Since the Court of Justice’s Grand Chamber ruling in BSH v Electrolux (C-339/22, 25 February 2025), a court of the EU Member State where the defendant is domiciled can hear an infringement claim covering patents granted in other Member States and in non-EU countries, even when the defendant argues that those patents are invalid. For rights outside the EU, such as patents in Latin America, that court can also rule on validity as a defence, with effect only between the parties. This reshapes cross-border IP infringement jurisdiction in the EU and the way companies operating between Europe, Latin America and Africa should design their litigation.
Key takeaways
- An EU-domiciled infringer can be sued at home for infringements of patents in several EU countries and in third countries, in a single action.
- Validity of a patent granted for another Member State remains for that state’s courts; the infringement court may stay its case while they decide.
- For third-country patents, the home court can decide validity raised as a defence, with inter partes effect only: the foreign register is untouched.
- Exceptions apply to Lugano Convention states, certain bilateral conventions and proceedings already pending in the third state.
- Winning in the EU is half the job: enforcing the judgment outside the EU depends on local law.
What did the Court decide in BSH v Electrolux?
BSH held European patent EP 1434512 for a vacuum cleaner invention, validated in Germany, Greece, Spain, France, Italy, the Netherlands, Austria, Sweden, the United Kingdom and Türkiye. On 3 February 2020 it sued Electrolux in Sweden, where Electrolux is domiciled, for infringement of all national parts. Electrolux argued that the foreign patents were invalid and that the Swedish court therefore lacked jurisdiction. The Swedish court declined jurisdiction over the non-Swedish parts and the appeal court referred the question to Luxembourg.
The Grand Chamber’s judgment answered on the basis of the Brussels I bis Regulation (Regulation (EU) No 1215/2012):
- Patents of other Member States: the court of the defendant’s domicile, seised under Article 4(1), keeps jurisdiction over the infringement action even if the defendant challenges validity. Only the courts of the granting state can rule on validity (Article 24(4)), but the infringement court may stay its proceedings if it sees a “reasonable, non-negligible possibility” that the patent will be invalidated there (paragraph 51).
- Patents of third states: Article 24(4) does not apply to courts of non-EU countries. The home court can rule on validity raised as a defence, because its decision does not affect the existence of the patent in that state or its register (paragraphs 74 and 75).
The Court added that this jurisdiction can be limited by the Lugano Convention, which reserves validity of patents granted in its contracting states to their courts, by bilateral conventions between a Member State and a third state, and by the rules on proceedings already pending before a third-state court (Articles 33 and 34).
How does cross-border IP infringement jurisdiction in the EU work now?
| Right infringed | Where the infringement claim can be heard | Who rules on validity | Effect of a validity finding |
|---|---|---|---|
| Patent granted or validated in another EU Member State | Court of the defendant’s EU domicile (Art. 4(1)) | Only the courts of the granting state (Art. 24(4)); infringement court may stay | Erga omnes, by the granting state’s court |
| Patent in a Lugano Convention state | Court of the defendant’s EU domicile | Courts of that Lugano state | As decided by that state’s court |
| Patent in another third state (for example in Latin America or Africa) | Court of the defendant’s EU domicile | The same court, if validity is raised as a defence | Between the parties only; foreign register unchanged |
| EU trade mark | EU trade mark court of the defendant’s domicile, for acts in any Member State (EUTMR, arts. 125 and 126) | That court, on a counterclaim | EU-wide |
Article 24(4) covers patents, trade marks, designs and similar registered rights, so the reasoning is expected to extend to national trade marks and designs; Jones Day’s commentary of March 2025 reads the ruling as applying broadly to copyright, trade marks and designs. A company is domiciled where it has its statutory seat, central administration or principal place of business (Article 63).
Why the ruling matters between Europe and Latin America
Take a hypothetical Spanish company whose patent family covers Spain, Germany, Mexico and Brazil, and a competitor domiciled in Germany selling the same product in all four countries. On the reading the Swedish first-instance court applied, the claim would have had to be split by country once validity was contested. After BSH, a German court can hear the whole infringement claim, staying the Spanish part if a serious invalidity action is pending in Spain, and deciding any validity defence on the Mexican and Brazilian patents between the parties. The same logic works in reverse for a Latin American patent holder facing an EU-based infringer.
The Court itself stressed the advantage: a patent holder can concentrate its claims and obtain overall compensation in one forum, avoiding divergent decisions (paragraph 49). The practical limits are real, though:
- The court applies the law of each country for which protection is claimed (Rome II Regulation, Article 8), so foreign patent law must be pleaded and proved, often with experts and translations.
