Europe: The sky is not the limit
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Europe: The sky is not the limit

This summer, the Court of Justice of the EU issued a ruling that dealt with the application of article 14 of the EU IP Enforcement Directive. According to this article, EU member states must ensure that in court cases, the reasonable and proportionate legal costs and other expenses incurred by the successful party shall, as a general rule, be borne by the losing party. While one could gather from this that the sky's the limit as far as costs compensations in IP cases go, the Court ruling teaches us there may in fact be limits.

It all started with a court case in Belgium, in which claims were made to stop a patent infringement. The claims were denied and the plaintiff was ordered to bear the fixed costs (€11,000) of the defendant, based on provisions of national procedural law. In appeal, the amount of the fixed costs was under discussion, the original defendant claiming that the national provisions of fixed costs were not in conformity with Article 14 of the Directive, and that the plaintiff should pay all costs incurred, amounting to €225,862.55, which is obviously much higher than the fixed costs.

Accordingly, the Court had to rule whether national systems of fixed costs are in conflict with Article 14 of the Directive. Referring to the common goal of the Directive, the Court pointed out that IP infringers must be discouraged from infringing IP rights, justifying high cost awards. At the same time, Article 14 of the Directive merely states that the compensation covers the reasonable and proportionate costs, which does not imply all costs, but only "at least a significant and appropriate part of the reasonable costs". As long as these particular criteria are met, national law provisions are allowed to impose an absolute threshold above which no costs are compensated.

In national IP practices such as the Dutch, where full cost awards are nowadays the rule rather than the exception, this ruling may very well be regarded as the beginning of a new trend.

cleuver2.jpg

Jurriaan Cleuver


V.O.Johan de Wittlaan 72517 JR The HagueThe NetherlandsTel: +31 70 416 67 11Fax: +31 70 416 67 99info@vo.euwww.vo.eu

more from across site and ros bottom lb

More from across our site

High-earning businesses place most value on the depth of the external legal teams advising them, according to a survey of nearly 29,000 in-house counsel
Kilpatrick Townsend was recognised as Americas firm of the year, while patent powerhouse James Haley won a lifetime achievement award
Partners at Foley Hoag and Kilburn & Strode explore how US and UK courts have addressed questions of AI and inventorship
In-house lawyers have considerable influence over law firms’ actions, so they must use that power to push their external advisers to adopt sustainable practices
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Counsel say they’re advising clients to keep a close eye on confidentiality agreements after the FTC voted to ban non-competes
Data from Managing IP+’s Talent Tracker shows US firms making major swoops for IP teams, while South Korea has also been a buoyant market
The finalists for the 13th annual awards have been announced
Counsel reveal how a proposal to create separate briefings for discretionary denials at the USPTO could affect their PTAB strategies
The UK Supreme Court rejected the firm’s appeal against an earlier ruling because it did not raise an arguable point of law
Gift this article