A Glimpse in London of the UPC in Action

Munich, Location of part of the Unified Patent Court

Author: Reinald Kirchner, Licence: CC BY-SA 4.0, Source: Flickr

 

Jane Lambert

The closing event of CTC Legal's Winter Intellectual Property Conference was a mock hearing of a preliminary injunction application in the Pfefferkuchen Local Division of the Court of First Instance of the Unified Patent Court between Jamie Barcombe and Adam Baker of Finnigan before Judge Ina Schnurr.  I wrote the hypothetical and chaired the session.

The basic facts were as follows:

"1. Gigacorp holds a European patent designating all states that are party to the UPC agreement plus several other countries, including the UK.

2. Gigacorp claims that its patented invention is essential for compliance with an ETSI standard and has undertaken to grant licences to implementers on FRAND terms.

3. Britco refuses to take a licence because it believes Gigacorp's patent to be invalid, not essential to the standard and not infringed and has issued proceedings in the Patents Court seeking the patent's revocation and declarations of non-infringement and non-essentiality.

4. implementers in other European states are noting the proceedings in England and are reluctant to enter licence agreements with Gigacorp or pay any licence fees until the outcome of the English proceedings is known,

5. Gigacorp has issued proceedings against Britco for patent infringement in the Pfefferkuchen Local Division of the Court of First Instance of the Unified Patent Court and seeks a preliminary injunction to restrain Britco from infringing its patent within the UPC's jurisdiction.

6. Gigacorp's application for the preliminary injunction against Britco will be argued before the conference attendees."

Jamie and Adam added the following additional details: 

"Gigacorp holds a European patent designating all states party to the UPC Agreement, as well as several other countries, including the UK. Gigacorp considers its patent essential to compliance with an ETSI standard and has undertaken to license it to implementers on FRAND terms.

On 1 May 2026, Britco launched products that meet the ETSI standard across Europe, including in the UK and Germany.

Gigacorp wrote to Britco on 4 May 2026 to make them aware of Gigacorp’s patent and to assert that it is essential to compliance with the ETSI standard. Gigacorp requested that Britco enter into a licence agreement on FRAND terms.

On 1 June 2026, Britco filed a revocation action in the English Patents Court. On 3 June 2026, Britco then responded to Gigacorp, stating that it will not take a licence because Gigacorp’s patent is invalid, not essential to the standard, and not infringed.

On 1 July 2026, it became clear to Gigacorp that other implementers in countries under the UPCA were reluctant to enter into licence agreements or pay licence fees in view of the revocation action.

On 3 August 2026, Gigacorp brought infringement proceedings against Britco before the Pfefferkuchen Local Division of the UPC Court of First Instance and is seeking a preliminary injunction to prevent Britco from infringing the patent within the UPC's jurisdiction.

The oral hearing in relation to the request for preliminary relief at the UPC is being heard today.

Gigacorp has counter-claimed for infringement in the UK, and Britco has counter-claimed for revocation at the UPC.

The mock hearing will focus on potential harm to both parties, and whether Gigacorp brought the request for preliminary relief without unreasonable delay. In the interests of time and to focus on legal issues, validity and infringement will not be discussed. Validity and infringement may be established with a reasonable degree of certainty for a preliminary injunction to be granted."

Jamie acted for Gigacorp in the proceedings and Adam for Britco.   We had 40 minutes for the hearing and the advocates kept to time impeccably.   Jamie presented the facts and the applicant's arguments.  Adam responded to the application impressively.  Equally impressive was Jamie's reply for which the judge allowed Adam a rejoinder.   The argument focused on Rule 211 of the UPC's Rules of Procedure, particularly Rule 211.3 and Rule 211.4.   Rule 211.3 provides:

"3. In taking its decision the Court shall in the exercise of its discretion weigh up the interests of the parties and, in particular, take into account the potential harm for either of the parties resulting from the granting or the refusal of the injunction."

Rule 211.4 states that:

"4. The Court shall have regard to any unreasonable delay in seeking provisional measures."

Jamie emphasised the harm that Britco's refusal to take a FRAND licence had caused, while Adam pointed to the delay in bringing the application.

Judge Schnurr declined to give a judgment as such because this was just the sort of case that might come before her in real life, but she told us how such an application would be handled, and she gave both sides some very useful advice should they ever have a case like this again.

