1. Key takeaways
No action for revocation despite objection of nullity
If the allegation is made in the proceedings that the patent is invalid, the statement of defence must contain a counterclaim for revocation of the patent against the proprietor of the patent (R. 25 RoP, R. 42 RoP). Without such counterclaim, the invalidity defence (here: exceeding the origi
Removal from distribution channel
A permanent removal from the distribution channels and recall are separate, distinct measures. The permanent removal accompanies the recall, whereby removal can only be considered if the infringer has the actual and legal means to do so. This must be considered when determining concrete and sufficiently specified measures for a removal.
nal disclosure) is not to be addressed.
Permission to publish the decision
Art. 80 UPCA leaves it to the discretion of the court whether or not to authorise the publication of a decision. For such an order to be issued, the plaintiff's interest in publication must outweigh the possible (adverse) consequences of such publication for the defendant. As a rule, such publication can only be considered if the protection of the plaintiff is not already guaranteed by other measures (see UPC_CFI_373/2023 (LK Düsseldorf), decision of 31 October 2024 – SodaStream v. Aarke; UPC_CFI_16/2024 (LK Düsseldorf), decision of 14 January 2025 – Ortovox v. Mammut). When exercising discretion, the purposes pursued by Art 80 UPCA (deterrence of future infringers and raising public awareness) must also be taken into account. However, this requires a submission as to what justifies the preventive interest in the specific case of infringement.
Intervener may has to bear costs
Although the RoP do not provide for a separate cost determination for a third-party intervention, it can be inferred from the principle of R. 315.4 RoP that the intervener is also treated as a party with regard to costs. In the event that the party supported by the intervener loses – as in the specific case – a proportionate contribution to costs can be justified if the intervention has caused additional expenses to the winning party. In any case, it must bear its own costs if it loses.
2. Division
LD Vienna
3. UPC number
UPC_CFI_33/2024
4. Type of proceedings
Infringement proceedings
5. Parties
Plaintiff: SWARCO Futurit Verkehrssignalsysteme GmbH
Defendant: STRABAG Infrastructure & Safety Solutions GmbH
Intervener: Chainzone Technology (Foshan) Co., Ltd.
6. Patent(s)
EP 2 643 717
7. Body of legislation / Rules
Rule 25 RoP, Rule 42 RoP, Article 25 lit a UPCA, Article 80 UPCA, Rule 315.4 RoP
UPC_CFI_33-2024-LD-Vienna-2025-01-15 Download
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
