UPC Further Expands Reach with First Injunction Covering Spain

In February 2025, the Court of Justice of the European Union (CJEU) dramatically expanded the reach of Europe’s Unified Patent Court (UPC) in its landmark BSH Hausgeräte v. Electrolux decision, which confirmed that the UPC has long-arm jurisdiction over infringement in non-UPC countries. In July, the UPC’s Mannheim Local Division (Mannheim LD) then invoked BSH in the first-ever UPC decision to address infringement outside the EU—here, the UK—in Fujifilm v. Kodak. Now the Hamburg Local Division (Hamburg LD) has taken BSH a step further in Dyson v. Dreame, issuing the UPC’s first-ever injunction covering Spain (an EU nation that did not join the UPC). Not only is this also the first time the UPC has granted provisional measures (i.e., a preliminary injunction) under BSH, that decision, and a companion ruling, are further notable for endorsing the concept of an “anchor defendant”—where the UPC has jurisdiction over acts of non-UPC infringement from an entity not based in a UPC country as long as another codefendant from the same “company group” is based in a UPC territory.

The BSH decision removed a key hurdle that as a practical matter limited cross-border litigation in the EU for both the UPC and national courts—Article 24(4) of the Recast Brussels Regulation (the framework that provides unified rules for international jurisdiction within the EU), which provides that national courts in EU member states have exclusive jurisdiction over validity actions. Article 24(4) was previously understood to require that when an EU member state was seized with an infringement action over a patent issued in another member state, it had to stay the case when the validity of the foreign patent was challenged. Thus, defendants could prevent cross-border infringement claims from proceeding by filing a defensive validity challenge.

BSH provided that a stay is no longer required, giving courts the leeway to do so if the validity challenge is reasonably likely to succeed. The CJEU also held that the UPC, and member states, may rule on the validity of patents in non-EU countries not subject to special rules similar to Article 24(4), though those validity decisions are merely inter partes (i.e., they only impact the parties to the case at hand) and may not result in the removal of a patent from the registry of the country of issuance.

The upshot of BSH is that national courts in EU countries, as well as the UPC, may now award damages and/or impose injunctions for the infringement of non-EU patents as long as the defendant is domiciled in the EU (for national court litigation) or in one of the 18 countries participating in the UPC (for UPC litigation).

The first UPC local division to apply BSH, as noted above, was the Mannheim LD, which on July 18 issued the first UPC decision to address infringement outside a UPC territory—here, in the UK. The court held that under BSH, the UPC has “jurisdiction to rule on an infringement action based on a patent granted or validated in a NON-EU member state even if the invalidity of the patent is raised as a defence”, except where restrictions akin to Article 24(4) (i.e., the Lugano Convention or another applicable bilateral convention) apply to convey exclusive jurisdiction over validity actions. That said, Mannheim LD also held, per BSH, that the UPC has no jurisdiction over a validity defense that seeks to remove a patent from the national register of its country of issuance, or to amend that patent in said register.

– The Hamburg Local Division’s Dyson Decision

The Dyson case involved claims of infringement over hair curling devices competing with patent owner Dyson’s Airwrap product. Dyson named four entities from the Dreame Group as defendants, the domiciles and roles of which bear directly on this decision: Dreame International (Hongkong) Limited (called “Defendant 1” in the decision), a Hong Kong-based entity that manufactures the accused products; Teqphone GmbH (“Defendant 2”), an entity based in Germany (a UPC state) that serves as Dreame’s “Official Distributor”; Eurep GmbH (“Defendant 3”), Dreame’s “Authorized Representative”, the designation of which is required for a non-EU company to sell products in the EU), also based in Germany; and Dreame Technology AB (“Defendant 4)”, another affiliate that runs a Sweden-specific website and retail store and is based in Sweden (also a UPC country).

