CoA Luxembourg, September 25, 2024, order on provisional measures, UPC_CoA_182/2024

This decision relates to an appeal regarding a decision on provisional measures and, in particular, answers the question whether submissions from the main proceedings (and related counterclaim for revocation) are to be considered during the appeal stage of provisional measures. The first instance had issued a preliminary injunction in ex parte proceedings regarding infringing avalanche rescue devices in Germany and Austria. The defendant then filed a request for review under R.212.3 Sentence 1 RoP. The LD Düsseldorf rejected the request for review.

The subject matter of the appeal proceedings is determined in accordance with R. 222 RoP. According to R. 222.1 RoP
the requests, facts and evidence and legal arguments submitted by the parties in accordance with Rules 221, 225, 226, 236 and 238 constitute the subject matter of the proceedings before the Court of Appeal proceedings on provisional measures. The Court of Appeal shall consult the file of the proceedings before the Court of First Instance. Thereafter the subject matter of the proceedings is limited to the submissions made in the proceedings concerning the preliminary injunction. This does not include the submissions that have been made in the meantime in parallel main proceedings. Insofar, infringement proceedings and proceedings for the issuance of an order for interim measures are different proceedings (see UPC Court of Appeal, order of 26 April 2024, UPC_CoA_500/2023, APL_596892/2023 para. 8).

The court is not obliged to search for the grounds on which the appeal might possible be based in the exhibits.

The Local Division had rejected the submission on the EP’679 citation as being late because it had only been introduced into the proceedings one day before the oral hearing before the LD.

The Court of Appeal found that it is irrelevant whether the LD was right in rejecting the late filed submission. The Court of Appeal has a discretion to allow the submission into the appeal proceedings.

The Court of Appeal exercised its discretion to admit the submission in the appeal proceedings for the following reasons:

• The proceedings are not delayed by the consideration of the submissions on the late-filed document (EP’679).
• The Court of Appeal is in a position to reach a decision on the merits even if the late-filed document is considered.
• The parties are not deprived of a factual instance, as the LD Düsseldorf dealt with the prior reference briefly (finding obiter dictum that it is not novelty destroying).
• The principle of adversarial proceedings is not violated since the plaintiff had sufficient opportunity to respond and has made use of that opportunity.

The defendant had submitted a further brief after the oral proceedings in first instance proceedings. The Court of Appeal found that the first instance was correct not to consider this submission. This brief is also not to be admitted into appeal proceedings since it is not relevant (R. 222.2 (b) RoP).

The Court of Appeal also addressed the issue of what constitutes an “unreasonable delay in seeking provisional measures” within the meaning of R. 211.4 RoP and found:

The beginning of the period relevant for the assessment of an “unreasonable delay” within the meaning of R.211.4 RoP begins on the day on which the applicant/plaintiff has or should have had knowledge of the infringement that would enable him to file an application for provisional measures in accordance with R.206.2 RoP. The relevant point in time is therefore the time at which the applicant has the necessary facts and evidence within the meaning of R.206.2d RoP or should have had such knowledge had he applied due diligence.

The actual length of an “unreasonably long delay” within the meaning of R.211.4 RoP depends on the circumstances of the individual case. In this case, the Court of Appeal found no unreasonable delay (first trade fair 8-13 October 2023, in November 2023 information that product could be ordered, second trade fair on 28 to 30 November 2023, cease-and-desist letter on 28 November 2023, application for provisional measures filed on 1 December 2023).

The Court of Appeal found that irreparable harm is not a necessary condition for the provisional measures. Art. 62 (2) UPCA and R. 211.3 RoP only refer to 2possible harm”, which must be taken into account when balancing interests.

Even R.212.1 RoP, which permits an ex parte order (as in this case) does not necessarily require irreparable harm. Accordingly, the court may order interim measures without prior hearing of the defendant ‘in particular’ if a delay is likely to cause irreparable harm to the applicant.