Source: EURLEX
Language: en
Format: md

[JURE summary](#SM)

## JURE summary

The case dealt with by the Landgericht Düsseldorf (hereinafter ‘the Court of First Instance’) concerns the applicability of the border seizure proceedings if the enforcement of a protected right is prevented by a legal objection regarding the non-existence of such right (*rechtshindernder Einwand*). A worldwide electronics producer and its subsidiaries (hereinafter ‘the plaintiffs’) challenged the suspension of the release of goods under Article 5(1) of the Regulation (EU) No 608/2013 (1), as approved by the Bundesfinanzdirektion (*Federal Finance Directorate*) upon the application of a patent holder (hereinafter ‘the defendant’). The European patent, held by the defendant, had been declared to be a standard essential for several OOO standards and the plaintiffs claimed that its application was a necessary precondition for the compatibility of end devices with several standards and that the defendant had a dominant market position with respect to the patent. The plaintiffs applied for the issuance of a preliminary order stipulating that the defendant should effectively eliminate the suspension of the release.

The Court of First Instance decided in favour of the plaintiff’s application and delivered the preliminary order requested, stating to be having the international and territorial jurisdiction under Article 7(2) of the new Brussels I Regulation (recast)(2) as well the national law because the result of the unfair practice occurred in Germany. In addition, the Court of First Instance found the applications of the plaintiffs to be well-founded, stating that the defendant had a dominant market position under Article 102 TFEU (3) thanks to its patent because there was not any alternative to the application of the technology protected by the respective patent when producing OOO-capable end devices.

The application of the border seizure proceedings in itself is not unlawful, but could be abused if the owner of protected rights was, objectively seen, at the time of oral hearings regarding the application without any doubts prevented from enforcing its rights by means of an legal objection of the non-existence of such right (*rechtshindernder Einwand*). The objection in this case was the so-called objection of a compulsory licence under antitrust law (*kartellrechtliche Zwangslizenzeinwand*), preventing the enforcement of patent rights, if the patent owner does not present a written offer for the licence for the patent under fair, reasonable and non-discriminatory conditions, also including the manner for the calculation of the respective royalties. For this reason, the use of the border seizure proceedings can be considered to be law-abusing in this case.

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(1) [Regulation (EU) No 608/2013 of the European Parliament and of the Council of 12 June 2013 concerning customs enforcement of intellectual property rights and repealing Council Regulation (EC) No 1383/2003.](http://data.europa.eu/eli/reg/2013/608/oj)

(2) [Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters](http://data.europa.eu/eli/reg/2012/1215/oj)

(3) [Treaty on the Functioning of the European Union.](http://data.europa.eu/eli/treaty/tfeu_2016/art_102/oj)

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