief • Gat v Luk: • Infringement cannot be decided without reference to validity • Validity of patent is up to national courts (article 22 (4) of the Regulation) • Roche v Primus • Article 6 (1) of the Regulation allows several defendants to be sued in the state of domicile of any one of them in case of sufficient link between claims • Insufficient link in case of different national parts of European patents

  5. Cross-border injunction (2) • Courts keep trying to get jurisdiction for cross-border relief • Preliminary questions of Court of The Hague (Solvay S.A v Honeywell) • All defendants (including NL defendant)  infringement in overlapping multiple countries in Europe • Question regarding Article 6(1) of the Regulation:In a situation where two or more companies from different Member States, in proceedings pending before a court of one of those Member States, 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, does the possibility arise of ‘irreconcilable judgments’ resulting from separate proceedings as referred to in Article 6(1) of the Regulation

  6. Cross-border injunction (3) • Questions regarding Article 22 (4) of the Regulation • Is it also applicable in proceedings seeking provisional relief on the basis of foreign patent? • In order to be applicable must the defence of invalidity be subject to procedural requirements? • e.g. invalidity proceedings already pending before court having jurisdiction? • If question 1 is answered affirmative: does the court retain jurisdiction in respect of infringement? And if so, how to deal with the validity?

  7. Cross-border injunction (3) • Questions regarding Article 22 (4) and 31 of the Regulation Article 31 Jurisdiction for taking provisional and protective measuresApplication 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. • If question 1 is answered affirmative, can Article 31 of the Regulation confer on the national court jurisdiction to adjudicate on a claim seeking provisional relief on the basis of a foreign patent ? • If question 4 is answered in the affirmative, what facts or circumstances are then required in order to be able to accept that there is a real connecting link?

  8. The Anti-Piracy Regulation (‘APR’) (1383/2003) • Customs can detain or suspend the release of goods if suspected of infringing IP-rights • Take action based on application by the right-holder or ex officio • APR provides the EU with interesting enforcement tools for right-holders

  9. The APR and relevant factors • For custom authorities trademark infringement easier to assess then patent infringement.

  10. APR: not applicable to intra-Community movement of goods • Applicable at entry or exit of EU • Enforcement at entry of EU

  11. APR: some countries apply it to goods in transit

  12. APR: Production fiction • In some countries, the APR is also applied to transit goods. • Dutch courts apply a legal fiction (production fiction) “transit goods need to be assessed as if produced in the transit country” (Dutch Supreme Court 19 March 2010, Philips/Princo) • APR is also relevant outside the EU • India and Brazil complained at WTO over seizure by Dutch Customs of Losartan (the generic name for the drug Cozaar marketed by Merck & Co)

  13. APR: Product fiction • Preliminary questions (Philips v Lucheng; Nokia v Commissioners of Revenu & Customs) • Opinion AG: scope of APR does not include transit goods(Opinions are non-binding, although ECJ accepts them 80% of the time) Philips v Lucheng: “Is not to be interpreted as meaning that [..] that authority may apply the fiction that those goods were produced in that same Member State” Nokia v Commissioners of Revenu & Customs: “may be seized by the customs authorities provided that there are sufficient grounds for suspecting that they are counterfeit goods and, in particular, that they are to be put on the market in the European Union” • Final ruling of ECJ to be expected before the end of 2011

  14. Thank you for your attention

  15. FRAND-defence: Bundesgerichtshof “If a company with a dominant position on the market discriminates the company seeking a license in a commerce usually accessible to similar companies, or if it inequitably obstructs the proposed licensee by refusing to conclude a patent license agreement it has been offered, the enforcement of the patent-law claim for injunctive relief constitutes an abuse of its dominant position on the market, because the dominant company prevents the other company from gaining the very access to the market that it is obliged grant by entering into the license agreement. The enforcement of the claim for injunctive relief is therefore just as prohibited as the refusal to conclude the license agreement that would annihilate the claim for injunctive relief.” (BGH, 5/6/2009 – KZR 39/06)

  16. FRAND-defence: Court of The Hague 6.21  […] Therefore, also in view of legal certainty a system is desirable wherein the right to enforce a patent only strands after a party actually has a license. […] 6.24 In light of the foregoing, it must be concluded that Philips can enforce its patent against SK, also in case it would for argument’s sake be held that SK would be entitled to a license. This in principle does not constitute abuse of dominance in the sense of antitrust law, nor does it otherwise lead to an unlawful or unreasonable act […] 6.25 The Court is aware that with the abovementioned ruling it deviates from the criteria which have been developed for the assessment of so-called FRAND-defences by the German Bundesgerichthof in the Oprange Book decision… (Court of The Hague, 17/3/2010 – 316533)

  17. ECJ: Gat v Luk (Case C-4/03) Article 16(4) [of the Regulation] is to be interpreted as meaning that the rule of exclusive jurisdiction laid down therein concerns all proceedings relating to the registration or validity of a patent, irrespective of whether the issue is raised by way of an action or a plea in objection. ECJ: Gat v Luk (Case C-4/03)

  18. ECJ: Roche v. Primus (C-539/03) Article 6(1) [of the Regulation], must be interpreted as meaning that it does not apply in European patent infringement proceedings involving a number of companies established in various Contracting States in respect of acts committed in one or more of those States even where those companies, which belong to the same group, may have acted in an identical or similar manner in accordance with a common policy elaborated by one of them.

