A guide to the UPC and the UP - Flipbook - Page 293
15-57 Thus, there is a presumption in the case of such infringers that unless they receive a translation
of the patent, they will be deemed not know that their acts are infringing. Clearly this is a
presumption which may be overturned by appropriate evidence from the patentee.
However, the question is whether the reverse presumption exists; namely that an infringer
which is not of the nature listed in art.4(4) Translation Regulation is presumed to be knowingly
infringing without appropriate evidence to the contrary.
15-58 Moreover, the Court may also rely on safeguards to mediate the amount of damages awarded.
In particular, according to art.42 UPCA, the Court’s decisions must be fair and proportionate to
the importance and the complexity of the matter.
Compensation for Provisional Protection
15-59 The UPCA provides that actions for damages or compensation may be derived from the
provisional protection conferred by a published European patent application. 75 The CJEU has
already considered the sum payable by way of “reasonable compensation” claimed in respect
of acts occurring after the date of publication of an EU trademark application which would,
if performed after registration, be prohibited. 76 The CJEU held that: 77
– “‘reasonable compensation’ … must have a narrower scope than the damages which may
be claimed by the proprietor of an EU trademark for acts of infringement occurring after
publication of the registration of that mark”;
– “for the purposes of determining ‘reasonable compensation’. .. it is therefore appropriate to
apply the criterion relating to the recovery of profits and to exclude from that compensation
redress for the wider harm that the proprietor of the trademark concerned may have
suffered on account of its use, which may include, in particular, moral prejudice”; and
– “the sum payable by way of ‘reasonable compensation’ cannot exceed the reduced
compensation provided for in Article 13(2) [Enforcement Directive]” which is equivalent to
art.68(4) UPCA and refers to the infringer knowing or having reasonable grounds to know
that it was engaging in infringing activity.
Separate Proceedings for the Determination of the Amount of Damages
15-60 Damages will not be awarded unless requested by the claimant. 78 The payment of damages
may be ordered in the decision based on the merits itself. 79 Alternatively, the claimant will have
to initiate separate proceedings. These proceedings will determine the damages, defined as
including “such compensation and interest at the rate and for the period that the Court shall
decide”. 80 As a stage in these separate proceedings, the Court has the ability to order the
defendant to do what is known as “laying open of books”. 81 It is not completely clear under
what circumstances separate proceedings will be issued. This will probably depend on the
complexity of the case, the claimant’s objectives and the habits of the judges on the panel.
15-61 Thus, from a procedural standpoint, three different routes are available:
– The one-step option: the Court issues a decision ruling both on the merits and on the
amount of damages; 82
75
76
77
78
79
80
81
82
art.32(1)(f) UPCA.
art.9(3) Council Regulation (EC) No. 207/2009 on the Community trademark (OJ No. L 78, 24.3.2009, p.1).
Irina Nikolajeva v Multi Protect OÜ (C-280/15) ECLI:EU:C:2016:467 at [55] to [57].
art.68(1) UPCA and r.118(1) RoP.
r.118(1) RoP referring to arts 68 and 32(1)(f) UPCA and that the amount of damages may be stated in the order or determined
in separate proceedings.
r.125 RoP.
See paragraphs 15-83 to 15-91.
r.118(1) RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 283
