Below, Prof. Willem Hoyng provides his unfiltered views on the decisions that were published on the website of the Unified Patent Court (“UPC”) last week. His comments offer a unique insight into the UPC’s case law, as he chairs the Advisory Board of the UPC and participated in drafting the Rules of Procedure of the UPC.
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14 August 2025
Local Division Hamburg, Dyson v Dreame International
Cross-border jurisdiction
Facts
This was a preliminary injunction case. The defendants were:
- Defendant 1: Dreame HongKong, operator of the relevant country-specific websites, including Spain.
- Defendant 2: Teqphone GmbH, distributor for Defendant 1 in Germany.
- Defendant 3: Eurep GmbH, the European Union (“EU”) representative of Defendant 1 for a non-EU manufacturer.
- Defendant 4: Dreame Sweden, which operates a country-specific website and has a physical store.
The claimant requested a preliminary injunction for all UPC countries and Spain against all defendants.
The Court
- The Court held that it has international jurisdiction against Defendants 2 and 3, who are established in Germany, pursuant to Article 4(1) of the Brussels Ibis Regulation (“BR”) . This jurisdiction extends to the territories of the contracting member states.
- Under Article 7(2) in conjunction with Article 71(b)(1) BR, the Court has international jurisdiction against a defendant (whether EU or non-EU) that infringes in at least one member state of the UPC. This provides jurisdiction against Defendant 1.
- Jurisdiction against Defendant 4 follows from Article 8(1) BR.
- With respect to Defendants 1 and 3, jurisdiction also exists for Spain, as both allegedly infringe in Spain. This is consistent with the decision of the European Court of Justice (“CJEU”) in BSH v Electrolux.
- With respect to Defendant 2, there is not even a plausible allegation of infringement in Spain, so there is no jurisdiction for Spain. The Court referred to the CJEU in Primus v Roche.
- The Court granted the injunction for the whole Unified Patent Court (“UPC”) territory against Defendants 1, 2 and 4, and against Defendant 3 insofar as it provides services contributing to infringement. With respect to Defendants 1 and 3, the injunction also covers Spain.
Comment
- The result of the decision appears correct.
- It raises the question whether the EU representative (which every non-EU manufacturer must appoint) can be considered an (indirect) infringer and whether the UPC is competent to deal with indirect infringement outside Article 26 UPC Agreement (“UPCA”) (unlawful acts).
- As to the Court’s reasoning, it seems clear that for the purposes of applying the Brussels Ibis Regulation, the Court considers each division of the Court of First Instance as a separate court, since it refers to “international jurisdiction” when addressing the jurisdiction for the other member states of the UPC and cites Article 8(1) BR with respect to the Swedish defendant. If the Court of First Instance were considered a single court, it would naturally have jurisdiction over the whole UPC (just as a national court has jurisdiction over its entire country).
I agree that the latter may lead to the somewhat odd consequence that, also for the Swedish defendant, the Court is considered the Article 4(1) BR court (i.e. its “home court”), even when the case is handled by the Hamburg Local Division. Internal “national” (that is, UPC) competence rules then determine that a Swedish defendant should be sued in the Nordic-Baltic Regional Division, or as a co-defendant under Article 33(1)(b) UPCA in another division. Nevertheless, the Court, including the Hamburg Division, would have international jurisdiction under Article 4(1) BR, provided it is competent for the Swedish defendant on the basis of the internal UPC rules. This would mean the Court, also with respect to the Swedish defendant, has jurisdiction for Spain on the basis of Art. 4(1) BR.