As the audience wanted an outcome, I invited the attendees to imagine themselves as a jury in a US District Court where there is a constitutional right to a jury trial even in IP matters.  They decided to withhold interim injunctive relief.  After the hearing, we crossed Bart's Square to The Halfcup where CTC Legal had arranged a lavish reception for us.

My overall impression of the proceedings is that they were not all that different from an application for interim injunctive relief in the Business and Property Division.   As the Prime Minister has indicated a desire for a closer relationship with the EU and reached agreement on such matters as sanitary and phytosanitary products, the UK's re-accession to the UPC Agreement would be a possible next step. Anyone wishing to discuss this article may call me on 020 7404 5252 during office hours or send me a message through my contact form at any time. 

UPC Court of Appeal upholds the Mannheim Local Division's Decision on the Court's Jurisdiction in Fujifilm v Kodak

Musée de l'Élysée, Lausanne, World's First Photographic Museum
Author Sandro Senn Licence CC BY-SA 3.0 Source Wikimedia Commons

Jane Lambert

Unified Patent Court, Court of Appeal (Rian Kalden (Presiding Judge and Judge-Rapporteur), Patricia Rombach (Legally Qualified Judge), Ingeborg Simonsson (Legally Qualified Judge), Lorenzo Parrini (Technically Qualified Judge) and Max Tilmann (Technically Qualified Judge) Fujifilm Corp, v Kodak GmbH and others UPC_CoA_312/2025 2 June 2026

This was an appeal by Kodak GmbH, Kodak Graphic Communications GmbH and Kodak Holding GmbH ("Kodak") from the order of the Mannheim Local Division of the Unified Patent Court in Fujifilm Corp. v Kodak GmbH and Others UPC_CFI_365/2023 18 July 2025.  The order restrained Kodak from infringing European patent 3 51 1174 in the United Kingdom and awarded substantial damages to the Fujifilm Corporation ("Fujifilm"). I discussed that case in UPC Injunction Restraining Infringement of a European Patent (UK) - Fujifilm v Kodak on 25 July 2025.

German Proceedings
Kodak also appealed against a finding by the Mannheim Local Division on 2 April 2025 that the patent was valid and had been infringed in Germany. 

Hearing
The appeal was heard by Presiding Judge and Judge-Rapporteur Rian Kalder, Legally Qualified Judges Patricia Rombach and Ingeborg Simonsson and Technically Qualified Judges Lorenzo Parrini and Max Tilmann on 27 March 2026. They handed down their judgment in both appeals in Fujifilm Corp, v Kodak GmbH and others, UPC_CoA_312/2025 2 June 2026.

Judgment

By its judgment, the Court of Appeal of the Unified Patent Court set aside the Mannheim Local Division's decisions of 2 April and 18 July 2025 with costs and ordered Fujifilm to compensate Kodak for any injury caused by their enforcement.  It also rejected Kodak's counterclaim for rectification and dismissed Kodak's objection to the Court's jurisdiction in respect of the alleged infringement of Fujifilm's patent in the United Kingdom.  This last issue is of most interest to British readers.

Jurisdiction
The Court held at para [273] of its judgment that the Mannheim Local Division had been right to accept jurisdiction to hear the infringement of the UK designation of the patent and that none of the arguments raised by Kodak against that decision had merit.  Art 34 of the Unified Patent Court Agreement (OJ 20.6.2013 C 175/1) provides:

"Decisions of the Court shall cover, in the case of a European patent, the territory of those Contracting Member States for which the European patent has effect."

The Court rejected Kodak's contention that the Court's decisions shall cover only the territories of the contracting parties to the Unified Patent Court Agreement. Article 34 is not meant to confine the Court’s jurisdiction to its own territory. The word "only" does not appear in the article, and it is not to be understood.  Unless a more limited scope is requested in accordance with art 43 or art 76 of the Agreement, art 34 makes clear that the Court's decisions shall apply to all parties to the European Patent Convention.  The Court noted at [278] that there was no indication that the parties to the Unified Patent Court Agreement wished to confer a more limited jurisdiction on the Court.