  19. Preliminary questions (Solvay S.A v Honeywell) 1. Is Article 22(4) of the Regulation applicable in proceedings seeking provisional relief on the basis of a foreign patent (such as a provisional cross-border prohibition against infringement), if the defendant argues by way of defence that the patent invoked is invalid, taking into account that the court in that case does not make a final decision on the validity of the patent invoked but makes an assessment as to how the court having jurisdiction under Article 22(4) of the Regulation would rule in that regard, and that the application for interim relief in the form of a prohibition against infringement shall be refused if, in the opinion of the court, a reasonable, non-negligible possibility exists that the patent invoked would be declared invalid by the competent court?

  20. Preliminary questions (Solvay S.A v Honeywell) 2. In order for Article 22(4) of the Regulation to be applicable in proceedings such as those referred to in the preceding question, must the defence of invalidity be subject to procedural requirements in the sense that Article 22(4) of the Regulation is only applicable if invalidity proceedings before the court having jurisdiction under Article 22(4) of the Regulation are already pending or are to be commenced - within a period to be laid down by the court - or at least that a summons in that regard has been or is being issued to the patent holder, or does it suffice if a defence of invalidity is merely raised and, if so, are requirements then laid down in respect of the content of the defence put forward, in the sense that it must be sufficiently substantiated and/or that the conduct of the defence must not be deemed to be an abuse of procedural law?

  21. Preliminary questions (Solvay S.A v Honeywell) 3. If question 1 is answered in the affirmative, does the court, after a defence of invalidity has been raised in proceedings such as those referred to in question 1, retain jurisdiction in respect of the infringement action with the result that (if the claimant so desires) the infringement proceedings must be stayed until the court having jurisdiction under Article 22(4) of the Regulation has given a decision on the validity of the national part of the patent invoked, or that the claim must be refused because a defence that is essential to the decision may not be adjudicated, or does the court also lose its jurisdiction in respect of the infringement claim once a defence of invalidity has been raised?

  22. Preliminary questions (Solvay S.A v Honeywell) 4. If question 1 is answered in the affirmative, can Article 31 of the Regulation confer on the national court jurisdiction to adjudicate on a claim seeking provisional relief on the basis of a foreign patent (such as a cross-border prohibition against infringement), and against which it is argued by way of defence that the patent invoked is invalid, or (should it be decided that the applicability of Article 22(4) of the Regulation does not affect the jurisdiction of the Rechtbank to adjudicate on the infringement question) jurisdiction to adjudicate on a defence claiming that the foreign patent invoked is invalid?

  23. Preliminary questions (Solvay S.A v Honeywell) 5. If question 4 is answered in the affirmative, what facts or circumstances are then required in order to be able to accept that there is a real connecting link, as referred to in paragraph 40 of the Van Uden v Deco-Line judgment [Case C-391/95], between the subject-matter of the measures sought and the territorial jurisdiction of the Contracting State of the court before which those measures are sought?

  24. Preliminary question Philips v Lucheng ‘Does Article 6(2)(b) of Council Regulation (EC) No 3295/94 of 22 December 1994 (the old Customs Regulation) constitute a uniform rule of Community law which must be taken into account by the court of the Member State which, in accordance with Article 7 of that regulation, has been approached by the holder of an intellectual-property right, and does that rule imply that, in making its decision, the court may not take into account the temporary storage status/transit status and must apply the fiction that the goods were manufactured in that same Member State, and must then decide, by applying the law of that Member State, whether those goods infringe the intellectual-property right in question?’

  25. Opinion AG Philips v Lucheng Article 6(2)(b) of Council Regulation (EC) No 3295/94 of 22 December 1994 laying down measures concerning the entry into the Community and the export and reexport from the Community of goods infringing certain intellectual property rights is not to be interpreted as meaning that the judicial authority of the Member State called on, in accordance with Article 7 of that regulation, by the holder of an intellectual property right, may take no account of the status of temporary entry or of transit of the goods in question, or, therefore, as meaning that that authority may apply the fiction that those goods were produced in that same Member State for the purpose of ruling, in accordance with the law of that State, whether or not they infringe the intellectual property right at issue.

  26. Preliminary question Nokia v Commissioners of Revenu & Customs ‘Are non-Community goods bearing a Community trade mark which are subject to customs supervision in a Member State and in transit from a non-Member State to another non-Member State capable of constituting “counterfeit goods” within the meaning of Article 2(l) (a) of Regulation (EC) No 1383/2003 if there is no evidence to suggest that those goods will be put on the market in the EC, either in conformity with a customs procedure or by means of an illicit diversion?’

  27. Opinion AG Nokia v Commissioners of Revenu & Customs Non-Community goods bearing a Community trade mark which are subject to customs supervision in a Member State and are in transit from one non-member country to another non-member country may be seized by the customs authorities provided that there are sufficient grounds for suspecting that they are counterfeit goods and, in particular, that they are to be put on the market in the European Union, either in conformity with a customs procedure or by means of an illicit diversion.

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