UPC_CFI_766/2024 – Cardo v Shenzhen Asmax Infinite

Court
Local Division Milan
Date
Outcome
Granted
Sector
Other
Decision Type
PROCEDURAL

Expert Commentary

Service in China Facts 1. Cardo Systems filed an infringement suit against defendants on 16 December 2024. 2. The Chinese Central Authority rejected the service. The JR 1. The The Hague Service Convention is applicable, as the defendant is registered in China. 2. The Chinese Central Authority rejected service for the reason that the Statement of Claim mentioned Hong Kong, instead of Hong Kong, China. That is not a valid reason to refuse service: the Statement of Claim is only an attachment and not the service document. 3. The JR applied Art. 15(2) of the The Hague Convention as service has proven to be impossible which allows the Court to give judgment if the conditions of that provision are fulfilled. Comment 1. Excellent decision in my opinion! The JR does not refer to Service by alternative method (R. 275 RoP) as some decisions do. That provision is indeed irrelevant in this situation (and does not provide for a valid service in conformity with the The Hague Convention in my opinion). 2. For PI proceedings the 6-months waiting period (which applied in this case) is not necessary: see Art. 15 (3) of the The Hague Convention. 3. Advice for representatives: if your Statement of Claim refers to Hong Kong, always refer to Hong Kong, China!

