A guide to the UPC and the UP - Flipbook - Page 281
15-10 The general principles in the Enforcement Directive are found in arts 3(1) and (2). Art.3(1)
Enforcement Directive states that measures, procedures and remedies provided for by Member
States to ensure the enforcement of intellectual property rights must be fair and equitable and
not unnecessarily complicated or costly or entail unreasonable time-limits or unwarranted
delays. Further, art.3(2) Enforcement Directive states that the remedies must be:
“effective, proportionate and dissuasive and applied in such a manner as to avoid the creation
of barriers to legitimate trade and to provide for safeguards against their abuse”.
15-11 Similar, although not such comprehensive, principles are found in art.42(2) UPCA which state
that the Court must use the remedies in the UPCA in a fair and equitable manner such that
they do not distort competition.
15-12 When looking for guidance on how the Court will apply these principles in relation to the
granting of permanent injunctions, although not binding on the Court, the Legal Group of
the Preparatory Committee has noted that:
“Where the Court finds an infringement of a patent it will under Article 63 [UPCA] give [an]
order of injunctive relief. Only under very exceptional circumstances it will use its discretion
and not give such an order. This follows from Article 25 [UPCA] which recognises the right to
prevent the use of the invention without the consent of the patent proprietor as the core right
of the patentee. When exercising this discretion, the Court can also consider the use of
alternative measures.” 19
Injunctions and Competition Law
15-13 The CJEU has stated that the exercise of an exclusive right linked to an intellectual property
right (the right to bring an action for infringement) could not, in itself, constitute an abuse of a
dominant position but only in exceptional circumstances may it involve abusive conduct for the
purposes of art.102 TFEU. 20 Thus, following the CJEU’s decision, unless there are exceptional
circumstances, the Court should not refuse to grant an injunction.
15-14 In the specific circumstances of an action relating to a standard essential patent (SEP) subject
to a fair reasonable and non-discriminatory (FRAND) undertaking, the CJEU in Huawei v ZTE 21 set
out a scheme to prevent an action for an injunction (or for the recall of products) from being
regarded as abusive under art.102 TFEU. The scheme, which assesses the actions of both the
proprietor and the implementer, seeks to ensure a fair balance between the interests
concerned and is as follows:
– As a first step, the proprietor, prior to issuing proceedings, should inform the implementer
of the alleged infringement, designating the SEP(s) and specifying the way in which it/they
have been infringed;
– The implementer should express its willingness to conclude a licensing agreement
on FRAND terms,
– If the implementer does, then the proprietor of the SEP should provide a specific,
written offer for a licence on FRAND terms, specifying, in particular, the amount of
the royalty and the way in which that royalty is to be calculated;
19
20
21
This statement was made when deleting the then numbered r.118(2) RoP from the 16th draft RoP, which stemmed from the
non-mandatory provisions in art.12 Enforcement Directive allowing courts to award pecuniary compensation instead of an
injunction. See “Table with explanatory notes to the changes made by the Legal Group of the Preparatory Committee in the
17th draft of the Rules of Procedure” 31 October 2014, p.11.
Huawei Technologies Co Ltd v ZTE Corporation (C-170/13) ECLI:EU:C:2015:477 at [46].
(C-170/13) ECLI:EU:C:2015:477 at [55], [59] and [61] to [67].
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 271
