In an infringement action initiated by IMC Créations based on EP 4 153 830, the Local Division in Paris issued a procedural order addressing a preliminary objection concerning jurisdiction. The patent proprietor had sued both Mul-T-Lock France and its Swiss branch, alleging infringement in several jurisdictions, including those not participating in the UPCA – namely Spain, Switzerland and the United Kingdom. The defendants contested the Unified Patent Court’s jurisdiction with respect to these non-unitary designations of the patent.
The defendants invoked the territorial limitations of the UPC system and requested the Court to decline jurisdiction for any part of the patent outside of the UPC territory. The claimant, in turn, clarified the territorial scope of its action and relied on the Lugano Convention as well as recent CJEU jurisprudence.
The Local Division of Paris, deciding as full panel, rejected the preliminary objection. It held that, although the contested parts of the patent (CH, ES, UK) are not subject to unitary effect under the UPCA, the UPC has international jurisdiction to adjudicate infringement actions concerning them, based on Article 31 UPCA, read in conjunction with the Brussels I bis Regulation and the Lugano Convention.
The Court made extensive reference to the recent CJEU ruling of 25 February 2025 in case C-339/22 (BSH/Electrolux), interpreting Article 24(4) Brussels I bis. According to that decision, a court in the Member State where the defendant is domiciled remains competent to hear an infringement action even if the defendant contests the validity of the patent. The exclusive jurisdiction over validity remains with the courts of the State of registration, but this does not deprive the infringement court of competence.
Importantly, the Court found this reasoning to be applicable not only to the Spanish and UK parts of the patent but also to the Swiss designation. Although Switzerland is not an EU Member State, it is bound by the Lugano Convention, which mirrors the relevant provisions of Brussels I bis. Accordingly, the Court affirmed its jurisdiction over the Swiss part as well.
Interestingly, the Court did not address Article 34 UPCA, which provides that decisions of the Court shall cover the territory of all Contracting Member States for which the European patent has effect. In this regard, though, the Dusseldorf Division had already concluded in a recent decision that Art. 34 UPCA did not change anything.
The Paris Division emphasised that the UPC, as a common court for several Member States, must apply Union law in accordance with CJEU case law. It dismissed the defendants’ argument that the Court should disregard or limit the applicability of the BSH decision to preserve legal certainty or state sovereignty.
Finally, the Court rejected the request to defer the objection to the main proceedings under R.20.2 RoP and set a deadline for the defendants’ statement of defence. The cost issue was reserved for the decision on the merits.
