Judgment of the Court of Justice of February 25, 2025, BSH v. Electrolux (C-339/22)
1. Facts
This judgment arises from a request for a preliminary ruling submitted by the Swedish courts to the Court of Justice regarding the interpretation and scope of Article 24(4) of the Brussels I Regulation (EU) No. 1215/2012 (“BR”).
The facts of the case were as follows: BSH Hausgeräte GmbH (“BSH”) is the owner of a European patent in the vacuum cleaner sector. The patent had been validated in Germany, Greece, Spain, France, Italy, the Netherlands, Austria, Sweden, the United Kingdom, and Turkey. BSH brought an action against Electrolux AB (“Electrolux”) for infringement of all national parts of the patent in the Swedish courts. Electrolux contested the complaint and argued that the claims relating to the national parts of the European patent other than the Swedish part (“the foreign patent(s)”) were inadmissible under Article 24(4) of the Brussels I Regulation.
The trial court’s judgment upheld Electrolux’s defense. BSH appealed the trial court’s judgment, and the Swedish Court of Appeals stayed the proceedings and referred three questions to the Court of Justice for a preliminary ruling regarding the interpretation of Article 24(4) of the Regulation.
2. Statements
The first two questions referred for a preliminary ruling ask the Court of Justice whether Article 24(4) of the Brussels I Regulation must be interpreted to mean that the court of the Member State in which the defendant is domiciled—before which, pursuant to Article 4(1) of the Brussels I Regulation, an action has been brought for infringement of a patent granted in another Member State (the foreign patent)— would continue to have jurisdiction to hear that action when the defendant raises, as a defense, the invalidity of that patent.
The Court of Justice answers the above question in the affirmative. In its response, the Court of Justice states:
- The courts of the Member State in which the patent was granted have exclusive jurisdiction to hear actions challenging the registration or validity of that patent (the foreign patent), regardless of whether such a challenge was raised as the subject matter of the action or as a defense.
- However, given that the aforementioned provision is limited to disputes concerning the registration or validity of patents, the court of the Member State in which the defendant is domiciled, before which an action has been brought, pursuant to Article 4(1) of the Brussels I Regulation, an action for infringement of a patent granted in another Member State (the foreign patent), shall have jurisdiction to hear that action regardless of whether the defendant raises a defense challenging the validity of that patent.
Regarding this last point, the Supreme Court clarifies:
- That the proposed solution is not undermined by the fact that its application may give rise to a bifurcation of proceedings (the proceedings for patent infringement and the proceedings concerning the validity of the patent) before different courts.
- And that the court hearing the patent infringement action may, in any event, stay the proceedings when the defendant has duly brought an action in another Member State to invalidate the patent granted in that other Member State (the foreign patent), if it deems it justified and considers that there is a reasonable and non-negligible possibility that the patent will be invalidated by the court of that other Member State.
The third preliminary ruling asks the Court of Justice whether Article 24(4) of the Regulation on Patent Jurisdiction applies to the courts of third countries and confers upon them exclusive jurisdiction to assess the validity of a patent granted or validated in those countries.
The Court of Justice answers the above question in the negative. However, it adds that a court of a Member State hearing, pursuant to Article 4(1) of the Brussels I Regulation, an action for infringement of a patent granted or validated in a third country (the foreign patent), in which the validity of that patent has been raised as a defense, may rule in addition to the patent infringement action, on the aforementioned defense with inter partes effect .
3. Comment
The ruling in question has been welcomed by patent holders because it allows them to consolidate, in a single action before a single EU court, claims of infringement of a European patent that may have been validated in several contracting states of the European Patent Convention (EPC), thereby creating a sort of single jurisdiction for cross-border European patent infringements.
The ruling has also been accepted without reservation by the UPC, which, as a common court of several Member States (Art. 71 bis of the Regulation on the Unified Patent Court), has been expanding its jurisdiction to hear cases involving infringements of unitary patents and traditional European patents for which no opt-out has been registered , committed outside the territory of the UPC (e.g., Spain), by defendants domiciled in Member States of the UPC Agreement.
Nevertheless, the legal principle set forth in the aforementioned ruling raises doubts and reservations. We highlight some of them below:
- Does the above doctrine apply to patent infringement actions brought against defendants in the EU under the special rules of jurisdiction set forth in Articles 7(2) and 8 of the Brussels I Regulation? A priori, the answer should be no, since only Article 4(1) of the Brussels I Regulation grants the court universal jurisdiction to hear cases involving acts committed by the defendant.
- How should the concept of domicile set forth in Article 63 of the RB be interpreted—broadly or narrowly?
- The bifurcation of patent proceedings is a procedural concept that is foreign to Spanish procedural law and raises the risk of conflicting judgments (by the court hearing the infringement action and by the court hearing the action regarding the validity of the patent in question).
- There is also a risk that the ex tunc effects of the judgment rendered by the judges hearing the action to determine the validity of the patent will be superseded by a judgment of infringement that may have been previously rendered and enforced.
- In the scenario described, the defendant is deprived of any possibility of challenging the validity of the foreign patent on which the action is based , by way of a preliminary objection. It does not appear that a measure of this magnitude is compatible with the defendant’s right to a fair trial.
- Only if the defendant initiates proceedings to invalidate the foreign patent in the State where the patent was granted is the judge hearing the patent infringement case authorized to stay the proceedings. However, the stay is also subject to the requirement that the judge determine“that there is a reasonable and non-negligible possibility that the patent will be invalidated by the competent court of that other Member State.” How, in practice, will this requirement be interpreted, and how will the possible stay of proceedings be ordered, if applicable? Does the preliminary analysis of the viability of the action to invalidate the foreign patent, conducted by the judge hearing the infringement action, not constitute an encroachment on the powers that Article 24(4) of the Regulation on Patent Registration (RB) assigns to the judge competent in matters of patent registration or validity?
Enrique Armijo, Partner in the Legal Department at ELZABURU.