This is the third and last of a series of newsletters on the granting of cross-border injunctions regarding (territorially limited) intellectual property ("IP") rights by Dutch courts. In part 1, we gave a general introduction and focused on cross-border injunctions for patents, trademarks and design rights. In the second part we addressed cross-border measures for copyright, other IP rights and advertising law. In this part we give an update on 'pre-trial cross-border enforcement' and securing evidence in the Netherlands for the infringement of IP rights outside the Netherlands.
- Anti-Piracy Regulation: stopping infringement at Europe's borders
- Securing "cross-border evidence"
- Practical consequences and conclusion
- Summary of cross-border jurisdiction in IP cases
1. Anti-Piracy Regulation: stopping infringement at Europe's borders
The Anti-Piracy Regulation1 ("APR") provides the owners of IP rights in the EU with a useful and cost-efficient weapon against the trade in goods that (are suspected to) infringe IP rights. It allows customs authorities (ex officio or at the request of the rights owner) to seize and even destroy counterfeit goods at the borders before they enter the EU market, without needing a court order. In many countries these measures are not applied very effectively; in fact the EU recently launched an EU customs plan to promote the APR's application. The Dutch customs authorities, however, are very active in enforcing the APR. They have a thorough understanding of trade routes of counterfeit goods and are well equipped to detect infringing goods. For example, they use huge x-ray machines to scan the contents of containers and even have a mobile laboratory at their disposal to analyse chemical substances for patent infringement. Unlike many other European countries, the Dutch customs authorities also act on patent infringements but - due to the complexity - only at the rights owner's request. In our experience, Dutch customs authorities are very open to cooperating with rights owners to ensure optimal results. You can increase the effectiveness of custom measures considerably by providing the authorities with detailed information (and where useful: training) on suspected infringers, trade routes and means of detecting infringement, such as information on hidden product features or technical details. Customs measures in the Netherlands can be especially effective because many goods enter the EU market via the harbour of Rotterdam and Schiphol Airport: the "gateways to Europe". Hence acting here can imply stopping infringement in the entire EU.
There is a proposal to amend the APR which will further strengthen the position of the customs authorities and IP rights owners at the border. The amended APR would introduce a new procedure for small (postal) shipments and is to be extended to parallel import and look-alike products and to several IP rights that are currently not included (notably trade names, chips and utility models).
2. Securing "cross-border evidence"
Inside the borders of the EU the IP Enforcement Directive2 is a powerful tool to secure proof of infringement in IP cases. Several Dutch courts interpret the Enforcement Directive in such a way that the efficient quick ex parte (i.e. without hearing the other party) proceedings of this Directive can be used to secure evidence in the Netherlands for infringement in other EU countries even if no Dutch national IP right is involved. For instance, a French company secured evidence in the Netherlands for infringement of the German part of a European patent ("EP") that was not granted for the Netherlands.3 Sometimes permission is even given to secure evidence for infringement of non-EU rights (e.g. for Chinese and US patents).4 The situation may vary depending on whether the targeted company is based in the Netherlands, elsewhere in the EU or outside the EU. This is an efficient way of securing evidence, and circumventing complicated and time-consuming proceedings prescribed by multilateral treaties on evidence and enforcement. It should be noted that the evidence will be held by a custodian. To obtain access to the evidence follow-up proceedings inter partes are usually required.
3. Practical consequences and conclusion
The strong cross-border orientation of the Netherlands is reflected not only in the case law of Dutch courts but also in the pro-active attitude of the Dutch customs authorities. As the Netherlands is a transportation hub and forms the gateway to the EU for many importers from outside the EU, enforcing your rights here, either by pre-trial measures at the border, by other types of seizures or by taking cross-border measures, can be very effective. The Netherlands is (again) an excellent forum for cross-border measures in IP cases and for securing evidence.
4. Summary of cross-border jurisdiction in IP cases
For your convenience Table 2 below is an attempt to summarise the complicated rules for granting cross-border injunctions in IP proceedings in the Netherlands. We would be happy to advise whether cross-border measures can be obtained in your specific situation. (Please click on the table below to enlarge the image.)
Table 2: Cross-border jurisdiction in IP infringement cases and certain advertising cases before Dutch courts (simplified). The table is based on the situation where a plaintiff seeks a cross-border injunction regarding a national IP right covering several EU Member States. For Community and Benelux rights other specific rules may apply (apart from Art. 6 JRER). The table describes the outcome for different types of defendants from the EU (column 1, I-IV) in situations where an invalidity defence is (not) raised (column 2) for both summary (column 5) and main proceedings (column 6). For non-registered IP rights the invalidity defence is not relevant and therefore only rows A in column 2 apply. The registered rights referred to in column 3 are national patent and breeders rights and probably also Benelux trademark and design rights.
Footnotes
1. Council Regulation (EC) No 1383/2003 of 22 July 2003 concerning customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights
2. Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights.
3. Court of Appeal of Amsterdam, Rhodia Chemie v VAT et al., preliminary injunction proceedings, 24 April 2012.
4. Based on TRIPS, District Court of Dordrecht, ABB v Turboned, preliminary Injunction Proceedings, 19 April 2012.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
