In two orders issued on the same day, the Court of Appeal addressed appeals against a preliminary injunction granted by the Hamburg Local Division in patent infringement proceedings concerning Dyson’s EP 3 119 235. While the Court confirmed and extended the preliminary injunction within UPC territory, it referred several questions of EU law to the Court of Justice of the European Union (CJEU) concerning the limits of the UPC’s international jurisdiction and the concept of an intermediary.
The case is of particular interest because it is the first referral by the UPC Court of Appeal to the CJEU and concerns the extent to which the UPC may exercise jurisdiction over defendants outside the European Union and over acts relating to non-UPC EU states.
Dyson sought provisional measures against several Dreame entities, including Dreame International (Hong Kong), a German distributor, a Swedish affiliate and a German company acting as authorised representative within the EU. The Hamburg Local Division granted a preliminary injunction for UPC territory against the Dreame entities and also granted relief concerning Spain against Dreame International and the authorised representative. Both sides appealed.
The Court of Appeal decided to split the case. It stayed the appeal proceedings insofar as they concerned the Spanish part of the dispute and the claims against the authorised representative, while deciding the remaining parts of the appeal concerning UPC territory.
The Court of Appeal referred the following questions:
Question 1
Must Article 8(1) in conjunction with Article 71b(2) of Regulation 1215/2012 be interpreted as meaning that a situation where, in proceedings before a common court within the meaning of Article 71a(2) of Regulation 1215/2012, a first company that is established in a third State is alleged to have committed an infringement of a national part of a European patent which is in force in an EU Member State that is not party to the instrument establishing the common court, and a second company that is established in an EU Member State that is party to the instrument establishing the common court is alleged to be an intermediary whose services are used by the first company to infringe in the EU Member State that is not party to the instrument establishing the common court, is capable of leading to “irreconcilable judgments” resulting from separate proceedings as referred to in Article 8(1) Regulation 1215/2012?
Preliminary understanding:
In simplified terms, this question asks whether the UPC may assume jurisdiction over a non-EU infringer for alleged infringement in a non-UPC state (here: Spain) because a related defendant domiciled in a UPC state is also sued, in particular where that co-defendant is merely an alleged intermediary.
Question 2
Must Article 71b(2), second sentence, of Regulation 1215/2012 be interpreted as meaning that a common court has jurisdiction in relation to an action for provisional measures against a company established in a third State that is alleged to have infringed a European patent in force in an EU Member State that is not party to the instrument establishing the common court, and in some or all EU Member States that are party to the instrument establishing the common court by offering the same products in all those EU Member States through websites that are identical apart from the language?
Preliminary understanding:
This question addresses whether the UPC may grant cross-border provisional measures against a non-EU defendant extending beyond UPC territory to a non-UPC EU state, where the same allegedly infringing products are marketed throughout Europe via essentially identical websites.
Question 3
Is the fact that the company uses the services of a company that is established in an EU Member State that is party to the instrument establishing the common court in order to infringe a relevant circumstance in answering this second question?
Preliminary understanding:
This question asks whether UPC jurisdiction over the non-EU defendant may depend on the existence of a connecting link to UPC territory, such as the use of an EU-based intermediary or service provider.
Question 4
Does Article 9(1)(a) of Directive 2004/48 or any other provision of Union law preclude case-law of a national or common court under which an interlocutory injunction aimed at preventing or prohibiting infringement of a patent by a third party by placing products on the market to which Regulation 2023/988 and 2019/1020 apply may be granted against an authorised representative that performs the tasks laid down in these Regulations on behalf of the third party?
Preliminary understanding:
This question concerns whether an EU authorised representative performing regulatory compliance functions may qualify as an intermediary against whom the UPC may grant an injunction even if it does not itself commit infringing acts.
The questions therefore concern whether the UPC may derive jurisdiction over a non-EU defendant for alleged infringement of a national part of a European patent in a non-UPC EU state from the presence of a co-defendant domiciled in a UPC Member State.
The Court discussed the possible application of Art. 8.1 in conjunction with Art. 71b.2 of Regulation 1215/2012. While CJEU case law has recognised such jurisdiction in cases involving multiple alleged infringers of the same patent, the Court considered it unclear whether the same reasoning applies where one defendant is alleged to be the primary infringer and another merely an intermediary whose services are used by that infringer.
Further, the questions concern the availability of provisional measures with potential cross-border reach beyond UPC territory. The Court considered that Art. 71b.2 of Regulation 1215/2012 may provide a jurisdictional basis comparable to Art. 35 of that Regulation, but noted that the existence of a sufficient territorial connection remains unclear in constellations involving parallel marketing activities across UPC and non-UPC EU states.
The Court further raised the question whether an authorised representative required under EU product compliance legislation may qualify as an intermediary within the meaning of Art. 62.1 UPCA and Art. 9 Enforcement Directive. While such entities may enable market access in a legal sense, the Court noted that existing CJEU case law has primarily concerned services enabling infringement in a factual sense.
In the parallel order concerning the non-stayed parts of the case, the Court of Appeal upheld the finding of infringement and extended the preliminary injunction to additional product variants introduced after the first instance decision.
The Court confirmed that claim interpretation must consider both the function of structural features and their physical and spatial configuration as disclosed in the patent. It further clarified that an injunction does not need to be limited to the specific infringing acts previously committed, as a finding of infringement generally establishes a sufficient risk of further infringing acts.
