Cross-Border Jurisdiction in Patent Disputes - BSH Hausgeräte GmbH v Electrolux AB

Court of Justice of the European Union

Author Luxofluxo Licence CC BY-SA 4.0 Source Wikimedia Commons

 

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 Answer

The 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.

IP Dispute Resolution before the Netherlands Commercial Court

Amsterdam

Author Ank Kumar  Licence CC BY-SA 4.0   Source Wikimedia

 

Jane Lambert

The Netherlands Commercial Court is a chamber of the Amsterdam District Court which conducts proceedings and delivers judgments in English,  I discussed its formation in The Netherlands Commercial Court - an English Speaking Court in Amsterdam on 2 Aug 2020.

The Court publishes a bimonthly newsletter called NCC News Update.  A recent issue announced that several judges specializing in intellectual property law had joined the Court.  According to the fact sheet NCC and Intellectual Property, those judges are:

• Judge Diekman (Rotterdam District Court) 
• Judge Van Heemstra (Gelderland District Court) 
• Judge Loos (The Hague District Court) 
• Judge Hofmeijer-Rutten (Rotterdam District Court and Amsterdam Court of Appeal) 
• Judge Tjong Tjin Tai (sitting by designation) (Professor of Private Law at Tilburg University, specializing in IP and IT law), and
• Judge Bernt Hugenholtz (sitting by designation) (Professor of IP Law at the University of Amsterdam).

The NCC cannot try patent infringement or validity claims because these are reserved for the Hague District Court as are plant variety and EU trade mark and Community design cases but it can hear everything else including licensing and other disputes arising relating to patents, plant varieties and EU trade mark and Community designs.   Its jurisdiction therefore covers copyright, Benelux trade marks and designs, rights in performances, trade secrets and unfair competition cases.   

This court could be a serious competitor to London in that costs are lower and its judgments can be enforced throughout Europe under the Brussels Recast Regulation (see NCC and other European commercial courts.   English lawyers lost their rights of audience when the UK left the European Union but judges will allow them occasionally to make written or oral submissions  (see FAQ  "Can a foreign lawyer speak in court").

Anyone wishing to discuss this article may call me during normal UK office hours on +44 (0)20 7404 5252 or send me a message through my contact page.

Art 67 of the Withdrawal Agreement and Art 132 of the EUTMR - Crafts Group LLC v M/S Indeutsch International

Author Sadarama Licence CC BY-SA 4.0 Source Wikimedia Commons

Jane Lambert

Intellectual Property Enterprise Court (Mr Ian Karet) Crafts Group LLC v M/S Indeutsch International and another [2021] EWHC 3505 (IPEC) (23 Dec 2021)

This was an application by the defendants, M/S Indeutsch International and M/S KnitPro International ("KnitPro"), for the following relief:

• an order to set aside service in India of proceedings brought by the claimant, Crafts Group LLC ("Crafts") for groundless threats under s.21 of the Trade Marks Act 1994, 
• a declaration that the court has no jurisdiction over the KnitPro; or 
• alternatively, for a stay of proceedings pending determination of the validity of one of the trade marks in dispute by the European Union Intellectual Property Office ("EUIPO").

The threats of which the Crafts complained were two takedown notices that had been sent by the defendants' solicitors.to Amazon.  They concerned two of Crafts knitting needles.   The claimant alleged that Amazon would not relist its knitting needles unless the notices were withdrawn or there was an intervention by the court.  Permission to serve the proceedings outside the jurisdiction had been granted by HH Judge Hacon.   The invalidity proceedings in the EUIPO had been. started by the claimant's predecessor, Crafts American Group.  

KnitPro complained that service of the threats action had been defective because the application notice and evidence in support of the application for permission to serve process overseas had not been served on them.  Secondly, KnotPro said that Crafts had failed to make full and frank disclosure at the hearing of its application which was made without notice and in KnitPro's absence.  Alternatively, KnitPro argued that the invalidity proceedings should be allowed to take their course.

The application came on before Mr Ian Karet sitting as a deputy judge of the High Court on 23 Nov 2021. The learned deputy delivered judgment on 23 Dec 2021 (see Crafts Group LLC v M/S Indeutsch International and another  [2021] EWHC 3505 (IPEC) (23 Dec 2021).

Mr Karet considered first the application to set arise service of the threats action proceedings.  He directed himself that CPR 6.36 enables the court to permit service out of the jurisdiction if any of the grounds set out in para 3.1 of PD 6B applies. CPR 6.37 requires an application to set out the relevant ground(s) for service out of the jurisdiction. The court will give permission only if it is satisfied that England and Wales is the proper place in which to bring the claim.. CPR 6.38 provides for service of any document other than a claim form.   Applications for permission to serve process outside the jurisdiction are made under CPR Part 23.  CPR23.10 entitles a person who was not served with a copy of the application notice for a without notice order to apply to have the order set aside or varied.

