JURISDICTION REPORT: NETHERLANDS
APPLE-SAMSUNG DECISION CAUSES INTERESTING DISCUSSIONS
Michiel Rijsdijk Arnold + Siedsma
A remarkable preliminary court decision of the Dutch Court at Te Hague of August 24 2011 in the court case regarding the Apple and Samsung smart phones and tablets has started an interesting discussion among Dutch IP lawyers.
Apple started interim injunction proceedings based on three patents, five design rights, its copyright and slavish imitation (act of tort). Te judge prohibited Samsung marketing the Galaxy S, SII and Ace, but based this ban only on the infringement of one Apple patent. All other orders are declined, which makes the decision not so unfortunate for Samsung and a loss for Apple, since Samsung has announced that it can easily alter the soſtware on its smart phones so that it no longer infringes the Apple patent. Te remarkable point of this decision is that the judge made the ban a cross-border ban, which means that Samsung is not only prohibited from marketing its smart phones in the Netherlands but also in all other European countries where the patent is valid.
Te possibility that a judge can give a cross-border ban in an interim injunction proceeding is controversial since a European patent is in fact not one patent but a pooling of several national patents. In case the nullity of a patent is invoked in proceedings on the merits, or the validity of the patent is disputed, for example by an invalidity defence of Samsung, the national judges can decide only on the invalidity of a national part of a European patent.
Te discussion surrounds the question of whether it is possible to provide for a preliminary cross-border injunction. One opinion in the discussion is that the judge can given a preliminary cross-border injunction since a decision on the validity in interim proceedings would not interfere with the exclusive competence of Article 22 (4) of the Brussels I Regulation (regarding jurisdiction, recognition and enforcement of judgments in civil and commercial matters). Supporters of this point of view refer to the European Court of Justice (ECJ) decision on the GAT/LuK case, in which it is made out that the invalidity of a patent can be considered only by a court of the member state where the patent is registered. Tis decision, however, does not state anything about preliminary proceedings, which would mean that a preliminary cross-border injunction is still possible.
Another strand in the discussion refers to the ECJ decision in the Mietz case, in which it is made out that for preliminary decisions there must be a real connection between the territorial jurisdiction and the subject of the matter, which would mean that a measure can have effect only in the territorial jurisdiction of the judge. Tis would mean a preliminary cross- border decision is not possible.
www.worldipreview.com
“BASED ON THE APPLE-SAMSUNG DECISION IT SEEMS THAT THE NETHERLANDS STILL OFFERS THE POSSIBILITY TO REQUEST A CROSS-BORDER INJUNCTION IN IP CASES.”
Te question whether it is possible to provide a cross-border injunction on interim injunction proceedings remains unanswered. It was the court at Te Hague itself that has posed question on this subject to the ECJ on December 22, 2010.
Based on the recent Apple-Samsung decision it seems that the Netherlands still offers the possibility to request a cross-border injunction in IP cases. Tis makes the Netherlands a valuable and interesting country to select when making an European-wide IP litigation strategy and choosing the best starting point. It will follow from the ECJ decision whether a possibility for a cross-border injunction remains or not. We are looking forward to the ECJ decision.
Michiel Rijsdijk is a partner at Arnold + Siedsma. He can be contacted at:
mrijsdijk@arnold-siedsma.com
World Intellectual Property Review November/December 2011 79
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44 |
Page 45 |
Page 46 |
Page 47 |
Page 48 |
Page 49 |
Page 50 |
Page 51 |
Page 52 |
Page 53 |
Page 54 |
Page 55 |
Page 56 |
Page 57 |
Page 58 |
Page 59 |
Page 60 |
Page 61 |
Page 62 |
Page 63 |
Page 64 |
Page 65 |
Page 66 |
Page 67 |
Page 68 |
Page 69 |
Page 70 |
Page 71 |
Page 72 |
Page 73 |
Page 74 |
Page 75 |
Page 76 |
Page 77 |
Page 78 |
Page 79 |
Page 80 |
Page 81 |
Page 82 |
Page 83 |
Page 84 |
Page 85 |
Page 86 |
Page 87 |
Page 88 |
Page 89 |
Page 90 |
Page 91 |
Page 92 |
Page 93 |
Page 94 |
Page 95 |
Page 96 |
Page 97 |
Page 98 |
Page 99 |
Page 100