UPC CoA refers four questions of long-arm jurisdiction to ECJ in scenarios such as where representative for product safety compliance serves as anchor defendant

Let us look at the four questions referred to the ECJ and analyze what they mean specifically. What’s important to understand at the outset is that the CoA is not generally questioning whether the UPC has long-arm jurisdiction under BSH. The questions relate to specific fact patterns that are not uncommon, yet fall far short of covering the majority of all long-arm jurisdiction scenarios:

Cases in which the product maker or an infringing reseller (as an anchor defendant) is based in UPCland are not meant. Of course, there is always the possibility of the ECJ providing guidance beyond the scope of the questions posed by the referring court. But if the ECJ merely answers those questions, only a fraction of all long-arm scenarios relevant in the UPC will be affected.

Questions 1-3 are specific to PIs. They either cite to Art. 71b(2) or refer to an “interlocutory injunction”.

First and second defendant

There are two defendants here:

1. The first one is Dreame International (Hongkong) Limited of Hong Kong (Special Administrative Region of China). That is the product maker, but it is based outside the EU.
2. The second defendant is Eurep GmbH, which is based in Germany, but it is not the product maker. It is merely a service provider. The service it provides is to serve as the authorized product representative. Such a company is necessary for a non-EU company to be allowed to market certain products (which are subject to product safety regulations) in the EU. The second defendant therefore plays an essential role and is based in UPCland, but it is merely a service provider to the product maker.

Overview of what the different questions cover

	Q1	Q2	Q3	Q4
main proceedings and PIs – or only PIs?	both	only PIs	only PIs	both
intermediary must be an authorized product representative	no	no reference to intermediary whatsoever	yes	yes
intermediary must be explicitly based in UPCland	yes	no reference to intermediary whatsoever	yes	no (in the EU, yes, but UPCland not necessarily)
uniform websites for promotion	no	yes	yes (as Q3 relates to Q2)	no
injunction against product maker or only authorized representative?	both	both	both	only against authorized representative

Question 1: Long-arm jurisdiction over non-EU product maker based on UPCland-based intermediary (service provider)

Must Article 8(1) in conjunction with Article 71b(2) of Regulation 1215/2012 be interpreted as meaning that a situation where, in proceedings before a common court within the meaning of Article 71a(2) of Regulation 1215/2012, a first company that is established in a third State is alleged to have committed an infringement of a national part of a European patent which is in force in an
EU Member State that is not party to the instrument establishing the common court, and a second company that is established in an EU Member State that is party to the instrument establishing the common court is alleged to be an intermediary whose services are used by the first company to infringe in the EU Member State that is not party to the instrument establishing the common court, is capable of leading to “irreconcilable judgments” resulting from separate proceedings as referred to in Article 8(1) Regulation 1215/2012?

Let’s modify this now in a case-specific form to make it easier to understand; the “common court” for the purposes here is simply the UPC and the sole statute referenced in it is the Brussels Ia Regulation, which is the statute on which BSH Hausgeräte v. Electrolux is based:

Must Article 8(1) in conjunction with Article 71b(2) of [the Brussels Ia Regulation] be interpreted as meaning that a situation where, in proceedings before [the UPC],

• a first company [i.e., Dreame of Hong Kong SAR] that is established in a [non-EU member state] is alleged to have committed an infringement of a national part of a European patent which is in force in an EU [but not UPC] Member State [i.e., the Spanish part of the patent], and
• a second company [i.e., Germany’s Eurep] that is established in [a UPC contracting member state] is alleged to be an intermediary whose services are used by the [non-EU] company to infringe in [an EU but not UPC member state],

is capable of leading to “irreconcilable judgments” resulting from separate proceedings as referred to in Article 8(1) {Brussels Ia Regulation]?

The risk of “irreconcilable judgments” is a key justification for BSH purposes. But here the question is whether such irreconcilable judgments are of concern with a view to Spain, given that Spain is not a UPC contracting member state.

What the first question does not cover

The first question does not apply to, for example, UPC injunctions covering non-EU member states like the UK.

It does not cover the situation where the product maker is based in the EU and sells in a market like Spain. And it does not cover a situation where the anchor defendant may not be the product maker, but is a reseller (as opposed to just a product safety representative for compliance purposes).

