2025-06-20 - CoA - Aorticlab v. Emboline - UPC_CoA_393/2025

Art. 69(4) UPCA does not provide a legal basis for granting a security for costs at the request of the claimant in an infringement action. The same applies to a claimant in a revocation action pursuant to Art. 32(1)(d) UPCA). The ratio behind Art. 69(4) UPCA is the protection of a defendant against an insolvent claimant, who initiates an action, without having sufficient means to compensate the defendant for the legal costs incurred by the proceedings he was involved in at the initiative of the claimant. That same rationale does not apply to a counterclaim for revocation, since such an action is still the direct consequence of the infringement action initiated by the claimant. Under the system of the UPCA and the RoP, a defendant is not allowed to bring forward an invalidity defence without at the same time lodging a separate counterclaim for revocation. Allowing a security for costs order at the request of the claimant in an infringement action in response to a counterclaim thus unreasonably limits the defendant in its defence.

The Court of Appeal set aside an order by the Munich Local Division in which the Defendant had been ordered to provide a security for costs under Rule 158. The CoA clarified that the UPCA did not provide a legal basis for a security for costs to be ordered against a Defendant of an infringement action. The Court further stated that a security further could not be required in light of a counterclaim for infringement as this would unreasonably limit a Defendants possibility to defend themselves.