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Court of Justice of the European Union
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Jane Lambert
Court of Justice (K. Lenaerts, President, T. von Danwitz, Vice-President, K. Jürimäe, C. Lycourgos, I. Jarukaitis, M.L. Arastey Sahún, S. Rodin, A. Kumin, N. Jääskinen and M. Gavalec, Presidents of Chambers, E. Regan, Z. Csehi and O. Spineanu-Matei (Rapporteur), Judges) Case C‑339/22, BSH Hausgeräte GmbH v Electrolux AB EU: C:2025:108, [2025] EUECJ C-339/22, [2025] WLR(D) 306, ECLI:EU: C:2025:108, 25 Feb 2025
This was a request by the Swedish Patent and Commercial Court of Appeal for a preliminary ruling on the interpretation of arts 4 (1) and 24 (4) of Regulation (EU) No. 1215/2012 of the European Parliament and of the Council of 12 Dec 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (recast) under art 267 of the Treaty on the Functioning of the European Union. It was made in patent infringement proceedings that the German company BSH Hausgeräte GmbH (‘BSH’) had brought against the Swedish company Electrolux AB ("Electrolux") in the Swedish Patent and Commercial Court on 3 Feb 2020.
The Dispute
BSH was the registered proprietor of European patent 1434512 A2, which was granted for Austria, France, Germany, Greece, Italy, the Netherlands, Spain, Sweden, Türkiye and the United Kingdom. BSH alleged that Electrolux had infringed the patent in each of those designated states and sought injunctive and pecuniary relief in respect of all of them. Electrolux's defence was that the patent was invalid. It challenged the competence of the Swedish courts to determine the patent's validity in any country except Sweden. Moreover, para 61 of the Swedish Patents Act 1967 requires separate invalidity proceedings to be brought if the validity of a patent is challenged. The Patent and Commercial Court agreed with Electrolux. It held that it lacked the jurisdiction to determine whether the patent was invalid in any country other than Sweden and that it lacked jurisdiction to hear any part of the infringement claim in respect of Türkiye.
The Appeal
BSH appealed to the Patent and Commercial Court of Appeal on the grounds that art 24 (4) of Regulation 1215/2012 does not apply to infringement claims and that art 4 (1) confers jurisdiction on the Swedish courts to hear and determine claims against Swedish companies. The Court stayed the proceedings and referred the following questions to the Court of Justice of the European Union:
"(1) Is Article 24 (4) of [the Brussels I bis Regulation] to be interpreted as meaning that the expression 'proceedings concerned with the registration or validity of patents … irrespective of whether the issue is raised by way of an action or as a defence' implies that a national court, which, pursuant to Article 4 (1) of that regulation, has declared that it has jurisdiction to hear a patent infringement dispute, no longer has jurisdiction to consider the issue of infringement if a defence is raised that alleges that the patent at issue is invalid, or is the provision to be interpreted as meaning that the national court only lacks jurisdiction to hear the defence of invalidity?
(2) Is the answer to Question 1 affected by whether national law contains provisions, similar to those laid down in the second subparagraph of Paragraph 61 of the [Law on patents], which means that, for a defence of invalidity raised in an infringement case to be heard, the defendant must bring a separate action for a declaration of invalidity?
(3) Is Article 24 (4) of the [Brussels I bis Regulation] to be interpreted as being applicable to a court of a third [State], that is to say, in the present case, as also conferring exclusive jurisdiction on a court in [Türkiye] in respect of the part of the European patent which has been validated there?"
The AnswerThe Court answered those questions as follows:
"1. Article 24 (4) of Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters must be interpreted as meaning that a court of the Member State of domicile of the defendant which is seised, pursuant to Article 4 (1) of that regulation, of an action alleging infringement of a patent granted in another Member State, does still have jurisdiction to hear that action where, in the context of that action, that defendant challenges, as its defence, the validity of that patent, whereas the courts of that other Member State have exclusive jurisdiction to rule on that validity.
