The first referral by the Unifed Patent Court (UPC) to the Court of Justice of the European Union (CJEU) will bring vital clarity for businesses over the UPC’s ability to issue relief for patent infringement in EU non-UPC countries, and the liability of EU-based authorised representatives, according to experts.
The CJEU’s consideration of the limits of the UPC’s long-arm jurisdiction will clarify the patent court’s reach for businesses in a variety of sectors - including manufacturers of pharmaceuticals and medical and electrical devices whose sales in Europe rely on the presence of an authorised representative to comply with local safety requirements.
The UPC’s Court of Appeal (10-page / 1.13MB PDF) has referred a number of questions to the CJEU relating to a long-running case between electronics maker Dyson and Hong Kong-based manufacturer Dreame International concerning hair stylers.
It has sought clarity over whether it can issue relief against companies based outside the EU for patent infringement in non-UPC EU countries, and whether an authorised representative of the manufacturer acts as an ‘anchor defendant’ to bring such companies into the UPC’s jurisdiction.
The referral came after the UPC’s Hamburg Local Division granted Dyson a preliminary injunction against various Dreame entities and Dreame’s authorised representative in the EU, Eurep, which marked the first time the UPC’s long-arm jurisdiction had extended to Spain, which is an EU member state but not a UPC country.
It was also the first time the UPC had granted a preliminary injunction - as opposed to a permanent injunction - based on its long-arm jurisdiction and following the CJEU’s landmark ruling in BSH Hausgeräte v Electrolux. The decision also made headlines as the UPC extended its long-arm relief in respect of Spain against a company domiciled outside of the EU based on the fact that its authorised representative acts as an anchor defendant within the meaning of Article 8(1) Recast Brussels Regulation (Regulation 1215/2012).
This rule allows multiple defendants to be sued in one court if the claims against them are so closely connected that separate proceedings may lead to irreconcilable judgments.
The UPC Court of Appeal affirmed the original preliminary injunction and extended its scope over newer Dyson products within the UPC’s territory. However, it stayed the appeal concerning jurisdiction over the third country domiciled defendant Dreame International for its acts of infringement in non-UPC EU member state Spain, and also against Eurep and the role of EU-based authorised representatives in enabling the UPC to establish jurisdiction over third country domiciled defendants, to seek clarity over the interpretation of EU law.
As a result, the Court of Appeal has asked the CJEU to address a number of issues which concern the meaning of the relevant provisions of the Recast Brussels Regulation and the IP Enforcement Directive (Directive 2004/48).
The Court of Appeal has asked the CJEU to determine whether an authorised representative domiciled in an EU member state can act as an anchor defendant within the meaning of Article 8(1) of the Recast Brussels Regulation and provide the UPC with jurisdiction over the allegedly infringing activities of a non-EU based manufacturer in an EU member state that does not participate in the UPC.
The Court of Appeal has also asked the CJEU to determine whether the UPC has jurisdiction to issue a preliminary injunction that covers a non-UPC EU member state as well as UPC countries when the products are being sold in all of those countries via websites which are identical, save for language differences.