The deputy judge declined to set aside service for failure to serve the application notice and supporting evidence,  He referred to CPR 3.10 which provides:

"Where there has been an error of procedure such as a failure to comply with a rule or practice direction—
(a) the error does not invalidate any step taken in the proceedings unless the court so orders; and
(b) the court may make an order to remedy the error." 

He also considered the Court of Appeal's judgment in  Denton v TH White Ltd [2014] EWCA Civ 906 and the commentary on that case in the White Book at paras 3.9.3, 3.9.4 and 3.9.7, In his view, KnitPro had not been significantly disadvantaged by the belated provision of the application notice and evidence given to the court on the application for service out. The making of the service out order was not conditional upon the service of those documents. Failure to serve those documents does not render the service ineffective. The error could be remedied by an order under CPR 3.10.   He reached the same conclusion by considering Denton by analogy even though that case was not directly applicable.

Turning to the alleged failure to give full and frank disclosure, Mr Karet listed the alleged deficiencies as follows:

"i) The evidence did not fairly present to the court the fact that there was no correspondence between the parties in relation to alleged unjustified threats from July 2015, when the first takedown notice was submitted to Amazon UK, to November 2020.
ii) Crafts did not show the court that there had been a second takedown request submitted to Amazon in November 2015, as to which Crafts did and said nothing.
iii) On the basis of these facts, there would at least be open to KnitPro an argument that Crafts had impliedly consented to, or acquiesced to, its takedown requests. The court was not told that.
iv) Crafts appeared to tell the court in general terms the subject-matter of without prejudice discussions between the parties. But the information Crafts gave was wrong. KnitPro's position was that there was no such discussion about any alleged threats action at all.
v) Crafts' evidence in support wrongly suggested that the threats of infringement proceedings were ongoing. Crafts incorrectly elided present threats with ongoing damage from earlier threats.
vi) Crafts did not inform the court that the absence of infringement proceedings in the UK could not simply be taken to indicate that the Caspian and Sunstruck needles did not in fact infringe the Chevron and Symfonie Marks, as Crafts asserted.
vii) Crafts' account of the EU invalidity proceedings was incomplete and imprecise."

 The learned deputy declined to set aside service on the ground of material non-disclosure.  In his view, the correct test for full and frank disclosure on an application for service outside the jurisdiction is that set out by Mr Justice Toulson between paras [23] and [31] of his judgment in MRG (Japan) Limited v Engelhard Metals Japan Limited [2003] EWHC 3418 (Comm), [2004] 1 LLR 731, [2004] 1 Lloyd's Rep 731:

"[23] The starting point is that an applicant for an order on a without notice application must make full and frank disclosure of all material facts, that is, facts known to the applicant which might reasonably be taken into account by the judge in deciding whether to grant the application: R v Kensington Income Tax Commissioners ex parte Princess Edmund De Polignac [1917] 1 KB 486, 514 (Scrutton LJ); Siporex Trade SA v Comdel Commodities Limited [1986] 2 Lloyd's Rep 428, 437 (Bingham J); Brink's Mat Limited v Elcombe [1988] 1 WLR 1350, 1356 (Ralph Gibson LJ).
[24]. It is for the court to determine what is material according to its own judgment and not the assessment of the applicant: Brink's Mat Limited v Elcombe. This means that if the court considers there to have been material non-disclosure, it is not an answer that the applicant in good faith took a different view, although that may affect the court's exercise of its discretion in deciding what to do in the light of the non-disclosure. It does not mean that an applicant is under a duty to disclose facts which could not reasonably have a bearing on the decision which the judge has to make.
[25- Materiality therefore depends in every case on the nature of the application and the matters relevant to be known by the judge when hearing it. I was referred to a number of statements on the duty of disclosure in the context of applications for freezing injunctions. In such cases the court is being asked to make an order of an exceptional kind, prohibiting or restricting a defendant's use of its own assets before any adjudication has been made against it. Because of its draconian nature, it is a jurisdiction which requires great caution and a wide range of factors may have a bearing on the court's decision.
[26]. An application for permission to serve out of the jurisdiction is of a very different nature. The general principles about disclosure on without notice applications still apply, but the context is different. The focus of the inquiry is on whether the court should assume jurisdiction over a dispute. The court needs to be satisfied that there is a dispute properly to be heard (i.e. that there is a serious issue to be tried); that there is a good arguable case that the court has jurisdiction to hear it; and that England is clearly the appropriate forum. Beyond that, the court is not concerned with the merits of the case.
[27]. Authority supports this approach. In BP Exploration Co (Libya) Limited v Hunt [1976] 3 AER 879 (which concerned an application for leave to serve out of the jurisdiction) Kerr J said at 893:

'In my view, a failure to refer to arguments on the merits which the defendant may seek to raise in answer to the plaintiff's claim at the trial should not generally be characterised as a failure to make a full and fair disclosure, unless they are of such weight that their omission may mislead the court in exercising its jurisdiction under the rule and its discretion whether or not to grant leave.'

