Home » UPC decisions » Local Division » Duesseldorf Local Division » LD Düsseldorf, 18 October 2023, order of penalty payment, UPC_CFI_177/2023

LD Düsseldorf, 18 October 2023, order of penalty payment, UPC_CFI_177/2023

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Key takeaways

If a court order is not complied with by a party, the court of first instance of the relevant court panel of the relevant chamber can decide, at the request of the other party or ex officio, on the imposition of the penalty payments provided for in the order. The decisive criterion for determining the amount of the penalty payment is the significance of the order and thus ultimately the creditor’s interest in its enforcement, which may, for example, consist of distributing the patented products. (Headline 1 of the order)

The penalty payment is intended to reliably deter the debtor from future infringements and violations and therefore primarily has a deterrent function. However, the penalty payment also represents a penalty-like sanction for the violation of the court prohibition, which is why the imposition of penalty payments also requires as an unwritten requirement a culpability of the debtor. (Headline 2 of the order)

The twofold purpose of the penalty payment requires the penalty payment to be calculated primarily with regard to the debtor and its conduct. In particular, the type, scope and duration of the infringement, the degree of culpability, the infringer’s benefit from the infringing act and the degree of threat posed by the committed and possible future infringing acts for the infringed party must be taken into account. (Headline 3 of the order)

The debtor’s past conduct is a decisive, although not necessarily the only, indication of the amount of the penalty payment to be imposed. The more frequently and intensively the debtor has violated the cease and desist order imposed on him, the more clearly he has expressed his unwillingness to comply with the injunction order. This must be taken into account when calculating the penalty payment: If the debtor has already violated the injunction order several times in the past, the pressure required to force him to comply with the injunction in the future increases. The penalty payment must therefore be correspondingly higher. If, on the other hand, the debtor has made a serious effort to comply with the injunction, this must be taken into account in its favor. (Headline 4 of the order)

The term “offer” within the meaning of Art. 25(a) UPCA is to be understood in patent law in purely economic terms. In the case of a product, it includes any act committed within the scope of the European Patent in question which, according to its objective explanatory value, makes the subject of the demand available in an externally perceptible manner for the acquisition of the power of disposal. Therefore, the exhibiting of goods at a trade fair taking place within the scope of the respective patent is an offering within the meaning of this provision. (Headline 5 of the order)

For an offering, not all features of the patent claim must be shown in the advertising and thus also on a trade fair stand if, when objectively considering the circumstances actually existing in the case in dispute, it must be assumed that the product shown corresponds to the subject matter of the patent in its technical design. It depends on whether the patent-compliant design can be reliably inferred from the existence of other objective circumstances. A key aspect in this regard is the perspective of the relevant public on the objective explanatory value of the advertising to be determined taking into account all the factual circumstances of the individual case. (Headline 6 of the order)


Local Division Düsseldorf

UPC number


Type of proceedings

Determination of penalty payments


myStromer AG, Revolt Zycling AG


EP 2 546 134 B1

Body of legislation / Rules

  • Article 25(a) UPCA
  • Article 82 (4) UPCA
  • Rule 354.4 RoP

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  • Humphrey Morhenn

    German and European Patent Attorney, UPC Representative, Counsel

  • Jan Bösing

    Attorney-at-Law (Rechtsanwalt), UPC Representative, Partner

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