EPLAW PATENT BLOG

NL – Synthon v. Astellas / Supreme Court / Referral CJEU

Posted: November 24th, 2016

In its judgment of 6 October 2015, the Court of Appeal Arnhem-Leeuwarden asked several preliminary questions to the Supreme Court with regard to the applicable criteria for an exhibition claim based on art. 843a DCCP in conjunction with art. 1019a DCCP.

With reference to its previous judgment in the AIB/Novisem case, the Supreme Court answered the first question by stating that there are no general applicable criteria to meet the “legal relationship in which he or his legal predecessor is a party” as required by art. 843a DCCP. However, (a) it should be sufficiently plausible that infringement of an intellectual property right is taking place or is imminent, that (b) the arguments of both parties and the persuasiveness of the evidence produced should be involved in the assessment and (c) that the degree of plausibility which is required to allow a claim in preliminary proceedings based on (a threat of) an infringement does not apply.

The second and third question aimed to raise the question if the required degree of plausibility is the same, whether the exhibition is intended to support ‘technical infringement’ or to prove other facts, e.g. by who and to what extent the intellectual property right is being infringed. Although the Supreme Court decided that a court ruling in favour of the applicant with respect to the assessment of allowability of an exhibition request would be more likely in case of ‘technical infringement’ than in case of an intention to gather other facts, it held that it would be impossible to provide different criteria that apply to each specific case. This should be considered on a case-by-case basis. Nevertheless, the question remained whether a distinction should be made on the basis of the question whether the exhibition is demanded from the (alleged) infringer or a third party. The Supreme Court decided to apply to the European Court of Justice in order to obtain an answer to its own preliminary question on this topic.

The last question that was raised by the Court of Appeal related to the degree of plausibility that should be applied if a defendant argues that the intellectual property right on which the exhibition request is based is invalid or no longer exists. Again, the Supreme Court found it necessary to seek the advice from the European Court of Justice in this respect, as it is not certain if the argument that the intellectual property right on the basis of which the exhibition has been requested is invalid or no longer exists outweighs the degree of plausibility that applies to the alleged infringement.

The questions the Supreme Court will ask the European Court of Justice are the following:

1. Should art. 6 Enforcement Directive be construed to mean that the degree of allowability of an exhibition request differs when claimed from an (alleged) infringer or a third party? If so, what is the difference between these degrees?

2. In the event the exhibition request is challenged stating that the intellectual property on which the exhibition request is based is invalid or no longer exists, should the merits of such an argument be assessed according to the same degree as the degree of plausibility that applies to the alleged infringement? If not, what is the difference between both degrees?

A copy of the decision (in Dutch) can be read here.

Headnote: Eelco Bergsma, Taylor Wessing

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