A guide to the UPC and the UP - Flipbook - Page 88
which are neither in the EU nor signatories of the Lugano Convention, 19 these provisions
are not applicable. 20 For the policy reasons given in GAT v LuK, 21 there are, however,
compelling reasons for conferring exclusive jurisdiction over the issue of validity upon
the courts of the State of registration, and therefore it is expected that the Court will adopt
that principle. But, if the Court decides not to do so, there are nevertheless provisions in art.34
Brussels I Regulation (recast) to allow it, either of its own motion or on the application of one
of the parties, to stay the proceedings to allow a pre-existing related action before a court of
a third State to progress if:
“(a) it is expedient to hear and determine the related actions together to avoid the risk
of irreconcilable judgments resulting from separate proceedings;
(b) it is expected that the court of the third State will give a judgment capable of
recognition and, where applicable, of enforcement in that Member State; and
(c) the court of the Member State is satisfied that a stay is necessary
for the proper administration of justice.”
6-13
The Court is therefore able to grant cross-border relief on a European patent, for example,
covering Spain (an EU Member State but not a Contracting Member State) and Turkey
(a non- EU EPC Contracting Member State) against a defendant domiciled in France
(a Contracting Member State). When the validity of the Spanish part of the European
patent is put in issue, the Court must declare of its own motion that it has no jurisdiction, 22
and, it is submitted, it should do the same in relation to the issue of infringement over the
Turkish part of the European patent or, at least insofar as there is an invalidity action
pending in Turkey, stay the proceedings under art.34 Brussels I Regulation (recast).
6-14
The Brussels I Regulation (recast) also provides, in art.35, that a court of an EU
Member State can award such provisional, including protective, measures as may
be available under the law of that Member State, even if a court of another EU Member
State has jurisdiction over the substance of the matter for example under art.24(4).
The interaction between art.35 and art.24(4) was considered by the CJEU in Solvay SA v
Honeywell Fluorine Products Europe BV & others. 23 In that case, the CJEU accepted that
although the Dutch courts, in interim proceedings, 24 would make an assessment as to
how the court having jurisdiction under art.24(4) would rule on validity, it did not make a
final decision on the validity of the patent and would refuse to adopt provisional relief if it
considered that there was a reasonable, non-negligible possibility that the patent would be
declared invalid by the competent court. In such circumstances, art.24(4) did not preclude
the grant of a cross-border preliminary injunction.
6-15
Relying on Solvay v Honeywell, the Dutch courts regularly grant cross-border preliminary
injunctions in patent actions. The Court of Appeal of the Hague has recently gone so far as
to grant a cross-border preliminary injunction against a Netherlands domiciled defendant
covering a number of EPC Contracting States, even though the European patent was not in
force in the Netherlands. 25 The injunction covered the EU Member States of Belgium, Bulgaria,
Germany, France, Hungary, Austria, Portugal and Spain, the Lugano Convention State of
Switzerland and the non-EU EPC Contracting States of Liechtenstein and the United Kingdom.
19
20
21
22
23
24
25
Albania, Liechtenstein, Monaco, Montenegro, North Macedonia, San Marino, Serbia, Turkey and the United Kingdom.
IRnova AB v FLIR Systems AB (C-399/21) ECLI:EU:C:2022:648 at [35].
(C-4/03) [2006] ECR I-06509 at [22], [23] and [26] to [30].
arts 24(4) and 27 Brussels I Regulation (recast).
(C-616/10) ECLI:EU:C:2012:445.
Such proceedings can be conducted with or without main proceedings.
LONGi (Netherlands) Trading B.V. v Hanwha Solutions Corporation (C-200.309.190/01), 1 March 2022.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 78
