Long arm jurisdiction at the Unified Patent Court: Electrolux and beyond

In the just over two years since the Agreement on a Unified Patent Court has come into force (and even before then), the issue that has generated the most debate has been the question of the international jurisdiction of the new Court.

Before the Unified Patent Court (UPC) started its operations in June 2023, there was some uncertainty as to how the Court would approach the issue of international jurisdiction. Some commentators argued limitless international jurisdiction, but the general consensus was that a “strict interpretation” of the relevant provisions applied, limiting long arm jurisdiction to narrow circumstances.[1]

Two years on and, particularly following the CJEU guidance in BSH Hausgeräte v Electrolux (“Electrolux”)[2], practitioners have had to re-evaluate radically their understanding of long arm jurisdiction at the UPC.

Recent decisions, including Fujifilm v Kodak III,[3] HL Display v Black Sheep Retail Products,[4] and Dyson v Dreame[5], illustrate the Court’s increased readiness to grant relief extending beyond UPC territories, including non-UPC EU member states, Lugano Convention states, and third countries (remembering that the court’s jurisdiction for these purposes does not extend beyond European patents).

Far from being the exceptions, these decisions reflect a growing willingness across UPC divisions to accept long arm jurisdiction, particularly post-Electrolux. The Paris Local Division has accepted jurisdiction over alleged infringement in Spain, Switzerland, and the UK (Mul-T-Lock[6]) and over alleged infringement in Poland (Hurom v NUC Electronics II[7]). The Milan Local Division has recognised “universal jurisdiction” over Italian defendants vis à vis European patents (Dainese v Alpinestars[8]), and the Court of Appeal and Munich Local Division respectively have allowed similar extensions of infringement actions to Spain, the Czech Republic, Poland, and the UK (AIM Sport Development[9] and Syngenta v Sumi Agro[10]). Most recently, the Mannheim Local Division has accepted jurisdiction over a Korean defendant for alleged infringement in Poland, Spain, and the UK (Hurom v NUC Electronics I[11]).

Despite all this, it would be mistaken to view long arm jurisdiction at the UPC as a free-for-all. The decisions depend on specific circumstances and the law remains unsettled, with the Court of Appeal yet to give its views on the boundaries of the UPC’s international jurisdiction. Nevertheless, and perhaps unsurprisingly given Electrolux, it seems that a broader than previously envisaged view of UPC long arm jurisdiction is perhaps here to stay.

In this article we trace how this has evolved, the current landscape of UPC long arm jurisdiction, and questions that remain. In particular, we focus on the Fujifilm cases as the archetypal examples of “Electrolux long arm jurisdiction” at the UPC, Dyson v Dreame, [5] which has developed a UPC-specific long arm jurisdiction, and Hurom v NUC Electronics I, [11] which has taken Electrolux further to establish another form of long arm jurisdiction at the UPC.

Background: Jurisdiction of the UPC

The international jurisdiction of the UPC derives from Article 31 of the UPC Agreement (UPCA),[12] which in turn refers to the Brussels I Recast regulation (BR),[13] and the Lugano Convention (together referred to as the “Brussels Regime”). BR regulates jurisdictional and enforcement issues relating to civil legal disputes in the EU, while the Lugano Convention extends BR to most members of the European Free Trade Association (EFTA), namely Iceland, Switzerland, and Norway.

BR was amended in May 2014[14] to incorporate the UPC. Articles 71a to 71d, were added to define a “court common to several Member States [of the EU]”, to determine the jurisdiction of the common court, and to determine issues of lis pendens and enforcement.

The jurisdiction of the UPC derives from Article 71b BR, under which the UPC enjoys the jurisdiction that any court of an EU state would have under BR (Article 71b(1) BR). Article 4(1) BR provides the general rule that a defendant based in the EU shall be sued in their country of domicile, Article 7(2) BR nevertheless allows the defendant to be sued in the EU member state where the harmful event (i.e. infringement) occurred or may occur, and Article 8(1) BR allows multiple connected EU-based defendants to be sued together in the domicile of one of them (being the “anchor defendant”).

