EUPillar Joseph Talpe and N.V. Locinox v. Fratelli Comunello SPA and Mauriks Import Nederland

Summary

Lecinox is a Belgian company which produces front doors and window frames. Mr. Talpe is managing director of the company and holder of European patents EP 0 963 498 B1, obtained on 31 July 2002 and 0 606 196 B1, obtained on 31 March 1999. Comunello is an Italian company active on the market of iron hardware and produces accessories for doors such as locks and bolts. The second defendant, Mauriks, is a Dutch company which distributes Comunello’s locks on the Belgian and Dutch markets. Since March 2003, Comunello manufactures and sells a lock under the name “Comunello-Lock” which the appellants believe to be in violation of their patents. The appellants seek an order to stop the defendants from producing, distributing and promoting the door locks. The first defendant, Comunello, argues that the measures sought by the appellants are inadmissible insofar as they have their effects outside of Belgian territory. If not inadmissible, Comunello thinks their claims should be dismissed on the merits. The second defendant, Mauriks, argues that the Belgian courts do not have jurisdiction, but that only the courts of ‘s-Hertogenbosch or the Hague in The Netherlands have jurisdiction. The Court of First Instance examines its jurisdiction on the basis of Art. 5(3) Brussels I. It is undisputed that intellectual property right infringements are “matters relating to tort” which fall within the scope of that provision. When torts cause damage in several European countries, the defendant may be sued in the courts for the place of the event which gives rise to and is at the origin of that damage, for all the harm caused, or in the courts for the place where the damage occurred, in which case the claim must be limited the harm caused in the State of the court seised. The place where the damage occurred is the place where the harmful event had its harmful effects on the victim. Moreover, patents are by definition territorially limited. Because of this special nature of patent rights and the case law of the ECJ, the Court has, in the case at hand, jurisdiction solely over the alleged infringements which were committed in Belgium on the territory over which it presides. The event which gives rise to the damage must be located in Italy, where Comunello is established and the infringing door locks are produced. The harmful event takes place in Italy and is distributed from there. The place where the damage occurred is the place of distribution and commercialization of the product. The Court has jurisdiction only over the latter. Since Mauriks distributes Comunello’s locks on the Belgian market, the same reasoning is valid as regards the claim against it. Here too, the Court does not have the power to order a cross-border measure since its jurisdiction is based not on the “locus acti” but on the “locus damni”.