A guide to the UPC and the UP - Flipbook - Page 382
Contracting Member State, the decision is put on exactly the same footing as a judgment
rendered by a national court in that Contracting Member State and is enforced under the
same conditions. 8
19-05 Hence, enforcement in a Contracting Member State will not require any recognition, certificate,
competent enforcement authority, or special enforcement proceedings as is required by under
the Brussels I Regulation (recast). This automatic Contracting Member State-wide enforcement
of the decision is a logical consequence of the Court being a single court common to the
Contracting Member States and constituting an integral part of each of their respective judicial
systems, as confirmed in the recitals to the UPCA 9 and in the UPCA itself. 10 A decision and order
from the Court, once served, can be immediately handed over to the local enforcement
authorities as if it were an enforceable judgment from a local court.
19-06 Therefore, the Court operates under a much higher level of European integration than for EU
trade marks. EU trade marks are granted and enforced on an EU-wide basis, but this is done
through EU trade mark courts. EU trade mark courts are existing national courts, vested with
specific powers under the EU Trade Mark Regulation, 11 including the power to grant EU-wide
injunctions. 12 The enforcement of judgments from EU trade mark courts will always require the
application of the Brussels I Regulation (recast), whereas that will not be the case for the
enforcement of the Court’s decisions in Contracting Member States.
19-07 Further, it should be noted that the location of a division of the Court is irrelevant for the
purposes of enforcement against parties who are domiciled in a Contracting Member State;
each decision is deemed to be issued by the common Court. A decision from the local division
in Paris will therefore be equally enforceable against a defendant based in France as against a
defendant based in Germany, or any other Contracting Member State. 13
Procedure for Enforcing an Order in a Contracting Member State
19-08 Although the Court’s decisions are directly enforceable as of their date of service in each
Contracting Member State, 14 further steps will still need to be observed by a successful
party seeking enforcement.
19-09 Firstly, orders are enforceable on the defendant only after the claimant has notified the
Court which part it intends to enforce. 15 The claimant is therefore required formally to choose
which part (which could include the whole) of an order should be enforced. The RoP indicate
that a defendant will receive prior notice of the claimant’s intention to seek enforcement, as
well as notice of the precise scope of the enforcement sought. This may operate as a final
warning, encouraging the defendant voluntarily to comply with the decision and save costs.
8
9
10
11
12
13
14
15
r.354(1) RoP.
See recital 7 UPCA: “Considering that the Unified Patent Court should be a court common to the Contracting Member States
and thus part of their judicial system, with exclusive competence in respect of European patents with unitary effect and
European patents granted under the provisions of the EPC.”
See for instance, art.1 UPCA: “The Unified Patent Court shall be a court common to the Contracting Member States and thus
subject to the same obligations under Union law as any national court of the Contracting Member states” and art.21 UPCA:
“As a court common to the Contracting Member States and as part of their judicial system, the Court shall …”, etc.
Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Council Regulation
(EC) 207/2009 on the Community trade mark (OJ No. L 341, 24.12.2015, pp.21 to 94).
arts 95 to 98 Council Regulation (EC) No. 207/2009 on the Community Trade Mark.
Except for (the cost of) translating the decision prior to service and enforcement (r.118(8) RoP).
r.354(1) RoP.
r.118(8) RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 372
