[UPCKat] How has the UPC responded to BSH v Electrolux over the last three months?

The UPCKat, not content with its own patent
treats, reaches to the even more delicious
top shelf where the third-country
patent treats resided

Patent litigation forums around the world have been abuzz with discussions about the cross-border implications of the CJEU’s ruling in BSH v Electrolux (Case C-339/22) – summarized here and further discussed here. The UPCKats are back in the form of Agathe Michel-de Cazotte, Laura Mikkelsen and Christina Guazzi (all of Carpmaels) to report on where we are in the UPC post-BSH.

Over to the team:

"As a refresher, the CJEU held in February 2025 that the court in which the defendant is domiciled remains competent to decide on patent infringement, even if the patent was granted in another European state and even if the validity of the patent is contested.  The UPCKat now wants to focus on the decisions that have been handed down by the UPC since BSH v Electrolux, to examine how those litigating and deciding cases in the UPC have reacted to this landmark ruling.

Background: The CJEU’s decision in BSH v Electrolux

BSH v Electrolux marked a sea change from the CJEU’s earlier position in GAT v LuK (Case C-4/03), that the relevant national court should have exclusive jurisdiction over all proceedings relating to the registration or validity of a patent, whether validity is raised by way of an action or as a defence. The position in GAT v LuK was codified in Articles 4 and 24 of Regulation (EU) No 1215/2012 (“Brussels Recast”), and it is these articles that have been in contention in the decisions being handed down by the UPC since – the full wording is set out below.

"Article 4

1. Subject to this Regulation, persons domiciled in a Member State shall, whatever their nationality, be sued in the courts of that Member State.

2. Persons who are not nationals of the Member State in which they are domiciled shall be governed by the rules of jurisdiction applicable to nationals of that Member State.

Article 24

The following courts of a Member State shall have exclusive jurisdiction, regardless of the domicile of the parties:

(4) in proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered, irrespective of whether the issue is raised by way of an action or as a defence, the courts of the Member State in which the deposit or registration has been applied for, has taken place or is under the terms of an instrument of the Union or an international convention deemed to have taken place."

UPC decisions applying BSH v Electrolux

Even before the BSH v Electrolux decision, the UPC had taken a long-arm approach to jurisdiction in Fujifilm v Kodak (discussed here). This approach has been maintained in the key UPC decisions on jurisdiction following BSH v Electrolux considered below.

1.  Mul-T-Lock France v IMC Créations
LD Paris, UPC_CFI_702/2024 (21 March 2025)

These proceedings were brought by IMC against Mul-T-Lock France and Mul-T-Lock Switzerland at the Paris Local Division (LD) for infringement of IMC’s patent, which has unitary effect in the UPC countries and EP national designations in Spain, the UK, and Switzerland.

The Mul-T-Lock companies tried to get part of the case thrown out by way of a preliminary objection, arguing that the UPC should declare it had jurisdiction only in respect of those countries in which the patent has unitary effect and decline jurisdiction over any claim based on a national designation of the corresponding EP patent.

The Paris LD dismissed the Mul-T-Lock companies’ request, referring to Art. 31 of the UPCA to say that the UPCA establishes the same jurisdiction in principle of the courts of the defendants’ domicile. The Paris LD then applied the CJEU’s ruling in BSH v Electrolux, to hold that so long as one of the defendants was domiciled in a UPC country, the proceedings could concern the countries where the patent was in force, which in this case included national designations of the patent which were in force and had effect in countries that were not signatories to the UPCA, i.e. Switzerland, Spain and the United Kingdom.

The Paris LD referred to Brussels Recast (by virtue of Art. 31 of the UPCA) and went on to hold that although courts before which infringement actions are brought must declare they do not have jurisdiction in relation to the validity of the patent, the court would not lose its jurisdiction to hear the infringement action in respect of the Spanish and UK designations of the patent, i.e. in respect of infringing acts by the defendants in Spain and the UK, merely because validity was challenged.

