A guide to the UPC and the UP - Flipbook - Page 394
19-59 This requirement is significant and could present a serious obstacle to an applicant if the
damage the defendant is likely to suffer is assessed as being considerable. However, r.352(1)
RoP also envisages that the enforcing party may render a security in other, unspecified ways
which may be further explained in time through case law. The possibility of alternative methods
is also reflected in art.82(2) UPCA which refers to “security or an equivalent assurance”.
19-60 R.352(1) RoP states that the security is given “by a party to the other party”. This would suggest
that the security can be deposited with the party against whom the order is to be enforced.
However, in practice, this would be very unlikely. Either the deposit would be made to a third
party or, if agreed, it could be paid into an account held jointly by the parties. Security payments
cannot be deposited at the Court.
19-61 The order which is subject to security will not be enforceable until the security is provided in the
form stated in the order. 84 Therefore, if the enforcing party is unable to provide the security for
any reason, the order will not be enforced.
19-62 The security may be released upon application of a party to the Court. 85 The decision of the
Court to order security can be appealed under r.220(2) RoP. 86
Conclusion
19-63 The practice in Contracting Member States differs as to when security is ordered.
For example, provisional injunctions may quite commonly be subject to security in France.
However, in Germany, although the court has the discretion to order security before a
provisional injunction is enforced, it is largely the exception rather than the rule. In contrast,
an injunction granted by the first instance court in Germany following a decision on the merits
is only provisionally enforceable and is subject to the claimant providing security to cover
damages incurred by the defendant. 87 No such security is ordered in France following
a decision on the merits.
19-64 The provisions in the UPCA and RoP do not take any one of these as a template. Rather,
the UPCA and RoP provide that security may be applied to a wide range of orders but do not
specify what the Court will consider when ordering security or how it is to be calculated. It will
therefore be interesting to see how the practice develops.
Subsequent Lifting of the Decision or Order
19-65 Where, during the course of an action, a decision or order of the Court is enforced by a party
but is subsequently varied or revoked, the party against whom the decision or order has been
enforced may apply for appropriate compensation for any injury caused by the enforcement
from the other party. 88 The rule is drafted in a general fashion but is intended to cover all
circumstances, for example, where a defendant initially loses an infringement case and is
injuncted from selling infringing products, only then to succeed on appeal and for the injunction
to be lifted. It also covers a decision of a local or regional division in an infringement action
where a revocation action is pending between the same parties before the central division,
or an opposition is pending before the EPO and the decision is rendered under a condition
subsequent relating to the outcome of the validity proceedings. 89 Compensation will also be
payable where saisies 90 or provisional measures 91 have been ordered and later revoked.
84
85
86
87
88
89
90
91
r.352(1) RoP.
r.352(2) RoP.
See chapter 21 (Procedure before the Court of Appeal) paragraphs 21-33 to 21-36 and figure 21-1.
s.709 German Code of Civil Procedure.
r.354(2) RoP.
r.118(2)(a) RoP.
art.60(9) UPCA and r.198(2) RoP.
art.62(5) UPCA and r.213(2) RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 384
