Court of Justice of the EU Rules on Jurisdiction in Cross-Border IP Disputes (BSH v Electrolux (C-339/22))

In its landmark judgement of 25 February 2025, the Court of Justice of the EU (CJEU) clarifies the rules on jurisdiction in cross-border IP disputes in which both infringement and validity issues are raised. The CJEU rules that courts of Member States where the defendant is domiciled and before which an infringement action covering several EU territories is brought, retains jurisdiction to rule on the case, even if the defendant disputes the validity of the IP right. It also clarifies the situation where IP rights in third countries, e.g. Turkey, are involved.

The CJEU’s judgement, given by the Grand Chamber, has far-reaching consequences for the long-arm jurisdiction of EU Member State courts, and opens the doors for new IP procedural strategies, including before the Unified Patent Court (UPC).

1. Facts and legal issues

BSH Hausgeräte GmbH (hereinafter BSH) brought patent infringement proceedings in Sweden against Electrolux AB, a Swedish company. BSH holds a European patent valid in several EU Member States, and in Turkey. BSH claimed that Electrolux infringed all national parts of its patent and claimed for an injunction and damages. Electrolux disputes the validity of BSH’s patent in all countries concerned and argues that for all of them, except Sweden, the Swedish court should decline jurisdiction to rule on the case, including as regards the infringement issues.

Article 24(4) Brussels I bis Regulation grants exclusive jurisdiction to courts of the Member State where the patent was granted, to rule on the registration or validity of that patent. Electrolux argues that e.g. only a German or Turkish court, respectively, could adjudicate on the validity of BSH’s German or Turkish patent as well as on the infringement thereof. Seemingly, Article 24(4) conflicts with Article 4(1) Brussels I bis Regulation, which grants general jurisdiction to the court of the defendant’s domicile (i.e. Sweden).

Should the Swedish court decline jurisdiction pursuant to the exclusive jurisdiction rule of Article 24(4) now that Electrolux raised an invalidity defence against BSH’s patents before that Swedish court? In addition, is the exclusive jurisdiction rule of Article 24(4) also applicable regarding third countries (such as Turkey)?

2. Court decision

The CJEU analyses Article 24(4) Brussels I bis Regulation and finds that it must be interpreted strictly: it relates only to “proceedings ‘concerned with the registration or validity of patents’” (§ 39). Therefore,

“a court of the Member State in which the defendant is domiciled, which has jurisdiction, under Article 4(1) of the Brussels I bis Regulation, in an action alleging infringement of a patent granted in another Member State, does not lose that jurisdiction merely because, as its defence, that defendant challenges the validity of that patent.” (§ 41)

The CJEU adds three considerations supporting this conclusion:

• Article 24(4) Brussels I bis Regulation is an exception. If a court were to decline jurisdiction to hear an infringement action every time the validity of the patent is challenged, the exception in Article 24(4) would become the rule (instead of art. 4(1) which is the principle of the regulation). Indeed, in IP disputes, it is common practice to challenge the validity of the underlying title as a defence to an infringement claim.
• Recital 15 of the Regulation states that the rules on jurisdiction should be highly predictable. Another interpretation carries the risk that the court in infringement proceedings would have to decline jurisdiction every time the defendant chooses to raise an invalidity defence, leading to more unpredictability.
• Article 24(4) must be interpreted in accordance with its objective: disputes concerning the registration or validity of a patent are reserved to the Member State in which the patent was granted, because of the link of physical or legal proximity. Simultaneously, the patent holder can bundle his infringement claims and bring them before the court of the defendant’s domicile, avoiding divergent decisions.

The CJEU is aware this may result in splitting the litigation: on the one hand, infringement proceedings pending before the court of the defendant’s domicile, and, on the other hand, invalidity proceedings before the courts of the other Member States concerned. The CJEU rules that the judge of the infringement – when he/she finds a reasonable, non-negligible possibility that the patent will be invalidated in another Member State – can stay the infringement proceedings (reference to earlier ruling Solvay, C-616/10, § 49).

The CJEU also addresses the situation regarding third countries, such as Turkey. In third countries, the Regulation does not apply. Therefore, in principle, the court of an EU Member State has jurisdiction to determine the validity of a Turkish patent (§ 61). However, other rules can be relevant, on the one hand special ones like the Lugano Convention (Article 73(1)), bilateral agreements (in casu between Sweden and Turkey, Article 73(3)), Articles 33 and 34 Brussels I bis Regulation (lis pendens and related actions), and, on the other hand, general international law. Under the latter, the national judge (having jurisdiction because of the defendant’s domicile) may rule on the validity of the Turkish patent, but not on the existence or content of that patent in (the patent register of) that third country. The invalidity, raised as a defence, has effect inter partes only: it does not lead to the nullity erga omnes, in whole or in part, of the patent in Turkey.

3. Some first considerations

• The CJEU clarifies its 2006 ruling GAT (C-4/03), under which a court in infringement proceedings where a defendant challenges the validity of a patent granted in another Member State, must decline jurisdiction to rule on the validity of that patent: this earlier ruling does not mean that that court has no jurisdiction over the entire dispute; it retains jurisdiction to determine the infringement claim.
• This ruling will give rise to strategic procedural considerations in many IP cross-border disputes, e.g. regarding European patents (EPs) in an EU context. If the defendant is domiciled in a UPC Member State, the UPC has jurisdiction like a national court (article 71a Brussels I bis Regulation) on all infringement claims a patentee may bring, not only of a unitary patent or non-opted out EPs (if no unitary patent is at stake), but also as regards the portions of EPs validated and in force in non-UPC EU Member States. Conversely, the defendant, if disputing the validity of these patents, must bring his action before the UPC as regards the unitary patent or the non-opted out EPs. However, for non-UPC EU Member States where the patent is in force, the defendant in the infringement case before the UPC will have to bring individual and separate actions in these Member States to obtain the invalidity of those national portions of the EP. The case will then be subject to the suspension criterion if invalidity issues concerning those countries are raised as a defence in the infringement action (cf. supra).

If the EP is not opted out and the patentee chooses a national court of a Member State to litigate, the infringement claim brought before the court of the defendant’s domicile entails the general jurisdiction of that court, while the defendant who seeks to annul the national portions of the EP is obliged to launch separate invalidity actions before the courts in all Member States concerned (other than his domicile). The same solution applies if the EP is opted out from the UPC jurisdiction. Again, the defendant who raises the nullity argument as a defence in the infringement action will be subject to the suspension criterion. These consequences enabling EP litigation centrally before the national court of the defendant should be considered by patentees before adopting unitary effect of their EP and when deciding on opting out.