Similarly, for the Swiss designation of the patent, the Paris LD applied the Lugano Convention (again, by virtue of Art. 31 of the UPCA), and held that the court hearing the infringement action for a patent would in principle be competent to rule on invalidity of a designation of that patent granted by a non-member country, provided that the decision had inter partes effect only.

2.  Alpinestars S.P.A. v Dainese spa
LD Milan, UPC_CFI_792/2024 (8 April 2025)

This decision concerned another preliminary objection, this time filed by Alpinestars against Dainese, in proceedings brought by Dainese alleging infringement and requesting an injunction that would prevent distribution of Alpinestars Italy’s products in UPC countries and Spain.

The LD Milan held that it followed from the CJEU’s decision in BSH v Electrolux that if one of the defendants is domiciled in a UPC country, the UPC (noting that the UPC had been deemed to be a court of a member state for the purposes of Brussels Recast), has jurisdiction to adjudicate on issues relating to European patents validated in non-UPC countries. 

In this case the defendant was domiciled in Italy, and the infringing acts were alleged to take place in the UPC countries and in Spain. The LD Milan followed the approach taken previously by the Paris LD in Mul-T-Lock and dismissed Alpinestar’s preliminary objection, upholding the UPC’s jurisdiction to adjudicate on the alleged infringement of the Spanish designation of Dainese’s patent by Alpinestars Italy.

3. TGI Sport/Supponor v AIM Sport Development
UPC Court of Appeal, UPC_CoA_169/2025 (11 April 2025)

This Court of Appeal decision concerned a procedural appeal against the LD Helsinki’s decision to allow AIM’s request to change its claim and amend its case, and to add a UK-based defendant (TGI Sport Virtual UK Limited). One of the effects of AIM’s requests was to expand the proceedings to cover infringement in Spain and Germany.

The Court of Appeal allowed the addition of TGI Sport Virtual UK Limited, noting that TGI Sport Virtual UK Limited is a company belonging to the same group as TGI (which included TGI companies based in UPC countries), and considered in particular the risk of irreconcilable and inconsistent decisions if AIM were to lodge separate proceedings against TGI UK.

In applying the BSH v Electrolux decision, the Court of Appeal held that AIM’s requested amendments to add in Spain as a territory in which infringement was alleged could not have been made at an earlier stage because neither the AG’s opinion, nor the CJEU’s decision in BSH v Electrolux had been handed down as of the date of filing of AIM’s statement of claim. The Court of Appeal therefore held that AIM was justified in adding Spain as a territory to the proceedings and ultimately dismissed AIM’s appeal.

4.  Syngenta Limited v Sumi Agro Limited and Sumi Agro Europe Limited
LD Munich, UPC_CFI_39/2025 (14 April 2025)

In this case, the LD Munich followed the above Court of Appeal decision in allowing Syngenta to amend its infringement claims to include Poland, the Czech Republic, and the UK after Syngenta had argued that it was only now able to request amendment, following the CJEU’s decision in BSH v Electrolux.

5.  Seoul Viosys Co, Ltd v Laser Components SAS
LD Paris, UPC_CFI_440/2023 (24 April 2025)

In this case, Seoul Viosys tried to bring acts of infringement in the UK into these proceedings. However, the LD Paris held that Seoul Viosys had not put forward evidence of such acts of infringement and so decided to limit the proceedings to France. The LD Paris did however note that a claim concerning acts of infringement committed in the territory of a non-EU state in which the patent at issue is in force may be admissible before the UPC, following the BSH v Electrolux decision.

Concluding remarks

The above cases make it clear that the CJEU’s ruling has teeth in the UPC, and claimants are not afraid to rely on it. These decisions applying BSH v Electrolux will only enhance the attractiveness of the UPC forum for patentees, who can seek to obtain findings of infringement and damages even for non-UPC states in a single action."