Apple-Samsung decision causes interesting discussions
Apple started interim injunction proceedings based on three patents, five design rights, its copyright and slavish imitation (act of tort). The 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 software on its smart phones so that it no longer infringes the Apple patent.
The 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.
The 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.
“BASED ON THE APPLE-SAMSUNG DECISION? IT SEEMS THAT THE NETHERLANDS STILL OFFERS THE POSSIBILITY TO REQUEST A CROSS-BORDER INJUNCTION IN IP CASES."
The 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. This 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. This would mean a preliminary cross- border decision is not possible.
The question whether it is possible to provide a cross-border injunction on interim injunction proceedings remains unanswered. It was the court at The 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. This 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.
