Background
Under Article 9(5) of the EU’s IP Enforcement Directive (Directive 2004/48/EC), when a court grants provisional measures to protect intellectual property rights — such as a preliminary injunction against trademark infringement — the rights-holder must file substantive proceedings (the full lawsuit on the merits) within a mandatory deadline. If they fail to do so, the provisional measures should expire.
Italy’s implementation of this rule, in Article 132(4) of its Industrial Property Code, created an exception for what it called “anticipatory measures” — certain types of provisional orders that could remain in force even if substantive proceedings were never filed. The question referred to the CJEU was whether this Italian exception was compatible with EU law.
In the underlying dispute, M.M. Ristorazione had obtained a provisional trademark measure against Villa Ramazzini but failed to file substantive proceedings within the required deadline. When Villa Ramazzini requested that the provisional measures be revoked, Italian law appeared to protect the measures from expiry under the anticipatory-measures exception.
The Court’s Holding
The CJEU ruled that Article 9(5) of Directive 2004/48/EC precludes national provisions like Italy’s Article 132(4) that exempt provisional IP measures from mandatory expiry. The Court held that member states cannot allow provisional IP measures to persist indefinitely when the rights-holder has not timely filed substantive proceedings, regardless of how the national law categorizes the type of provisional measure.
The rationale centers on the Directive’s balance between protecting IP rights and safeguarding the rights of defendants. Provisional measures are, by their nature, temporary and urgent. Allowing them to remain in force without the discipline of substantive proceedings creates a situation where a defendant faces potentially permanent restrictions on its commercial activities without ever having the merits adjudicated — an outcome the Directive was specifically designed to prevent.
Key Takeaways
- Provisional IP measures have an expiration date. Across the EU, rights-holders who obtain preliminary injunctions or other provisional measures must follow through with substantive proceedings within the prescribed deadline or lose those measures.
- Member states cannot create carve-outs. Italy’s attempt to exempt “anticipatory measures” from the deadline requirement was struck down. Other member states with similar exceptions should take note.
- The ruling affects strategic enforcement. Some rights-holders have used provisional measures as de facto permanent injunctions without bearing the cost and risk of full litigation. This ruling closes that door.
Why It Matters
This ruling strengthens procedural protections for defendants across EU trademark and IP enforcement proceedings. Rights-holders can no longer rely on provisional measures as a low-cost alternative to full litigation — they must commit to the merits or lose their interim relief. For businesses operating in the EU that face preliminary injunctions or other provisional IP measures, the ruling provides a clear mechanism for challenging measures where the rights-holder has failed to file substantive proceedings on time. It also signals the CJEU’s continued commitment to harmonizing IP enforcement procedures across member states and preventing national carve-outs that could undermine the Directive’s balanced approach.