Fujifilm argued that accepting jurisdiction was incompatible with TRIPS (Agreement on Trade- Related Aspects of Intellectual Property Rights), that there was no pleaded case on infringement in the UK and that the amendment of the German designation of the patent rendered the UK designation invalid.  The Court rejected all those arguments.

Exercise of Jurisdiction
Although the Court confirmed that it had jurisdiction to resolve disputes over European patents designating countries that are not party to the Unified Patent Court Agreement, such as the United Kingdom, it emphasised at [301] that such jurisdiction had to be exercised in accordance with the applicable national law and international legal principles such as comity.  It offers guidance between paras [302] and [308] on when jurisdiction should be exercised and when it should be declined.

Contact
Anyone wishing to discuss this case note is welcome to call me during normal UK office hours or send me a message through my contact form at any time.

Interpretation of Assimilated Law - Dairy (UK) Ltd v Oatly AB

By Kim Hansen - Own work, CC BY-SA 3.0,
https://commons.wikimedia.org/w/index.php?curid=7421277

 

Jane Lambert

On 11 Feb 2026, the Supreme Court of the United Kingdom handed down judgment in Dairy UK Ltd v Oatly AB [2026] UKSC 4.  That was a trade mark case which I discussed in The POST MILK GENERATION Appeal to the Supreme Court- Dairy (UK) Ltd v Oatly AB on 19 Feb 2026 in NIPC Law.  The reason I mention it here is that the case turned on the meaning of Point 5 of  Part III of Annex VII of Regulation (EU) No 1308/2013 of the European Parliament and of the Council of 17 December 2013 establishing a common organisation of the markets in agricultural products and repealing Council Regulations (EEC) No 922/72, (EEC) No 234/79, (EC) No 1037/2001 and (EC) No 1234/2007 

Regulation 1308/2013 is "assimilated law" within the meaning of s.5 (1) of the Retained EU Law (Revocation and Reform) Act 2023. When the United Kingdom was an EU member state, the regulation would have been construed in accordance with the jurisprudence of the Court of Justice of the European Union.  S.6 of that Act amended s.6 of the European Union (Withdrawal) Act 2018 to establish a new framework for interpreting assimilated law.  S.6 (1) (a) of the 2018 Act released courts and tribunals from principles laid down and decisions made, on or after 23:00 on 31 Dec 2020, by the Court of Justice of the European Union.  S.6 (4) released the Supreme Court from being bound by any assimilated EU case law after that date.

At para [10] of their judgment in Dairy UK Ltd v Oatly AB, the Supreme Court Justices  stated that in "interpreting assimilated law comprising legislation, it is appropriate to apply that modern approach to domestic statutory interpretation albeit that the EU origin of the legislation may be relevant in considering the context and purpose of the provision(s)."  After referring to paras [28] and [29] of R (Project for the Registration of Children as British Citizens) v Secretary of State for the Home Department [2022] 4 All ER 95, [2022] WLR(D) 65, [2022] INLR 189, [2022] 2 WLR 343, [2023] AC 255, [2022] UKSC 3, [2022] HRLR 9, [2022] Imm AR 743, para [27] of News Corp UK & Ireland Ltd v Revenue and Customs Comrs [2023] STI 284, [2024] AC 89, [2023] STC 446, [2023] UKSC 7, [2023] 2 WLR 513, [2023] 3 All ER 447, para [62] of R (N3) v Secretary of State for the Home Department [2025] AC 1473, [2025] UKSC 6, [2025] WLR(D) 111, [2025] 2 WLR 386, para [15] of Darwall v Dartmoor National Park Authority [2025] 2 WLR 1075, [2025] UKSC 20, [2025] WLR(D) 276, [2025] AC 1292 and para [22] of X v Lord Advocate [2026] ICR 125, [2026] 2 WLR 43, [2025] UKSC 44, [2025] WLR(D) 62, they said that the modern approach to domestic statutory interpretation requires the court to ascertain the meaning of the words used, in the light of their context and the purpose of the provision(s).  

The dispute between the parties boiled down to whether the word "designation" in Point 5 of Part III of Annex VII of Regulation (EU) No 1308/2013 meant "name" as Oatly contended or "use" as Dairy (UK) alleged.   If the Court found that "designation" meant "name", Oatly's appeal would have succeeded.   If the Court found that the word meant "use," then Dairy (UK) would win.

