EUPillar Steps Holding BV v. David Berenbaum and Calzificio Franzoni SRL

Summary

The claimant sells a range of seamless footsocks under the designation “Steps Footsocks”. To this effect the claimant bought a European patent from the original patent holder, a company incorporated under Italian law, Calzificio GI-Emme di Pedrini G. Mario 1 C.S.N.C. (“Pedrini”). The defendant, Mr. Berenbaum, is a Belgian distributor of socks, stockings and tights. He also sells seamless footsocks which he buys from another Italian company, Calzificio Franzoni S.R.I (“Franzoni”). This product is sold under the name “Minique-Franzoni”. On 15 July 2002, the judge of attachments of Brussels ordered a “descriptive attachment in the event of forgery” at the premises of Mr. Berenbaum. An expert was appointed. The claimant initiated urgency proceedings by summons of 21 November 2002. ON THE INTERNATIONAL JURISDICTION OF THE COURT The claimant argues that infringements of a European patent have to be assessed on the basis of the national law of the country for which the patent was granted. The European patent in the case at hand was granted for 16 different European countries. The claimant states that, to avoid the extraordinary costs of different procedures, it chose to initiate proceedings only in Belgium, where it seeks an extra-territorial injunction. The claimant argues that the principle of territoriality which governs in intellectual property law, is irrelevant, since it is highly unlikely that the courts of different European states would come to a different conclusion, since European patent law has been harmonised. The first defendant is domiciled in Belgium so that the European courts have jurisdiction on the basis of Art. 2 Brussels I. As against the second defendant, domiciled in Italy, the claimant believes the Belgian courts have jurisdiction on the basis of Art. 2 in conjunction with Art. 6(1) or on the basis of Art. 5(3). The President of the Court of First Instance decides that there is no lis pendens between a cross-border action for a declaration of non-infringement and an action to revoke the Belgian part of a European patent and the relating action for a declaration of non-infringement on Belgian territory. These claims are separate. They are concerned with the enforcement and the scope of protection of the patent on the territory of each country. A Belgian decision on the nullity of the patent in Belgium and on the declaration of non-infringement in Belgium has no inﬂuence on the equivalent legal questions in the other countries designated by the European patent. The link between these proceedings is not so that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings. The fact that the claim relates to one patent from a bundle of patents, which was granted by one procedure pursuant to the European Patent Convention, and that patent law by virtue of this Convention is to be interpreted in the same way, does not mean that these declaratory proceedings have to be dealt with before the same judge. The President of the Court decides that its jurisdiction is limited to the infringements which have been or could be committed on Belgian territory.