On 25 February 2025, the Court of Justice of the European Union (CJEU) answered preliminary questions in a long-awaited ruling in a case between BSH Hausgeräte GmbH (BSH) and Electrolux AB (Electrolux). The ruling clarifies certain aspects regarding cross-border patent injunctions against defendants domiciled in an EU member state and seems to broaden the possibilities of cross-border injunctions.

Background

BSH initiated proceedings against Electrolux before the Swedish courts in 2020. BSH's claim sought an injunction and damages for Sweden, and also for other states where the European Patent was validated: Germany, Greece, Spain, France, Italy, the Netherlands, Austria, Sweden, the United Kingdom and Turkey. In relation to the invoked foreign patents, Electrolux argued that these were invalid and, therefore, that the Swedish court did not have jurisdiction for the claims relating to the alleged infringement of these patents.

The Swedish court of first instance agreed with Electrolux. However, the Svea Court of Appeal decided to stay the proceedings and to refer preliminary questions to the CJEU on the interpretation of the Brussels Ibis Regulation (Brussels Regulation).

Legal framework and preliminary questions

BSH seized the Swedish court based on article 4(1) of the Brussels Regulation, whereby persons domiciled in an EU member state are sued in the courts of that member state. Article 63(1) of the Brussels Regulation states that companies and legal persons are domiciled where their statutory seat, central administration or principal place of business is located.

The CJEU had to rule on the interpretation of article 24(4) of the Brussels Regulation. Under that provision, the courts of the member state where a patent is registered have exclusive jurisdiction with respect to the validity of the patent. The questions to be answered by the CJEU relate to how courts have to deal with cross-border infringement claims if the invalidity of foreign patents is raised.

The preliminary questions were as follows:

(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?

Advocate General Emilio issued two opinions (here and here).

CJEU ruling

Questions 1 and 2

Looking at questions 1 and 2 together, the CJEU ruled that if a cross-border patent infringement claim is brought under article 4(a) of the Brussels Regulation, the member state seized retains jurisdiction to hear the action where, in the context of that action, the defendant challenges the validity of that patent by way of defence. The jurisdiction to rule on the validity lies exclusively with the court of the member state of the foreign patent.

The CJEU reached this conclusion based, among other things, on a restrictive interpretation of article 24(4) of the Brussels Regulation, which is to be considered an exception to the general rule laid down in article 4(1). Given that invalidity is often raised as a defence against infringement, a too broad interpretation of article 24(4) would, according to the CJEU, lead to this article becoming the rule rather than the exception envisaged.

The CJEU further considered that the member state seized may, where appropriate (particularly where it considers that there is a reasonable and non-negligible chance that the patent will be declared invalid by the competent court of the other member state), stay the proceedings. This would enable the court ruling over the infringement action to take into account a decision given by the court presiding over the invalidity action.

Given the wording of the CJEU on this issue, it seems that the national (and UPC) courts have discretionary power over a possible stay. A court can thereby also assess the prima facie seriousness of the invalidity action in order to avoid that, as the Advocate General put it, "frivolous invalidity defences" delay the infringement proceedings.

Question 3

The CJEU ruled that article 24(4) of the Brussels Regulation does not apply to the court of a non-member state (third party state). Consequently it does not confer any jurisdiction, exclusive or otherwise, on such court in relation to the assessment of the validity of the patent granted in the third party state.

If a court of a member state is seized on the basis of article 4(1) of the Brussels Regulation (with the defendant being domiciled in the EU) for an infringement action relating to a patent granted in a third party (non-member) state, and the validity of that patent is raised by way of defence, the seized court has jurisdiction to rule on such defence (provided no special rules prevent this, for example, the Lugano Convention or a bilaterial convention). The decision will not affect the existence or content of the patent of the third party state.

In other words, the CJEU emphasised that the court of the member state can rule on the invalidity defence, but that this decision can only have inter partes effect and will not affect the patent erga omnes (against third parties).

Applying the CJEU's reasoning to the facts of BSH/Electrolux, this presumably means that Swedish courts may rule on infringement and damages in relation to the UK and Turkish patents (the patents registered in the two non-member states). But of course, the referring Svea Court of Appeal in Sweden has yet to decide.

Implications

The ruling has direct effect for patent litigation in national courts of EU member states, as well as for patent litigation under the UPC.

On the first two preliminary questions, the ruling broadens the possibility of obtaining cross-border patent injunctions, and thereby seems to deviate from the landmark GAT/Luk ruling (2006), which essentially blocked cross-border injunctions if invalidity is raised as a defence. Also, while the Solvay/Honeywell ruling (2012) stated that member States can still grant provisional cross-border measures, even if invalidity is raised, in the BSH/Electrolux decision, the CJEU has ruled that cross-border patent injunctions can also be issued in main proceedings in such case, subject to the limitations set out by the CJEU.

Dutch courts have historically (also in cases where invalidity is raised by the defendant) been willing to grant cross-border provisional injunctions, both in separate preliminary injunction proceedings and via provisional measures within main proceedings. The BSH/Electrolux ruling seems to fit well with this approach, additionally offering the possibility that cross-border injunctions are awarded in final decisions in main proceedings. Dutch courts also never stopped granting such cross-border injunctions in "soft" IP cases where the law is harmonised, and can do so again.

The answer to the third preliminary question clearly opens the door to cross-border injunctions for patents registered in non-member states, such as the United Kingdom and Turkey, again, also in main proceedings. This will also be relevant for national courts and UPC courts alike. Recently, the UPC assumed jurisdiction to rule on the alleged infringement of a UK designation of a European Patent.

Further, the UPC can rule on infringement of patents of EU member states that are not part of the UPC (for example, Spain), within the limitations set out by the CJEU.

Of course, how national courts and UPC courts will approach these type of cases in practice remains to be seen, given that there is still some room for manoeuvring. In any case, these recent developments offer interesting possibilities and strategies for cross-border patent litigation for both claimants and defendants.