Mul-T-Lock France & Anor v IMC Créations (UPC_CFI_702/2024)

• The Paris LD applied the CJEU's reasoning in BSH v Electrolux in ruling on a preliminary objection concerning its jurisdiction to determine an infringement claim relating to patents designated in countries outside of the UPC, namely: Spain (non-UPC, EU state), Switzerland (non-UPC, non-EU, Lugano state), and the UK (non-UPC, non-EU state).
• IMC Créations alleged infringements of its patent granted with unitary effect and the Spanish, Swiss and British designations by a company domiciled in a UPC member state (France) and a company domiciled in a non-UPC, non-EU member state (Switzerland). The defendants, Mul-T-Lock France and Mul-T-Lock Switzerland contested the UPC's jurisdiction to hear the action for infringement of the British, Spanish and Swiss designations and its territorial reach over the Swiss defendant.
• The Paris LD held that the CJEU decision straightforwardly applied to the Spanish and UK designations and was transposable to the Swiss designation because Switzerland is a Lugano Convention signatory (which establishes similar principles of jurisdiction as the recast Brussels Regulation).
• As such, the Paris LD held that it has jurisdiction to hear the infringement actions relating to the Spanish and Swiss designations, with the possibility of staying the proceedings if the national courts are seised in validity actions and there is a reasonable, non-negligible risk the patents will be declared invalid.
• With respect to the UK designation, the Paris LD held that it is competent to hear the infringement proceedings and make a decision on validity if raised by way of defence, provided that the validity decision only has inter partes effect.
• However, the Paris LD went further than Electrolux by deciding that it has territorial competence over a Swiss domiciled defendant "due to the domicile of one of the defendants in France". This means that, for the first time, the UPC has held that it is competent to determine the alleged infringement of non-UP patents by a defendant not domiciled in the UPC or an EU Member State. This has potentially wide-reaching consequences.
• For more information on this decision, see our Insight here.

This analysis is based on a machine translation of a decision not available in English.