Interestingly, the first question would not even cover a scenario where the product maker is based in, for example, Poland and sells in Spain. Both are EU but not UPC member states. Whether that would make a difference is another question as the focus may ultimately be on the anchor defendant anyway.

Broad terminology in first question: “intermediary” / “services”

In this case, the intermediary is an authorized product representative. That is less (for infringement purposes) than a reseller, but there are other intermediaries and service providers who would arguably be less critical to the infringement than an authorized product representative.

Question 2: Is there a broader scope of jurisdiction for preliminary injunction purposes over a non-EU company if a multilingual set of otherwise identical websites promotes a product across UPC and non-UPC-but-EU member states?

Must Article 71b(2), second sentence, of [the Brussels Ia Regulation] be interpreted as meaning that [the UPC] has jurisdiction in relation to an action for provisional measures against a [non-EU company] that is alleged to have infringed a European patent in force in [a non-UPC-but-EU member state], and in some or all [UPC contracting member states] by offering the same products in all those EU Member States through websites that are identical apart from the language?

The reference to “Art. 71b(2), second sentence” [emphasis added] means that there may not be jurisdiction in main proceedings, but for PI purposes the UPC may have jurisdiction. This is what that second sentence says: “Application may be made to a common court for provisional, including protective, measures even if the courts of a third State have jurisdiction as to the substance of the matter.” So this is a PI-specific derogation.

The second question therefore provides, as the last two sentences of para. 19 of the CoA order making the preliminary reference state (and which could be inferred from the preliminary reference questions thesmelves), an alternative route. If the answer to the first question was no, the second question is distinguishable from it because the basis here is

• a PI request against an infringement in multiple EU member states (some but not all of which are also UPC contracting member states) and
• a uniform act of offering an infringing product (here, via a set of websites that are identical apart from being in different languages).

Noe that question 2 does not in any way refer to the authorized product representative. It is all about the non-EU (here, Hong Kong SAR-based) company.

Question 3: Can the authorized product representative’s domicile in UPCland turn a hypothetical ‘no’ to question 2 into a ‘yes’?

Is the fact that the company uses the services of a company [here, the authorized product representaive] that is established in [UPCland] in order to infringe a relevant circumstance in answering this second question?

So just like question 2 is an alternative route to question 1, question 3 is a way of answering question 2 with a “yes” by adding another element.

The way the UPC CoA structured its questions and makes the “first” and “second” company distinction is reminiscent of how many patent claims and claim sets are structured. And it is very logical. Q3 is like a dependent patent claim where Q2 is the independent parent claim.

Question 4: Is there PI jurisdiction over the authorized product representative per se?

Does Article 9(1)(a) of [the IPR Enforcement Directive (IPRED)] or any other provision of Union law preclude case-law of a national [court or the UPC] under which an interlocutory injunction aimed at preventing or prohibiting infringement of a patent by a third party [meaning Dreame, but without specifically referring to the fact it is based outside the EU] by placing products on the market to which Regulation 2023/988 and 2019/1020 [product safety regulations requiring authorized representatives] apply may be granted against an authorised representative that performs the tasks laid down in these Regulations on behalf of the third party?

Articles 9(1)(a) and 11 of IPRED relate to injunctions against “any intermediary whose services are used by a third party to infringe IPRs.”

If the fourth question was the only one to be answered in the affirmative by the ECJ, the UPC could not enjoin Dreame, the Hong Kong SAR-based company. But it could enjoin the authorized product representative. In commercial terms, that might actually give Dyson all it needs: without an authorized product representative being able to perform its function, it would be impossible to sell the products in the EU market. If Dreame replaced Eurep with another one, it would be easy to obtain a PI against that one, so any circumvention by means of changing the authorized product representative would be ephemeral and commercially insignificant.

Court and counsel

Panel 1a: President Dr. Klaus Grabinski, Judge-rapporteur Peter Blok, Judge Emmanuel Gougé, Technically Qualified Judge Simon Michels, and Technically Qualified Judge Lorenzo Parrini.

Dyson is being represented by DLA Piper’s Dr. Constanze Krenz.

Dreame is being represented by Hogan Lovells’s Dr. Anna-Katharina Friese-Okoro and Christian Stoll.