Barco NV v. Yealink (Xiamen) Networking Technology Co. Ltd., Yealink (Europe) Networking Technology BV, UPC, Court of First Instance, Local Division Brussels, Case no. UPC_CFI_582/2024
– (no) preliminary objection deadline in PI proceedings, internal competence and Brussels I recast, urgency
By decision of 21 March 2025, the Brussels Local Division dismissed an application for a preliminary injunction and other provisional measures by Claimant BARCO based on alleged infringement of European patent EP 3 732 827 (“EP ‘827”) against the Chinese YEALINK parent company and its European subsidiary.
Since the Court found that BARCO did not act with the required urgency, the reasoning of the decision did not (have to) address infringement and validity of EP ‘827. However, the Court took the opportunity to look in detail at the relation between the Articles of the UPCA regarding international jurisdiction and internal competence and the Brussels I Recast Regulation, and to summarize the current case law on the conditions for granting an application for provisional measures.
Facts of the case
Prior to the UPC case BARCO had sent a warning letter in May 2023 and filed a patent lawsuit against subsidiaries of YEALINK in the United States in November 2023 relating to the same products but based on different patents, i.e. no members of the patent family of EP ‘827.
Regarding EP ‘827, the EPO had communicated its intention to grant on 6 May 2024, the mention of the grant of the patent was published on 12 June 2024, and the unitary effect of EP ‘827 was registered on 23 August 2024 upon request of 2 July 2024. BARCO made a test purchase on 29 August 2024 and had an infringement analysis performed, the results of which it received on 17 September 2024. BARCO then filed their application for provisional measures on 2 October 2024, which was served on YEALINK’s European subsidiary on October 18, 2024. In accordance with the timetable set by the Court, Defendants filed their first brief on the substance of the case (Objection to Application for Provisional Measures) on 17 December 2024, disputing inter alia the Local Division’s internal competence.
Decision by the Local Division
The Local Division dismissed BARCO’s application for a preliminary injunction and other provisional measures due to lack of urgency.
(No) preliminary objection in PI proceedings
While BARCO argued that Defendants had submitted to the international jurisdiction of the UPC and the territorial competence of the Local Division Brussels pursuant to Rule 19.7 RoP because they had failed to lodge a Preliminary objection within one month, the Court found that Rule 19 and, in particular, its deadline does not apply in proceedings regarding provisional measures.
Interestingly, the Court first referred to the Parties’ agreement on Defendants’ deadline “for filing the Objection to the Application, including any preliminary objections”, indicating that the deadline in Rule 19.1 could be at the Parties’ disposal. However, the reasoning then also points out that Rule 19 is part of Section 1 of Chapter 1, titled “Infringement Action” and that – unlike in the “Revocation Action” and “Action for declaration of non-infringement” sections – there is no reference to Rule 19 in the rules on the Application for provisional measures, the reason behind this being that PI proceedings follow an accelerated timeframe without the need, or luxury, to distinguish between preliminary objections and other objections regarding the merits of the case. Instead, pursuant to Rule 209.1 RoP, it was in the Court’s discretion to set a deadline for Defendant(s) for lodging any objections, which deadline may be shorter or longer than the deadline in Rule 19.1 RoP.
Territorial competence of the Brussels Local Division
The Court then found that the Brussels Local Division was competent to hear the case pursuant to Art. 33(1) (a) UPCA, because BARCO had sufficiently proven that YEALINK actively promoted and offered their devices in Belgium via their website and their Benelux Account Manager and that, thus, “the actual or threatened infringement had occurred or may occur” in the Contracting Member State hosting the Local Division.
Taking YEALINK’s argument that the Claimant had not “sufficiently explained why the actual or threatened infringement has occurred or is likely to occur specifically in Belgium (…) and not in another Contracting State” (emphasis added) as an opportunity to elaborate on the interpretation of Art. 33(1) UPCA, the Court explained that there was a major difference in the application of Art. 7(2) Brussels I Recast Regulation in the interpretation of Art. 33(1)(a) UPCA compared to its interpretation of Art. 32 (1)(a) UPCA.
Contrary to the Brussels I Recast Regulation with its structure of general rule, i.e. jurisdiction of the courts at the defendant’s domicile, and narrow exception, i.e. jurisdiction of the courts for the place “where the harmful event occurred or may occur”, the Court found that the alternatives in Art. 33(1) (a) and (b) UPCA were equivalent, allowing for parallel competence of multiple Local Divisions and, thus, forum shopping.
Here, the Local Division expressly deviated from the Court of Appeal in Aylo v. Dish (order dd. 3 September 2024, APL_21943/2024, UPC_CoA_188/2024, para. 26), which had stated that the place “where the actual or threatened infringement has occurred or may occur as referred to in Art. 33(1)(a) UPCA must be interpreted in the same way as the place where the harmful event occurred or may occur” of Art. 7(2) Brussels I Recast Regulation. However, the Local Division still used the settled case law of the CJEU as some kind of “guiding principle” for the interpretation of Art. 33(1) UPCA, namely in the form of an argumentum a fortiori, arguing that territorial competence of the Local Division was to be assumed if even the stricter requirements of Art. 7(2) were fulfilled.
Conditions for granting an application for provisional measures and urgency
With regard to the assessment of an application for provisional measures, the Court first listed the conditions for granting such application – namely entitlement, validity and infringement, urgency, and the balance of the interests of the parties being in favor of the applicant – and allocated the burden of proof for these conditions in accordance with the current case law. Notably, all conditions mentioned above must be met for a successful application (so-called “cumulative nature” of the conditions).
As mentioned before, the Court found that BARCO did not act with the required urgency. Since Claimant did not state at which specific date at which they became aware of the alleged infringement, the Court had to rely on the objective facts of the case. Contrary to BARCO’s argument, it did not take the date of the registration of the unitary effect as a starting point for the “urgency deadline”, but rather the (mention of the) grant of EP ‘827, because BARCO could have filed an infringement action with the UPC already at that point in time, particularly in view of the pending US litigation and their statement that “the infringing products have been on the market for a long time”. As a consequence, BARCO took 2 ½ months before filing their application, which constituted a lack of urgency.
Take aways:
This decision is convincing and very helpful in a number of ways: The conditions for granting an application for provisional measures are listed in a textbook manner and with reference to current UPC case law. The Local Division also expressly confirms that Rule 19 RoP is not applicable in PI proceedings. Theorists will like the Court’s elaborations on the interpretation of Art. 33(1) UPCA in view of Art. 7(2) of the Brussels Recast I Regulation, while practitioners will take the strict standards regarding urgency in the context of international disputes to heart.
The decision can be read here.
