A guide to the UPC and the UP - Flipbook - Page 309
Substantive Requirements
Provisional Injunction
Introduction
16-21 The main substantive requirements for a provisional injunction are contained in art.62 UPCA
and rr.206 and 211 RoP. R.211 RoP is the more substantive while what is specified in r.206 RoP
is more formalistic. R.207 RoP, regarding protective letters, is also highly relevant 18.
16-22 R.211 RoP provides that the Court, in considering any application:
– Shall in exercising its discretion, weigh up the interests of the parties including the
potential harm that either may suffer by reason of its decision to grant or not to grant
a provisional injunction; 19
– Shall have regard to any unreasonable delay in seeking the provisional injunction; 20 and
– May require the applicant to provide “reasonable evidence to satisfy the Court with a
sufficient degree of certainty that the applicant is entitled to commence proceedings …
that the patent in question is valid and that his right is being infringed, or that such
infringement is imminent”. 21
Potential Harm to the Parties
16-23 The main substantive issue that the Court must have regard to when considering an application
for a provisional injunction is to weigh up the interest of the parties and, in particular, take into
account the potential harm to either party resulting from the granting or the refusal of
the injunction.
16-24 There is a slight difference in the wording of art.62(2) UCPA and r.211(3) RoP. The former
specifies that the “Court shall have the discretion to weigh up the interests of the parties and in
particular ... the potential harm” and, thus, is not drafted so as to require the Court to consider
the potential harm, at least on a literal reading. As a consequence, the UPCA permits the Court
to take into account the interests of the parties but if it does not do so, this would not appear to
be a violation of the UPCA. In contrast, the RoP do not refer to any requirement that the Court
takes into account the interests of the parties, including the potential harm. R.211(3) RoP states
that “in taking its decision the Court shall in the exercise of its discretion weigh up…”. While this
difference in drafting between the UPCA and RoP provisions was debated by members of the
Preparatory Committee, the wording of r.211(3) RoP was stated to be based on art.62(2) UPCA
and was subsequently agreed and incorporated in the RoP. It remains to be seen whether the
difference in the wording will make a difference in practice.
16-25 The requirement for the Court to consider the potential harm to the parties reflects the practice
in a number of Contracting Member States, including the Netherlands and Germany, where at a
provisional stage of proceedings the effect of the grant of the injunction is considered more
than any assessment of the underlying merits of the infringement allegation. In the Netherlands
and Germany this has been considered desirable since the underlying merits cannot usually be
assessed adequately at the time an application for a provisional injunction is made. In the
Netherlands and Germany, for the purpose of a provisional injunction the necessary harm must
be irreparable harm, i.e. harm which cannot later be adequately compensated for by an award
18
19
20
21
See paragraphs 16-73 to 16-89.
art.62(2) UPCA and r.211(3) RoP.
r.211(4) RoP.
art.62(4) UPCA and r.211(2) RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 299
