Hurom v Warmcook & NUC Electronics Europe (UPC_CFI_159/2024)
Decision date:
11 March 2025
Osborne Clarke summary
- This case was related to other cases in the Mannheim LD concerning the same parties and different designations of the same patent. These cases dealt with the alleged infringement of Hurom's patent relating to a juice extractor by the defendants' sale of the AUTO10 juicer. There was no revocation counterclaim.
- This decision dealt with alleged infringement in UPCA contracting member states. The first related case concerned possible infringement in Turkey. The second related case concerned alleged infringement in EU, non-UPCA contracting member states and non-EU member states and was separated pending the CJEU's decision in BSH v Electrolux.
- The defendants disputed the internal competence of the Mannheim LD to hear the case against the second defendant, which was domiciled in France. This was rejected by the court as both defendants had their principal place of business in UPCA contracting member states (Germany and France).
- The defendants also sought to argue that the UPC had any jurisdiction over infringing acts occurring before the entry into force of the UPCA. Contrary to this, the Mannheim LD held that the court does have jurisdiction on the basis that Article 3(c) UPCA establishes jurisdiction for any European Patent that had not elapsed at the date of entry into force of the UPCA.
- For acts committed after entry into force of the UPCA, the substantive law was as laid down in the UPCA. For acts committed before entry into force of the UPCA, substantive national laws applied. To ongoing acts started before the entry into force of the UPCA and continued after entry, the substantive law was also the UPCA.
- To assess whether an act is "ongoing", an overly formalistic approach must not be applied and a natural perspective must be adopted. The court held that "such acts can be referred to as separable acts, but which looks at the scenario from a normative and therefore evaluative perspective."
- The defendants were both held to have infringed the patent. Contrary to Hurom's arguments, infringement acts committed in France and Germany did not extend the remedies sought to other UPCA contracting member states. Article 34 UPCA does not extend the territorial scope of the remedies to other relevant UPCA member states once infringement is established for one member state only; rather, it relates to the scope of the effect of the decisions.
- The court granted an injunction preventing the infringing juicer from being placed on the market in Germany, France, Denmark, Italy and the Netherlands (the latter three countries where there had been previous infringement and there was a risk it could happen again). The defendants were also ordered to pay damages, to give information about infringing acts including distribution channels, to destroy and recall any infringing products (from commercial customers), and to remove the products from any channels of commerce.
Issue
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