A guide to the UPC and the UP - Flipbook - Page 393
cover legal costs and expenses 78 and the RoP sensibly refer to both compensation for damage
and legal costs, for example, in the general rule referring to orders being binding on the
provision of security 79 and in the rules relating to saisies which refers to the security being
“adequate”. 80 Other than this, there is no further guidance given in the RoP. In practice, it will
very much depend on the circumstances of each case and the evidence before the Court.
19-55 On a practical front, given the emphasis on front-loading proceedings and the lack of any
reference to a hearing to discuss the terms of the order following the Court’s decision, the
defendant may not necessarily get an opportunity to put in evidence of the potential damage
it will suffer unless it does so up-front. However, although the defendant may want to anticipate
arguments on whether and if so, how much security should be ordered by ensuring that
evidence of the estimated damage it is likely to incur if the order is enforced is before the
Court, it may also be wary of giving detailed accounting information to the claimant early on
in the proceedings.
19-56 If there is no such evidence, by its nature, the Court’s assessment will be fairly rough and ready.
But, depending on the stage of the proceedings, the Court may not be without at least some
guidance. If the written procedure has been completed, the claimant will, if the value of the
action exceeds €500,000, have supplied an indication of the value of the action in its SoC 81
and the defendant will have indicated whether it disputes the value in its SoD. 82 If the matter
has progressed further than the interim procedure, the judge rapporteur will have decided the
value of the action and the value of the proceedings for the purpose of fixing the ceilings for
recoverable costs. 83 In some instances, for example, in relation to a permanent injunction,
the Court could turn to these values to assist it with its assessment of the security to be
ordered. However, the figures are unlikely to be of any great assistance since the guidelines
for the determination of Court fees and the ceiling of recoverable costs of the successful party
take a royalty calculation as the basis for the calculation of the value of an injunction and the
damage suffered by the defendant if an injunction is enforced is not likely to be equivalent to
the royalties that the patent proprietor could charge, even though the royalty is calculated on
the basis of the defendant’s past turnover in the alleged infringing product and estimated
turnover up to expiry of the patent. Furthermore, in some instances, the figures will be too high
because the security is required to compensate the defendant only up until the order is lifted.
There will be other instances where the figure is too low, for example, where the injunction
prevents the launch of a new product and where unquantifiable losses have not been taken
into consideration.
19-57 In the absence of any rules regarding computation and procedure, it would appear that the
Court has the discretion to consider evidence put in at the point when it is considering the
terms of the order. The first case on this issue will provide much needed guidance.
Mechanics in Providing Security
19-58 R.352(1) RoP suggests two specific methods by which the party seeking to enforce the
order may comply with the requirement to provide security. It can either provide:
– A deposit of funds; or
– A bank guarantee.
78
79
80
81
82
83
art.69(4) UPCA.
r.352(1) RoP.
r.196(6) RoP.
r.13(1)(p) RoP.
r.24(i) RoP.
rr.104(i) and (j) RoP. See chapter 20 (Court Fees and Recoverable Costs) paragraphs 20-75 to 20-90 for details of the
calculations of these values.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 383
