EUPillar BV Steps v Calzificio Franzoni SRL

Summary

In November 2002, the appellant sued Calzificio Franzoni and Berenbaum for infringing its European patent by producing and distributing “Minique” socks. During a descriptive attachment authorised by the enforcement judge of Brussels on 15 July 2002, it appeared Berenbaum packaged socks produced both by the appellant and by Franzoni in “Minique” boxes. The first judge decided that the sock does not fall within the scope of the Patent so that the defendants could freely import, stock and sell these socks. By way of counterclaim, Franzoni also invoked its right of prior use of the patented product and the nullity of the patent. On 4 April 2003, Franzoni had commenced nullity proceedings before the courts of Mantova, Italy. The first judge decided to stay the proceedings on the question of the nullity of the patent until the court in Italy made a decision on the right of prior use. In the meantime, the appellant and Berenbaum reached a settlement agreement. Berenbaum waives its appeal and recognises not only the validity of the patent but also that it infringed the patent. The proceedings against Franzoni continue. The appellant claims provisional damages of 1 million EUR and seeks a judicial order to stop Franzoni from committing acts of infringement in Belgium and every other country where the patent is applicable. Franzoni asks to confirm the declaratory part of the decision of the first judge, to annul the Belgian part of the European patent and to dismiss jurisdiction as regards the infringement proceedings, at least for states other than Belgium. Franzoni argues that he has not committed any infringements on Belgian territory. The Court of Appeal considers that the issue of jurisdiction in this case has three aspects: -The jurisdiction to take measures with effect in Belgium, as against a defendant which is not domiciled in Belgium; -The jurisdiction to take measures with an extraterritorial effect, as against a defendant domiciled in Belgium; -The jurisdiction to take measures with an extraterritorial effect, as against a defendant not domiciled in Belgium. The Court of Appeal decides, in light of Art. 6(1) Brussels I, that the claims against Berenbaum and Franzoni are closely connected. If the Court of Appeal were not to hear the cases together, there would be a risk of irreconcilable judgments regarding the infringement on Belgian territory by application of the Belgian Patent Law. Therefore, where the infringements on Belgian territory are concerned, the Belgian courts have jurisdiction as regards both claims. As for Franzoni’s counterclaim for nullity of the European patent, in proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered, Art. 22(4) Brussels I confers exclusive jurisdiction on the courts of the Member State in which the registration took place. This provision must be interpreted strictly. Art. 6(1) does not allow to disregard the exclusive jurisdictional ground in cases concerned with the registration or validity of patents. In conclusion, the Belgian courts have jurisdiction over the Belgian part of the patent and the Italian courts have jurisdiction over the Italian part of the patent. As a consequence, the Belgian courts cannot take measures to stop the alleged patent infringements outside of Belgian territory. Before being able to make a decision on the substance of the case, the Court of Appeal accepts to hear three witnesses. The Court addresses a request to perform the taking of evidence to the Tribunale di Brescia in Italy pursuant to Art. 1(1)(a) and 2(1) of Regulation 1206/2001.