Significantly, BR governs only intra-EU jurisdiction. As recognised in Article 6 BR, courts of EU member states have inherent jurisdiction under their respective national laws over non-EU based defendants for acts done in the relevant EU country. A similar rule appears in Article 71b(2) BR, which provides that “where the defendant is not domiciled in a Member State, and this Regulation does not otherwise confer jurisdiction over him, Chapter II [of BR relating to “Jurisdiction”] shall apply as appropriate regardless of the defendant’s domicile”. Whether this provision seeks simply to replicate the sort of jurisdiction that national courts have over non-EU based defendants or extend it is an important aspect of Dyson v Dreame,[5] as we discuss below. Article 71b(3) BR relates to what was previously regarded as “long arm jurisdiction” in the UPC context. This provision relates to damages caused outside the EU by the infringement of a European patent by a non-EU domiciled defendant over which jurisdiction has been established under Article 71b(2) BR.

Electrolux long arm jurisdiction at the UPC

The first application of Electrolux at the UPC to determine jurisdiction over infringement in a non-UPC contracting state was in Mul-T-Lock,[6] which involved alleged infringement in Spain, Switzerland, and the UK.

Arguably, however, it is the dispute between Fujifilm and Kodak at the UPC that has provided practitioners with most insight on Electrolux long arm jurisdiction at the UPC. Before turning to these cases, it is useful to recall the key principles outlined in Electrolux.

Electrolux: a brief recap

Patent infringement cases often involve a validity challenge to the patent – either by way of a revocation claim, a counterclaim for invalidity, or merely an invalidity defence. Article 24(4) BR provides that exclusive jurisdiction to determine the validity of the patent in suit remains with the EU member state in which the patent is registered. Electrolux [2] addressed the question of what happens when infringement proceedings are commenced in an EU member state other than the country in which the patent is registered, and the defendant raises an invalidity defence.

Departing from its earlier decision in GAT v LuK,[15] the CJEU in Electrolux determined that a court seized of a patent infringement case by virtue of the defendant’s domicile (under Article 4(1) BR) can still hear the infringement claim even if the patent is registered in another Member State and even if the defendant raises invalidity as a defence.

Where that country is an EU state (or a member of the Lugano Convention, such as Switzerland[16]), the invalidity dispute remains within the exclusive jurisdiction of the courts of that country. The court may therefore stay the case if there is a credible chance that the patent could be invalidated by the Member State that has exclusive jurisdiction to decide validity.

However, in the case of a third country, such as the UK, Electrolux clarified that Article 24(4) BR does not apply, and the third country cannot be regarded as having “exclusive jurisdiction” over the validity of the patent. In this case, the court can rule on the validity defence when considering infringement, with the caveat that its decision is only on an inter partes basis.

Significantly, the Electrolux decision applies at the level of the EU and to EU national courts. It also applies to the UPC under Article 24 UPCA with the UPC acting as a common court as defined in Article 71a(1) BR.

One important difference between the UPC and EU national courts is that the UPC has jurisdiction only over European patents, namely patents granted at the EPO (Article 1 UPCA).[17] Such a restriction does not apply to EU national courts, which may, potentially, following Electrolux try to assert jurisdiction under Article 4(1) BR over a defendant domiciled in that country for infringement of a non-European patent; for example, a US patent. Whilst this appears to be a theoretical possibility, an EU national court has yet to assert such jurisdiction.

For further details on Electrolux, see our article here.

Fujifilm v Kodak

The dispute between Fujifilm and Kodak at the UPC involved three patents asserted by Fujifilm against various Kodak entities based in Germany; one at the Düsseldorf Local Division and two at the Mannheim Local Division. The patents all relate to a lithographic printing plate precursor, which is used in making printing plates.

