A guide to the UPC and the UP - Flipbook - Page 307
Seizure of Goods
16-11 The seizure of goods or delivery up of products alleged to infringe is provided for in art.62(3)
UPCA. The purpose of a seizure of goods is different to the other types of orders to preserve
evidence or saisies in that it prevents their entry into or movement within the channels
of commerce.
16-12 From the wording “prevention of entry into … the channels of commerce,” art.62(3) UPCA
appears to contemplate that an order for seizure of goods could be made either prior to the
infringement commencing or, from the wording “movement within…”, after it has already
begun. Alternatively, it could be construed to cover both situations, i.e. to prevent further entry
into the channels of commerce.
16-13 Thus an order for seizure of goods may be regarded as an adjunct to a provisional injunction.
Although in principle an application for an order for seizure of goods could be made without a
corresponding application for a provisional injunction, such an application would not
necessarily prevent further infringement by way of, for example, a further shipment of goods
received from outside the jurisdiction. Likewise, a provisional injunction would not in itself
remove from the market goods already put into circulation by the respondent if they had
passed to other undertakings, for example, to retailers. However, it may be that an order could
be made for seizure of goods already in the channels of commerce, such that its practical effect
would overlap with that of a provisional injunction.
Seizure of Assets
16-14 Art.62(3) UPCA refers to the seizure of both movable and immovable property and expressly
refers to the blocking of bank accounts. Such an order is predicated on the applicant
demonstrating “circumstances likely to endanger the recovery of damages…” and therefore
does not appear to be concerned with preventing infringement but rather ensuring, so far as
possible, that the defendant does not dissipate assets from the jurisdiction such that they
become unable to compensate the patentee by way of damages if there is a later finding
of infringement.
16-15 The subject matter of an order for seizure of assets overlaps to a degree with the subject
matter for freezing orders. 10 One important difference is that art.61(1) UPCA, which provides for
freezing orders, expressly contemplates extra-jurisdictional effect. Art.62(3) UPCA is silent on
whether the Court is empowered to seek the seizure of assets outside the jurisdiction but the
absence of express wording suggests that the Court is not empowered to do so.
16-16 Another difference is that it is possible that the order for seizure is not necessarily an order
directed against the defendant as such. It is likely that the order would be executed, for
example, by serving it on a bank. In contrast, the freezing order is expressly an order for a
party not to deal with its assets and thus would appear less suitable for serving on a bank.
Freezing Orders
16-17 The power to grant a freezing order is provided under art.61 UPCA. In the RoP, freezing orders
are dealt with in r.200. The language substantially mirrors that of art.61 UPCA. The freezing
order may be an order for “a party not to remove from [the Court’s] jurisdiction any assets
located therein” or for a party “not to deal in any assets, whether located within its jurisdiction
or not”.
10
See paragraphs 16-17 to 16-18.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 297
