Liability Of The Applicant For A Precautionary Measure Is To Be Determined Case By Case And Based On The Applied National Legislation ' Two Recent ECJ Decisions

• Published date: 04 April 2024
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Patent, Trials & Appeals & Compensation
• Law Firm: Maucher Jenkins
• Author: Dr. Manuel Kunst

Preliminary Ruling by the European Court of Justice (ECJ) of Jan. 11, 2024 (ECJ, Case C-473/22)

See CURIA - Documents (europa.eu)

On a request for a Preliminary Ruling by the Markkinaoikeus (Market Court in Finland), the European Court of Justice (ECJ) has decided that also in the case of lack of negligence (or omissions) by the applicant for a Precautionary Measure ("strict liability") a claimant who has adopted a Precautionary Measure against an Infringer of a patent right - here in the form of a Supplementary Protection Certificate (SPC) that extends the protection term of the basis patent - can be subject to a duty of compensation of losses suffered by the defendant resulting from a Provisional Measure caused by the claimant which is subsequently revoked.

The basis for the Preliminary Ruling was a request by the Market Court of Finland whether a compensation based on a national legal provision also allowing compensation claims independent of whether or not there was negligence on the side of the claimant of a Provisional Measure (so-called "strict liability") can be in agreement with Art. 9(7) of European Directive 2004/48 (also called "Enforcement Directive").

The Enforcement Directive aims at ensuring an approximation of legal protection of Intellectual Property in the EU member states. The purpose is the protection against product piracy by means available under private law, including Precautionary Measures (e.g. preliminary injunctions).

The concrete legal implementation was reserved to the member states, as a Directive (in contrast to a directly binding and applicable EU regulation) is not directly "law" in a member state. (As a side remark, Germany was behind schedule with the implementation and treaty violation proceedings were started by the Commission - the corresponding law entered into force in September 2008).

Art. 9(7) reads as follows:

Where the provisional measures are revoked or where they lapse due to any act or omission by the applicant, or where it is subsequently found that there has been no infringement or threat of infringement of an intellectual property right, the judicial authorities shall have the authority to order the applicant, upon request of the defendant, to provide the defendant appropriate compensation for any injury caused by those measures"

Under Finnish law, Paragraph 11 of Chapter 7 of the Code of Judicial Procedure, transposing Art. 9(7) of the Enforcement Directive, it is provided that a claimant who has...