In my article of 19 Feb 2026, I explained how the Justices determined the issue:

"Point 5 had to be read with Point 2 (a) and (b), where the word name was used. It followed that designation and name would not have the same meanings in the same instrument. Similarly, designation was unlikely to mean the name of a product because the first sentence of Annex VII stated that for the purpose of the Annex "the 'sale description' meant the name ..... of the food." A similar point can be made about recital (76) and the heading to Annex VII, where the terms designations and sales description are used, thereby indicating that those words have different meanings.

In their lordships' view, the terms 'designation' or 'designations' in Point 5 on their natural meaning, viewed in the context of Annex VII, referred to their use in respect of a food or drink and not the naming of it. The designations referred to in Points 1, 2 and 3, including the term 'milk', could not be "used for" any product other than those so referred to. Oat-based food or drink was not referred to in Points 1, 2 and 3 and so the use of the term "milk" in respect of such food or drink was prohibited. That prohibition bit where the designation had been used for a relevant product, and it was not necessary that it had been used as the name of the product. That was a broad meaning that encompassed, but was wider than, and different from, the narrower "name of a product" meaning argued for by Oatly.

Taking into account recital (76), it was clear that the wider meaning was consistent with the purpose of Point 5, which, in respect of milk as a product, was to set out fair conditions of competition. That purpose was distinct from protecting consumers from being deceived. As Ms Pike said in paras [26] and [28] of her decision, it was irrelevant that the conditions of competition imposed a strict prohibition on protecting the use of the term "milk". Oatly took the Court through previous regulations that covered the scope of Regulation 1308/2013 and had used the term name rather than designation. The Justices were unimpressed. In their view, legislation must be interpreted as it stood and it was potentially misleading to look back at previous versions of legislation that were significantly different.

They concluded at para [34] that the appeal failed on Ground 1. The words "POST MILK GENERATION" fell within Point 5 of the Regulation as it used the term "milk" as a designation. As the Regulation prohibited such use s.3 (4) of the Trade Marks Act 1994 prevented the registration of those words as a trade mark in respect of the goods in classes 29, 30 and 32."

Anyone wishing to discuss this topic may call me on +44 (0)20 7404 5252 during UK office hours or send me a message through my contact form at any time.

Further Reading

Jane Lambert The POST MILK GENERATION Appeal to the Supreme Court- Dairy (UK) Ltd v Oatly AB 19 Feb 2026 NIPC Law

Jane Lambert Retained EU Law (Revocation and Reform) Bill 22 Oct 2022

Jane Lambert REUL Bill First Update 6 Dec 2022

Jane Lambert REUL Bill Second Update 5 Feb 2023

Jane Lambert The REUL (Revocation and Reform) Act 2023 - Fourth Update 13 Jan 2024

Intellectual Property in St Helena

This image was taken by the NASA Expedition 19 crew. - NASA Earth Observatory, Public Domain,
https://commons.wikimedia.org/w/index.php?curid=7030157

Jane Lambert
 

I have recently come across St. Helena Coffee.  It is very rare and very expensive because it is cultivated in modest quantities on a tiny island in the South Atlantic and has very special qualities.  When I first learned of the product, its geographical indication seemed an obvious candidate for legal protection.  When I tried to check it out, I could find no registration under either the UK's protected food names scheme or as a collective or certification mark under s.49  or s.50,  The only registration that I have been able to find is THE ISLAND OF ST HELENA COFFEE COMPANY for goods in classes 16 and 30 by David Henry under trade mark number UK00002192111.

I also found several other products whose geographical indications might benefit from legal protection.  These include rock lobster, tuna, honey and various liqueurs made from local coffee, prickly pears and rum.  St Helena’s Sustainable Economic Development Plan 2018 - 2028 published by the territory's government mentions viticulture on page 26.

Other projects in the plan include opening satellite ground stations and call centres,  encouraging software development and maintenance services, hosting academic research and letting out its locations for filming and programme making.  All those initiatives will require robust copyright, database right and trade secrecy laws.

