UPC The Hague issues injunction against Black Sheep in and beyond UPC territory

Black Sheep Retail Products can no longer sell its shelf dividers in UPC territory and other countries. The local division The Hague has found they infringe a patent owned by HL Display.

Swedish-based HL Display is an international supplier of products and solutions for in-store communication and merchandising to the food and non-food retail sectors. One of the products the company distributes in Europe is a system for securing shelf accessories, which is protected by EP 2 432 351.

Dutch company Black Sheep Retail Products (BSRP) designs, produces and offers a broad range of shelf presentation solutions, such as shelf storage systems, trays, dividers and counter display units, as well as shopping baskets.

HL Display accuses BSRP of infringing EP 351 with some of its products. The patent is valid until 2030 and is in force in Austria, Belgium, Switzerland, Germany, France, UK, Ireland, Italy, Liechtenstein, the Netherlands, Norway, Poland, Portugal, and Sweden. BSRP primarily sells its shelf dividers in Belgium and the Netherlands. However, HL Display requested injunctive relief for all countries in which the patent is valid.

Counterclaim inadmissable

The panel of judges consisted of presiding judge Edger Brinkman, legally qualified judges Margot Kokke and Mélanie Bessaud, as well as technically qualified judge Koen Callewaert. They found BSRP infringed EP 351 and dismissed BSRP’s counterclaim for revocation. The court did not accept its added matter and inventive step attacks.

During proceedings, BSRP revised the original product. The court deemed a counterclaim for declaration of non-infringement with the revised product inadmissible. According to the court, there was no assertion of infringement prior to instituting the counterclaim, nor had BSRP applied in writing for an acknowledgement. However, while finding the first, unrevised product to have infringed EP 351, the court clarified that the injunction and other orders do not extend to the revised product (case ID: UPC_CFI_386/2024).

A matter of competence
The issue of long-arm jurisdiction also arose during the hearing. The court raised the matter of the defence of invalidity for non-contracting member states (non-CMS) in view of the CJEU ruling in the BSH vs Electrolux case. The defendant clarified that its counterclaim for revocation only pertained to CMS countries; for non-CMS countries, it was to be considered a defence. BSRP further clarified that it had not initiated revocation claims in any of the relevant non-CMS countries.

In its decision, the local division The Hague has now clarified the UPC’s approach in such situations. The court assumed competence for hearing infringement claims regarding all designated countries of the patent, even those that are not UPC contracting member states.

Regarding non-CMS EU or Lugano Member States, the court held that it would evaluate whether there is a serious, non-negligible chance that the competent national court will invalidate the patent. However, the judges ultimately found no such chance and granted injunctive relief for all countries where EP 351 is in force.