In a forerunner to the CJEU decision in Electrolux, the Düsseldorf Local Division ruled in Fujifilm v Kodak I[18] that the UPC had jurisdiction under Article 4(1) BR to consider infringement in respect of the UK part of the relevant patent, even though the defendants had filed a counterclaim for revocation in respect of the German part. In the event, the German part of the relevant patent was revoked. The action for infringement in the UK was then dismissed due to the likely invalidity of the UK part of the patent given the invalidity of the German part. This was so regardless of the fact that the counterclaim for revocation did not cover the UK part of the relevant patent and no revocation action had been filed by the defendants in the UK. The Court held that it would have been for the claimant to argue that the validity assessment in relation to the German part of the patent would not have applied in the UK and that a different assessment there would have led to an opposite conclusion on the validity of the patent.

Mannheim Local Division decisions

In addition to the infringement action initiated at the Düsseldorf Local Division, Fujifilm pursued two other infringement actions, both at the Mannheim Local Division. In both cases, Fujifilm v Kodak II[19]and Fujifilm v Kodak III,[20]the relevant patents were only in force in Germany and the UK, as was the case in Fujifilm v Kodak I.

It was decided early in the case management of both cases that the question of jurisdiction over alleged infringement in the UK would be stayed pending the guidance of the CJEU in Electrolux. In the meantime, the Mannheim Local Division decided the issue of infringement for the German part of the relevant patents.  In Fujifilm v Kodak II, [19] the German part of the patent in suit was revoked for lack of inventive step and the infringement action consequently dismissed. [21] In Fujifilm v Kodak III, [20] the German part of the patent in suit was found to be valid and infringed.[22] A permanent injunction as well as other remedies were granted as a consequence.

Following Electrolux, the Mannheim Local Division decided that the UPC has jurisdiction to hear the two cases relating to infringement in the UK.[23], [24] Moreover, because the UK is a non-EU state and not a party to the Lugano Convention, the Court may assess the validity of the UK part of the patent within the context of an invalidity defence, but only on an inter partes basis.

Again, the jurisdiction of the Court arose under Article 4(1) BR from the fact that all three Kodak defendants were domiciled in Germany. The second defendant, the manufacturer of the contested product in Germany, was found to import the contested product into the UK, where the title was transferred to the UK-based entity. The first defendant purchased the contested product from the UK-based entity and was involved in the production of the contested product.

Having established jurisdiction to hear the infringement actions, the Mannheim Local Division effectively extended the earlier decisions on the German part of the respective patents to the UK.

In Fujifilm v Kodak II, the action for infringement in the UK was dismissed.[23] Following the Düsseldorf Local Division in Fujifilm v Kodak I [18], it was held that “it would have been for the Claimant to contest and state any circumstances, if any, that would lead to a different result in relation to the assessment of the validity of the UK part [as compared with the German part of the relevant patent]”[25] and in the absence of any such arguments, the UK part of the relevant patent was also deemed to be invalid. Nevertheless, the Court refused to provide a declaration to that effect, because such a declaration would in any case not be binding on the UK authorities and any pretence that it was would be counter to the Electrolux principle that the validity assessment in these circumstances is only on an inter partes basis.

In Fujifilm v Kodak III, the invalidity defence with respect to the UK part of the relevant patent failed for the same reasons as for the German part “in the absence of deviating arguments of the defendants challenging the validity of the patent-in-suit when UK patent law or the EPC as applied by UK courts is concerned”[26]. Infringement was found, in particular, based on the importation activities of the second defendant and broadly the same remedies were provided as for the infringement in Germany. The only difference was that the injunction granted in relation to the UK did not include an order to refrain from “making” the contested product as there was no evidence of the defendants making the product in the UK.

