ARTICLE
10 August 2026

CoA, August 3, 2026, Order Concerning Penalty Orders, UPC-CoA-28/2026

BP
Bardehle Pagenberg

Contributor

BARDEHLE PAGENBERG combines the expertise of attorneys-at-law and patent attorneys. As one of the largest IP firms in Europe, BARDEHLE PAGENBERG advises in all fields of Intellectual Property, including all procedures before the patent and trademark offices as well as litigation before the courts through all instances.
The Court of Appeal addresses critical questions about the retroactive effect of revoked first-instance decisions involving recurring penalty payments and establishes how enforcement proceedings should be valued. This case examines whether penalty orders lose legal effect when appellate courts overturn underlying merits decisions, and whether valuation should focus on the penalties themselves or the underlying obligations they enforce.
Germany Intellectual Property
Bardehle Pagenberg are most popular:
  • within Technology topic(s)

Key takeaways

If the Court of Appeal revokes a first-instance decision in merits proceedings in which orders were granted under recurring penalty payments, the revocation has retroactive effect and the order must be regarded as never having had any legal effect.

The revocation of an order of the Court of First Instance granting a permanent injunction (Art. 75(1) UPCA, R. 242.1 RoP) will have retroactive effect as a general rule. The revoked order must therefore be regarded as never having had any legal effect. It follows that the revocation of an order granted under recurring penalty removes the legal basis for any following order actually ordering the penalty payment, even if that decision relates to alleged breaches of the order prior to the revocation. (cf. CoA, December 10, 2024, UPC-CoA-470/2023, Nanostring v 10x) (headnote 1, mn. 19)

It follows from R. 370.6 RoP that it is the interest of the party that initiated the action before the Court of First Instance that needs to be considered. The value of proceedings on appeal may differ from the value at first instance, but on appeal by the defendant it remains the interest of the claimant in having the decision upheld that determines the value of the proceedings pursuant to R. 370.6 RoP. It does not then shift to the interest of the defendant to have the decision set aside. (headnote 2, mn. 21)

The value of the enforcement proceedings is determined in view of claimant’s interest in the proper fulfilment of the obligations which the penalties serve to incentivize – not based on the amount of penalties as such.

The amount of the penalties forfeited by the defendant cannot be taken to represent the claimant’s interest in the enforcement proceedings, since the penalties forfeited are payable to the Court. It is rather the claimant’s interest in proper fulfilment of the obligations that the penalties serve to incentivize that is relevant. (headnote 3, mn. 24).

Division

Court of Appeal

UPC number

UPC-CoA-28/2026

Type of proceedings

Appeal concerning enforcement (penalty orders)

Parties

Appellants (and Defendants in 1st instance main proceedings):

Kodak Holding GmbH, Kodak GmbH, Kodak Graphic Communications GmbH

Respondent (and Claimant in 1st instance main proceedings):

Fujifilm Corporation

Patent(s)

EP 3 511 174

Body of legislation / Rules

Art. 75 (1) UPCA, R. 242.1, R. 370.6 RoP

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

[View Source]

Mondaq uses cookies on this website. By using our website you agree to our use of cookies as set out in our Privacy Policy.

Learn More