A guide to the UPC and the UP - Flipbook - Page 97
Infringement and Infringement-related actions
6-43
In relation to actions for:
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Infringement;
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Provisional and protective measures;
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Damages or compensation derived from the publication of a patent application; and
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Actions relating to the use of the invention prior to the grant of the patent,
a claimant can choose to bring the action either in the division 59 where the actual or threatened
infringing act has or may occur 60 or where the defendant has their residence or principal place
of business or, in the absence of either, place of business. 61 If the defendant is not resident in a
Contracting Member State, nor does it have a place of business in a Contracting Member State,
the claimant can commence proceedings in the division where the infringement has or may
occur or before the central division. 62
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Basing the division’s competence on the act of infringement does not have the effect of limiting
the remedies to the Contracting Member State in which that division is located. This is because
the divisions are all divisions of the one Court and are not separate courts as in the schemes
in the CPC, 63 the EU Trade Mark Regulation 64 and the Community Design Regulation. 65
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The UPCA uses the terms “residence”, “principal place of business” and “place of business”
and not “domicile” which is the term used in the Brussels I Regulation (recast). 66 The difference
is driven in part by the fact that the Court has jurisdiction over EU and non-EU defendants and,
in relation to the latter, a competent division must be found. Therefore, in the absence of
a principal place of business in one of the Contracting Member States, a place of business
is sufficient. A “place of business” is a somewhat vague term and may be understood to
include a branch or a place from which trade is carried out and is not limited to a location
in which products are sold or made available on the market. 67
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These rules on where a claimant may bring an infringement action can, depending on
the facts, give a very wide choice as to where the action can be brought. The claimant will
therefore have to consider whether there is any advantage in bringing such action in one
division over the other. 68
56
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59
60
61
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63
64
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68
This is dealt with in chapter 12 (Written Procedure).
art.33(9) UPCA.
art.33(7) UPCA.
The division will be (1) the local division hosted by the Contracting Member State where the actual or threatened
infringement has occurred or may occur; or (2) the regional division in which that Contracting member State participates;
or (3) the central division if the Contracting Member State does not host a local division or does not participate in a regional
division (arts 33(1)(a) and 33(1) para.4 UPCA).
art.33(1)(a) UPCA.
art.33(1)(b) UPCA.
art.33(1) para.3 UPCA.
art.41 Protocol on the settlement of litigation concerning the infringement and validity
of Community patents (OJ No. L 401, 30.12.89, p.34).
art.94(2) Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending
Council Regulation (EC) No. 207/2009 on the Community trade mark (OJ No. L 341, 24.12.2015, p.21).
art.83(2) Council Regulation (EC) No. 6/2002 of 12 December 2001 on Community designs (OJ No. L 3, 5.1.2002, p.1).
arts 63(1) and (2) Brussels I Regulation (recast) define “domicile”, in relation to a company, as meaning where it has (a)
its statutory seat or registered office; (b) central administration; or (c) principal place of business.
See also the discussion in chapter 7 (Applicable Law), paragraphs 7-27 to 7-32. The term “place of business” is known from the
EU Trade Mark Regulation (Regulation (EU) 2015/2424, OJ No. L 341, 24.12.2015, p.21) and from the Community Design Right
Regulation (Council Regulation (EC) No. 6/2002, OJ No. L 3, 5.1.2002, p.1.) and has not caused undue problems as regards the
operation of those Regulations.
See paragraphs 6-76 to 6-79.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 87