…
[29] If MRG was aware of matters which might reasonably have caused the judge to have any doubt whether he should grant permission to serve out of the jurisdiction, those would have been relevant matters and therefore ought to have been disclosed. This must be so in principle, and it is implicit in the authorities to which I have referred.
[30] However, Mr Gruder submitted that the duty of disclosure was wider. He submitted that if an applicant knew matters which would not on any reasonable view make any difference to whether there was a serious issue to be tried, or to any of the other questions which the judge had to consider, but which were relevant to the ultimate merits of the action, they must be disclosed. To the question "why?", Mr Gruder's answer was that: i) it is for the court and not for the applicant to decide what is material and ii) anything which is relevant to the merits of the claim is potentially relevant to the matters which the judge has to consider. I do not accept that submission. The first proposition is correct, but Mr Gruder seeks to apply it in such a way as to enlarge the test of materiality. It is for the court to determine what is material, but the test of materiality is that to which I have referred: whether the matter might reasonably be taken into account by the judge in deciding whether to grant the application. The second proposition goes too far. There may be many points which would be relevant to the ultimate merits of an action, but which could not on any reasonable view affect the judge in deciding the "merits threshold" question (or the ultimate question whether to grant the application).
[31]. Mr Gruder submitted that if the applicant is not required to disclose all matters which go to the merits of the action, but only those matters which go to the questions whether there is a serious issue to be tried, whether the court has jurisdiction to hear it and whether England is clearly the appropriate forum, the result will be to reduce the judge's role on such an application to a "rubber stamping" exercise. I would not agree with that description, although I do agree that the issues which the judge is required to consider are limited. This is because the judge is at this stage concerned with the question whether the court should assume jurisdiction, rather than with the question who is likely to win."

Mr Karet explained at para [41] of his judgment:

"While the evidence in support of service in this case may have mis-described matters, this was by mistake. The complaints KnitPro raise about the evidence do not go to the question of whether this court has jurisdiction over the alleged threats. Instead, they are matters that may be raised in defence to the threats claim. KnitPro are in effect adopting the unsuccessful approach which Toulson J dismissed in MRG of concentrating upon matters that may be relevant to the ultimate merits of the action rather than whether there was a serious issue to be tried. Accordingly I do not think there has been material non-disclosure in this context."

For good measure, the deputy judge added at [42]:

"If there had been material non-disclosure then I would also have dismissed the application on the basis that the judge would have given permission had the full facts been before him."

The last issue before Mr Karet was whether to stay the threats action pending the invalidity application in the EUPO.  The defendants argued that art 67 of the Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community continued to apply art 132 of the European Union Trade Mark Regulation which provided:

"An EU trade mark court hearing an action referred to in Article 124 other than an action for a declaration of non-infringement shall, unless there are special grounds for continuing the hearing, of its own motion after hearing the parties or at the request of one of the parties and after hearing the other parties, stay the proceedings where the validity of the EU trade mark is already in issue before another EU trade mark court on account of a counterclaim or where an application for revocation or for a declaration of invalidity has already been filed at the Office."

The Chancellor had held in Easygroup Limited v Beauty Perfectionists Limited [2021] EWHC 3385 (Ch), [2022] Bus LR 146, [2022] WLR(D) 7 that art 67 of the withdrawal agreement has direct effect as part of domestic law without the need for any further legislative enactment.  Mr Karet also referred to the judgment of the Court of Appeal in Starbucks (HK) Ltd v. British Sky Broadcasting Group plc [2012] EWCA Civ 1201 that there is a strong presumption in favour of a stay.   The Court added that "special grounds" within the meaning of art 132 are hard to make out and that a general argument about getting to the end of proceedings is unlikely to be sufficient.

Mr Karet declined to order a stay pending the outcome of the validity proceedings in the EUIPO.   Art 124 listed a number of causes of actions that were reserved for EU trade mark courts but threats actions were not one of them.  

Anyone wishing to discuss this article can call me on 020 7404 5252 during office hours or send me a message through my contact form.