The Court of Justice of the European Union recently ruled on the interpretation of Article 9.1 of the Enforcement Directive (Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights) in a patent dispute between two German companies, Phoenix Contact GmbH & Co. KG, the patent owner, and Harting Electric GmbH & Co. KG, the alleged infringer.
The ruling of 28 April 2022 came at the end of a preliminary ruling by the Landgericht München on an application for interim relief filed by Phoenix for the protection of a patent concerning a connection plug with a protective conductor terminal, which had been granted by the EPO but opposed by Hartig.
The Court of München found the patent to be valid and infringed, but could not issue the requested injunction because it was bound by the case law of the Oberlandesgericht München, which prevented the adoption of emergency measures for the protection of a patent as long as the validity of the patent itself was not confirmed by opposition or appeal proceedings before the EPO or by a decision of the Bundespatentgericht.
The question referred for a preliminary ruling concerned the compatibility of this case law with Article 9.1 of the Enforcement Directive, which provides for the possibility for the courts of the Member States to issue urgent measures against the alleged infringer of an industrial property right aimed at preventing any imminent infringement of an intellectual property right.
Firstly, the Court of Justice reiterated that the adoption of urgent measures for the protection of industrial property rights must always be subject to a 'fact specific' exam as to the the protectability requirements of those IP rights and their infringement.
Moreover, the very nature of the emergency measure must allow the stop of the infringement without having to wait for a ruling on the merits on the validity of the title and the relevant infringement in light of the irreparable prejudice caused by the delay that would be caused in the time needed to complete the substantive investigation on these aspects.
In that sense, the case-law of the Oberlandsgericht München would appear to be incompatible with this principle and to apt to deprive interim relief of its inherent effectiveness in so far as it makes the grant of interim relief subject to a further determination of validity by the EPO or the Bundespatentgerich.
In answering the question for a preliminary ruling, the CJEU thus concluded that Article 9(1) of the Enforcement Directive "precludes national case-law under which applications for provisional measures for patent infringement must be refused, in principle, where the validity of the patent in question has not been confirmed, at least, by a first instance decision issued following opposition or invalidity proceedings".