Friday, 26 October 2012

Contributory Infringement and Territoriality


Simple question: a Belgian shopkeeper B sells a product infringing a German patent to his client C in his shop in Belgium. Infringement or not? Most of us would say the answer is plainly no – territoriality principle.

The BGH has now wondered whether this might change if the shopkeeper knows that the client wants to sell the product in Germany. Then, the act of selling could amount to contributory infringement.

The question became relevant not for patent infringement but because a copyright and trademark owner had sued a Belgian defendant before the German Courts by arguing that the contributor to a main infringement may be sued – according to the German Civil Procedure law - before the courts having jurisdiction for the main infringement action. In the above case, these would be the German Courts.

The BGH has therefore referred the following  question on the interpretation of Art. 5 Nr. 3 EUGVVO (Council Regulation (EC) No 44/2001) to the ECJ:

Must Article 5 Nr. 3 of the Council Regulation (EC) No 44/2001 be interpreted such that the harmful event occurred in one member state (member state A), when the tort, delict or quasi-delict, being subject of the procedure or from which claims are derived has been committed in a different member state (member state B) and consists in the participation in the tort, delict or quasi-delict, having occurred in the first-mentioned member state (member state A)? (freely translated by the author of this note)

If the answer would be positive, this would clearly open new and interesting options for cross-border litigation on the basis of Article 5 Nr. 3 of the Council Regulation (EC) No 44/2001 not only for copyright and trademark cases but also in patent cases where the application of Art. 6 Nr. 1 of the Council Regulation (EC) No 44/2001 is foreclosed after the ECJ-decision Roche/Primus, as long as Art. 22 Nr. 4 of the regulation does not enter the game.

On the same day, the BGH referred the same question on the interpretation of Art. 93 par. 5 of the Commnity Trademark Regulation (Council Regulation (EG) 40/94) to the ECJ. PatLit will keep you updated.

2 comments:

Anonymous said...

The link to the German decision making the ECJ referral does not lead to a decision on patents, but rather to a decision on copyright. Also, in the website of the Bundesgerichtshof I could find both the copyright decision and the decision of same date making the same referral to the ECJ for a trademark. However, I could not find any decision making the same referral to the ECJ for a patent, while from your post there seems to be a decision where the infringed right was in fact a patent. Can you post the link to the "correct" decision, i.e. the one making the referral to the ECJ and relating to patent infringement?

Thanks!

Micaela

Micaela Modiano
MODIANO & PARTNERS

Unknown said...

Thanks for pointing this out, Micaela. The original post was quite misleading, indeed.

The decision makes the referral on the basis of a copyright- and trademark infringement case, but the question referred to the ECJ is broad enough to cover patent infringement as well(and generally the tort, delict or quasi-delict, being subject of the procedure), as as long as Art. 22 Nr. 4 of the regulation does not enter the game.

Since we are on a patent litigation blog, I thought it would be a good idea to illustrate a situation where the question could arise using a (purely hypothetical) patent infringement case.

Again, sorry for the confusion.