Discussion

The principle that a defendant shall generally be sued in their country of domicile is a well-established principle of private international law and a key aspect of the Brussels Regime (Article 4(1) BR), as discussed above. This principle gives the defendant the opportunity to defend itself on home turf, where they are likely more familiar with the structure of the legal system and the procedural law. Moreover, from a practical perspective, it makes sense to obtain a decision against the defendant in a territory in which the defendant’s assets are primarily based. Therefore, the fact that a court has determined a dispute involving German defendants, including imposing relief against them for acts in the UK, is not in itself surprising or controversial; what makes it notable here is the novel application of these principles in the patent landscape.

Patents, disregarding unitary patents, are nationally registered rights and validity is often central to infringement disputes. This then creates a tension between the principle that the defendant is to be sued in the country of domicile and the principle that it is for the country of grant to determine validity.

The principle stemming from Electrolux, that the UPC may decide the validity of third country patents on an inter partes basis as a defence to infringement, may be understood on the basis that the UK rights here derive from European patent applications and are granted under the same provisions on validity as apply to UPC contracting member states. Notably, the defendants could not identify any reason why one would expect a different outcome on validity in the UK, notwithstanding that the UK courts have developed their own jurisprudence in assessing substantive issues of validity.

However, there are procedural challenges in implementing this under the provisions of the UPC. These challenges were hidden to some extent in the Fujifilm cases as the action for infringement in the UK was not a standalone one, but included alongside an action for infringement in Germany. It is useful to consider how a standalone action for infringement in the UK would have played out from a procedural perspective. In that case, the UPC would have had no jurisdiction to hear a counterclaim for revocation, and yet the UPC Rules of Procedure provide that an invalidity defence may only be raised as part of such a counterclaim.[27] Something would have to give in order to allow the defendant to test validity on an inter partes basis as required by Electrolux.

Relatedly, the Mannheim Local Division emphasised that there is no need for the defendant to file a revocation action in the third country in order to raise an invalidity defence.[28] Nor is there a reason, in the absence of pending national revocation proceedings, to stay the infringement proceedings, or to make the decision conditional upon the validity of the patent in suit.[29] However, what remains unclear is how the UPC will approach the question of staying proceedings in the event that a revocation action is pending in the relevant non-UPC contracting state. So far the UPC has been somewhat reluctant to stay proceedings where there are pending EPO opposition proceedings (see our article here). Would this also be the case when it comes to determining non-domestic infringement? In particular, what would the conditions be to grant a stay or to give a conditional decision in non-domestic infringement proceedings at the UPC?

Significantly, the finding of infringement in Fujifilm v Kodak III [24] is based on an unconditional limitation of the patent claim compared to that granted and registered. The defendants had argued that a stay was justified at least in view of the claimant’s defence of the patent in limited form and without any corresponding limitation at the UK IPO. However, the Court dismissed this argument, concluding that UK procedural law was not applicable.[30] Furthermore, according to the court, the dispute was to be decided on an inter partes basis and therefore an erga omnes limitation of the patent was not relevant to the dispute.[31] It is unclear whether Electrolux countenanced such a broad remit to consider a more limited patent claim than the one registered. After all, it may be argued that an unconditional limitation of the patent claim may be regarded as an implicit concession regarding the validity of the registered patent and that such a situation is a good example of when the court ought to exercise its discretion to stay the proceedings.

