JURISDICTION REPORT: THE NETHERLANDS
STILL A SAFE BET FOR CROSS BORDER INJUNCTIONS
Michiel Rijsdijk Arnold + Siedsma
During the late 1990s, the Dutch were famous not only for their cheese, but also for their cross border injunctions. Te court in Te Hague, highly specialised in patent law, assumed jurisdiction in most cross border patent cases. Te Hague would readily grant a cross border injunction when it judged the plaintiff to be right.
Tis changed when the Court of Justice of the European Union (CJEU) put an end to this practice in its 2006 GAT-LuK ruling. Tis ruling was based on the Convention of September 27, 1968, entitled Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters. It was then decided that only the judge of the country in which the patent is registered has jurisdiction 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. Tis rule is based on the following arguments:
First, it was determined that if a court in the main action relating to a patent, such as an infringement action or for a declaration of non-infringement, should give a judgment on the validity of the equivalent European patent in countries outside the Netherlands, this would indirectly establish the invalidity of the patent at issue, thereby undermining the binding nature of the rule of jurisdiction laid down in the Convention and circumventing its mandatory nature.
Second, accepting such a possibility would multiply the heads of jurisdiction. Tis would undermine the predictability of the rules of jurisdiction laid down by the Convention. Tis would consequently undermine the principle of legal certainty, which is the basis of the Convention.
Finally, allowing decisions within the scheme of the Convention, in which courts other than those of the patent-issuing member state rule indirectly on the validity of that patent, would multiply the risk of conflicting decisions which the Convention seeks to avoid.
Tis CJEU decision stopped the Dutch judge assuming jurisdiction for only a brief period of time. Only two months aſter the decision the Dutch judge ruled in the interim injunction case between Bettacare and H3 Products that in cases of urgent matters the judge would have jurisdiction in cross border patent cases and would be able to rule cross border injunctions. Tis was based on the urgent nature the case and the fact that nothing definitive would be said on the validity of a patent issued abroad.
In December 2010, the Dutch judge questioned whether this was truly the way the CJEU intended it to be. It therefore posed prejudicial questions on the interpretation of the Convention to the CJEU in the cross border patent case between Solvay and Honeywell. In the meantime the Dutch
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“IF THE CJEU FOLLOWS THE AG, IT WOULD BE A GREAT BOON FOR DUTCH LAWYERS, AS WELL AS FOR PATENT OWNERS SEEKING SUPPORT IN THEIR ACTIONS THROUGHOUT EUROPE.”
judge continued to assume jurisdiction in cross border interim injunction cases, irrespective of the IP nature of the case. In January 2011 the judge ordered in the case between Louis Vuitton and Ms Plesner, by way of an ex-parte injunction, the Danish defendant to refrain from infringing the Community Design rights of Louis Vuitton. Some months later, in the case between YMP and Yell, the court of appeal ruled that, notwithstanding an objection against the validity of a trademark, such an objection would have no impact on the assumption of jurisdiction nor on the power to rule on a cross border injunction. Te judgment explicitly stated that the GAT-LuK rule is also applicable in IP cases other than those relating to patents. Further, it repeated that, unless the CJEU decides otherwise, cross border jurisdiction in interim injunction cases must be accepted. Te most notorious example of this kind of ruling was made in August 2011 in the case between Apple and Samsung, when the judge in Te Hague granted a cross border injunction in Germany.
In the meantime there has been some progress in the case between Solvay and Honeywell. On March 29, 2012, the Advocate-General of the CJEU gave his conclusion. He considered the Dutch interpretation of the Convention in relation to cases of urgent matters to be, under some circumstances, the right interpretation. We believe this is a great step in support of the practice as conducted in the Netherlands, although it is not a final decision.
If the CJEU follows the AG, it would be a great boon for Dutch lawyers and their practice, as well as for patent owners seeking support in their actions throughout Europe. For the moment it is still the case that, when urgently seeking a cross border injunction, one can ask a Dutch judge with confidence.
Michiel Rijsdijk is a partner at Arnold + Siedsma. He can be contacted at:
mrijsdijk@arnold-siedsma.com
World Intellectual Property Review July/August 2012 65
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