Alpinestars S.P.A. v Dainese spa – Court of First Instance – Milan (IT) Local Division, 8 April 2025, Case no. UPC_CFI_792/2024, App. 61708/2024, ORD_64124/2024
The Milan Local Division (LD) confirmed that, following the CJEU’s ruling in BSH Hausgeräte v. Electrolux (Case C-339/22), it has jurisdiction to determine patent infringement claims involving European patents validated in non-UPC countries, in this case Spain.
Background
Dainese issued infringement proceedings against Alpinestars (which is domiciled in Italy, a UPC country) for infringement of two European patents, EP 4 072 364 (EP ‘364) and EP 3 498 117 (EP ‘117), both of which relate to technology used in garments to protect wearers from impact during, for example, sporting activities.
This decision relates only to EP ‘364, which is validated in numerous UPC countries, as well as Spain, a non-UPC country. Alpinestars launched a preliminary objection to challenge the UPC’s jurisdiction in respect of Spain.
Decision
Alpinestars challenged the court’s jurisdiction on a number of grounds. The order is heavily redacted, but the main point of interest is the court’s reasoning in respect of long-arm jurisdiction.
The Milan LD applied Regulation (EU) 1215/2012 (recast) as amended by Regulation (EU) 542/2014 (the “Brussels Recast Regulation”), Articles 31 and 34 of the UPC Agreement (“UPCA”), the recent CJEU decision in BSH Hausgeräte v. Electrolux (Case C-339/22) (“BSH Hausgeräte”) and the existing body of UPC case law on long-arm jurisdiction, specifically the Düsseldorf LD decision in Fujifilm v Kodak (UPC_CFI_355/2023, issued before BSH Hausgeräte), and the Paris LD order in Mul-T-Lock v IMC (UPC_CFI_702/2024, issued after BSH Hausgeräte), and held:
• The UPC has international jurisdiction (Article 31 UPCA) and shall be deemed as a court of a Member State (Article 71a Brussels Recast Regulation). All the provisions of the Brussels Recast Regulation and CJEU case law applies to the UPC as if it were a national court.
• Therefore, in the light of BSH Hausgeräte, the Milan LD has jurisdiction to determine issues concerning the (alleged) infringement of European patents in relation to activities by a defendant (Alpinestars) domiciled in Italy (Article 32 UPCA, Articles 4(1), 71a & 71b Brussels Recast Regulation).
• Specifically, at paragraph 12, Judge Zana stated that “the UPC, deemed to be a court of a Member State, in case it is the Court of the domicile of the defendant, has jurisdiction to adjudicate on infringement issues related to European patents validated in non-UPC Countries (so called long jurisdiction)”. Judge Zana also added that “in case a defendant is domiciled in Italy, the Milan Local Division jurisdiction is “universal”.
• To interpret any differently would mean that the UPC’s jurisdiction is more limited than a national court, which is contrary to Article 71a of the Brussels Recast Regulation.
• The Milan LD said that Article 34 UPCA (which provides that “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.”) does not limit the UPC’s jurisdiction to only UPC contracting member states (Fujifilm followed).
• Note that interestingly, the court also said that this is not affected by the UPC Court of Appeal’s decision in Sibio v Abbott (UPC_CoA_388/2024, APL_39884/2024) where the court revoked a preliminary injunction (“PI”) erroneously extended by The Hague LD to Ireland. This was distinguished because the applicant requested the PI extend to “the Contracting Member States for which the patent is in force”, and Ireland is not a UPC Contracting Member State as it has not yet ratified the UPCA.
• Therefore, the Milan LD held that as it is the court of the domicile of Alpinestars (the defendant), it also has jurisdiction to determine infringement in respect of patents validated in non-UPC countries, in this case Spain. The preliminary objection was therefore dismissed.
The Milan LD acknowledged that there is no revocation claim or counterclaim in respect of the Spanish part of EP ‘364 in this action. The BSH Hausgeräte decision gives courts a discretion to stay infringement proceedings where validity is challenged in disputes involving EU member states. There is no such requirement in respect of third countries. It will therefore be interesting to see how the UPC deals with these situations.
The order can be found here.
