UPC Local Division Munich, 5 December 2023: € 100.000 penalty, payable to the UPC, for violation of preliminary injunction of 19 September 2023
09-12-2023 Print this page
Recurring penalty payments not subject to enforcement requirements under national law nor notification by the claimant (Article 82(4) UPCA, Rule 118(8) RoP, Rule 354 RoP)
Non-compliance with the terms of a UPC order (article 62 UPCA) is sanctioned with a penalty payment on the basis of article 82(4) UPCA alone and not subject to further enforcement requirements existing under national enforcement laws of contracting member states. (see also Local Division Düsseldorf, IPPT20231018, myStromer v Revolt Zycling).
Rule 118(8) RoP – “orders shall be enforceable only after the claimant has notified the Court which part of the orders he intends to enforce” – does not apply to orders under Article 62 UPCA (provisional and protective measures). According to its clear wording ("The orders referred to in paragraphs 1 and 2(a)..."), Rule 118.8 of the Rules of Procedure does not apply to orders under Art. 62 UPCA.
Dual purpose penalty payment: (a) to reliably deter the debtor from future infringements and violations (coercive function) and (b) also a penalty-like sanction for the violation of the court prohibition, which is why the imposition of a penalty payment also requires fault on the part of the debtor as an unwritten element of the offence. (see also Local Division Düsseldorf, IPPT20231018, myStromer v Revolt Zycling).
Penalty payment imposed of € 100.000 for which the defendants are jointly liable
Each of the defendants is individually obliged to pay the penalty payment imposed; the payment is deemed to have been settled for all defendants as soon as the total amount has been received by the Unified Patent Court.
“Offering” (Article 25 UPCA) includes any act committed within the scope of the patent in question which, according to its objective explanatory value, makes the subject-matter of the demand available in an externally perceptible manner for the acquisition of the power of disposal.
Defendants have to pay the full costs (Article 69 UPCA, Rule 354(4) RoP): (a) all of the infringements asserted by the applicants were also to be regarded as infringements, so that the applicants were completely successful with their application in this respect. (b) the fact that the applicants formally requested the imposition of significantly higher periodic penalty payments does not, in the view of the Chamber, lead to the applicants having to bear part of the costs of the periodic penalty payment proceedings, taking into account the fundamental considerations on the allocation of costs in Art. 69(1) and (2) UPCA, since the determination of the amount is at the discretion of the court (Rule 354.4 RoP) and information on the amount provided by the applicant can at most have the character of a proposal in this respect.
