A guide to the UPC and the UP - Flipbook - Page 378
Orders to Communicate Information
18-107 Art.67 UPCA and r.191 RoP allow the claimant to request information about the extent of
infringement and the parties involved. 133 This allows a claimant to assess damages payable by
the defendant and the information necessary to decide whether to commence actions against
other parties involved in infringing acts. There is no fee for the application. As discussed above
such orders will typically be made once there has been a finding of infringement (as suggested
by use in art.67 UPCA of the term “an infringer”) but as it seems that orders under the
corresponding provision in art.8 Enforcement Directive can be made at any stage of an action,
this may be too narrow a reading. 134
18-108 Art.67(1) UPCA, sets out the information that the applicant may request from the defendant
(termed the “infringer”):
– The origin and distribution channels of the infringing products or processes;
– The quantities produced, manufactured, delivered, received or ordered, as well as the price
obtained for the infringing products; and
– The identity of any third person involved in the production or distribution of the infringing
products or in the use of the infringing process.
18-109 The Court may also order 135 any third party to provide the applicant with the information listed
above, if that third party:
– Was found in the possession of the infringing products on a commercial scale or to be using
an infringing process on a commercial scale;
– Was found to be providing on a commercial scale services used in infringing activities; or
– Was indicated by the person referred to in either of the above two points as being involved
in the production, manufacture or distribution of the infringing products or processes or in
the provision of the services.
18-110 The term “commercial scale” is not defined in the UPCA or RoP. However, art.67 UPCA derives
from art.8 Enforcement Directive which, at recital 14, explains the term as follows:
“Acts carried out on a commercial scale are those carried out for direct or indirect economic
or commercial advantage; this would normally exclude acts carried out by end consumers
acting in good faith.”
18-111 Art.67(1) UPCA requires the applicant to provide “a justified and proportionate request”
before the order will be granted. 136 R.191 RoP does not use the same wording; it requires
the request to be “reasoned”. If there is a conflict, the wording of the UPCA will prevail. 137
It is likely, therefore, that any request for an order to communicate information will need to
be reasoned, justified and proportionate.
133
134
135
136
137
Note that in New Wave CZ, a.s. v Alltoys, spol. s r. o. (C-427/15) ECLI:EU:C:2017:18, the CJEU decided that art.8(1) Enforcement
Directive allows an applicant, after the final determination of infringement, to seek via separate proceedings information on
the origin and distribution networks of the goods or services by which that intellectual property right is infringed.
See the Opinion of Advocate General Rantos in TB, other parties to the proceedings: Castorama Polska Sp. z o.o., ‘Knor’ Sp. z o.o
(C-628/21), ECLI:EU:C:2022:905.
art.67(2) UPCA.
art.8 Enforcement Directive is worded in the same way.
para. 1 preamble to the RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 368
