UPC Local Division Düsseldorf,18 October 2023: €26.500 in recurring penalty payment to the UPC because of non-compliance with ex parte provisional injunction

Recurring penalty payments are imposed on the basis of article 82(4) UPCA and not governed by provisions of national enforcement law (Article 82(4) UPCA, Rule 354 RoP). Provision of article 82(3) UPCA is superseded by Art. 82 (4) UPCA in conjunction with R. 354.3 and .354.3 RoP.  

€ 26.500 awarded in recurring penalty payment to the UPC because of non-compliance with ex parte provisional injunction (article 82(4) UPCA).

(1) If a court order is not complied with by one of the parties, the UPC may – either at the request of the other party or ex officio – decide on the imposition of the periodic penalty payments provided for in the order.  The decisive criterion for determining the amount of the penalty payment is the significance of the order and thus ultimately the interest of the creditor in enforcing it, which may consist, for example, in distributing the patented products.

(2) The recurring penalty payment has a dual purpose: primarily a punitive function as well as a penalty for violation of the court order. It presupposes fault on the part of the debtor.

(3) The dual purpose requires that primarily the debtor and his conduct is considered. In particular, the type, scope and duration of the infringement, the degree of fault, the infringer's advantage from the infringing act and the harms of the committed and possible future infringing acts for the infringed party must be taken into account.

(4) The debtor's past conduct is a decisive, although not necessarily the sole, indicator for the amount of the penalty payment to be imposed. The more frequently and intensively the debtor has violated the restraining order imposed on him, the more clearly he has expressed his unwillingness to comply with the restraining order. The assessment of the penalty payment must take this into account: If the debtor has already violated the cease-and-desist order several times in the past, the necessary pressure increases in order to force him to comply with the order in the future. Therefore, the respective penalty payment must be correspondingly higher. If, on the other hand, the debtor has made a serious effort to comply with the injunction, this must be taken into account in his favour.

Offering a product which is the subject matter of the patent (article 25(a) UPCA)

(5) The term "offer" within the meaning of article 25(a) UPCA is to be understood in purely economic terms. In the case of a product, it includes any act committed within the scope of the European patent which makes the subject-matter of the demand available. Therefore, the display of goods within the scope of the respective patent taking place at a trade fair taking is an offering within the meaning of this provision.

(6) In order to be offered, not all features of the patent claim need to be shown in the advertising and thus also on a trade fair stand if it must be assumed, when objectively considering the circumstances actually given in the case in dispute, that the product shown corresponds in its technical design to the subject-matter of the patent. It depends on whether it can be reliably concluded from the existence of other objective circumstances that the product is in conformity with the patent. An essential aspect in this respect is the view of the relevant public as to the objective explanation in the advertising, which must be determined taking into account all the factual circumstances of the individual case.

IPPT20231018, UPC CFI, LD Düsseldorf, myStromer v Revolt Zycling