On May 2, 2025, Dyson filed an application for provisional measures against those four defendants, alleging the infringement of a single patent (EP 3 119 235) that covers a hair curler that automatically wraps hair around its surface through four hair-curling products: the older Dreame Airstyle and Dreame Pocket, and the newer Dreame Airstyle Pro and Dreame Pocket Neo. Dyson argued that that Defendant 3 should be considered an infringer in its own right, as its status as Dreame’s EU representative is a legal requirement to sell products within the EU market, or in the alternative should be considered an intermediary. (Article 63 of the UPC Agreement allows injunctive relief “against an intermediary whose services are being used by a third party to infringe a patent”, a concept also found in Spanish patent law.) Dyson further asserted that Defendants 2 and 3, both German entities, should serve as anchor defendants with respect to infringement in Spain.

The Hamburg LD began its August 14 decision on Dyson’s request by addressing the court’s international jurisdiction, starting by reiterating the principle that under the Recast Brussels Regulation, the UPC is a “common court” that can hear claims of infringement for all patent infringement within UPC member states, regardless of the member’s domicile. The court also acknowledged that under first-instance UPC decisions like Fujifilm and the CJEU’s BSH decision, that international jurisdiction covers the infringement of the national parts of European patents outside UPC territories and even those covering countries outside the EU.

The Hamburg LD then addressed the UPC’s jurisdiction over the parties in this case with respect to infringement in Spain. Here, the court held that Dyson had not established that the UPC has international jurisdiction under Article 4(1) of the Recast Brussels Regulation over Defendant 2 (the German distributor) or Defendant 4 (the Swedish entity operating a retail store and website in that company), as it had not shown either had been involved in the marketing of the accused products in Spain.

However, the Hamburg LD held that the UPC has jurisdiction over Defendant 3, the German entity designated as Dreame’s EU authorized representative, because Dyson had shown that Defendant 3 could be subject to an injunction under Spanish patent law: The court found that because Defendant 3, as the authorized representative, bore the key responsibility of obtaining a declaration of conformity with EU directives—a requirement for selling the accused products in the EU—Defendant 3 was an essential party to the case.

While the court determined that this “might not be strong enough [for defendant 3] to be held liable for damages incurred by the alleged patent infringement, . . . it is the provision of an indispensable service to the actual infringer”. As a result, the court concluded that “an authorized representative can be subject to an injunction as an intermediary in the meaning of the” applicable EU laws and Spanish patent law.

Moreover, the Hamburg LD held that Defendant 3 may also serve as an “anchor defendant” such that the court’s jurisdiction also covers Defendant 1, the Hong Kong entity making the infringing products: While it held that the UPC does not have jurisdiction over Defendant 1 under Article 4(1) of the Recast Brussels Regulation, the court found that the requirements of Article 8(1), which conveys jurisdiction over any defendant when at least one codefendant is domiciled in a member state (here, the UPC) as long as the claims against them are sufficiently “closely connected” such that deciding the claims together avoids the risk of irreconcilable judgments, are met here. After resolving a dispute over whether the language of that provision introduces any additional requirements—determining that it does not—the court held that Article 8(1) “is to be applied by the UPC to co-defendants not domiciled in the EU”. The court then held that in this context, the “anchor defendant” concept enabled by Article 8(1) “requires a party domiciled in the forum state (here: Germany) that acted allegedly in Spain, opening up for universal jurisdiction, which is here Defendant 3)” since the framework creating the authorized representative requirement establishes a “necessary, legally established close connection between Defendant 1) and Defendant 3)”.

The Hamburg LD further explained that this result is supported by Article 33 of the UPC Agreement (the treaty that formed the UPC), which gives a UPC local division within a UPC member state the competence to hear cases against multiple defendants where at least one is domiciled in that country, provided that the defendants have a “commercial relationship” and the claims stem from the same alleged infringement. The role of an EU authorized representative “is without doubt sufficient to fulfil these criteria”, the Hamburg LD concluded.

The Hamburg LD then turned to the merits of Dyson’s request for preliminary measures. After determining that the patent is likely valid, the court addressed infringement—holding that the older Dreame Airstyle and Dreame Pocket, but not the newer Dreame Airstyle Pro and Dreame Pocket Neo, infringed the asserted claims.

The Hamburg LD next proceeded to address the liability of the specific defendant entities in suit—and thus, where those entities would be subject to the provisional measures/preliminary injunction. The court held that Defendant 1 (the Hong Kong entity that manufactures the accused products and markets them via certain websites) is liable for infringement both in UPC countries and in Spain, and that Defendants 2 and 4—based in Germany and Sweden, respectively—are only liable for infringement in UPC territories, given that the court lacks jurisdiction over those defendants for infringement in Spain as explained above. However, the court concluded that since Defendant 1 could not legally sell its products in the EU without Defendant 3 as its EU authorized representative, Defendant 3 qualifies as its intermediary under both the UPC agreement and Spanish patent law, such that Defendant 3 is liable for infringement both in UPC territories and in Spain.

Finally, the Hamburg LD also found that Dyson had met the other requirements for provisional measures—including that the plaintiff had demonstrated sufficient urgency, as it had not waited unreasonably long to seek such relief. The court additionally found that the balance of interests weighed in Dyson’s favor here, citing the fact that the defendants are competitors and that the lower price of the accused products—which cost half the price of Dyson’s—“is a strong indicator for the risk of loss of market shares and price erosion”.

– Hague Local Division Adopts Same Approach to Anchor Defendants

While it may take some time before the UPC Court of Appeal conclusively addresses the issue of anchor defendants, The Hague Local Division (Hague LD) has in the meantime adopted same approach as the Hamburg Local Division (albeit, without explicitly using the term “anchor defendants”). On August 18, the Hague LD issued a panel decision that rejected a jurisdictional challenge from defendant Moderna in a case filed by Genevant Sciences and Arbutus Biopharma targeting its Spikevax mRNA COVID-19 vaccine, upholding a ruling from the judge-rapporteur. (As a general matter, the judge-rapporteur handles issues that arise during the interim procedure, the stage of UPC litigation that comes before the oral hearing.)

Here, Moderna disputed the exercise of jurisdiction over a Spanish subsidiary, Moderna Biotech Spain (“Moderna Spain”); and Norwegian subsidiary Moderna Norway. The panel held that the claims against Moderna Spain were “closely connected” to claims against Moderna Netherlands, a codefendant based in a UPC state (The Netherlands, naturally), under Article 8(1) of the Recast Brussels Regulation, mirroring the reasoning detailed in the Dyson decision. The same applied for Moderna Norway, the court held; because while Norway is not in the EU, it enjoys similar jurisdictional protections under the Lugano Convention. As such, the panel concluded in relevant part that for “establishing international jurisdiction, it is sufficient for the Claimants to allege in a substantiated way . . . that Moderna Spain and Moderna Norway infringe the same patents (one of which is a bundle patent, the other has unitary effect) with the allegedly infringing product ‘Spikevax’ (the same product) in their home countries (the same territory) collectively with Moderna Netherlands within the meaning of art. 8 BR / 6(1) Lugano Convention)”.

The plaintiff had made such a showing of infringement by Moderna Spain and Moderna Norway, the panel determined—as the Spanish entity in question not only facilitates the sales of Spikevax in other EU territories as the holder of the drug’s market authorization (MA) for Moderna (thus facilitating infringement, similar to the intermediary issue in the Dyson case) but also manufactures the drug for certain EU territories. (Infringement by Moderna Norway was not disputed.)

For more on the BSH decision and its potential impact on EU patent litigation, see “CJEU’s Long-Arm Jurisdiction Ruling Could Shake Up Enforcement Strategies in Europe” (March 2025). Further details on the Mannheim LD’s Fujifilm decision, and related developments in that litigation, can be found at “UPC Issues First-Ever UK Injunction” (July 2025).