Dr Carolyn Haywood

May 2025

The subject CJEU referral stems from an action brought before the Swedish national court by BSH Hausgeräte GmbH (‘BSH’) against Electrolux AB (‘Electrolux’) seeking an injunction and damages with respect to the unlawful use of their invention protected by European patent 1434512 which was validated in Germany, Greece, Spain, France, Italy, the Netherlands, Austria, Sweden, the United Kingdom and Türkiye i.e. both EU Member States and non-EU Member States (‘third States’).

As part of its defence, Electrolux pleaded that the claims relating to infringement of the foreign (i.e. non-Swedish) parts of EP1434512 were inadmissible owing to the fact that the foreign patents were invalid and therefore the infringement action must be regarded as a dispute ‘concerned with the…validity of patents’ within the meaning of Article 24(4) of the Brussels I bis Regulation in so much as it is inseparable from the issue of validity of the patents in question. Accordingly, Electrolux argued that BSH has to bring infringement actions relating to the foreign parts of EP1434512 in the territories in which they were validated.

Under Article 24 of the Brussels I bis Regulation:

“The following courts of a Member State shall have exclusive jurisdiction, regardless of the domicile of the parties:

…

(4) in proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered, irrespective of whether the issue is raised by way of an action or as a defence, the courts of the Member State in which the deposit or registration has been applied for, has taken place or is under the terms of an instrument of the Union or an international convention deemed to have taken place.

Without prejudice to the jurisdiction of the European Patent Office under the Convention on the Grant of European Patents, signed at Munich on 5 October 1973, the courts of each Member State shall have exclusive jurisdiction in proceedings concerned with the registration or validity of any European patent granted for that Member State;

….”

Before the first instance, Electrolux was successful and the Patent- och marknadsdomstolen (Patent and Commercial Court, Sweden) declared, on the basis of the Brussels I bis Regulation Article 24(4), and Article 27 (which confirms that where a court is seized of a claim which is concerned with a matter for which a court of another Member State has exclusive jurisdiction it shall declare it has no jurisdiction), that it did not have jurisdiction to hear the action alleging infringement of the foreign (i.e. non-Swedish) patents.

BSH appealed to the Svea hovrätt, Patent- och marknadsöverdomstolen (Svea Court of Appeal, Patent and Commercial Court of Appeal, Stockholm, Sweden) arguing that Article 24(4) of the Brussels I bis Regulation is not applicable to patent infringement actions and thereby a court seised on the basis of Article 4(1) of the Brussels I bis Regulation (which confirms that persons domiciled in a Member State shall, whatever their nationality, be sued in the courts of that Member State) may hear an action alleging infringement of a foreign patent even if it does not have jurisdiction to rule on an action for a declaration that that patent is invalid. BSH also argued that the Swedish court had jurisdiction to hear an action for infringement of the foreign parts of EP1434512 pertaining to non-EU Member States on account of the international jurisdiction arising under Article 4(1).

Electrolux restated its previous position that the Swedish national courts do not have jurisdiction over the foreign parts of EP1434512.

The Swedish Court of Appeal had doubts regarding its jurisdiction and the correct interpretation of Article 24(4) of the Brussels I bis Regulation.

Accordingly, proceedings were stayed, and the following questions were referred to the CJEU:

‘(1)      Is Article 24(4) of [the Brussels I bis Regulation] to be interpreted as meaning that the expression “proceedings concerned with the registration or validity of patents … irrespective of whether the issue is raised by way of an action or as a defence” implies that a national court, which, pursuant to Article 4(1) of that regulation, has declared that it has jurisdiction to hear a patent infringement dispute, no longer has jurisdiction to consider the issue of infringement if a defence is raised that alleges that the patent at issue is invalid, or is the provision to be interpreted as meaning that the national court only lacks jurisdiction to hear the defence of invalidity?

(2)      Is the answer to Question 1 affected by whether national law contains provisions, similar to those laid down in the second subparagraph of Paragraph 61 of the [Law on patents], which means that, for a defence of invalidity raised in an infringement case to be heard, the defendant must bring a separate action for a declaration of invalidity?

(3)      Is Article 24(4) of the [Brussels I bis Regulation] to be interpreted as being applicable to a court of a third [State], that is to say, in the present case, as also conferring exclusive jurisdiction on a court in [Türkiye] in respect of the part of the European patent which has been validated there?’

The CJEU decision

Questions 1 and 2 were examined together and it was determined that Article 24(4) of the Brussels I bis Regulation must be interpreted as meaning that a court of the Member State of domicile of the defendant which is seised in line with Article 4(1) of that regulation, of an action alleging infringement of a patent granted in another Member State, retains jurisdiction to hear that action where, in the context of the action, the defendant challenges the validity of the patent. That said, the CJEU were clear in their position that the courts of the Member State for which the patent was granted have exclusive jurisdiction to rule on the validity of that patent.

Turning now to question 3, the CJEU confirmed that Article 24(4) of the Brussels I bis Regulation must be interpreted as not applying to a court of a third State and, consequently, as not conferring any jurisdiction, whether exclusive or otherwise, on such a court as regards the assessment of the validity of a patent granted or validated by that State. Thus, if a court of a Member State (such as the Swedish court) is seised, on the basis of Article 4(1) of the Brussels I bis Regulation, of an action alleging infringement of a patent granted or validated in a third State in which the question of the validity of that patent is raised, as a defence, that court has jurisdiction, pursuant to Article 4(1), to rule on that defence. With that said, the CJEU confirmed that the decision can not affect the existence or content of that patent in that third State or cause the national register of that State to be amended i.e. the decision would only have inter partes effect and would only affect the action before the Member State.

Conclusion

In light of the CJEU judgement, the option for Patentees to consolidate actions for patent infringement across multiple EU and non-EU member states at a single EU court (be that a national court or the UPC) where the defendant is domiciled has been affirmed, and that option doesn’t seek to apply where validity is contested.

For readers familiar with recent UPC case law, this decision goes hand in hand with landmark decision Fujifilm v Kodak, reported here, in which the UPC’s Düsseldorf Local Division confirmed that it had jurisdiction to hear an infringement action pertaining to the UK part of a European patent on the basis that the defendant was domiciled in Germany, an EU Member State.