The application of Electrolux in the more recent decision in HL Display [4] is similar to that in the Fujifilm cases. A further interesting aspect of HL Display [4] is that the countries in addition to UPC member states in which infringement is alleged to have occurred include both non-UPC Brussels Regime states (i.e. non-UPC EU member states, specifically Ireland and Poland, and Lugano Convention states, specifically Norway and Switzerland) and third countries (Liechtenstein and the UK). Similar to the Fujifilm cases, the Hague Local Division clarified that the counterclaim for revocation pertained only to the UPC member states, and invalidity could be considered only as a defence in respect of the non-UPC states.[32] Having dismissed the counterclaim for revocation, the Court concluded that “for the [non-UPC] EU member states …, as well as the Lugano member states, … there is no serious, non-negligible chance the patent will be revoked by the competent national court. Equally [emphasis added], for the other states in which the patent is in force, the Court holds inter partes that the patent is valid.”[33] The Court then proceeded to grant relief, including injunctive relief, covering all the states in which the patent was in force, including UPC states, Brussels Regime states and third countries. Notwithstanding the different language used, this approach appears in effect to treat Brussels Regime states and third countries on an equal footing as far as the invalidity defence is concerned. It could be argued that this approach renders moot the Electrolux distinction between Brussels Regime states who have exclusive jurisdiction to determine the validity of the patent in suit under Article 24(4) BR and third countries that do not have such exclusive jurisdiction.

Post Electrolux I: UPC-specific long arm jurisdiction

While the Electrolux decision has generated understandably much interest, it constitutes only one vector for long arm jurisdiction at the UPC, as demonstrated in the recent decision of the Hamburg Local Division in Dyson v Dreame. [5]

Dyson v Dreame

In Dyson, [5] the Hamburg Local Division ordered preliminary injunctions against a German-based respondent and a Hong Kong-based respondent for alleged infringement in Spain, a non-UPC EU member state.

The patent relates to a handheld hair treatment device; in particular, a hot styling brush. The EP patent had unitary effect in all UPC member states and had been validated also in Spain.

Facts of the case

The application for provisional measures identified four contested products. The first respondent was Hong Kong-based, belonging to the Dreame group, and offered the contested products on its website for sale in UPC territory and Spain. The second respondent was the German-based “official distributor of Dreame” and offered the products on its website and in its retail store in Germany. The third respondent was also German-based and the authorised EU representative of the first respondent for marketing in the EU. The fourth respondent was the Swedish affiliate of the first respondent and ran the country-specific website and a retail store for the sale of the contested products. The case against the third respondent was that as the mandatory EU representative of the first respondent, the third respondent participated in the sales in the same way as the first respondent and at the very least was an intermediary with the meaning of Article 63 UPCA.

No invalidity arguments were put forward by the respondents. Two of the four contested products were found to fall within the scope of the claims; hence their offer and distribution was found likely to infringe the patent.

The first, second and fourth respondents were found likely to be committing infringing acts in UPC territory (and Spain) by offering the relevant contested products. The third respondent, while an intermediary, was found not to be infringing, because even though it was identified as the EU representative on the packaging of the relevant contested products, it was not physically involved in the distribution of the products.

The other elements of the test for imposing provisional measures were found in favour of the applicant. Therefore, the only question that remained was one of jurisdiction: the extent to which the UPC had jurisdiction over the various respondents and acts.

Question of jurisdiction

The question of jurisdiction in this case naturally divided into jurisdiction over acts committed in UPC territory on the one hand and acts committed in Spain on the other.

As far as acts in UPC territory are concerned, the Hamburg Local Division found international jurisdiction of the UPC with respect to the German-based second and third respondents under Article 71b(1) BR in conjunction with Article 4(1) BR. International jurisdiction with respect to the Swedish-based fourth respondent was taken to follow from Article 8(1) BR, which allows a defendant domiciled in another EU state (in this case Sweden) to be sued in an EU state in which another defendant is being sued (in this case Germany) for a closely connected claim to avoid the risk of irreconcilable judgments resulting from separate proceedings. Finally, international jurisdiction with respect to the Hong Kong-based first respondent was found to derive from Article 71b(2) BR in conjunction with Article 7(2) BR. This conclusion replicates the inherent jurisdiction that an EU court would have over the Hong Kong-based respondent for allegedly infringing acts committed in that EU state. Except for the justification for international jurisdiction over the Swedish-based fourth respondent, which we discuss below, none of this is controversial.

