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On the territorial scope of injunctive relief and the burden of demonstration and proof for the complainant (R. 13m RoP and R. 171.1 RoP), Local Division Paris, decision of 24 April 2025, UPC_CFI_440/2023)
In proceedings concerning an infringement action, the Local Division of Paris had to deal with the question of the claimant’s burden of demonstration and proof with regard to the defendant’s acts of infringement in individual UPC-States.
Facts of the case
The subject of the proceedings was a complaint against a French company belonging to a European distribution group. It distributes UVC LED chips in France, which the claimant considers to be patent infringing. The defendant’s manufacturer and supplier, a company incorporated under Korean law, joined the lawsuit at the defendant’s application. The claimant is the owner of the patent in suit. It applied for an injunction for the French, German, Dutch and British territories. The claimant demonstrated the infringing behaviour in France by submitting a screenshot of the French sales page. It also made a test purchase in France via the French website. The defendant did not contest the act of infringement as such for any of the UPC-States covered by the claim.
Decision of the Local Division
The Local Division found patent infringement and ordered the defendant, inter alia, to cease and desist. However, the injunctive relief was only limited to the territory of France, while the Local Division dismissed the application for an injunctive rekuef with regard to Germany, the Netherlands and the United Kingdom.
The Local Division based its partial dismissal of the action on the lack of substantiation of the infringing acts for Germany, the Netherlands and the United Kingdom. According to R. 13m RoP and R. 171.1 RoP, it was incumbent on the claimant to provide evidence of all facts relating to the alleged infringing acts. However, the claimant has only made a test purchase in France, but not for the other UPC States applied for and the United Kingdom. The website extracts submitted by the claimant show a sectorisation of the sales territories. Thus, the claimant has not demonstrated and proven that acts of infringement are also carried out by the defendant in the three other countries. Although it is a European distribution group as a whole, the claimant has only taken action against the French defendant.
Conclusion
The decision of the Local Division Paris is surprising. It contradicts Art. 34 UPCA, according to which, in the case of a European patent, the decision applies to the territory of those Contracting Member States for which the European patent has effect (see also: Court of Appeal, decision dated 30 April 2025, UPC_CoA_768/2024 para. 124 et seq.). This is because if the product infringes the patent in suit, this is regularly the case in all UPC-States. It is precisely the outstanding advantage of the Unified Patent Court that courts have comprehensive cognizance. An exception is only made if certain circumstances justify this. It is possible that the Local Division Paris has assumed such an exception here because the claimant – despite an undisputedly existing distribution network – has limited itself to only one company in the European distribution group. However, there are no further considerations in this regard. Moreover, it appears to be the wrong starting point, as the claimant’s unsuccessful choice of the defendants would not have any binding effect on the other companies, but only the French company would no longer be allowed to distribute the products. For all other actual sales in the other countries applied for, the claimant would simply have had to file a new complaint. Against this background, an exception to Art. 34 UPCA does not appear to be expedient in this case.
The Local Division Paris based its decision on R. 13m RoP and R. 171.1 RoP. The claimant had failed to fulfil its burden of demonstration and proof because it had not set out the acts of infringement separately for each UPC-State. However, such an interpretation of the rules of evidence contradicts the principle outlined above. This is all the more true as the defendant has not disputed the acts of infringement for the other states. It would therefore have been more stringent and also more economical in terms of procedure if the Local Division had granted injunctive relief for all the states applied for and resolved the obvious problem of the wrong choice of defendant via the inter partes effect of the judgement.