Context: In the first half of November, the Unified Patent Court (UPC) granted three patent injunctions in three different venues, three different countries and three different languages (November 16, 2024 ip fray article).
What’s new: On November 5, 2024, the UPC’s Milan Local Division (LD) furthermore granted two ex parte seizure orders to Italian tire giant Pirelli against Chinese rivals at a major motorcycle trade show named EICMA. The patents and defendants differ between the two cases. Those orders were apparently the first ones of this kind by the Milan LD. ip fray has seen the orders though they had not yet been published on the UPC’s website (as of the time when this article was written) .
Direct impact: The seizure orders were executed promptly. It is unclear whether those Chinese companies were actually selling those tires in Europe. The normal course of business is now for Pirelli to initiate further proceedings in which the defendants will be heard.
Wider ramifications: Different judges made the two decisions, which are consistent in terms of outcome as well as reasoning, though they were written separately (as opposed to a copy-and-paste operation).
On November 5, 2024, Presiding Judge Pierluigi Perrotti, acting as a single judge, handed down seizure order no. 59754/2024 as requested by Pirelli Tyre s.p.a. (of Milan, Italy) against Yuanxing Rubber Co. Ltd. (of Sichuan, China) and the Automotive Council of the China Council for the Promotion of International Trade over EP35190207 (“motorcycles tyre”). The second-named defendant organized a trade show presence for various Chinese companies at one of the leading motorcycle (and motorcycle accessory) trade fairs in the world: EICMA (Esposizione Internazionale Ciclo Motociclo e Accessori), which is held in Milan every year.
On the same day, Judge Alima Zana granted Pirelli a seizure order against Kingtyre Group Co.. Ltd. of Tianjin, China, and its German subsidiary Kingtyre Deutschland GmbH over EP2519412 (“Motorcycle tyre and pair of motorcycle tyres”).
In the original ex parte motions, Pirelli’s lawyers sought both a prohibitive injunction (sales ban) and seizures of allegedly infringing products at the EICMA trade show. Both judges, however, presented them with a choice:
- maintain the request for a general injunction, in which case the non-moving parties would have to be given the chance to be heard, or
- narrow the prayers for relief to just seizures at the trade show, in which case the decision, in light of the sense of urgency, can be made inaudita altera parte (without hearing the other side).
Pirelli opted for the latter (as Presiding Judge Perrotti’s decision explicitly notes, but ip fray knows that the same happened in the case before Judge Zana), and won. That was the time-sensitive part, and they may not even have had evidence of any infringing sales on UPC territory.
The successful motions were brought on Pirelli’s behalf by Orsingher Ortu‘s Matteo Orsingher, Davide Graziano and Federica Franchetti.