The most interesting aspect of the decision relates to the treatment of jurisdiction in relation to acts committed in Spain, a member state of the EU, and hence subject to BR, but not a UPC member. Importantly, the acts in Spain concern a European patent, which the UPC can have jurisdiction over (Article 1 UPCA).

No plausible allegation of infringement in Spain was claimed of the second and fourth respondents. Therefore, the question of jurisdiction over acts done in Spain concerned only the first and third respondents. Jurisdiction over the third respondent as the German-based intermediary was found under Article 4(1) BR.  Thus, jurisdiction over the third respondent for acts done in UPC territory and Spain was established under the same provision of BR.

Jurisdiction over the Hong Kong-based first respondent was found under Article 71b(2) BR in conjunction with Article 8(1) BR. That is, the German-based third respondent was found to be an “anchor defendant” through which jurisdiction over the Hong Kong-based respondent may be established.

In reaching this conclusion, the scope of Article 71b(2) BR had to be determined and in particular what is meant by “Chapter II [Articles 4 to 35 on “Jurisdiction”; in this case Article 8(1)] shall apply as appropriate [emphasis added] regardless of the defendant’s domicile”. The Court determined that the only requirements were that the other elements in Article 8(1) BR, other than the domicile criterion, needed to be met. Such an interpretation of Article 71b(2) BR is new and goes beyond the broadening of long arm jurisdiction directly resulting from Electrolux. Whereas the Electrolux principles apply generally across the EU and relate to the scope of Article 4(1) BR in conjunction with Article 24(4) BR, the extended scope of jurisdiction established in Dyson derives from Article 71b(2) BR; since this provision does not apply to the national courts, it can be seen as UPC-specific.

Discussion

As highlighted above, the most interesting aspect of Dyson is the means by which jurisdiction over the Hong Kong-based respondent was accepted for alleged infringement in Spain. This involved an interpretation of Article 71b(2) BR that, while on the face of it consistent with the literal interpretation of the provision, was possibly broader than that which was intended.[34]

In particular, it has been questioned whether the UPC was intended to have broader jurisdiction that a national EU court.[35] Recital 6 of the amending Regulation [14] states that “the Unified Patent Court … should apply only those rules which are appropriate for the subject-matter for which jurisdiction has been conferred on them”. Moreover, it is unclear whether the presence of an anchor defendant is sufficient to establish the “close connection” required by Article 8(1) BR, and also whether such an interpretation of Article 71b(2) BR is consistent with Article 71b(3) BR, which builds on Article 71b(2) BR.[36]

Indeed, the travaux for the amending Regulation[37] does not seem to envisage a scenario as that dealt with in Dyson and discusses rather, within the context of Article 6 BR and the reference to national law therein, the need “to complete the jurisdiction rules of [BR] for matters which will come within the competence of the Unified Patent Court … insofar as defendants domiciled in non-European Union States are concerned”[38]. It may be argued that were such a broadening of jurisdiction intended this would have been made clearer in the travaux and the Recital to the amending Regulation.

At a practical level, given the decision in this case, non-EU based entities may wish to choose an EU authorised representative in a non-UPC EU state, such as Spain or Poland (or at least for now Ireland) to avoid the EU authorised representative from being used as an anchor to establish UPC jurisdiction over them for acts committed outside UPC territory.

Another interesting aspect of Dyson is how it establishes international jurisdiction over the Swedish respondent for acts done in UPC territory; namely via Article 8(1) BR. There is an argument to be made that the international jurisdiction of the Court under Article 31 UPCA derives more properly from Article 4(1) BR, and not Article 8(1) BR, given that the UPC is a court common to the UPC contracting member states. Once international jurisdiction is established under Article 31 UPCA, there is then the question of the local jurisdiction of the Hamburg Local Division under Article 33 UPCA. Indeed, such an approach is preferred in obiter remarks by the Mannheim Local Division in Bosch v Grizzly Tools.[39] Deriving international jurisdiction via Article 8(1) BR seems to conflate the Hamburg Local Division as a German national court rather than as a court common to the UPC member states as provided in Article 71a(1) BR.