There is no intellectual property office on St Helena but the territory's legislature has passed legislation to extend United Kingdom patents, trade marks and designs to the island.   S.2 (1) of the Patents (Registration) Ordinance 1927 entitles any grantee of a patent in the United Kingdom or any person deriving a right from such grantee by assignment, transmission or other operation of law may apply within 3 years from the date of issue of the patent to have the patent registered in St Helena.   Upon receiving such an application together with two certified copies of the specification and certificate of grant the registrar must issue a certificate of registration. The certificate of registration confers on the applicant privileges and rights, subject to any conditions established by the law of St Helena, as though the patent had been issued in the United Kingdom with an extension to St Helena.   S.3 and s.6 of the Trade Marks (Registration) Ordinance, 1949 make similar provision for trade marks.  S.2 of the United Kingdom Designs (Protection) Ordinance, 1930 confers upon the registered proprietor of any design registered in the United Kingdom under the Registered Designs Act, 1949 the like privileges and rights as though the certificate of registration in the United Kingdom had been issued with an extension to St. Helena.  

S.3 of the United Kingdom (Design) Ordinance, which restricts recovery of damages where a defendant was unaware of the registration of a design, is a little anomalous in that it refers to "copyright in a design" despite the extensive amendments to the statute by the Copyright, Designs and Patents Act 2025 and the Registered Designs Regulations 2001.  The intention of the legislature appears to be clear but I have not yet found a case on the point.

I have been unable to find any copyright, rights in performances, unregistered design right or trade secrets ordinance but s.3 (1) of the English Law (Applications) Ordinance 2005  applies Adopted English Law to St Helena.  "Adopted English Law is defined as:

"(a) the common law of England, including the rules of equity; and 

(b) the Acts of Parliament which are in force in England at the time of commencement of this Ordinance."

This is qualified by s.3 (2) which provides that the Adopted English Law applies to St Helena only in so far as it is applicable and suitable to local circumstances, and subject to such modifications, adaptations, qualifications and exceptions as local circumstances render necessary.  S.4 (1) further provides that The Adopted English Law applies to St Helena only insofar as it is not inconsistent with— 

"(a) any enactment of the Parliament of the United Kingdom which extends to St Helena otherwise than by virtue of this Ordinance; 4 

(b) any Order of Her Majesty in Council which extends to St Helena otherwise than by virtue of this Ordinance; 5 or 

(c) any provision made by or under any law enacted by a legislature in St Helena." 

Some UK statutes, such as the Freedom of Information Act 2000 and the Human Rights Act 1998, have been disapplied from St. Helena.   However, I have found no disapplication of the Copyright, Designs and Patents Act 1988 or the law of confidence.   S.8 of the Trade Marks (Registration) Ordinance 1949 specifically preserves the action for passing off.

Actions for the infringement or revocation of intellectual property rights are brought in the Supreme Court of St Helena.   Appeals lie to the Court of Appeal and thence to the Privy Council

Belinda Piek is the Registrar of Patents and Trade Marks in St. Helena.  There do not appear to be any patent or trade mark attorneys on St Helena.  Indeed, there seem to be no solicitors in private practice on the island.  Legal services are supplied to the public by the Public Solicitor.  Neither the Public Solicitor nor any of his staff claims expertise in intellectual property.

As the population of the island has been in decline for many years and has only recently flattened out to 4,439 according to the latest census, readers may well ask themselves why I have spent time on researching its intellectual property laws.  The answer is that St Helena’s Sustainable Economic Development Plan 2018 - 2028 contains many reasonable proposals for the economic development of the territory but does not mention intellectual property.   On page 45, there is a non-exhaustive list of opportunities for entrepreneurs.  Entrepreneurs will respond only if their intellectual assets are protected sufficiently to ensure a reasonable return.  Such assets must be protected not only in St Helena but also in the United Kingdom and their other markets around the world.   

The UK and St Helena governments have already shown their commitment to St. Helena by investing some £285.5 million in the construction of a new airport. They had hoped it would increase tourist traffic from a few hundred a year to over 30,000.   Since there are only weekly flights to South Africa, that is unlikely to happen.  However, if the airport could be used to export the island's coffee and other premium beverages and foodstuffs to affluent consumers around the world and remain the port of entry for satellite tracking engineers, film and TV programme makers and actors, conference attendees and others, it could easily justify that investment.

Anyone wishing to discuss this article may either call me on +44 (0)20 7404 5252 during UK office hours or send me a message through my contact form.

Further Information

Smudge Dog Media: The Challenges of St Helena's Entrepreneurs YouTube