The Court of Appeal has clarified the relationship between Art. 33.1(b) and the third subparagraph of Art. 33.1 UPCA in multi-defendant infringement actions. It held that the Central Division is competent where one of several defendants is domiciled outside the territory of the Contracting Member States, provided that the conditions for joining defendants under Art. 33.1(b) UPCA are met.
The decision reverses two orders of the Paris seat of the Central Division, which had referred the action to the Düsseldorf Local Division. The Court of Appeal considered that the third subparagraph of Art. 33.1 UPCA is not an exception to the competence of local and regional divisions. Rather, it provides an additional basis of internal competence: for a defendant established outside the UPC territory, the Central Division takes the place which a local or regional division would otherwise occupy under the defendant-domicile criterion.
Valeo brought an infringement action before the Paris seat of the Central Division against six Bosch entities. The action concerned alleged infringements in Germany, Belgium and France. Four defendants were established in Contracting Member States, while Bosch Serbia and Bosch China were established outside the territory of the Contracting Member States.
Valeo relied on Art. 33.1, third subparagraph UPCA. It submitted that the presence of Bosch Serbia, allegedly involved in the manufacture and importation of the contested products, made the Central Division competent. Valeo further argued that the defendants had a commercial relationship and that the action concerned the same alleged infringement.
The Central Division rejected its competence. It considered that the third subparagraph of Art. 33.1 UPCA was an extension or exception to the competence of local divisions and applied only where all defendants were established outside the territory of the Contracting Member States. Since Robert Bosch GmbH was domiciled in Germany, the Central Division referred the action to the Düsseldorf Local Division.
The Court of Appeal first distinguished international jurisdiction from the internal allocation of cases within the UPC.
For infringement actions, Art. 33.1 UPCA provides two alternative connecting factors: the place of infringement under Art. 33.1(a) UPCA and the defendant’s domicile or establishment under Art. 33.1(b) UPCA. The Court recalled that neither basis has priority over the other.
The central issue was whether the third subparagraph of Art. 33.1 UPCA creates only a narrow exception for actions exclusively directed against defendants outside the UPC territory.
The Court rejected that approach. Neither the wording nor the position of the provision justified treating the Central Division’s competence as an exception to the competence of local or regional divisions. Where a defendant is established outside the territory of the Contracting Member States, the Central Division replaces the local or regional division that would have been competent if that defendant had been established in a Contracting Member State.
The Court drew an analogy with the fourth subparagraph of Art. 33.1 UPCA. That provision confers competence on the Central Division where a defendant is domiciled in a Contracting Member State which has neither a local division nor participation in a regional division. In both situations, the Central Division serves as the relevant forum under the defendant-domicile criterion.
The Court then addressed the effect of multiple defendants. Under Art. 33.1(b) UPCA, an action may be brought against several defendants before the division of the domicile of one defendant if the defendants have a commercial relationship and the action concerns the same alleged infringement.
According to the Court, this mechanism also applies where one or more of the defendants are established outside the territory of the Contracting Member States. In that situation, the Central Division may be selected as the competent division through the defendant established outside the UPC territory, provided that the conditions of Art. 33.1(b), second sentence UPCA are fulfilled.
Thus, a defendant established outside the UPC territory can function as the relevant anchor for proceedings before the Central Division. The Art. 33.1(b) requirements of a commercial relationship and the same alleged infringement remain applicable to all defendants.
Bosch Serbia was alleged to manufacture the contested products and to import them into the UPC territory. Bosch itself accepted that a commercial relationship existed between the group companies for the purpose of supporting competence of the Düsseldorf Local Division.
The Court considered that the action concerned the same alleged infringement. The fact that individual defendants were accused in relation to different products or in different Contracting Member States did not prevent that conclusion. The allegations concerned infringement of the same patent by related Bosch products.
Further, the Court stressed that a preliminary objection under Rule 19 RoP does not require an exhaustive assessment of evidence relating to facts that are relevant both to competence and to the merits. Such an assessment could improperly prejudge the substantive dispute. The Court must instead conduct a summary examination of the parties’ allegations and evidence.
The Court therefore held that the Paris seat of the Central Division was competent for the action against all six defendants. Since the action had been filed in French and no sufficient reason for a language change had been shown, French remained the language of the proceedings.
