EUPillar NV Fort Koffiebranderij, SA Cafés Liégeois and NV Beyers Koffie v Sara Lee NV

Summary

The defendant holds a European patent that was granted on 11 July 2001 for several European countries, including Belgium, for a system of a pouch and coffee pads to be used in coffee machines. On 18 December 2001, opposition proceedings were brought based on the grounds that the subject-matter of the patent is not patentable because the claimed invention is not new nor inventive and on the ground that the invention is insufficiently disclosed to allow a person skilled in the art to carry it out. The European Patent Office has not yet decided on this case. The claimants are coffee roasting companies established in Belgium which produce and/or sell coffee and coffee pads. The defendant promotes, in collaboration with Philips, the sale of “Senseo” type coffee machines. The defendant and its subsidiaries also produce and sell coffee pads under the brand name “Douwe Egberts” or “DE”. On the box, on the promotional material and in the manual of the Senseo machines it is stated that to obtain “optimal results”, DE coffee pads should be used. The DE coffee pads are marketed using an image of a Senseo coffee machine and the Senseo logo. The defendant found that other companies also offered coffee pads that could be used with the Senseo machines. These companies do not use the Senseo name or logo to market their products. PREVIOUS PROCEEDINGS In December 2001, the defendant brought an action in The Netherlands against the retailers who stocked and sold the coffee pads produced by the first claimant. The first judge granted this claim on 18 January 2002, but the claim was subsequently dismissed on appeal on 6 June 2002. On 30 October 2002, the defendant brought a request before the judge of attachments of Antwerp for a descriptive attachment in case of forgery for the alleged patent infringement committed by the first claimant. The judge of attachments granted this request the following day, and appointed an expert. The first claimant was prohibited from selling the coffee pads on pain of penalty payments of 500 EUR per day. This order was rescinded on opposition by the first claimant on 10 December 2002. Finally, the decision of 10 December 2002 was annulled on appeal on 29 September 2003, therefore returning to what had been decided by the judge of attachments on 31 October 2002, with the understanding that the prohibition to sell the coffee pads extended only on Belgian territory. In the present proceedings the court shall decide on the substance of the case. INTERNATIONAL JURISDICTION The action for a declaration of non-infringement brought by the claimants relates purely to Belgian territory and the Belgian section, governed by Belgian law, of the European patent held by the defendant. The Court examines whether there is a “foreign element” in this case; and concludes that there is. The claimants and the defendants are domiciled in two different Member States. This suffices to apply the Brussels I Regulation. EU law takes precedence over domestic law. Art. 73 of the Belgian Patent Law is therefore not applicable. It is true that Annex I referred to in Art. 3(2) Brussels I Regulation does not include Art. 73 Belgian Patent Law, but this list is not exhaustive. The defendant is domiciled in The Netherlands pursuant to Art. 60(1) Brussels I Regulation. Both its statutory seat and its principal place of business are established in the Netherlands (in the cities of Joure and Utrecht respectively). The Court applies Art. 5(3) Brussels I. The concept of “tort, delict or quasi-delict” should receive an autonomous interpretation. The concept of “tort” is interpreted broadly. The claim for damages of the claimants is based on the alleged wrongful conduct of the defendant having accused the claimants of patent infringement in an unjustified and misleading manner. These actions, which can be qualified as a “tort”, took place in Belgium. Therefore, the courts of Belgium have jurisdiction.