Apparently, the Hamburg Division finds this outcome unsatisfactory, as Article 4(1) BR is based on the principle that the natural forum for a defendant is its place of establishment, close to the Court, familiar with customs, language, and judges. For a Swedish defendant, this logic does not fully apply as regards language (The Regional Nordic-Baltic Division deals in English but almost all Swedes speak English), but it does apply in terms of hearings in Stockholm and having a Swedish judge. It is indeed unusual that all divisions must be treated as home courts. The Hamburg Division seems to read Article 71a BR as meaning that the UPC is to be considered a court of each participating member state when exercising jurisdiction under the Brussels Regulation. - If the Hamburg Division sees itself as a separate court limited to German territory, then arguably Article 7(2) BR should give it jurisdiction only for Germany. This, however, is essentially what the Division has done. It uses the term “international jurisdiction” to mean that any defendant (including non-EU defendants) can be sued in Germany via Article 71(b)(2) BR. The fact that the Local Division can decide also for other UPC countries derives from Article 34 UPCA and apparently, not from Article 7(2) BR. As the Local Division itself noted, Article 34 UPCA has nothing to do with international jurisdiction. In my opinion, one must first establish jurisdiction for the whole UPC before applying Article 34 UPCA, which the Hamburg Division denies for Article 7(2) BR. This interpretation by the Hamburg Division only makes sense if the Hamburg Division is treated as a German national court. The advantage of this reading of Article 71a BR is that Article 4(1) BR remains applied properly: the defendant is sued in its home court, while a single act of infringement in one country does not automatically lead to an injunction for the whole UPC unless Article 4(1) or Article 8(1) BR apply (similar to the Community Trademark and Design regimes).
- Ultimately, it will be for the Court of Justice of the European Union to decide whether the Hamburg Division’s interpretation – i.e. that each Local Division is a separate national court for the purposes of the Brussels Regulation – is correct. Can the “home” court of a Bulgarian company also be the Local Division in The Hague? Hamburg thinks not. What will the Court of Justice decide?
- The judgment also fails to set a (reasonable) penalty for each attachment by which the order is violated. This leaves unclear what will happen in case of non-compliance, creating unnecessary disputes if the claimant later seeks enforcement of penalties. Compare this with the approach of the Local Division of The Hague, which provides more certainty.
18 August 2025
Local Division The Hague, Genevant v Moderna
UPC_CFI_191/2025; UPC_CFI_192/2025
Preliminary injunction
Facts
Genevant filed two separate infringement proceedings on 3 March 2025 against fifteen Moderna defendants. In both cases, the various Moderna companies (based in the United States (“US”) (twice), Belgium, Denmark, Sweden, Switzerland, Portugal, Norway, Poland, Netherlands, United Kingdom (“UK”), Italy, Spain, France, Germany) raised several objections regarding the jurisdiction of the Division.
The Judge-Rapporteur
The Judge-Rapporteur issued the following order:
- the decision concerning long-arm jurisdiction (i.e. the possibility to deal with infringements outside the UPC with respect to Moderna US, Switzerland, Spain, Norway, UK and Poland) will be dealt with in the main proceedings;
- all other preliminary objections are dismissed.
Moderna filed a request for review under R. 333 RoP.
The Court
- The Court agreed with the claimant that a R. 333 RoP application should be reasoned and “shall set out the grounds for review and the evidence, if any, in support of the grounds”.
- On this basis the Court concluded that the request for review does not pertain to:
a. the validity of the opt-out in case 191/2025;
b. the referral of the decision on long-arm jurisdiction to the main action;
c. international jurisdiction other than Moderna Spain and Moderna Norway;
d. the internal competence of the Local Division The Hague of the Unified Patent Court. - For these issues, the preliminary objection order is confirmed.
- The preliminary objection order accepted jurisdiction with respect to Moderna Spain on the basis of Articles 7(2) and 8(1) Brussels Regulation (“BR”) and with respect to Moderna Norway on the basis of the same provisions of the Lugano Convention (“LC”).
- The Court confirmed the preliminary objection order. The UPC is equivalent to a court of a Contracting Member State. Article 7(2) BR applies if the harmful event may occur in that Contracting Member State. Article 8(1) BR applies if a person domiciled in the European Union (“EU”) is sued together with a defendant in the court where that defendant is domiciled and there is a risk of irreconcilable judgments. These provisions therefore apply directly to Moderna Spain. As the Lugano Convention should be interpreted in the same way, these provisions also apply to Moderna Norway.
- With respect to the argument that Article 7(2) BR was not applicable because Moderna Spain and Moderna Norway did not threaten to infringe in the UPC, the Court did not make a determination but moved immediately to Article 8(1) BR (Article 6(1) LC). It held that it is sufficient when Moderna Spain and Moderna Norway infringe in their own countries together with Moderna Netherlands, or alternatively that these entities threaten to infringe the same Unitary Patent or the national designation of a European patent with the same product.
- The claimant sufficiently demonstrated that Moderna Netherlands’ activities also concern Spain and Norway. It is not a requirement of Article 8(1) BR that both companies infringe a patent in the UPC.