[Guest Post] UPC Munich Local Division rules that advertising products under the same name creates a risk of patent infringement

The Unified Patent Court (UPC) has again faced several questions about the granting of provisional measures. In a case involving a patent for herbicide compositions, the UPC Munich Local Division was asked to consider whether the alleged infringer's marketing of a product within the Contracting Member States under the same brand name as a clearly infringing product sold outside the Member States created a risk of first (or imminent) infringement. The Munich Local Division was also asked to consider whether the patent owner had unreasonably delayed the commencement of the action. This Kat is pleased to share a guest contribution from Katfriend Federico Caruso (SIB LEX) to discuss how the Munich Local Division answered these questions.

Over to Federico: 

A Kat among the maize. Images from Pixabay.

"The Munich Local Division of the Unified Patent Court (‘the Court’) has ruled in Syngenta v. Sumi Agro (UPC_CFI_201/2024) that distributing an infringing product outside the Contracting Member States (CMS) and advertising a product under the same name within the CMS can create a risk of patent infringement. 

In its order issued on August 27, 2024, the Court granted a preliminary injunction and found that advertising a product allegedly infringing the claimant’s patents that was already marketed outside the CMS could be considered as offering for sale an infringing product and, therefore, amount to a risk of patent infringement within the CMS. Furthermore, the Court noted that the risk of infringement is not eliminated by the defendant’s claim that the product advertised in the CMS had a different composition. According to the Court, Sumi Agro should have offered a cease-and-desist declaration in such circumstances.

The Facts

Syngenta, one of the largest producers of chemical products, particularly in the agricultural sector, owns European Patent No. 2152073, which protects a chemical composition for the herbicide branded as "Elumis." The patent specification describes that Elumis provides efficient control of weeds in maize crops. The patent’s independent claim 1 covers a composition containing at least one saturated or unsaturated fatty acid in a percentage ranging from 1% to 95%.

Sumi Agro and Sumi Agro Europe (jointly referred to as "Sumi Agro"), developed an herbicide called "Kagura," which serves the same purpose as Elumis. Sumi Agro obtained several market authorisations for Kagura in 2023 and 2024. In late 2023, Syngenta discovered that Kagura was being marketed in the Czech Republic and Poland, outside the CMS. After purchasing samples of Kagura from the Czech Republic in late 2023 and conducting an analysis, Syngenta warned Sumi Agro in March 2024 about the alleged patent infringement. Despite ongoing but unfruitful negotiations, Syngenta learned that Sumi Agro had begun marketing Kagura within the CMS, including Germany, and was prominently advertising the herbicide on its German website without any indication that the recipe had changed. As a result, Syngenta performed another analysis on the Czech sample and filed a petition for a preliminary injunction with the Munich Local Division on April 30, 2024, alleging infringement of its patent rights over Elumis. 

In its defense, Sumi Agro initially argued that the Kagura herbicide marketed in the CMS did not contain any fatty acid component, then subsequently, that it had a different composition from the version sold in the Czech Republic. Specifically, Sumi Agro argued that the fatty acids in Kagura marketed in the CMS were less than the 1% threshold claimed in Syngenta’s patent. Sumi Agro also raised multiple arguments questioning the validity of Syngenta's patent and claimed that the action was delayed unreasonably, as Syngenta had been aware of Kagura's existence since late 2023.

The Court's Decision

The Munich Local Division granted Syngenta's request for a preliminary injunction, ordering Sumi Agro to cease manufacturing and distributing Kagura in the CMS. Regarding the alleged invalidity of the Elumis patent, the Court observed that in preliminary injunction proceedings, it is not possible to evaluate all invalidity arguments in detail. The evaluation must be limited to the three most relevant arguments presented from the respondents' point of view: in the instant case, none of Sumi Agro’s top three arguments convinced the Court that Syngenta’s patent was invalid. 

Risk of infringement arose where Sumi Agro's products both outside and within the CMS were marketed with the same name

The Court stated that the product sold outside the CMS under the Kagura brand name was infringing due to the presence of the fatty acid composition. They held that, although the composition of the Kagura herbicide marketed in the CMS might differ from the infringing composition sold outside the CMS, the fact that Sumi Agro was selling their product in the CMS under the same brand name (Kagura) as the infringing product outside the CMS, presented a risk of infringement in the CMS. The Court could not rule out the possibility that Sumi Agro might market a version of Kagura with the infringing fatty acid composition within the CMS in the future.

In any case, there was no evidence proving that Kagura sold in the CMS had a different composition regarding fatty acids from that sold outside the CMS. Syngenta’s analysis of the Kagura samples from the Czech Republic found that all samples contained fatty acids well above the claimed 1% threshold. The Court further noted that Sumi Agro could not easily change the composition of a product that had already received market authorisation based on a specific formula. Sumi Agro had obtained these authorisations in various European states, both inside and outside the CMS, during 2023 and 2024 using the original Kagura recipe.

Additionally, the Court emphasized that it was insufficient for Sumi Agro to merely declare that the composition was different and non-infringing. The Court indicated that a clear cease-and-desist declaration from Sumi Agro would have been necessary.

Unreasonable delay and urgency "safe harbor"

Sumi Agro argued that Syngenta would have been aware of the marketing authorisation for Kagura granted in Germany in August 2023 and marketing activity from early January 2024, but had unreasonably delayed its application for provisional measures until April 2024. In addressing the issue of unreasonable delay, the Munich Local Division observed that Syngenta’s request for a preliminary injunction was justified under Rule 206.2(c) of the UPC Rules of Procedure. The Court also found that the urgency requirement, as stipulated by Rules 209.2(b) and 211.4, was met.

The Munich Local Division acknowledged that there are varying interpretations of the urgency requirement among German Local Divisions. Some courts, like the Düsseldorf Local Division, require action within one month of becoming aware of an alleged infringement (UPC_CFI 452/2023, April 9, 2024), which appears to be consistent with the case law from the German national courts. Other Local Divisions have taken a more generous approach, allowing actions up to ten months after awareness of infringement (as discussed in a previous post). In the present case, the Munich Local Division found that, given the need to gather evidence across multiple CMS and lacking specific indication from the UPC Court of Appeal, a two-month safe harbor was appropriate. 

Conclusion

The Court concluded that the balance of interests favored Syngenta. Without a preliminary injunction, Syngenta would have suffered significant losses throughout 2025, as a full infringement action would not have stopped Kagura’s marketing in time.

The case reflects the evolving nature of UPC case law on provisional measures. While there are differences in court rulings among participating states, judges are striving to balance swift proceedings with thorough assessments, particularly in complex cases involving life sciences and chemical patents."