The Hamburg Local Division has taken a similar approach also in Occlutech I,[40], [41] which concerned an application for provisional measures. In this case, the German local division established jurisdiction over the Dutch-based subsidiary for likely infringement in Germany via Article 7(2) BR.

An approach which rather establishes jurisdiction via Article 4(1) BR by treating the UPC as one court common to its contracting member states appears to be more consistent with the UPC Court of Appeal decision in Aylo v Dish.[42] In this case, the Court of Appeal considered the application of Article 7(2) BR at the UPC and determined that “the UPC has international jurisdiction [Article 71b(1) BR in conjunction with under Article 7(2) BR] in respect of an infringement action where the European patent … has effect in at least one Contracting Member State and the alleged damage may occur in that particular Contracting Member State”.[43] That is, the alleged damage need not occur in the state in which the division is based.

A practical consequence of this distinction when determining the basis on which jurisdiction over the defendant is established is that it may affect whether Electrolux applies or not. It is an unsettled question as to whether Electrolux applies only when jurisdiction is determined via Article 4(1) BR, or whether the same principles apply for example with respect to Article 8(1) BR.[44] Assuming a narrower scope of applicability of Electrolux, i.e. one limited only to Article 4(1) BR, would mean that using the Hamburg Local Division approach (as reflected in Dyson and Occlutech), the Court would be bound to stay proceedings in response to an invalidity defence, whereas using the other approach that treats the UPC as a common court (as advocated in Bosch v Grizzly Tools), the Court may continue to hear the case following the guidance in Electrolux.

Post Electrolux II: Hurom v NUC Electronics I

The recent decision of the Mannheim Local Division in Hurom v NUC Electronics I [11] takes the decisions in the Fujifilm cases and Dyson further still and establishes a further vector for long arm jurisdiction at the UPC. In doing so, the Court’s decision raises important questions regarding the scope of Electrolux and more generally the scope of the jurisdictional provisions in the BR.

Hurom v NUC Electronics

As with the Fujifilm cases, the dispute at the UPC between Hurom and NUC Electronics, both Korean-based entities, has provided useful guidance on the scope of long arm jurisdiction at the UPC.

The dispute between the parties relates to juicer technology and has involved three separate proceedings based on two patents at the Paris Local Division and the Mannheim Local Division. The two proceedings at the Mannheim Local Division have been directed respectively at the Korean-based parent company, NUC Electronics,[45] and its European subsidiary (German-based NUC Electronics Europe GmbH) and distribution partner (French-based Warmcook).[46]

The proceedings that interest us here is the one involving the Korean-based parent company. [45]

In these proceedings Hurom sued NUC Electronics for infringement in UPC territory, as well as Poland, Spain, Turkey, and the UK. The Mannheim Local Division decided that since the Electrolux decision had not been delivered by the date of the oral hearing, the action in relation to the non-UPC countries would be dealt with in separate proceedings.[47] The Court went on to find infringement in UPC territory and granted relief covering the relevant UPC countries.[48] Moreover, it was held that, regardless of the guidance in Electrolux, the action with regard to Turkey was inadmissible as Hurom had not alleged sufficient facts to establish jurisdiction over alleged infringement in Turkey.[49]

The recent decision in Hurom v NUC Electronics I [11] concerns the alleged infringement of the Korean-based parent company in Poland, Spain, and the UK.

Hurom I [11]

To be clear, this decision concerned the activities of a defendant based in a third country (Korea) in non-UPC territories, including non-UPC EU territories (Spain and Poland) and another third country (UK).

The conclusion of the Mannheim Local Division in this case was to dismiss the infringement action. However, the way the Mannheim Local Division came to this conclusion is significant: it first accepted jurisdiction and then proceeded to dismiss the action on the merits.

