LD Milan, April 21, 2026, Infringement action, UPC_CFI_472/2024

The question was whether UPC Milan LD had jurisdiction for co-defendants based in Spain (i.e., non-UPC territory) for infringing actions in Spain. The result was affirmative because the claims against all defendants were so closely connected that it was expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings, Art. 8(1) BR (mn. 28 et seqq. with expansive reference to CJEU case law). The LD Milan applied a four-step test to assess the risk of “irreconcilable”, meaning “contradictory” judgements pursuant to Art. 8 BR, as interpreted by the CJEU:

i) Same factual situation? (i.e. parallel patent rights infringed in an identical manner: here, the Spanish defendant was part of the same infringement chain, acting as a distributor of products manufactured by the other defendants; joint and several liability for damages);

(ii) Same legal situation? (in the case of Spain, implementation of the substantive rules set out in the Enforcement Directive);

(iii) Predictability? (did the Spanish defendants have to reasonably assume that they would be sued in the court of another Member State, such as the UPC?);

(iv) Is it abusive summoning of the Spanish defendant before the Court of another Member State?

The LD Milan declined to stay the proceedings due to the pending referrals made to the CJEU by the UPC Court of Appeal (CoA) in Dyson v. Dreame (UPC_CoA_789/2025, UPC_CoA_813/2025) on March 6, 2026, finding that both referrals were different from the case at hand regarding the interpretation of Art. 8 (1) in conjunction with Art. 71b (2) BR (mn. 20 et seqq.).

The Milan LD exercised its discretion under R. 295 RoP (CJEU in BSH v. Electrolux (C-339/22)) to stay the infringement action regarding Spanish territory until the irrevocable decision on validity of the national Spanish portion of the patent in suit. It hereby recognised the exclusive jurisdiction of the Spanish court over patent validity under Art. 24 (4) BR, even though the UPC was seized first (mn. 39 et seqq.).

The Milan LD acknowledges with regard to Art. 71c (1) BR that lis pendens and related-action rules of the BR (Arts. 29–32) apply in full to the relationship between the UPC and courts of non-contracting member states – with the UPC treated as a national court for these purposes (mn. 40).

It concluded that the pending Spanish invalidity proceedings and the UPC infringement action are closely related (Art. 30 BR), in particular same parties, same patent, and overlapping subject matter. However, albeit Art. 30 BR generally defers to the first court for related actions, the exclusive jurisdiction held by a second court takes precedence (mn. 41).

The Court exercised its discretion not to stay, noting: the Board of Appeal decision was not expected before late in the year (2026), the patent had been maintained in opposition, making it reasonable to expect the same outcome on appeal, all parties requested continuation and procedural efficiency favoured proceeding (mn. 45 et seqq.)