2. Article 24(4) of Regulation No 1215/2012 must be interpreted as not applying to a court of a third State and, consequently, as not conferring any jurisdiction, whether exclusive or otherwise, on such a court as regards the assessment of the validity of a patent granted or validated by that State. If a court of a Member State is seised, on the basis of Article 4 (1) of that regulation, of an action alleging infringement of a patent granted or validated in a third State in which the question of the validity of that patent is raised, as a defence, that court has jurisdiction, pursuant to Article 4 (1), to rule on that defence, its decision in that regard not being such as to affect the existence or content of that patent in that third State or to cause the national register of that State to be amended."
The First and Second Questions
The Court took those questions together. It disposed of the second question shortly at para [26] of its judgment:
"In the latter regard, the Court notes at the outset that such a national rule cannot affect the interpretation of Article 24(4) of the Brussels I bis Regulation. That provision makes no reference to the law of the Member States, with the result that the expressions which it contains must be regarded as autonomous concepts of EU law which must be interpreted uniformly in all the Member States, irrespective of any national rule or procedure in that regard (see, to that effect, judgment of 8 September 2022, IRnova, C‑399/21, EU: C:2022:648, paragraph 38 and the case-law cited)."
It recognized at para [34] that the courts of the member state granting a patent are to have exclusive jurisdiction to hear a dispute concerned with the registration or validity of that patent, irrespective of whether that issue is raised by way of an action or as a defence in an infringement action before a court of another member state pursuant to art 24 (4). However, that did not take away the jurisdiction conferred by art 4 (1). The Court said at para [41] that the exclusive jurisdiction rule laid down in art 24 (4) concerns only the part of the dispute relating to the validity of the patent. Accordingly, a court of the member state in which the defendant is domiciled, which has jurisdiction, under art 4 (1) in an action alleging infringement of a patent granted in another member state, does not lose that jurisdiction merely because, as its defence, that defendant challenges the validity of that patent.
The Court added at [43] that the concept of "proceedings concerned with the … validity of patents", within the meaning of art 24 (4) of the regulation, must be interpreted strictly since it establishes exclusive jurisdiction which is an exception to the general rule, set out in art 4 of that regulation, that the courts for the place where the defendant is domiciled have jurisdiction. The court where a defendant is domiciled may decide any issue of a patent infringement claim that does not require a decision on the validity of a patent granted for another member state. If it takes the view that there is a reasonable, non-negligible possibility of that patent being declared invalid by the court of that other member state, the Court of Justice said at para [51] that the court where the defendant is domiciled may, where appropriate, stay the proceedings, which allows it to take account, for the purpose of ruling on the infringement action, of a decision given by the court seised of the action seeking a declaration of invalidity.
The Third Question
The Court of Justice held that art 24 (4) applies to the courts of members of the European Union. Accordingly, that provision does not confer any jurisdiction, whether exclusive or otherwise, on the courts of countries outside the EU as regards the assessment of the validity of patents granted or validated for those countries. At para [61], the Court of Justice concluded:
"It follows that, under the general rule laid down in Article 4 (1) of the Brussels I bis Regulation, the courts of the Member State in which the defendant is domiciled have, in principle, jurisdiction in an infringement action brought against that defendant by the holder of a patent granted or validated in a third State which is domiciled in another Member State. In addition, the jurisdiction of the court of the Member State thus seised does, in principle, by virtue of that general rule, extend to the question of the validity of that patent raised as a defence in the context of that infringement action."
The Court stressed at para [74] that a court having jurisdiction under art 4 (1) cannot make a decision that affects the existence or content of that patent in a state outside the EU, or cause its national register to be amended. However, there is nothing to prevent a court from making a decision on the validity of a patent that affects the parties to a dispute but not the subsistence of the patent.
Conclusion
The Mannheim Local Division of the Court of First Instance of the Unified Patent Court cited the Court of Justice's judgment in
BSH Hausgeräte GmbH v Electrolux AB in
Fujifilm Corp v Kodak GmbH and others UPC_CFI_365/2023 18 July 2025 in holding that the Unified Patent Court has jurisdiction to decide upon the infringement of the UK designation of a European Patent. However, the UPC does not have jurisdiction to revoke the validated national part of a European Patent in relation to the United Kingdom with
ergo omnes effect. The Court also has power to grant an injunction in relation to the United Kingdom. I shall discuss recent cases on the UPC's long arm jurisdiction in more detail later. Anyone wishing to discuss this article may call me during UK office hours on +44 (0)20 7404 5252 or send me a message through my
contact page.
