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

Summary

The claimant sells a range of seamless footsocks under the name Steps Footsocks. To this effect the claimant bought a European patent from the original patent holder, 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, 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 7 April 2003, provisional prohibitive measures on Belgian territory were granted. The claimant initiated substantive proceedings on 28 November 2002. On 9 April 2003, Franzoni sued Steps for annulment of the Italian part of the European patent before the courts of Mantova, Italy. These proceedings are still pending. The claimant Steps Holding seeks the immediate cessation of the alleged patent infringement by Franzoni and Mr Berenbaum, subject to penalty payments and damages in the provisional amount of 1,000,000 EUR. The claimant seeks these measures not only for the territory of Belgium, but also for the other countries where the patent is applicable, at least for Belgium, The Netherlands and Italy. Mr Berenbaum contests that the Minique-Franzoni socks fall within the patent’s scope of protection; he also seeks the annulment of the Belgian part of the European patent and asks to put an end to the seizure of his goods. He also claims damages from the claimant for conducting vexatious legal proceedings. Franzoni asks the court to suspend the proceedings in favour of the procedure before the Italian courts; to annul the Belgian part of the European patent; to declare it did not infringe the patent; to award damages for vexatious legal proceedings DECISION: Mr Berenbaum is established in Brussels. It suffers no doubt that the courts of Belgium have jurisdiction on the basis of Art. 2 Brussels I. Mr Berenbaum argues that the Belgian court cannot order prohibitive measures which extend beyond Belgian territory. However, there are no legal provisions which necessarily limit the cross-border effects of a judicial order. The controversy stems from the fact that patent protection is a national matter and that the validity of a patent can only be examined by the national judge for his own domestic territory. In the present case, Belgium is the “natural” forum for Mr Berenbaum. Moreover, Belgium is also the place where the harmful event occurred within the meaning of Art. 5(3) Brussels I. At the moment, there exists no national decision invalidating (part of) the European patent itself. Until that time, the Belgian courts have jurisdiction to order cross-border provisional measures. Franzoni contests the international jurisdiction of the courts claiming that as an Italian company which is active only in Italy, it cannot be sued by a Dutch company in Belgium. However, the claims are closely connected within the meaning of Art. 6(1) Brussels I since Franzoni is Mr. Berenbaum’s direct supplier and therefore closely involved with the alleged patent infringement. Franzoni’s own attitude in the present case also attests to this effect, since Franzoni immediately took it on itself to support Mr Berenbaum’s defence and therefore positioned itself as a “co-defendant”. Nevertheless, the connection is limited to the alleged infringements committed by Mr Berenbaum. There is no other link with Belgium in the case between the Dutch claimant and Italian defendant. Art. 6(1) Brussels I must not undermine the general principle of Art. 2. Therefore, the Belgian courts do not have jurisdiction to pronounce extraterritorial measures with regard to Franzoni. With regard to the counterclaims against Steps Holding, the Belgian courts have jurisdiction over the claim for annulment of the Belgian part of the European patent, in accordance with Art. 22(4) Brussels I.