NJOY v Juul (UPC_CoA_433-438/2023)
Decision date:
03 April 2024
Osborne Clarke summary
- NJOY Netherlands brought five revocation actions at the Paris CD. All versions of the statements of revocation listed the defendant as "Juul Labs, Inc.”. The proprietor of the patents at issue is Juul Labs International, Inc.
- A preliminary objection was raised on the basis that the revocation actions were brought against Juul Labs, Inc., which is not the proprietor of the patents at issue. It was further argued that, as a consequence, the Paris CD would not be the competent division in the case at hand since an action against an entity other than the patent proprietor is not an action that fulfils all the requirements set out in Article 33(4) UPCA (competence of the divisions of the Court of First Instance).
- By orders of the judge-rapporteur in all five revocation actions, the Court of First Instance rejected the preliminary objection and ordered the Registry to rectify the name of the defendant to read “Juul Labs International, Inc.”
- Juul Labs International, Inc appealed the decision, requesting that the Court of Appeal declare the revocation actions inadmissible. This was rejected by the Court of Appeal. The Court of Appeal found that despite the incorrect statement of name, it must have been clear to Juul Labs International, Inc that the statements for revocation were directed against it. Moreover, Juul Labs International, Inc was not unreasonably prejudiced by the incorrect statement of name and by the rectification ordered by the Paris CD.
- The Court of Appeal also ruled that it would not issue an order for costs at this stage because its decision was not final and did not conclude the action. The final decision on who would bear the costs of the legal proceedings would be made later, considering the outcome of the appeal. This meant that the determination of costs was deferred until the case was fully resolved, ensuring that the party who was less successful in the overall proceedings would bear the appropriate costs.
Issue
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