TCL v Philips and ETSI (Paris Judicial Court, RG 19/02085, 2020)

Dhenne Avocats · 11 October 2026

Our analysis

Summary

The pre-trial judge of the Paris Judicial Court rejects the objections to jurisdiction, lis pendens and related actions raised by Philips against an action by three TCL group companies, which seek in particular an order that Philips grant them a FRAND licence under its patents declared essential to the UMTS and LTE standards, and that ETSI, also sued, assist in granting it. The judge accepts jurisdiction over the Philips companies, established in the Netherlands, on the basis of multiple defendants, ETSI having its seat in France. The order thus opens the way to a trial in France on the scope of the FRAND undertaking given to ETSI, which the claimants and ETSI analyse as a stipulation for the benefit of a third party (stipulation pour autrui) governed by French law.

Facts and procedure

Koninklijke Philips NV holds a portfolio of patents declared essential to the UMTS and LTE standards. On 30 March 2015 it invited TCL Communication Technology Holdings to join its licensing programme. After negotiations failed, Philips sued several TCL group companies on 30 October 2018 before the High Court of Justice of England and Wales for infringement of the UK parts of EP 1 440 525 and EP 1 623 511. On 19 February 2019, TCT Mobile Europe and two TCL group companies sued Philips NV, Philips International BV and ETSI in Paris, complaining that Philips refused to negotiate the number of patents and countries covered by the licence. They seek a ruling that the declarations to ETSI amount to a promise of a FRAND licence, an order that Philips grant a licence on terms to be set by the court and, in the alternative, an interim payment of EUR 15 million. Philips challenged jurisdiction by submissions of 11 July 2019.

The applicable law

Article 8(1) of Regulation 1215/2012 allows several defendants to be sued in the courts of the domicile of any one of them where the claims are so closely connected that it is expedient to hear them together. The judge recalls, citing the Court of Justice in Painer, that the rule is to be interpreted strictly, that identical legal bases are not required and that a close connection requires the same situation of fact and law, as the Cour de cassation held on 5 April 2016. Articles 29 and 30 of the Regulation govern lis pendens and related actions before courts of different Member States.

Question

Does a French court seised of a claim against ETSI have jurisdiction over an essential patent holder established in another Member State, and must it decline jurisdiction in favour of the English court seised of an infringement action?

Decision

The claims against ETSI and against Philips arise from the same factual situation, the alleged breach of ETSI’s intellectual property rules. Their legal bases differ, the association contract for ETSI and the stipulation pour autrui for Philips, but that does not prevent the same legal situation, particularly as all the claims are governed by French law under ETSI’s rules. The claims against ETSI are not artificial, since ETSI has given itself the means to enforce its members’ obligations. For good measure, the judge adds that a decision ordering ETSI to assist in granting the licence would be irreconcilable with one finding that Philips had complied with its obligation to offer a FRAND licence. Lis pendens fails for want of identity of cause, subject matter and parties: the English case concerns infringement of two patents between Philips and TCL, while the French case, to which ETSI is a party, concerns whether a worldwide portfolio licence was offered on FRAND terms. The related actions objection also fails, since the English FRAND trial will take place only if TCL does not waive its request for a licence, as TQ Delta v ZyXEL illustrates. ETSI’s plea of inadmissibility is referred to the court, and Philips is ordered to pay EUR 20,000 to ETSI and EUR 15,000 to each TCL company under Article 700.

Key points for practice

• Suing ETSI, which has its seat in France, may found French jurisdiction over an essential patent holder established in another Member State.
• A foreign infringement action on two patents and a French action on whether a portfolio licence is FRAND have neither the same cause nor the same subject matter.
• Practical point: the judge does not decide how the FRAND undertaking is to be characterised, but the stipulation pour autrui analysis under French law lies at the heart of the jurisdictional link accepted and will have to be argued at trial.

Provisions applied

Regulation (EU) No 1215/2012

Arts 8, 29 and 30

National law

Arts 83, 85, 700 and 771 of the French Code of Civil Procedure; Art. 1205 of the French Civil Code (relied on by ETSI)

Other provisions

ETSI Intellectual Property Rights Policy, clause 6.1

Case law cited

CJEU, Painer (C-145/10), citing Freeport (C-98/06), Kalfelis (189/87) and Réunion européenne (C-51/97); ECJ, 6 December 1994; Cass. com., 5 April 2016, No 13-22.491; Court of Appeal of England and Wales, TQ Delta v ZyXEL, 18 July 2019

Prepared by Dhenne Avocats from the text of the decision (WIPO Lex, FR005-j, reproducing the text published on Légifrance), consulted on 11 October 2026. Only the official text is authoritative.