A guide to the UPC and the UP - Flipbook - Page 389
Enforcement of Orders Containing Penalties
19-39 Three issues arise in relation to the enforcement of orders containing penalties awarded by the
Court. The first relates to the question of who will arrange for the enforcement of the penalty
payments in practice. As noted above, such penalties are payable to the Court and not to the
prevailing party and therefore enforcement is in the hands of the Court. There is no mention in
the UPCA or the RoP as to how the Court is going to collect such penalties, but there will be no
point in ordering penalties if they cannot be enforced. To do so, the Court will have to seek the
assistance of the national enforcement authorities.
19-40 The second issue relates to how the penalty will be enforced. As previously discussed in relation
to the enforcement of the Court’s orders, 51 this will differ from region to region. Orders are
enforceable in Contracting Member States as if they were orders of the national court and in
other countries Member States the Brussels I Regulation (recast) applies. Outside the EU,
the Lugano Convention applies to enforcement in Iceland, Norway and Switzerland, however,
in other countries enforcement is more challenging; the rules for recognition and enforcement
of the country where enforcement is sought have to be relied upon.
19-41 The third issue relates to the question of whether, despite the fact that once the decision or
order has been made by the Court it becomes enforceable in the Contracting Member States, 52
there are nevertheless grounds for the national enforcement authorities to refuse
enforcement of orders attaching penalty payments. 53
19-42 As can be seen from the discussion of enforcement in individual countries in the Annex to this
chapter, some Contracting Member States recognise penalty payments attached to orders
whereas others do not. The CJEU has ruled in a case relating to an EU trade mark that where
the national law of the Member State in which recognition and enforcement of the decision was
sought does not provide for a coercive measure similar to that ordered by the requesting court
which issued the prohibition against further infringement or threatened infringement
(and coupled that prohibition with such a measure in order to ensure compliance with the
prohibition), the court seized of the case in that Member State must attain the objective
pursued by the measure by having recourse to the relevant provisions of its national law which
are such as to ensure that the prohibition originally issued is complied with “in an equivalent
manner”. 54 In this case, the order made in France prohibiting infringement of the trade mark
WEBSHIPPING in the EU coupled with a periodic penalty payment was, therefore, enforceable
in an equivalent manner in countries which did not themselves order such coercive measures.
19-43 In relation to the recognition and enforcement of such measures in a Member State not party
to the UPCA, the Brussels I Regulation (recast) has, since the WEBSHIPPING case, been
amended to include art.54(1) which states:
“If a judgment contains a measure or an order which is not known in the law of the Member
State addressed, that measure or order shall, to the extent possible, be adapted to a measure
or an order known in the law of that Member State which has equivalent effects attached to it
and which pursues similar aims and interests.”
19-44 It should also be noted that, again in relation to Member States which are not a party to the
UPCA, the CJEU has, with respect to the ordering of penalties under s.890 German Code of Civil
Procedure (Zivilprozessordnung, ZPO) which are payable to a court, already established that the
Brussels I Regulation (recast) applies to the recognition and enforcement of such decision.
Therefore, the fact that the penalty is to be payable to the Court does not affect its inclusion
51
52
53
54
See paragraphs 19-04 to 19-29.
r.354(1) RoP.
This subject has previously been touched on in paragraphs 19-33 to 19-38.
DHL Express France SAS v Chronopost SA (C-235/09) [2011] ECR I-02801 at [56].
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 379
