Article 64

Corrective measures in infringement proceedings

1.   Without prejudice to any damages due to the injured party by reason of the infringement, and without compensation of any sort, the Court may order, at the request of the applicant, that appropriate measures be taken with regard to products found to be infringing a patent and, in appropriate cases, with regard to materials and implements principally used in the creation or manufacture of those products.

2.   Such measures shall include:

(a) a declaration of infringement;

(b) recalling the products from the channels of commerce;

(c) depriving the product of its infringing property;

(d) definitively removing the products from the channels of commerce; or

(e) the destruction of the products and/or of the materials and implements concerned.

3.   The Court shall order that those measures be carried out at the expense of the infringer, unless particular reasons are invoked for not doing so.

4.   In considering a request for corrective measures pursuant to this Article, the Court shall take into account the need for proportionality between the seriousness of the infringement and the remedies to be ordered, the willingness of the infringer to convert the materials into a non-infringing state, as well as the interests of third parties.

Case Law

Court of First Instance

IPPT20250115, UPC CFI, LD Vienna, Swarco v Strabag
According to the wording of the UPCA, the definitive removal from the channels of commerce is an independent measure, separate from the recall (Article 64(2)(d) and 4 UPCA). It accompanies the recall, whereby removal is only considered if the infringer has the factual and legal possibilities to do so. The wording of specific and sufficiently particular measures must be based on this. No apparent reasons that would make publication of the decision necessary (Article 80 UPCA). When exercising discretion, the purposes of deterring future infringers and raising public awareness, as pursued by Art 80 UPCA, must be taken into account. The patent proprietor's (plaintiff's) interest in prevention, which goes beyond the specific infringement case, must be taken into account when weighing up the interests of the parties to the proceedings. Intervener also treated as a party with regard to the bearing of legal costs; in this case 20% indicative (Article 69(2) UPCA, R. 315.4 RoP). In the present case, the intervener's statement of 19 August 2024 caused the plaintiff relatively little expense because the written proceedings had already been completed for her at that time.

IPPT20250114, UPC CFI, LD Düsseldorf, Ortovox v Mammut
Destruction has to reliably prevent the entry or re-entry of the products into the market (Article 64(2)(e) and (4) UPCA). A software-based deactivation of the voice control could only speak against a destruction if it were ensured that the infringing devices could not be converted back into a patent-infringing state when such a solution was used and then placed on the market. 

IPPT20241122, UPC LD The Hague, Plant-e v Arkyne
Appropriate measures: the use of a specific text is ordered for a recall letter and/or for publication on a website deemed appropriate to ensure that the measure is effective and to avoid a situation in which unclear or confusing messages are spread (article 64 UPCA, Article 10 Enforcement directive). 

IPPT20240703, UPC CFI, LD Düsseldorf, Kaldewei v Bette

Recall and definitive removal from the channels of commerce are two separate measures (Article 64(2)(b) and (d) UPCA). Definitive removal accompanies the recall, whereby removal can only be considered if the infringer has the factual and legal means to do so. The formulation of concrete and sufficiently specific measures must be based on this [partially granted].