Mala v Nokia (UPC_CoA_227/2024)
Decision date:
17 September 2024
Osborne Clarke summary
- Mala is the proprietor of a European Patent that only had effect in Germany. Nokia previously filed a revocation action against Mala in the German Federal Patent Court, which was dismissed and the patent was held to be valid. A day after receiving the German court's decision, Nokia filed a revocation action in the Paris CD and later also appealed the German national decision. Mala lodged a preliminary objection in the UPC revocation action, primarily requesting that the court decline jurisdiction for the revocation action and dismiss it as inadmissible or, alternatively, stay the proceedings until the final decision of the German court.
- The Paris CD rejected Mala's preliminary objection, finding that the scope and manner in which Articles 29 to 32 of the recast Brussels Regulation are determined by Articles 71a to 71d of the recast Brussels Regulation. It decided that on a literal application of Article 71c(2), Articles 29 to 32 do not apply because the German proceedings were brought before the beginning of the transitional period of the UPCA (Article 83).
- Mala appealed and the Court of Appeal set aside the first instance decision, granting Mala's request to stay the proceedings but still rejecting its main request to decline jurisdiction.
- The Court of Appeal decided that Article 71(c)(2) of the recast Brussels Regulation must be interpreted as meaning the lis pendens rules in Articles 29 to 32 apply where proceedings are pending before the UPC and a national court, even if the national proceedings were started before the transitional period began.
- The Court of Appeal held that Article 29 and Article 31 did not apply in this case as, following settled CJEU case law, the requirements of those provisions were not met, as the German and UPC cases involve different Nokia entities whose interests are not indissociable. However, Article 30 did apply, meaning it was at the discretion of the court to stay the UPC proceedings because there was a related action pending in a national court. The court considered that the parties in both actions were closely related, that the causes of action were almost identical and that the German proceedings were at an advanced stage.
Issue
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