UPC CoA, 14 October 2025, Kodak v Fuji: General observations on penalty orders and enforcement thereof
22-12-2025 Print this page
Order for the payment of € 100.000 set aside for lack of legal basis (R. 354.4 RoP).
Any order for the payment of a penalty sum due to the non-compliance of any order, requires a prior order in which the order that has not been complied with was reinforced with the possibility of a penalty payment. Such a penalty order was requested by Fujifilm, but rejected by the LDM.
Penalty order for a possible future non-compliance by Kodak is possible and it is not relevant in this respect that Fujifilm in its Statement of claim did not request a penalty order in relation to the orders for destruction, recall and removal from the channels of commerce.
Generally on penalty orders (R. 354.3 and 354.4 RoP).
Generally included in order or decision on the merits as this enhances legal certainty. May be requested later without requiring an appeal.
Penalty amount to be set by the Court and should be sufficiently deterrent to be coercive and within reasonable limits to be appropriate.
Penalty order must specify upon which occurrence a penalty may be forfeited, may set a maximum, which may be increased later, should generally specify the time period for compliance.
Suggested penalty must be included in the application.
Any order to pay a penalty must be based on a prior penalty order having been made.
Burden of proof that a penalty reinforced order has been fully and timely complied with lies with the defendant, since the evidence concerns information within the defendant’s own sphere which is not accessible to the claimant.
Confidentiality issues: if the defendant can reasonably foresee that the orders and evidence may require it to disclose confidential information, this should be raised by the defendant during the proceedings on the merits, so that where necessary in the order or decision appropriate measures can be taken to protect such confidential information. Although it would still be possible to file a confidentiality request thereafter, confidentiality issues generally do not stay the time period set for compliance with a penalty reinforced order.
Time period for compliance starts upon service of the order or decision or upon notification (R. 118.8 RoP).
Translation only required from the orders that the claimant actually wishes to enforce to allow the enforcing authority (e.g. the bailiff) to understand what it needs to enforce (R. 118.8 RoP).
No need to serve enforcement notice on the defendant other than via upload in CMS.
