In a decision concerning evidence preservation measures, the UPC Court of Appeal (“CoA”) has clarified the scope of Art 60 UPCA. The Court has confirmed that Art 60 does not confer power on bailiffs or experts to question the defendant’s staff on the technical details of the defendant’s products or production processes while executing an evidence preservation order.
The Court also confirmed that Art 60 extends beyond technical documentation, to include evidence of alleged infringement contained in promotional and commercial documents.
Finally, the Court stated that a prior use right would only defeat an application for preservation of evidence if it was clear on summary examination that an infringement action has no prospect of succeeding.
Background
This decision arises from a dispute between two manufacturers of hygiene paper products, Essity Hygiene (owner of brands such as Tempo and Cushelle) and Dutch competitor WEPA, concerning Essity’s patent EP 3 289 139 relating to tissue paper comprising pulp fibres originating from Miscanthus and a method for manufacturing the same.
WEPA filed an opposition before the EPO in May 2024. The EPO Opposition Division (“OD”) maintained the patent as granted in November 2025. WEPA’s appeal is pending, with an oral hearing scheduled for 20 November 2026.
WEPA also brought a revocation action before the Paris Central Division of the UPC in December 2025. Essity is defending the revocation proceedings, and the oral hearing is set for 6 October 2026.
Against this backdrop, Essity sought and was granted an *ex parte* order (the “Ex Parte Order”) by the Hague Local Division (“LD”) on 17 April 2026 for measures for the preservation of evidence and inspection of premises against WEPA. The Order was executed at WEPA’s Dutch premises on 21 April 2026. WEPA’s application for review was unsuccessful, with the Hague LD confirming this in writing on 22 June 2026 (the “Review Order”).
In its appeal, WEPA requested that:
- the Ex Parte Order and Review Order be set aside in their entirety;
- the application for preservation of evidence be rejected;
- Essity be prohibited from using all information obtained during the inspection, and that all such information be returned to WEPA; and
- Essity be ordered to provide compensation for injury caused to WEPA, including the costs of the proceedings.
Essity responded, requesting that the appeal be rejected and costs ordered against WEPA.
Decision and Reasoning
The CoA went through each of the arguments grounding WEPA’s application in turn.
Ex Parte Order
The complaint that WEPA should have been heard before the Ex Parte Order was granted was dismissed. The CoA found that the decision of the Hague LD was based on the real risk of evidence ceasing to be available, which had been established by Essity through submissions in relation to the nature of the evidence (which could be easily deleted, transferred or destroyed). This was a sufficient basis for not hearing WEPA in and of itself, and it was not necessary to also demonstrate urgency in order to justify the decision.
Promotional and Commercial Documents
WEPA had argued that the Ex Parte Order should be dismissed on the grounds that it extended beyond technical documentation to include promotional and commercial documents. This argument was inadmissible on the basis that it had not been raised before the Hague LD, but the CoA also confirmed that had this complaint been admissible, it would have been dismissed.
The CoA confirmed that the power to order measures under Art 60 UPCA is not limited to technical evidence but, following the wording of Art 60(1) covers any “relevant evidence in respect of the alleged infringement”. Further, R 196.1 (d) RoP allows the court to order the preservation of digital media and data, without limitation.
Questioning of Employees
The Ex Parte Order had included provisions permitting the bailiffs and experts executing it to question WEPA’s employees on technical details of WEPA’s products or production processes, as well as a proviso that, under Dutch law, WEPA’s staff were not obliged to answer any such questions on pain of penalty.
The CoA held that Art 60 UPCA does not confer on the Court the power to make an order on those terms. There was therefore no legal basis upon which to allow the bailiffs and experts to question personnel as the Hague LD permitted. The fact that the proviso mentioned above had been included, did not detract from the fact that the Court exceeded its powers by allowing the bailiffs and experts to question WEPA employees on technical details of WEPA’s products or production processes. Further, staff members may still have been under the impression that they were obliged to answer.
