A guide to the UPC and the UP - Flipbook - Page 390
in the scope of the Brussels I Regulation(recast) which is determined by the nature of the
subjective right that the enforcement measure serves to protect. The CJEU stated that: 55
“It is true, as is apparent from the order for reference, that the fine imposed on Realchimie
pursuant to paragraph 890 of the ZPO, by order of the Landgericht Düsseldorf must be paid,
when it is enforced, not to a private party but to the German State, that the fine is not
recovered by the private party or on its behalf but automatically, and that the actual
recovery is made by the German judicial authorities. Those specific aspects of the German
enforcement procedure cannot however be regarded as decisive as regards the nature of
the right to enforcement. The nature of that right depends on the nature of the subjective right,
for infringement of which enforcement was ordered, that is, in the present case, Bayer’s right
to exploit exclusively the invention protected by its patent which is clearly covered by civil
and commercial matters within the meaning of Article 1 of Regulation No 44/2001.”
19-45 As a consequence, the enforcement authorities in Contracting Member States and other EU
Member States should not refuse their assistance in the enforcement of the Court’s orders
attaching penalty payments. 56 The Lugano Convention (relevant to enforcement in Iceland,
Norway and Switzerland) has not been amended to include the equivalent of art.54(1) Brussels
I Regulation (recast), but nevertheless, the European Free Trade Association (EFTA) Court 57
may follow the WEBSHIPPING case, 58 since, although it is not obliged to do so, the EFTA Court
generally follows existing relevant case law of the CJEU if the facts are identical. Matters become
much more uncertain in relation to countries outside the EU and the EFTA countries.
Conditions Attached to Orders before they are Enforceable
General Powers of the Court to attach Conditions
19-46 Where appropriate, the enforcement of a decision may be subject to the provision of security,
or an equivalent assurance, to ensure compensation for any damage suffered, in particular,
in the case of injunctions. 59
Requirement of a Security Deposit
19-47 Where a decision or order is not final, it may still be enforced but there is a risk that it might
later be overturned by the Court of Appeal, or it might be rendered ineffective, for example
where an order for an injunction prohibiting infringement has been granted by a local or
regional division, but the patent is later revoked by the central division. In such cases,
the defendant against whom the order is enforced may suffer considerable damage,
for example by way of lost sales in the intervening period and is therefore entitled to claim
appropriate compensation. 60 In some instances, the successful claimant may be unable to pay
the full amount of the compensation because of financial difficulties or insolvency, leaving the
defendant out of pocket. The clash of legitimate interests between claimant and defendant is
mitigated if the potential claim to compensation is, at least partially, guaranteed by security
given by the party wishing to enforce the order or by other equivalent means. The extent of the
security payment or guarantee is dependent on the commercial effect of the enforcement.
55
56
57
58
59
60
Realchemie Nederland BV v Bayer CropScience AG (C-406/09) [2011] ECR I-09773 at [43].
Despite the fact that, in relation to Member States which are not a party to the UPCA, any party may challenge
the adaptation of the measure or order before a court (art.54(2) Brussels I Regulation (recast)).
Liechtestein is also a member of EFTA.
DHL Express France SAS v Chronopost SA (C-235/09) [2011] ECR I-02801.
art.82(2) UPCA. Further, under art.56(1) UPCA, the Court may make its orders subject to conditions in accordance with
the RoP. R.118(8) RoP provides that, for orders to be binding, they may be subject to the rendering of security by the
successful party to the unsuccessful party in accordance with r.352 RoP.
r.354(2) RoP. See paragraphs 19-65 to 19-71.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 380