- Only defendants domiciled in the EU are covered by Article 4(1).
- Enforcing an EU judgment in Latin America or Africa requires recognition under local rules. The 2019 Hague Judgments Convention does not help: it excludes intellectual property (Article 2(1)(m)).
- For European patents in states that have joined the Unified Patent Court, the UPC is a separate route with its own rules, to be compared case by case.
What this means for your business
- Map the defendants: where is each infringer domiciled, and does it have assets or activity in the EU against which a judgment can be enforced?
- Map the rights: list the patents, marks and designs in each country, and flag those in Lugano states or covered by bilateral conventions.
- Compare consolidation with country-by-country actions, weighing the cost of proving foreign law against the benefit of a single judgment and overall damages.
- Secure evidence across countries before filing, so the single action is supported in every jurisdiction it covers.
- If you are the defendant, check quickly whether to file invalidity actions in the granting states and ask for a stay.
Our cross-border IP litigation team can map these options with patent attorneys and litigation counsel in each country and propose a single forum strategy. For portfolios still being built, our patent filing service for Europe and Latin America can align coverage with where enforcement will happen.
Where companies get the new jurisdiction rules wrong
- Assuming the EU judgment invalidates the foreign patent. For third-state patents the finding binds only the parties; the register stays as it is.
- Ignoring parallel validity actions. A serious invalidity action in another Member State can lead the infringement court to stay the case.
- Choosing the forum without an enforcement plan. A judgment against an EU company with no assets in the relevant country may need recognition proceedings abroad.
- Overlooking the exceptions: Lugano states, bilateral conventions and proceedings already pending in a third state.
- Underestimating foreign-law costs, which can outweigh the savings of a single action in smaller disputes.
Frequently asked questions
Can an EU court rule on infringement of a patent granted outside the EU?
Yes, if the defendant is domiciled in that Member State. Following BSH v Electrolux, the court of the defendant’s domicile can hear the infringement claim and, if the defendant raises invalidity as a defence, rule on it between the parties, unless the Lugano Convention, a bilateral convention or proceedings pending in the third state limit its jurisdiction.
Does the ruling allow an EU court to cancel a foreign patent?
No. For patents of other Member States, validity remains for the courts of the granting state. For third-state patents, the EU court can only decide validity as a defence, with effect between the parties, and cannot order the foreign register to be amended. Cancelling the patent itself still requires the competent office or court there.
Does BSH v Electrolux also apply to trade marks and designs?
The judgment concerns patents, but the provision it interprets, Article 24(4) of Brussels I bis, covers trade marks, designs and similar registered rights, so the same reasoning is expected to apply. EU trade marks already have their own rule: the EU trade mark court of the defendant’s domicile can rule on infringements in all Member States.
Can IP Global Guard coordinate a multi-country infringement action from one forum?
Yes. We map your rights and the defendant’s domicile, assess whether a single action or separate actions works better, and coordinate patent attorneys and litigation counsel in the forum and in each country concerned, including Latin America and Africa, with one point of contact and one budget.
How IP Global Guard can help you design cross-border IP litigation
BSH v Electrolux gives rights holders a real option to litigate several countries’ rights in one EU court, but the choice of forum, the proof of foreign law and the enforcement plan decide whether it pays off. IP Global Guard, the IP services line of META Channel Corporation Limited, coordinates litigation strategy across more than 25 jurisdictions in Europe, Latin America and Africa, with one strategy and one billing relationship.
Send us the list of rights, the countries where the infringement occurs and where the infringer is based. We will tell you which forums are open, what a single action would involve and how to enforce the result. Ask our litigation team for a forum assessment.
This article is general information, not legal advice, and does not replace an assessment of your specific case.
Sources
- Court of Justice (Grand Chamber), judgment of 25 February 2025, BSH Hausgeräte v Electrolux, C-339/22
- Jones Day, CJEU grants jurisdiction over foreign IP infringement cases (March 2025)
- EUR-Lex, Regulation (EU) No 1215/2012 (Brussels I bis), arts. 4, 24, 33, 34 and 63 (12 December 2012)
- EUR-Lex, Regulation (EU) 2017/1001 on the EU trade mark, arts. 125 and 126 (14 June 2017)
- EUR-Lex, Regulation (EC) No 864/2007 (Rome II), art. 8 (11 July 2007)
- HCCH, Convention of 2 July 2019 on the recognition and enforcement of foreign judgments