The CoA did note that it was permissible for bailiffs or experts to question employees for the purposes of obtaining practical information (such as passwords) necessary for execution of orders for preservation of evidence, but this was clearly not the intended purpose of the relevant paragraph (7.1) of the Ex Parte Order, and in fact was dealt with separately elsewhere in the Order.
The CoA clarified that in cases where it was necessary to obtain statements from the defendant’s personnel in order to preserve evidence, this must be done under the court’s control pursuant to Art 53 UPCA.
Validity
The CoA found that the Hague LD did not err in finding that no facts had been submitted that clearly called into question the validity of the patent. Although WEPA had filed the revocation action in Paris, Essity had submitted WEPA’s Statement for Revocation to the Court, and had also provided details of the EPO OD decision, in which the patent had been maintained.
Although the OD decision was under appeal, and uncertainties remained, Essity’s interest in preserving evidence prevailed over WEPA’s interest, and sufficient information had been put before the Hague LD as to the debate over the validity of the patent.
Prior Use Right
WEPA’s argument in relation to an alleged right of prior internal use was disregarded as it had not been raised at first instance. Further, the CoA found that even if it had been admissible, the argument would not have succeeded.
The CoA explained that the proper procedure for determining alleged prior use rights was in the infringement action. In an application for preservation of evidence, the applicant’s interest in general will prevail over the right of the defendant. A prior use right would only defeat an application for preservation of evidence in cases where it was clear, on the basis of a summary examination, that the infringement action has no prospect of succeeding.
Compensation
WEPA’s compensation claim was rejected as it had failed to make that request before the Hague LD and, in any event, had failed to substantiate that it had suffered any loss as a result of the questioning of its personnel.
Conclusion and Order
The CoA revoked the Ex Parte Order and Review Order to the extent they allowed Essity to ask WEPA personnel questions specified in paragraph 7.1 of the Ex Parte Order. The CoA also rejected Essity’s request to be permitted to ask WEPA personnel direct questions as to whether the teachings of the patent are implemented in WEPA’s products or processes.
Essity, the technical expert, bailiff and all of their representatives were ordered to destroy all copies of the original technical expert’s report in their possession.
The technical expert was directed to resubmit a redrafted version of their report to the Hague LD, which excluded any parts that recorded WEPA personnel’s answers to substantive questions, or contained findings which relied solely on such answers.
Implications for businesses and practitioners
This decision provides some clarity for practitioners on the scope of Art 60 UPCA, confirming that preservation of evidence orders are not limited to technical documents but to all evidence relevant to the alleged infringement. Applicants should keep this in mind when drafting their applications.
On the issue of the questioning of personnel, the CoA was clear that this is only permissible where the questioning relates to practical assistance in executing the Order. Any substantive questioning must be done under the supervision of the Court. From a defendant’s perspective, personnel should receive training as to the type of questioning that is permitted in the course of an inspection. Applicants should consider whether it is likely that substantive questioning will be necessary, and be prepared to make an appropriate application to the Court if so.
A number of WEPA’s arguments were dismissed on the basis that they had not been raised at first instance, and WEPA had failed to adequately explain why this was so. This is a cautionary tale for defendants who are seeking a review following the execution of an ex parte preservation of evidence order to ensure they put forward all their arguments in that application.
The Court indicated that there was a very high threshold to reach in order for a prior use argument to defeat an application for preservation of evidence. In addition, in this case, an ongoing revocation action and EPO appeal were insufficient to call into question the validity of the patent. There was no reference in the Order to a protective letter having been filed by WEPA in this case. No doubt having issued revocation proceedings, and with an appeal underway at the EPO, WEPA may have considered its bases covered in this regard. However, one wonders if the outcome might have been different had WEPA’s prior use argument been developed further in a protective letter, or if the OD decision had gone the other way.
The decision is here.
