EUPillar B.V.B.A. Avery Dennison België and others v 3M Company

Summary

The appellants are active in the research, development, production and commercialisation of adhesive strips. The adhesive strips in question are developed by the first appellant and then distributed from Turnhout, Belgium to other European Member States, including Germany, France, the UK, Italy and The Netherlands. The defendant is a competitor of the appellants. Because of the “aggressive patent policy” of the defendant, the appellants would like to obtain a declaration of non-infringement of the European Patent no. 0 796 073 held by the defendant. In first instance, the appellants asked the Court to declare that they did not infringe the European Patent no. 0 796 073 in every country where this patent is valid. In the alternative, they sought a declaration of non-infringement in Belgium only. As a last alternative, they asked for the annulment of the Belgian part of the European patent. The defendant is a company incorporated under US law without domicile in the EU. The defendant contests the international jurisdiction of the Court. The appellants argue that the Court of Appeal of Antwerp does have jurisdiction since (i) the defendant is not domiciled in a Member State, so that pursuant to Art. 4 Brussels I Regulation the jurisdiction of the courts of each Member State shall be determined by its domestic law and (ii) the present case is not concerned with the registration or validity of patents so that Art. 22(4) is not applicable. Pursuant to Art. 25 Brussels I Regulation, where a court of a Member State is seised of a claim which is principally concerned with a matter over which the courts of another Member State have exclusive jurisdiction by virtue of Art. 22, it shall declare of its own motion that it has no jurisdiction. The Court examines whether the validity of the patent is in question here. Art. 22(4) must be interpreted restrictively. The appellants argue – even if only as a last resort – that at least part of the European Patent is null and void. The declaration of non-infringement is linked to the validity of the patent, at least where this validity is disputed, as is the case here. The validity of the patent has to be established before the court can decide on the existence of a (non-)infringement. Therefore, the Brussels I Regulation is applicable. The Court of Appeal of Antwerp has jurisdiction over the Belgian part of the claims brought before it. However, the Belgian courts cannot rule that no infringement took place in a territory other than Belgium. The connectedness of the different actions does not change this. Where two matters are related, but one of these matters belongs to the sphere of competence of several jurisdictions (infringement of a patent), and another matter has been attributed exclusively to a certain jurisdiction (validity of a patent), only the court exclusively designated by the law (or, in this case, the Regulation), is competent to take cognisance of the case. The defendant had brought a counterclaim for vexatious legal proceedings, arguing that since the court “clearly” did not have jurisdiction to rule on the extraterritorial aspects of the claimant’s action, he should be compensated. The Court dismisses the defendant’s claim for damages, since it was perfectly possible the claimants were mistaken on the question of international jurisdiction of the courts in matters of intellectual property and patents, since even the published case law and legal writings are contradictory at times.