Fujifilm v. Kodak, UPC Local Division Mannheim, 30 January 2026, Case no. UPC_CFI_365/2023
Honorary member and former EPLAW President Professor Willem Hoyng kindly allowed us to publish, as a preview, some of his comments on the decision of the Local Division Mannheim, Fujifilm v. Kodak which will be published next Monday in his ‘UPC Unfiltered‘ newsletter and next Tuesday in the ‘UPC Unfiltered’ podcast.
Application for imposing a fine
Facts
1. Fujifilm requested a (second) enforcement order and the imposition of fines, arguing that Kodak had still not complied fully with the judgment, with respect to recall, provision of information, or destruction.
2. A penalty order was issued by the President and Judge-Rapporteur on 20 January 2026.
3. Kodak requested leave to appeal from the Local Division (“LD”), arguing that such an order could only be issued by the full panel and that R. 333 RoP (request for revision) was not applicable.
The Court
1. The Court decided that a penalty order (R. 354.4 RoP) can be granted by the Judge-Rapporteur (“JR”) and that R. 333 RoP is therefore applicable, meaning that Kodak is considered to have asked for revision.
2. The Court confirms the order of the JR.
3. As an obiter dictum, the Court held that a UPC decision is enforceable within the UPC only as far as it concerns the territory of UPC member states. With respect to a (cross-border) decision for outside the UPC, a UPC decision can only be enforced after it has been recognized by the country for which enforcement is sought. Such recognition may be based on an international instrument (Brussels Regulation for the EU, or a Treaty).
4. However, in a situation where the manufacture of infringing products takes place in Germany and information is asked with respect to the sales of such products outside the UPC territory in order to establish the damages caused by the infringement within the UPC, the UPC can order the provision of information about such sales.
5. All arguments raised by Kodak were dismissed, and the order (imposing fines) of 26 January 2026 was confirmed.
Comment
1. In my opinion, one can argue both ways as to whether the imposition of penalties must be decided by the full panel. The reference in R. 354.4 RoP to the possibility of an appeal (R. 220.2 RoP), as well as the reference to “the first instance panel of the Division in question”) seems to suggest that the full panel should decide –an interpretation reflecting also the intention of the Drafting Committee. However, the Court gives reasons for adopting a different view which are credible and certainly leading to a more efficient way of dealing with such matters.
2. In earlier comments, I have already expressed the view that the current enforcement system is inefficient and should be reviewed. The judgment itself should state the penalties to be forfeited in case of non-compliance. Where the non-compliance occurs, the Registry should be able to immediately start enforcement if a party refuses to pay the forfeited penalties, unless the non-compliant party files an application contesting the enforcement within two weeks of the Registry’s enforcement letter. Such an application should then be dealt with by the Judge-Rapporteur of the panel that issued the decision.
3. I disagree with the Court’s view that a judgment of the UPC –for instance granting an injunction for the UK– cannot be enforced as long as such decision is not recognized by the foreign (in my example the UK) court. This would lead to the situation in which a German company infringing in the UK, and sued for that infringement in its home court, could simply continue its infringing sales in the UK following the grant of an injunction, for as long as (potentially extremely expensive) recognition proceedings (in three instances?) in the UK have not yet resulted in recognition of the decision. This would be the end of the cross-border practice and (more implicitly) the efficient enforcement of patents.
4. Apart from these impractical consequences, I also fail to see the legal basis for such a view. It is the UPC that renders the decision –after having determined its jurisdiction– on infringement in the UK, and if it grants an injunction (and there is nothing in principle preventing it from doing so), then such injunction should be obeyed and, if not, enforced. Recognition is only necessary if one seeks to rely on the UK courts to enforce the decision. I emphasize that this reasoning applies after the UPC Court has decided it has jurisdiction. For reasons of comity, it may decide it does not have jurisdiction. As an example of the latter, I can imagine that if the UPC subsidiary of a UK company is infringing within the UPC territory, the UPC is not going to accept jurisdiction against the parent company for infringements in the UK (Article 8(1) of the Brussels Regulation).
5. The decision of the Mannheim Division would mean that if a German citizen causes a traffic accident in the UK with serious consequences for UK victims, those victims could sue in Germany, with the German court applying UK tort law. Yet, if they want to enforce the decision of the German court, they would first need recognition of the judgment by a UK court before being able to collect damages in Germany? Perhaps the underlying message of the Division is: you should sue in the UK; however, this example illustrates how impractical that approach would be where the person who caused the traffic accident has only assets (or insurance) in Germany.
6. The Court seems to confuse the international jurisdiction of the UPC, the material law applicable in international cases, and the enforcement of UPC decisions. It would be very strange to not be able to enforce a UPC decision in the territory of the UPC itself!
7. The decision also shows that court orders should be taken seriously and that attempts to avoid (full) compliance by advancing “clever” arguments can prove costly. If one has good reasons against (the application of) an order, they should raise them during the proceedings on the merits, not at the enforcement stage.
The Order can be read here.
