The CJEU Expands Cross-Border Litigation Options in IP Disputes (BSH v Electrolux)

The case originated from BSH Hausgeräte GmbH (BSH) filing a patent infringement action in Sweden against the Swedish company, Electrolux AB. The key issue for the CJEU to decide on was whether national courts have jurisdiction to decide on patent infringement, even for the other validated parts of a European patent.

In this specific case, BSH claimed that Electrolux infringed all national parts of its European patent, which was validated in several EU member states and in Turkey. BSH applied for an injunction and claimed damages for the infringement.

Electrolux contested the patent’s validity and argued with reference to Article 24(4) of the Brussels Ibis Regulation that the Swedish court should refuse to decide the case for all countries except Sweden, including the infringement issue.

According to Article 4(1) of the Brussels Ibis Regulation, the courts of the defendant’s domicile (in this case Sweden) generally have jurisdiction, whereas Article 24(4) grants the courts of the member state where a patent was granted exclusive jurisdiction to decide on “the registration or validity of the patent in question”.

In its decision, the CJEU noted that Article 24(4) must be interpreted to concern exclusive jurisdiction in “cases concerning the registration or validity of patents” only.

Consequently, a competent court under Article 4(1) retains jurisdiction to consider a patent infringement action concerning a patent validated in another member state, despite the defendant challenging the validity of the patent.

The CJEU noted that, even though this interpretation may lead to an infringement case being split into two tracks where, on the one hand, an infringement case is pending before the court in the defendant’s jurisdiction and, on the other hand, an invalidity case is pending before the court in another member state, this does not mean that the court where the infringement action is filed should disregard the fact that the defendant has filed an action in another member state claiming invalidity of the patent in question.

If the court in the infringement action finds that a reasonable and not insignificant probability exists that the patent will be revoked by the competent court in another member state, the court may choose to stay the infringement case and await the decision regarding the invalidity issue.

The CJEU also addressed the issue of whether Article 24(4) similarly applies in relation to third countries, thereby granting a court in a third country exclusive jurisdiction to decide on the validity issue. The court briefly concluded that this is not the case. The CJEU found that, if an infringement action is filed before a member state court under Article 4(1) concerning a patent issued or validated in a third country, and the defendant raises an invalidity objection, the court has jurisdiction to decide on the objection. However, this jurisdiction cannot extend to affecting the existence or content of the patent in the third country or result in a change to the third country’s patent register. The invalidity objection only has inter partes effect.

What are the implications for infringement actions commenced in Denmark against a Danish defendant?

With the recent CJEU decision, the door is now open for national courts in the EU, including Danish courts, to decide on issues relating to patent infringement, regardless of whether the alleged infringement took place in a third country. Similarly, this applies to the Unified Patent Court (UPC), as long as the third country is a member of the European Patent Organisation (EPO). This could include Turkey, Switzerland, or the United Kingdom.

Fundamentally, the decision aims to prevent defendants from using invalidity objections to derail infringement claims while simultaneously giving patent holders the opportunity to consolidate infringement cases in a single EU member state. However, the assessment is that invalidity objections will still constitute a useful tactic to disrupt cross-border disputes, particularly concerning patents issued within the EU.

Finally, it is important to note that the decision solely concerns the issue of jurisdiction when the defendant is domiciled in an EU member state and has committed infringing acts in other jurisdictions. Often, infringing acts abroad are committed by a local subsidiary, necessitating separate local procedures. This has been confirmed by previous CJEU case law (Roche v Primus in C-539/03), and the recent CJEU decision does not change that. Different jurisdictions apply different legal criteria for the parent company’s joint liability, which may mean that liability for foreign infringement either includes or does not include the defendant domiciled in the EU, depending on where the patent holder chooses to file the action.

As a result, the decision may increase forum shopping and national torpedoes, as plaintiffs will seek the most favourable jurisdictions for their strategic interests in cross-border IP disputes.

The decision was made by the CJEU on 25 February 2025.