In particular, the Court accepted jurisdiction under Article 71b(2) BR in conjunction with Article 7(2) BR. To do this required a broad interpretation both of Article 7(2) BR and Electrolux.

First, the Court held that the guidance in Electrolux is not confined to circumstances in which jurisdiction is established via Article 4(1) BR, but includes also circumstances in which jurisdiction is established via Article 7(2) BR.[50]

Secondly, the Court held, in relation to the scope of Article 7(2) BR, that the wording “place where the harmful event occurred or may occur” “covers both the place where the damage occurred and the place of the event giving rise to it”,[51] and that “[t]he place of the event giving rise to the damage … is not restricted to the country in which the right is registered”.[52] Applying these principles to the facts of the case it was held that the allegation that the defendant ships the contested products to the relevant non-UPC territory via its UPC-based supplier and distributor was enough to establish UPC territory as a “place of the event giving rise to the damage” for the purposes of determining jurisdiction.[53]

Having accepted jurisdiction, the Court held that the substantive law that applied was the national law of the respective non-UPC countries and within this context it had not been sufficiently demonstrated that any infringing acts can be attributed to the defendant.[54] The infringement action was consequently dismissed.

Discussion

In justifying its broad interpretation of Electrolux, the Mannheim Local Division proceeded on the basis that Article 24(4) BR “does not confer jurisdiction, let alone exclusive jurisdiction for an infringement action to the EU member state of registration…. In consequence, Art. 24 (4) [BR] is not only not applicable to infringement actions that are filed before the courts of a defendant’s state of domicile. Rather, it is not applicable to infringement actions at all [emphasis added].”[55]

The Court’s broad interpretation of Electrolux is correlated with its broad reading of Article 7(2) BR. Indeed, a consideration of the applicability of Electrolux in relation to Article 7(2) BR does not make sense without the broad reading of Article 7(2) BR by the Court. In this regard, it is notable that the CJEU authorities cited in support of the Court’s interpretation of the scope of Article 7(2) BR both relate to infringement of an intellectual property right (copyright and trademarks) via the internet.[56] The Court did not discuss the extent to which ratio in these authorities may be applied to the facts in this case; namely, a situation involving the shipping of tangible products.

Concluding remarks

The decisions of the Mannheim Local Division in the Fujifilm cases and Hurom I, as well as the Hamburg Local Division in Dyson provide helpful guidance to UPC practitioners as to how the UPC will approach the question of long arm jurisdiction.

However, it is fair to say that the UPC’s approach to jurisdiction is one that is continuing to develop. Notably, several interim decisions[57] have refused to decide on the question of jurisdiction following a preliminary objection; a procedure designed specifically to deal with challenges on the jurisdiction and competence of the Court. The interim decisions by the respective judge rapporteurs have rather preferred to defer the matter to the full panel as part of the final decision on the merits, even though such an option does not seem to be provided, at least explicitly, by the UPC Rules of Procedure. Relatedly, a number of decisions have imported aspects of the assessment of the allegedly infringing acts into the assessment of jurisdiction,[58] something that the Court of Appeal has already warned against, at least within the context of examining jurisdiction under Article 7(2) BR.[59]

These developments may be viewed as a sign that the importance of jurisdictional issues and the shifting state of the law in this area is being appreciated by the UPC. Indeed, many questions remain to be resolved by the Court of Appeal (including possible referrals to the CJEU) at some stage in the near future, both at the procedural level and at the level of more fundamental principles, such as comity with courts of other jurisdictions.

While patent holders and potential defendants wait for the dust to settle, certain practical considerations may be useful to consider. Patent holders would be well-advised to consider carefully the full spectrum of relevant parties (irrespective of domicile) and alleged infringing acts (irrespective of the countries in which they take place). On the other hand, potential defendants would be well-advised to consider initiating revocation actions or proceedings for declaration of non-infringement in the relevant non-UPC countries, especially where European patents have been validated, prior to starting any commercial activities in UPC territory.