Unified Patent Court – Managing The Risk of “Imminent Infringement”
As UPC case law continues to develop, we wanted to focus on the case law established in the recent Syngenta v Sumi Agro case and its implications for those using the UPC system. It is especially notable for the overlap and interaction between trade mark rights and patent rights within the same dispute.
“Imminent Infringement” Risk Ruling
- In Syngenta Limited (“Syngenta”) v Sumi Agro (“Sumi”), Syngenta was granted a Preliminary Injunction against Sumi on the basis that Sumi’s advertising of products under the same name outside the UPC territory created an “imminent risk of patent infringement” inside the UPC territory.
Key Points To Bear In Mind
- Risk of imminent infringement – distributing a patent-infringing composition outside the UPC’s territory and marketing it within the UPC jurisdiction under the same brand name can create a risk of future infringement.
- Use actus contrarius to eliminate risk – consider eliminating the risk of imminent infringement by using an actus contrarius such as a cease and desist declaration.
- Consider branding strategy carefully – reflect on your branding strategy carefully in advance of launching brand names for patented products in particular territories, both inside and outside of the UPC jurisdiction.
Case Facts
- Syngenta is the owner of European patent EP2152073 covering a herbicide composition for controlling weeds in maize crops. It applied for a preliminary injunction against Sumi in relation to Sumi’s “Kagura” product, which it said infringed its patent. Sumi had obtained market authorisations for the Kagura product in several markets both inside and outside the UPC jurisdiction in 2023 and 2024.
- In late 2023, Syngenta discovered that Kagura was being marketed in the Czech Republic and Poland (both outside the UPC territory), and in March 2024, after analysing Czech and Polish samples, warned Sumi about the potential infringement of its patent. Whilst the parties were in negotiation, Syngenta then discovered that Sumi was advertising Kagura inside the UPC jurisdiction, including in Germany, and applied for a Preliminary Injunction against Sumi in the UPC territory.
- Sumi claimed that its Kagura product did not infringe Syngenta’s patent within the UPC jurisdiction, because it had marketed two different products, one within the UPC territory and one outside of this.
Reasons For The UPC’s Ruling
- Same brand name used within UPC territory as for infringing product – the UPC’s Munich Local Division ruled that Sumi’s product sold outside the UPC territory was infringing due to the presence of a fatty acid composition claimed by Syngenta’s patent, and stated that, because Sumi were selling their product within the UPC territory under the same brand name as the infringing product being sold outside the UPC jurisdiction, this presented a risk of imminent infringement with the possibility of the infringing composition being manufactured, marketed and distributed by them inside the UPC territory in future.
- No cease and desist declaration made by Sumi – the court judged that, even if a second version of Kagura did exist, the risk of imminent infringement established outside the UPC jurisdiction had not been removed because Sumi had not taken action to eliminate the risk by taking an actus contrarius action, in this case making a formal cease and desist declaration, when Sumi claimed to have changed the composition. This new case law follows the generally established principles of national law.
- Immediate action required to prevent losses in 2025 – the Court also stated that the Preliminary Injunction was necessary, because otherwise, if Syngenta had required to pursue a full infringement action, they would have been unable to stop Kagura’s marketing within a short timeframe and would then have made significant losses in 2025.
Contact Us
Our experts are here to help you navigate the UPC, and to help you put the right European IP strategies in place. Please contact one of our patent and trade mark experts to organise a discussion.
Your European IP Experts
Steven McIlroy
Director, Patents & Designs
E. steven@cameronintellectualproperty.com
T. +44 (0)208 390 3775
Chris Cairns
Director, Trade Marks
E. chris@cameronintellectualproperty.com
T. +44 (0)208 390 3775
Categories: Patents, Trade Marks