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Tuesday, 1 November 2011

Germans win on penalties again!

One of the great sorrows of the English relates to their football team's fabled inability to win soccer matches when, when the scores are level at the end of extra time, go to a penalty shoot-out.  It has also been noted that, just as the English frequently fail at penalties, the Germans excel in them.   The IPKat, a keen student of irrelevant and unscientific generalisations concerning national characteristics, notes that the Germans' success with penalties extends to litigation in Europe's highest court, which held last month, in Case C‑406/09, Realchemie Nederland BV v Bayer CropScience AG, 18 October, that a penalty ordered by a German court for non-compliance with an interim order in patent infringement proceedings, would be counted as taking effect throughout the European Union.  Let the Kat explain:

Following Bayer's application for interim relief in patent infringement claim, the Landgericht Düsseldorf prohibited the Dutch company Realchemie, on pain of a fine, from importing into, possessing or marketing certain pesticides in Germany. The court also ordered Realchimie to provide details of its commercial transactions involving the pesticides and to transfer its stock into the custody of the court. A costs award against Realchemie was fixed at EUR 7,829.60.  Subsequently Realchemie was ordered to pay a fine of EUR 20,000 for breach of that prohibition, plus further costs of  EUR 898.60. In addition, by a third order, the Landgericht imposed a periodic penalty payment of EUR 15,000 to "encourage" [that's the ECJ's word] Realchemie to provide details of the commercial transactions concerning the pesticides in question -- plus even more costs (this time, EUR 852.40 plus interest).

Since Realchemie didn't pay, Bayer referred the matter to the judge responsible for hearing applications for interim measures in a Dutch court, the Rechbank ’s-Hertogenbosch (Netherlands), where it sought a declaration that the Landgericht Düsseldorf's various orders were enforceable in the Netherlands. The Dutch judge agreed.  Realchemie now appealed, citing Article 34 of Regulation 44/2001 [on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters]: surely these German orders couldn't be recognised and enforced in another Member State? Were the substantive orders not made in a situation in which Realchemie wasn't even called to appear, without an oral procedure? And weren't the costs orders just an integral part of them?

Unmoved by these arguments the Rechtbank ’s-Hertogenbosch dismissed that appeal as unfounded. There was only one hope for Realchemie now: an appeal on a point of law to the Hoge Raad der Nederlanden (Supreme Court of the Netherlands). That court decided to stay the proceedings and referred the following questions to the Court of Justice for a preliminary ruling:
‘1. Is the phrase “civil and commercial matters” in Article 1 of Regulation … No 44/2001 … to be interpreted in such a way that this regulation applies also to the recognition and enforcement of an order for payment of a fine [this refers to the 'encouraging' periodic penalty payment]?

2. Is Article 14 of Directive 2004/48 … to be interpreted as applying also to enforcement proceedings relating to

(a) an order made in another Member State concerning an infringement of intellectual property rights;

(b) an order made in another Member State imposing a penalty or fine for breach of an injunction against infringement of intellectual property rights;

(c) costs determination orders made in another Member State on the basis of the orders referred to at (a) and (b) above?’
Having duly pondered the points, in just 16 short paragraphs, the Court of Justice responded thus:
"1. The concept of ‘civil and commercial matters’ in Article 1 of ... Regulation ... 44/2001 ... on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters must be interpreted as meaning that that regulation applies to the recognition and enforcement of a decision of a court or tribunal that contains an order to pay a fine in order to ensure compliance with a judgment given in a civil and commercial matter [this will be the case even if the court enforcing that order falls within a jurisdiction that has no provision for making such an order itself, if the Kat's understanding of Case C-235/09 DHL Express is correct]. 
2. The costs relating to an exequatur procedure [Haven't heard this term before? No, nor had Merpel till she encountered it here. The IPKat knew it of course, retrospectively ...] brought in a Member State, in the course of which the recognition and enforcement is sought of a judgment given in another Member State in proceedings seeking to enforce an intellectual property right, fall within Article 14 of Directive 2004/48 ... on the enforcement of intellectual property rights".
The IPKat thinks this is all correct and is just a little surprised that it had to go to a preliminary ruling.  Merpel keeps thinking: isn't getting a penalty payment order against a defendant who isn't in court a little like taking a penalty kick when there isn't a goalkeeper ...?

When Bayer are not so successful on penalties here and here

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