Judgment of the Court of Justice of 11 January 2024, Mylan (C-473/22)
Acts
This judgment stems from a request for a preliminary ruling submitted by the Finnish courts to the CJEU concerning the interpretation and scope of Article 9.7 of the 2004 / 48 / CE Directive relating to respect for intellectual property rights (“Directive 2004/48”).
The facts of the case were as follows:
In 2017, Gilead Sciences Finland Oy, Gilead Biopharmaceutics Ireland UC, and Gilead Sciences Inc. (collectively, “Gilead”) filed an infringement action against Mylan AB (“Mylan”) in the Finnish Commercial Court for Mylan’s marketing of a generic drug that encroached upon the scope of protection of a SCP belonging to the plaintiffs. Gilead also sought and was granted provisional measures against Mylan.
In 2019, the provisional measures were revoked and the CCP ownership of the plaintiffs was annulled.
Mylan then asked the lower court to order Gilead to pay compensation for the damages suffered as a result of the provisional measures granted and subsequently revoked. This request was based on Finnish law, which establishes an objective system for compensating damages in such cases, independent of fault. Gilead opposed Mylan's claim, invoking the CJEU's established doctrine in the case. Bayer Pharma (C-688 / 17). This doctrine rejected the automatic nature of compensation in these cases, stating that the lifting of precautionary measures “This does not imply that the competent national courts can automatically and in any case order the applicant to compensate the defendant for any damage suffered as a result of the aforementioned measures.".
The Commercial Court then decided to suspend the proceedings and refer several preliminary questions to the CJEU concerning the interpretation of Article 9.7 of the Directive 2004/48.
pronouncements
The CJEU only addresses the first preliminary question referred by the Finnish court. This question asks the CJEU whether the aforementioned article is compatible with national legislation that establishes a mechanism for redressing any damage caused by a provisional measure based on a strict liability regime for the applicant, under which the judge is empowered to adjust the amount of compensation taking into account the circumstances of the case, including the defendant's possible involvement in causing the damage.
The CJEU answers the previous question in the affirmative. In its answer, the CJEU argues:
- That art. 9.7 of the Directive 2004/48, in relation to art. 50.7 of TRIPS Agreement, should be interpreted as establishing a minimum level of respect for intellectual property rights (“IPRs”), leaving Member States some leeway to choose, where appropriate, between a strict liability regime and a fault liability regime.
- That the means provided by those States to ensure respect for intellectual property rights under the aforementioned Directive must, in any case, be equitable, proportionate and dissuasive, and applied in such a way as to avoid creating obstacles to legitimate trade.
- And that a mechanism of objective liability for damages, such as that provided for in the Finnish legal system, within which the judge hearing the case can take into account all the circumstances of the case, including the possible participation of the defendant in the production of the damage, allows the amount of compensation for damages to be adjusted and, in this way, mitigate a possible deterrent effect for the holder of the IPR.
Comment
The judgment in question has been highly controversial and contentious because it departs completely from the previous doctrine of the CJEU on the matter, as we have just pointed out.
In Spain, an objective system of compensation for damages applies in this matter (see arts. 745, 742 and related articles of the LECTherefore, our legal system is compatible with the CJEU's doctrine. However, Spanish courts must, as a matter of principle, take into consideration all the circumstances of the case, including the defendant's possible participation in causing the damage, to modulate and set the final compensation owed by the plaintiff in the specific case.
Enrique ArmijoPartner in the Legal Department of ELZABURU.
