A guide to the UPC and the UP - Flipbook - Page 284
15-21 The CJEU has held that this form of injunction is consistent with EU law. 34 In so doing, it rejected
the defendant’s submission that a prohibition of 14 months on the sale of products after expiry
of the patent was contrary to the principle of proportionality, given the alternative remedies of
damages or cancellation of the marketing authorisations. The CJEU held that it was justified
under art.36 EC Treaty (now art.36 TFEU) for the following reasons:
“27. … if Generics had respected SKF’s patent right, it could not have submitted the cimetidine
samples until that patent had expired. SKF would thus have been able to continue to market its
product without competition from the generic product marketed by Generics throughout the
period required to obtain the marketing authorization.
28. The moratorium imposed by the [Gerechtshof (Regional Court of Appeal), The Hague] on the
infringer of the patent right, in so far as it seeks to place the proprietor of the patent in the
position in which it would, in principle, have been had its rights been respected, cannot in itself
be held to be a disproportionate form of reparation.”
15-22 The Court may, as a consequence, grant such injunctions.
Injunction against an Intermediary
15-23 Permanent injunctions do not only apply to the infringer, the Court may also grant an injunction
against an intermediary whose services are being used by a third party to infringe a patent.
It should be noted that injunctions against an intermediary must be kept separate from
injunctions against indirect infringers. An intermediary is usually an innocent third party
who is not involved in patent infringement but in certain cases is in the best position to
stop or prevent an infringement.
15-24 This type of provision is also seen in art.11 Enforcement Directive, which corresponds to art.
8(3) Copyright in the Information Society Directive 35 which is usually applied where the main
infringer cannot be identified or reached. In cases involving sales over the internet, this has
resulted in the internet service provider being ordered to stop the infringement by way of
website blocking injunctions. In patent cases, however, these injunctions are likely to have a
lesser role, as the infringer is usually easy, or at least easier, to identify. Nevertheless,
injunctions against intermediaries may have relevance in patent cases in which the
intermediaries are engaged in shipping, transporting or storing infringing products. 36
15-25 The UPCA and the RoP are silent on the conditions and procedures relating to injunctions
against intermediaries. However, the CJEU has provided certain guidelines to the national courts
of Member States in the website blocking cases. According to the CJEU, the measure must strike
a fair balance between the various rights and interests at issue and the measure must be
effective, proportionate, dissuasive and must not unduly restrict business, endanger privacy or
the freedom to receive or impart information. 37
34
35
36
37
Generics BV v Smith Kline & French Laboratories Ltd (C-316/95) [1997] ECR I-03929. See the CJEU’s answers to the questions
referred in rulings [3] and [4].
Directive 2001/29/EC of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the
information society (OJ L 167, 22 June 2001 p.10).
In the UK, the courts have held that such activities are not primary acts of infringement. In Smith, Kline & French Laboratories
Ltd v R.D. Harbottle (Mercantile) Ltd [1980] RPC 363 at pp.371 to 374, the judge considered that activities of mere
warehousemen and carriers such as British Airways did not infringe because they were not “keeping” in the sense used in
s.60(1) Patents Act 1977 or art.29 CPC. The judge favoured the construction “keeping in stock” if there was to be an
infringement and this approach was followed by the Court of Appeal in McDonald v Graham [1994] RPC 407 at p.431 where
the defendant was infringing as there was sufficient evidence to show that he was keeping the products in stock for nonprivate and commercial purposes.
L'Oréal SA v eBay International AG (C-324/09) [2011] ECR I-6011 at [133] and [143]; Scarlet Extended SA v Société
belge des auteurs, compositeurs et éditeurs SCRL (SABAM) (C-70/10) [2011] ECR 2011 I-11959 at [48] to [50].
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 274
