On 25 February 2025, the Court of Justice of the European Union (CJEU) issued a pivotal ruling in BSH Hausgeräte GmbH v. Electrolux AB (Case C-339/22), addressing jurisdictional issues in cross-border patent litigation. The Court held that a Member State court retains jurisdiction to hear an infringement action under Article 4(1) of Regulation (EU) No 1215/2012 ("Brussels I bis Regulation"), even when the defendant challenges the validity of the intellectual property ("IP") right. Additionally, the ruling sheds light on how disputes involving IP rights registered in non-EU countries - such as Turkey - are to be handled.
Background
The case originated from proceedings brought before the Swedish Patent and Commercial Court by BSH, a Swedish company, alleging that Electrolux had infringed its European Patent EP1434512 concerning vacuum cleaners. The patent had been validated in several EU Member States and in Turkey. BSH sought an injunction and damages across all relevant jurisdictions.
In response, Electrolux disputed the validity of the patent and challenged the jurisdiction of the Swedish court. They argued that under Article 24(4) of the Brussels I bis Regulation, the Swedish court lacked competence to adjudicate the infringement claim because questions of validity and infringement were inseparable and should be heard exclusively by courts with authority over patent validity.
This prompted the Swedish appellate court to refer several questions to the CJEU, including:
- Whether a court competent under Article 4(1) loses jurisdiction over an infringement action if the patent's validity is contested.
- Whether the need for a separate invalidity action under national law influences jurisdiction.
- Whether Article 24(4) applies to patents registered in third countries, such as Turkey.
The CJEU's Ruling
In making its assessment, the CJEU firmly sided with BSH, delivering a judgment that both narrows and clarifies the interpretation of Article 24(4).
The Court emphasised that Article 24(4), which confers exclusive jurisdiction to the courts of the Member State where a patent is registered to determine its validity, must be read narrowly. It is an exception to the general rule in Article 4(1), which grants jurisdiction to the courts of the Member State where the defendant is domiciled.
The CJEU held that a court seized under Article 4(1) retains jurisdiction to adjudicate a patent infringement claim, even if the defendant challenges the validity of the patent. Secondly, while that court cannot determine the validity of a foreign patent with erga omnes (universal) effect, it may still rule on infringement claims. Decisions on invalidity made in the context of infringement proceedings have inter partes effect only, meaning that they bind only the parties to the case and do not affect the status of the patent in the jurisdiction of registration. Where there is a credible challenge to validity, the infringement court has the discretion to stay the proceedings pending a decision by the competent court on validity.
The court also highlighted the fact that the mere raising of an invalidity defence does not shift jurisdiction; otherwise, Article 24(4) would transform from an exception into a rule, undermining the principle established by Article 4(1).
Third-Country Patents
The judgment also addressed the scenario involving third-country IP rights, such as Turkish patents. As Turkey is not covered by the Brussels I bis Regulation, jurisdiction must be assessed under alternative frameworks. These include, specific instruments like the Lugano Convention (Article 73(1)) or bilateral agreements, provisions on lis pendens and related actions (Articles 33 and 34), and general principles of private international law.
Under these regimes, a Member State court may still rule on the validity of a third-country patent with respect to the parties only, provided it has jurisdiction over the defendant. However, such a ruling does not affect the legal existence or registration of the patent in the third country itself.
Implications
The judgment effectively narrows the scope of the CJEU's earlier decision in GAT v. LuK (C-4/03), decided in 2006, which required a court to decline jurisdiction entirely if patent validity was contested.
This change is significant for cross-border IP litigation, particularly concerning European patents. The decision enables rightsholders to consolidate infringement claims in the court of the defendant's domicile, even when the patent is protected in a number of Member States.
In the context of the Unified Patent Court ("UPC"), the ruling reinforces that where a defendant is domiciled in a UPC Member State, the UPC has jurisdiction under Article 71a of the Brussels I bis Regulation. However, a defendant challenging validity must still bring invalidity actions in each Member State where the patent is validated, unless those parts fall under UPC jurisdiction. Where the patent has been opted out of the UPC system, the national court of the defendant's domicile still holds general jurisdiction for infringement. But again, separate actions must be brought to contest validity in the respective Member States, and a suspension of proceedings may follow if invalidity is raised as a defence.
Therefore, this decision has practical implications for how litigants approach venue selection and strategic coordination of infringement and invalidity actions across the EU.
Conclusion
In conclusion, the Grand Chamber of the CJEU's judgment in BSH v. Electrolux provides authoritative guidance on the jurisdictional interface between infringement and validity disputes in cross-border IP cases under the Brussels I bis Regulation. It confirms that the existence of a validity challenge does not divest the court of the defendant's domicile of its jurisdiction to hear an infringement claim.
By reinforcing a narrow interpretation of Article 24(4), the ruling ensures that plaintiffs are not deprived of their right to consolidate infringement claims, thereby fostering legal predictability and procedural efficiency. At the same time, it protects the role of competent courts in deciding validity issues, preserving the integrity of national IP registers.
The judgment will undoubtedly influence national court practice and strategy in the years to come, including that of the First Hall of the Civil Court in Malta. This will also likely encourage an uptick in cross-border enforcement actions and will shape the procedural landscape of both national IP litigation and proceedings before the UPC.
Legal practitioners and rightholders alike will need to recalibrate their strategies in light of this landmark decision.
Michela Zammit Lupi is an Advocate at Ganado Advocates