AorticLab srl v. Emboline, Inc., Order UPC Court of Appeal, 20 June 2025, Case no. UPC_CoA_393/2025
Court of Appeal clarifies: no security for costs at the request of the claimant in an infringement action or in a counterclaim for revocation
HEADNOTES
Art. 69(4) UPCA does not provide a legal basis for granting a security for costs at the request of the claimant in an infringement action. The same applies to a claimant in a revocation action pursuant to Art. 32(1)(d) UPCA).
The ratio behind Art. 69(4) UPCA is the protection of a defendant against an insolvent claimant, who initiates an action, without having sufficient means to compensate the defendant for the legal costs incurred by the proceedings he was involved in at the initiative of the claimant.
That same rationale does not apply to a counterclaim for revocation, since such an action is still the direct consequence of the infringement action initiated by the claimant. Under the system of the UPCA and the RoP, a defendant is not allowed to bring forward an invalidity defence without at the same time lodging a separate counterclaim for revocation.
Allowing a security for costs order at the request of the claimant in an infringement action in response to a counterclaim thus unreasonably limits the defendant in its defence.
A copy of the decision can be read here.
