Key takeaways
Deliberate copying combined with continued infringement despite a provisional injunction establishes the infringer’s knowledge, triggering the stricter damages standard of Art. 68 (1) UPCA
Where a defendant knowingly, or with reasonable grounds to know, engages in infringing activity, the Court must order damages appropriate to the harm actually suffered (Art. 68 (1) UPCA), rather than merely allowing recovery of profits or compensation under Art. 68 (4) UPCA.
Continued infringement in defiance of a prior provisional injunction makes the defendant’s awareness of the infringement all the more apparent to the Court.
The subjective element (awareness of infringement) is also taken into account when granting an interim award for damages under R. 119 RoP
The Court makes an initial assessment of the damages and held that in case the defendant was aware of the infringement, they shall be ordered to pay the damages appropriate to the harm actually suffered due to the infringement; otherwise, if they were not aware of the infringement, only recovery of profits or payment of compensation may be ordere.
The UPC operates its own autonomous and uniform service system; alternative service under R. 275.2 RoP may be ordered where formal attempts under the Hague Service Convention are repeatedly and definitively refused on purely formalistic grounds
National service laws of Contracting Member States do not take primacy over the UPC’s own rules (R. 273, R. 274.1 RoP, CoA_69/2024, 27 September 2024).
Where a receiving foreign authority’s refusal of service is serious and final, and based on a purely formal defect not affecting the substance of the document, no further service attempt is required before the Court declares the steps already taken to constitute valid service.
A decision by default under R. 355 RoP requires cumulative satisfaction of three conditions: (i) proper service of the statement of claim, (ii) the defendant’s failure to comply with a procedural time limit, and (iii) the adequacy of the facts alleged by the claimant to justify the relief sought, without obstacles arising from the defendant’s own conduct in the proceedings
The defendant’s default does not trigger an automatic granting of the claim. R. 171.2 RoP on non-contestation of facts does not apply to an absent party, since the burden of specific contestation rests solely with the party actively exercising its right of defence. R. 355.2 RoP, read together with Art. 54 UPCA, excludes automatic acceptance of the claimant’s allegations, so that the facts underlying the claim must still be proven to a sufficient standard even in default proceedings.
Unlike certain national procedural systems, a defendant’s failure to appear or defend does not by itself result in the claim being upheld. The claimant must still satisfy the Court that the facts alleged justify the relief sought.
A permanent, UPC-wide injunction is justified where infringement is pervasive (online sales plus trade fair presence) and continues despite a prior provisional injunction, pursuant to Art. 25 and 63 UPCA in combination with Art. 64 (2) (a) UPCA
Continued marketing of infringing products on an English-language website targeting Contracting Member States, after a provisional injunction had already been served, exposed the patent holder to an objective and irreversible risk of market share erosion, justifying the injunction.
A daily penalty for non-compliance under Art. 63 (4) UPCA and R. 354.3 RoP can be imposed cumulatively for delayed compliance with multiple distinct obligations, such as a publication order and an order to provide information
The Court imposed both a per-infringing-product penalty (capped at a maximum amount) for breaches of the injunction, and a separate daily penalty applicable to delays in complying with both the website publication obligation and the disclosure-of-information obligation.
Division
UPC Court of First Instance, Milan Local Division
UPC number
UPC_CFI_766/2024
Type of proceedings
Main proceedings on the merits – Decision by default (following prior proceedings for provisional measures, case no. 643/2024)
Parties
Claimant: CARDO Systems Ltd.
Defendants: Shenzhen Asmax Infinite Technology Co. Ltd.; Hong Kong Yiheng International Technology Co. Limited
Patent(s)
EP 4 240 194
Body of legislation / Rules
Art. 37 UPCS
R. 355 RoP, R. 277 RoP, R. 171.2 RoP, Art. 54 UPCA
R. 273 RoP, R. 274.1 RoP, R. 275.2 RoP, R. 276.1 RoP, Art. 41 UPCA
Art. 60(5) UPCA, Art. 62 UPCA, R. 206.3 RoP
Art. 25 UPCA, Art. 63 UPCA, Art. 64(2)(a), (3), (4) UPCA, Art. 68(2)(b) UPCA
Art. 80 UPCA
Art. 63(4) UPCA, R. 354.3 RoP
Art. 68(1), (4) UPCA, R. 119 RoP, R. 125 RoP
Art. 69(1) UPCA, R. 150(2) RoP, R. 152.2 RoP
Art. 67 UPCA, R. 191 RoP
R. 118.8 RoP
Art. 82(1) UPCA, R. 355.4 RoP
Art. 73 UPCA, R. 220.1(a) RoP, R. 224.1(a) RoP
