EPLAW Patent Blog

CJEU - DHL Express (France) v.Chronopost / Cross border

DHL Express (France) SAS v.Chronopost SA, Opinion Advocate-General P. Cruz Villalón, 7 October 2010, Case C-235/09, with thanks to Pierre Véron, Véron & Associés, for sending in the case and the informal English translation

Referral to CJEU by the French Cour de cassation about the territorial scope of the injunction granted by a community trademark court, a question which may have some impact on cross border patent litigation.

The Opinion of Advocate General Pedro Cruz Villalón is not yet available in English, but an informal translation in English follows hereafter (for other languages, see the bottom of the post):

Questions referred:
 
1.    Must Article 98 of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark be interpreted as meaning that the prohibition issued by a Community trade mark court has effect as a matter of law throughout the entire area of the Community?

Article 98 of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark must be interpreted as meaning that the prohibition issued by a Community trade mark court has effect as a matter of law throughout the entire area of the Community, except otherwise specifically provided.

 

BE - Ajinomoto v. Helm et al. - Process for producing L-Lysine by fermentation

Ajinomoto Co. Inc. v Helm AG et al., Antwerp Commercial Court, Belgium, 11 June 2010, Case nr. A/08/06919

The Antwerp commercial court finds the Belgian counterpart of Ajinomoto’s European patent nr. EP 0733710 B1 valid and infringed. EP ‘710 relates to a “process for producing L-lysine by fermentation”, particularly to a process applying a mutated Escheria bacterium which suppresses Lysine feedback inhibition.

The court discusses GAT/LuK and Roche/Primus and accepts international jurisdiction to adjudicate the issues of infringement raised against several foreign defendants based on Articles 5(3) and 6(1) of the Brussels-I-Regulation.

The defendants filed a counterclaim for revocation of the Belgian counterpart of EP ‘710 on the basis of insufficiency, added matter and lack of inventive step. On insufficiency, the court maintains that disclosure of a single embodiment or application of the invention is enough. The defendants’ arguments in respect to added matter were also dismissed. In that regard, the court concurred with the EPO that an obvious error regarding the exact positioning of the sequence mutations would be recognized as such by a person skilled in the art. Finally, the court accepts that the invention disclosed in EP ‘710 is inventive. Applying the problem-solution approach to EP ‘710, the court indicates that “it is possible to withhold two separate documents as closest prior art in case their respective disclosures do not contradict”.

NL - Street Surfing LLC v. Alcom Computer Products B.V.

Street Surfing LLC v. Alcom Computer Products B.V. ,  preliminary injunction proceedings, The Hague District Court, The Netherlands, 2 December 2009, Docket No. 345784 / KG ZA 09-1122

An unregistered license can form the basis of an enforcement action against a third party if the third party, as currently is the case, is aware of the existence of the license (Art. 56 Dutch Patent Act). 

After applying the problem/solution approach the court concludes that additional inventive work from the skilled person is needed to get to the invention of the Patent.

A cross border injunction is granted as the claim for such an injunction was not contradicted. 

Read the judgment (in Dutch) here.

FR - SA Chronopost v. SAS DHL Express France

SA Chronopost v. SAS DHL Express France, community trademark (territorial scope of injunction; referral ECJ), Cour de cassation, Paris, France, 23 June 2009, Case no.:  08-13729, with thanks to Pierre Véron, Véron & Associés

This judgment issued by the highest court for civil cases in France may be of interest to patent practitioners, although it concerns Article 98 of the Council Regulation (EC) No. 40/94 of 20 December 1993 on the community trademark.

It is about the territorial scope of the injunction granted by a community trademark court. The Cour de cassation asks a preliminary ruling of ECJ to determine whether such injunction has automatically effect on the entire territory or the EC and, if not, whether the court is entitled to extend the injunction to other States. The ECJ answer to these questions may have some impact on cross border patent litigation.

The questions (in their unofficial translation) are: