Another ex parte preliminary measures decision by the Milan Local Division

The UPCA provides patentees with a variety of provisional measures that may be quickly implemented to prevent suspected infringement without hearing the affected parties. In two recent decisions handed down by the Milan Local Division of the UPC (UPC_CFI_649/2024, UPC_CFI_650/2024), the presiding judges granted two ex parte applications for provisional measures against multiple defendants in view of suspected infringement at the then-imminent EICMA International Motorcycle and Accessories Exhibition in Milan. The applications, made by Pirelli Tyres, related to the suspicion of imminent infringement of two European patents covering leading products in their range of motorcycle tyres. In the applications, Pirelli alleged that the defendants’ advertisement of their attendance at the fair displayed images of tyre models which reproduced all features protected by the patents in suit. Consequently, seizure and delivery up of the contested products and promotional material thereof was requested. Interestingly, no protective letters appear to have been filed by any of the defendants.

In the grounds for the Orders, the Court considered the suspicion of imminent infringement to be well-founded given that the defendants’ products appeared to be entirely substitutable for those of Pirelli’s. Further, any delay in granting the order by summoning the parties in question was held to be likely to cause irreparable harm to the applicant as the defendants are direct competitors of Pirelli, and the EICMA is regarded to be one of the most important exhibitions in the motorcycle industry worldwide. Urgency of the measures was therefore required to protect the applicant’s market share and prevent consumer diversion. As a result, the requested Orders for seizure and delivery were found to be proportionate.

Although other UPC local divisions (Hamburg, Düsseldorf x 2, Brussels and Paris) have issued ex parte Orders for preliminary measures, the Milan Local Division takes an early lead in issuing Orders of this nature. This may be entirely coincidental and catalysed by the location of relevant trade fairs in Italy. Nevertheless, the apparent willingness of the Milan Local Division to find in claimants’ favour in light of urgent commercial need is encouraging. Whilst defendants can challenge any such decision at first instance as well as at the Court of Appeal, the advantages provided by these decisions to claimants are undeniable.