The Court agreed with our arguments that the UPC as a whole and the Brussels local division have jurisdiction to hear the case. They further commented:
HLK’s client, Establishment Labs, has prevailed in a preliminary objection at the Unified Patent Court.
In this case, Establishment Labs is suing GC Aesthetics group and its Belgian distributor at the UPC for infringement of its European Patent No. 3 107 487 B1 relating to soft tissue body implants. The defendants, represented by Bristows, raised a preliminary objection under Rule 19 of the UPC on the ground that the Belgian UPC local division did not have jurisdiction to consider the alleged infringement in the following non-UPC countries: Ireland, UK, Spain, Norway and Switzerland. They also asked for significant costs should they prevail in the preliminary objection.
The UPC dismissed the preliminary objection in its entirety, essentially on the basis that long-arm jurisdictional points are related to remedies, and not grounds for any preliminary objection – in other words, the Court does have jurisdiction to decide infringement for non-UPC countries, but the decision on infringement should be considered in the main action, not under preliminary objections. The court also dismissed the award for costs, not only because the defendants were unsuccessful, but also because there is no basis to award costs at the preliminary opinion stage.
Quite simply, the answer to the question ‘can long-arm jurisdiction be a basis for a preliminary objection?’ is no.
In the UPC, defendants have one month from the service of the statement of claim to raise preliminary objections to the action. The three exhaustive grounds for these preliminary objections are set out in rule 19 RoP as follows:
(a) the jurisdiction and competence of the Court, including any objection that an opt-out pursuant to Rule 5 applies to the patent that is the subject of the proceedings;
(b) the competence of the division indicated by the claimant [Rule 13.1(i)];
(c) the language of the Statement of claim [Rule 14].
In short, you can object that the UPC as a whole does not have jurisdiction under Rule 19(a) RoP (e.g. because the patent is still opted out of the UPC or because a national action has already been initiated), OR that the local or regional division does not have jurisdiction under Rule 19(b) RoP (e.g. because none of the defendants are domiciled/have a place of business in the country of the local division and nor are there any alleged acts of infringement being carried out in that country) OR that the language of proceedings should different under Rule 19(c) RoP. In the case of multiple defendants, if the defendants have a “commercial relationship”, the action can be brought in a local or regional division if at least one of them (the “anchor defendant”) is domiciled or has a place of business within the division’s country.
In the present case, Establishment Labs, in its statement of claim cites activities in both UPC-contracting states and non-UPC-contracting states by the GCA group and its Belgian distributor, with the GCA group having companies located in both the UPC and non-UPC contracting states. The Belgian distributor is an entity domiciled in Belgium. As such, we argued in our statement of claim that, given the commercial relationship between the defendants (all GCA companies in the action) and the Belgian distributor, the Belgian local division has jurisdiction for all matters, including infringement in non-UPC contracting states.
In the preliminary objection, GCA requested that the Court rule that it does not have jurisdiction to consider infringement in respect of the non-UPC contracting states (namely, Ireland, UK, Spain, Norway and Switzerland). Its reasoning was essentially that only the Belgian distributor can be the anchor defendant and basis for bringing the action in Belgian, and that the Belgian distributor had not carried out any activities in non-UPC contracting states – they argued that, on the basis of BSH/Electrolux (Judgement of 25 February 2025, BSH Hausgeräte GmbH v Electrolux AB, Case C-339/22, EU:C:2025:108), there is no jurisdiction for the Court to consider infringement in non-UPC contracting states.
We responded, arguing that Rule 19 provides no basis for considering long-arm jurisdictional points. These are essentially part of the remedies for infringement (e.g. the injunction or damages), and that no arguments had been raised that the UPC as a whole could not hear the action, nor that any other local division should hear the case. In other words, the UPC has international jurisdiction and the Brussels local division had territorial competence to hear the case. We also argued that all GCA group companies and the Belgian distributor were engaged in coordinated commercial activities, and, as such, could be joined as defendants in a single action (citing the “quality and intensity” test for a commercial relationship as recognised in ARM v IC Pillar (LD Paris, Ord_18817/2024, UPC_CFI_495/2023) and Fujifilm v Kodak (UPC_CFI_355/2023, Düsseldorf/Mannheim).
The only issue is whether the UPC has international jurisdiction to rule on (alleged)infringements by the Defendants relating to (alleged) acts in Ireland, Norway, Switzerland and the UK, given the national designations of EP 487. It is considered set case law that the UPC has jurisdiction to decide on infringement of all parts of a European patent, including those in non-UPC states such as the Republic of Ireland, Spain, the United Kingdom, Switzerland and Norway, provided that one of the defendants is rightfully sued before the UPC. Once again, the Court should point out that none of the Defendants opposed the UPC’s international jurisdiction. Consequently, the UPC is competent to hear the case with regard to an infringement to any of the national designations of EP 487 as claimed by LABS.
In addition to the above, but entirely subsidiary to it, it should be noted that, as the Defendants have made no indication of national validity proceedings (cf. argumentation based on Art. 24(4) BR) in the Republic of Ireland, Spain, Norway, Switzerland or the United Kingdom, the Court sees no reason why such exclusive jurisdiction would prevent it from assessing the alleged infringement relating to the respective national validations of EP 487.
The Court also agreed with us that there is no basis for a costs award for preliminary objections.
In short, the Court dismissed the preliminary objection in its entirety.
The full reasoning of the Court and the decision in the Procedural Order can be read here.
As far as we are aware, the decision has not been appealed. The case continues.
Need assistance?
Visit our UPC and UP latest updates page to read more insightful articles and analysis by our experts on the latest developments on Unified Patent Court and Unitary Patent matters.
This is for general information only and does not constitute legal advice. Should you require advice on this, or any other Unified Patent Court related topic, then please contact upc@hlk-ip.com or your usual HLK advisor.
Stay connected with HLK
Keep up-to-date with the latest IP insights and updates as well as upcoming webinars and seminars via HLK’s LinkedIn page, or simply subscribe to our updates.