Barco v Yealink (UPC_CFI_582/2024)
Decision date:
21 March 2025
Osborne Clarke summary
- Barco brought an application for provisional measures, alleging Yealink had infringed its patent for a method and system for meeting room technology. The Brussels LD refused the application for a preliminary injunction, finding that Barco did not act with the required urgency.
- The timeline of events that led to the proceedings were important to the court's decision. Barco sent Yealink a warning letter in May 2023. Barco then filed proceedings in the USA relating to the same products, but different patents in November 2023. The EPO communication to grant the patent in suit (EP 827) came on 6 May 2024 and unitary effect was registered on 23 August 2024.
- Barco made a test purchase in August 2024, and received results of its infringement analysis on 17 September 2024. The application for provisional measures was then filed on 2 October 2024. Yealink lodged a preliminary objection to the Brussels LD's competence on 17 December 2024. Barco argued that Yealink had filed its preliminary objection too late and therefore the international jurisdiction and territorial competence of the Brussels LD should be considered accepted.
- First, the court decided that Yealink's preliminary objection was admissible but ultimately unsuccessful. The objection was admissible because the Rule 19.1(b) RoP time limit to file an objection to the application (including any preliminary objections) does not apply to applications for provisional measures, but only relates to proceedings on the merits. The Brussels LD noted that this is because preliminary injunction proceedings are on an accelerated timeline and there is not a requirement to distinguish between preliminary objections and other objections regarding the merits of the case.
- Yealink objected to the territorial competence of the Brussels LD, arguing that Barco had not “sufficiently explained why the actual or threatened infringement has occurred or is likely to occur specifically in Belgium (…) and not in another Contracting State”. The court decided that the special jurisdiction rules set out in the recast Brussels Regulation (Article 7(2) (the place where the harmful event has occurred or may occur, which acts as a "derogation" from the general rule of jurisdiction of the place of the defendant's domicile) are applied differently compared to the interpretation of Article 33(1)(a) and 33(1)(b) UPCA (which deal with the competence of the division of the UPC's Court of First Instance).
- Article 33(1) UPCA makes forum shopping possible in a way that the recast Brussels Regulation does not. This means that the UPCA allows for the parallel competence of multiple LDs. As such, Yealink's argument that Barco did not provide any argument as to why another LD would not have competence could be disregarded.
- On that basis. the Brussels LD found that it was competent to hear the case pursuant to Article 33(1)(a) because Barco had sufficiently proved that Yealink actively promoted and offered its devices in Belgium, and thus "the actual or threatened infringement had occurred or may occur" in Belgium.
- In considering the conditions that must be met for the grant of a preliminary injunction, the court explained that the conditions are cumulative. The court decided that Barco did not act with the required urgency and therefore it was not necessary to consider the other conditions for grant of a preliminary injunction (including validity and infringement).
- Barco had not explained the date on which it became aware of the alleged infringement, so the court relied on the objective timeline. The Brussels LD took the mention of the grant of EP 827 as the starting point for the urgency requirement because Barco could have filed a UPC infringement action after that date. The court also referenced a statement in the US litigation that "the infringing products have been on the market for a long time”. Therefore, it decided that Barco taking 2 and a half months before filing the preliminary injunction application did not fulfil the urgency requirement.
Issue
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