Imposing of a penalty payment for breach of an injunction (UPC)

Decision keyword:

E-Bike III

Law applied:

Art. 25 lit. a, Art. 82 Abs. (3), (4) UPCA

R. 171.1 S. 1, R. 354.3, .4, R. 264 UPCRoP

Keynotes: (Machine Translation)

1. If a court order is not complied with by one party, the Court of First Instance of the relevant division can decide, at the request of the other party or ex officio, on the imposition of the 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 Creditor's interest in its enforcement, which may, for example, consist of distributing the patented products.
2. The penalty payment is intended to reliably deter the Debtor from future infringements and violations and therefore primarily has a deterrent function. In addition, however, the penalty payment also represents a penalty-like sanction for the violation of the court prohibition, which is why the imposition of penalty payments also requires the Debtor to be at fault as an unwritten element of the offense.
3. The dual purpose of the penalty payment requires the penalty payment to be calculated primarily with regard to the Debtor and their behavior. In particular, the type, scope and duration of the infringement, the degree of culpability, the benefit to the infringer from the infringement and the dangerousness of the committed and possible future acts of infringement for the infringed party must be taken into account.
4. The Debtor's past behavior is a decisive, although not necessarily the only, indication of the amount of the penalty payment to be imposed. The more frequently and intensively the Debtor has violated the injunction order imposed on him, the more clearly he has expressed his unwillingness to comply with the injunction order. This must be taken into account when calculating the penalty payment: If the Debtor has already violated the injunction order several times in the past, the pressure required to force him to comply with the order in the future increases. The penalty payment must therefore be correspondingly higher. If, on the other hand, the Debtor has made a serious effort to comply with the injunction order, this must be taken into account in their favor.
5. In patent law, the term "offer" within the meaning of Art. 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 in question which, according to its objective explanatory value, makes the object of demand available in an externally perceptible manner for the acquisition of the power of disposal. Therefore, the exhibiting of goods at a trade fair taking place within the scope of the respective patent is an offering within the meaning of this provision.
6. Not all features of the patent claim need to be shown in the advertising and thus also on a trade fair stand for an offer to be made if, when objectively considering the circumstances actually existing in the case in dispute, it must be assumed that the product shown corresponds to the subject matter of the patent in its technical design. It depends on whether the patent-compliant design can be reliably inferred from the existence of other objective circumstances. A key aspect here is the view of the relevant public regarding the objective explanatory value of the advertising, which must be determined taking into account all the factual circumstances of the individual case.

Unified Patent Court (UPC), Düsseldorf Local Division, Order issued on 18 October 2023 – UPC_CFI_177/2023 –

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Comment C&F:

On October 18, 2023, the UPC Local Chamber in Düsseldorf issued a punitive fine of EUR 26,500 for violation of an injunction previously issued against the same party. The injunction against offering the e-bike had previously been issued on the occasion of an exhibition of the e-bike at a trade fair. The infringement was now committed by offering the e-bike again as part of a Sunday sales event.

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Our commentary on the above judgment serves the purpose of making it easily accessible. Simplifications and incompleteness are due to this purpose. For a complete understanding, please refer to the original German version of the publication of the judgment.