Full Decision Text

UPC CFI_766/2024 UNIFIED PATENT COURT COURT OF FIRST INSTANCE MILAN LOCAL DIVISION ORDER Headnotes The Article 15(2) of the Hague Service Convention is entirely applicable in UPC System, regardless of any additional requirements for service within each Member State. Indeed: (i) the service system in the UPC is uniform; ii) participating Members States in the UPC system have also indirectly adopted the rules laid down in the Hague Service Convention by adopting the rules of procedure, without exception, at least with regard to notifications ordered by UPC Courts. Keywords Service, Regulation (EU) 2020/1784, the Hague Convention, Service outside the Contracting Member States CLAIMANT Cardo Systems, Ltd. DEFENDANTS 1. Shenzhen Asmax Infinite Technology Co., Ltd. 2. Hong Kong Yiheng International Technology Co., Limited PATENT AT ISSUE: Patent no. EP 4 240 194 (Cardo Systems, Ltd patent proprietor) DECIDING JUDGE Alima Zana Judge rapporteur, delegated by the Panel, LANGUAGE OF PROCEEDINGS English Summary of facts 1.On December, 16, 2024 Cardo Systems, Ltd filed an infringement action against two defendants: (i) Hong Kong Yiheng International Technology Co. Ltd; (ii) Shemzhen Asmax Infinite Technology Co., Ltd, claiming that the products Z1-ASMAX and F1-ASMAX and further variations of these products such as Plus, Pro and Pro Max versions thereof - would interfere with the scope of protection granted by the patent EP 4240194 (EP 194). 2. The service against Hong Kong Yiheng International Technology Co. Ltd. – domiciled Unit B, 13/F, Shing Lee Commercial Building, No. 8, Wing Kut Street, Central, 00000, Hong Kong, HK- was successfully completed on the second attempt on May, 29, 2025. 3. On the contrary, the service against Shemzhen Asmax Infinite Technology Co., Ltd -domiciled in Room 908, Building 2, Aviation & Space Building No. 53 Gaoxin South 9 the Road, Gaoxin Community, Yuehai Strett, Nanshan District 5180063, Shenzhen,m CN- failed twice, on 16/01/2025 and on 26/05/2025. Indeed, the services were rejected by the Chinese central authority with the following reason “Please use the full name “Hong Kong, China” whenever referring to Hong Kong in documents”. Grounds of the decision General considerations 5. This order is adopted in accordance with: - rules 274 e 276 ROP; - The Hague Service Convention, - UPC case law (see Mannheim Local Division, July 31, 2024, CFI 330/2024; Court of Appeal, July, 29, 2024, UPC_CoA_69 -70/2024). The case at hand 6. Milan Local Division has exhausted the options available to it under the Rules of Procedure for formal service in accordance with Rules 270-274 of the Rules of Procedure, against Shemzhen Asmax Infinite Technology Co., Ltd -domiciled in China Room 908, Building 2, Aviation & Space Building No. 53 Gaoxin South 9 the Road, Gaoxin Community, Yuehai Strett, Nanshan District 5180063, Shenzhen. The Contracting Member States and outside the EU Service is governed by R.273 and R.274.1 RoP. Regulation n. 2020/1784 (that governs the service and communication of judicial and extrajudicial documents in civil and commercial matters between the Member States of the European Union) does not apply to them, which means that the conditions for applying R.274.1(a)(i) RoP are not met. The Hague Service Convention applies since the Asian company has registered offices in China (see R.274.1(a)(ii) RoP. 7. At this purpose, according to The Hague Service Convention, if the service is made by the Milan Local Division, article15(2) is applicable entirely applicable, regardless of any additional requirements for service within each Member State. Indeed: (i) the service system in the UPC is uniform. In particular: “The UPC has its own service provisions, next to Regulation 2020/1784 and the Hague Convention. National laws of a Contracting Member State do not take primacy” ( UPC Court of Appeal _CoA_69/2024, 27.9.2024); (ii) (ii) participating Members States in the UPC system have also indirectly adopted the rules laid down in the Hague Service Convention by adopting the rules of procedure, without exception, at least with regard to notifications ordered by UPC Courts. Indeed “A transmission within the meaning of Article 15(2)(a) of the Hague Convention has taken place, and the reasonable steps under Article 15(2)(c) of the Hague Convention have been taken. The declaration by the Contracting State that its judges may decide the case under Article 15 (1) cited above, even if a certificate of service has not been received, has been implemented by the Contracting States to the UPC by means of Rule 275.2 ROP on the basis of Article 41 UPCA by the decision of the Administrative Committee of July 8, 2022” (see Mannheim Local Division, cited above). 8. In the case at hand, the original proceedings for service pursuant to the Hauge Service Convention was rejected twice (on January, 16, 2025 and on May, 26, 2025). On May, 26, 2025 the subsequent service pursuant to the Hague Service Convention has finally failed, so that no further attempts at service are necessary. 9. The reason given by the Chinese authority to refuse the Service (Please use the full name “Hong Kong, China” whenever referring to Hong Kong in documents) is purely formal because: (i) it concerns the incorrect indication of the first defendant's domicile as Hong Kong (and not China), to which the notification was successfully made; (ii) The UPC cannot amend the text of the writ of summons, but only the notification report, which is correct. 10. Therefore, the service shall be considered complete. The Milan Local Divion complied with the formal requirements of the Convention. In particular. a. The service report against Shemzhen Asmax Infinite Technology Co., Ltd, is correct under the art. 5.1. a. The Hague Convention Service. Exclusively those against the other defendant was initially wrong; it was corrected after the first attempt using the complete denomination “Hong Kong Sar”. Indeed, the second attempt of the service was successful, nothing arguing the Honk Hong central Authority. The Service was transmitted via the Electronic Portal set up by the Chinese Authorities- International Legal Cooperation Center (ILCC) Ministry of Justice to receive the notification under The Hauge Service Convention, as Authority designated by China, HICCH Member and contracting party (art.6). b. the request pursuant to Article 3 of the Hague Convention was transmitted in two copies uploaded to the electronic portal created by the Chinese Central Authority and in accordance with the attached template, in both English and Chinese, as the document to be served (Art 7 the Hague Convention); c. the terminology used in the address for service was correct according to the opinion of the receiving agency. d. the statement of claim was submitted in two copies in English and Chinese language (Art. 5 (1) and (3) the Hague Convention). e. the cover letters generated by the CMS together with the access code were not duplicated is irrelevant, f. It is irrelevant the fact that the annexes to the statement of claim were enclosed in a single copy. This is because these documents are not an integral part of the document to be served. In any case, has already specified by the UPC “it is not for the authorities involved in service under the Hague Convention to examine whether the statement of claim is sufficiently comprehensible on its own, without attachments, to be sufficient for formal service. Rather, it is solely up to the plaintiff to decide what information it considers necessary for the effective filing of a lawsuit against the defendant. Whether this constitutes a procedural defect is then to be decided by the court called upon to rule I in accordance with the applicable national procedural law” (see Mannheim Local Division, cited above). “How the plaintiff describes the defendant's business address is entirely up to them. Censorship of content based on political expediency has no place in the Hague Service Convention. It is not the task of the authority responsible for service in the receiving state, nor of the court requesting service, to censor or edit the content of the document to be served. The document must be served as submitted by the party. Changes to the content of documents submitted by a party – as formulated in the alternative request in point 2 – by the court itself are prohibited in view of the independence and impartiality to which the court is bound” (see Mannheim Local Division, cited above). 11. Furthermore, the designation of the defendant's business address as being in "Hong Kong" used by the plaintiff has not precluded the service. 12.By its statements and return of the documents to be served, the receiving agency has made it clear that service will not take place without the requested changes. This is contrary to the obligations under the Hague Service Convention. Since the refusal is serious and final, there is no need for a new attempt at transmission, nor is the time limit of Art. 15 (2)(b) The Hague Convention to be observed in this case. 13. Ad pointed out by the Court of Appeal “A defendant company in China or Hong Kong cannot be served a Statement of claim by email to a person who is not authorised to accept service. Neither can such service be made by public service in the form of a written notice to be displayed in the publicly accessible premises of a UPC Local Division at this stage. Attempts to serve in China by any method provided for by the Hague Convention pursuant to R.274.1(a)(ii) RoP shall normally be made before service by other means (R.274.1(b) RoP) or by alternative methods or at an alternative place (R.275 RoP) is permitted” (Case number UPC_CoA_69/2024)“. That said, whether all formal attempts at service have failed, it is necessary to ensure that the proceedings proceed expeditiously. 14. In this case, the claimant did not suggest any alternative means of service (the Registrar had informed him that attempts at service had been unsuccessful and invited him to suggest alternative methods if necessary). Instead, Cardo requested that the attempts be declared valid service. Therefore, the wording of the motion can also be interpreted as encompassing service pursuant to Rule 275.2 of the Rules of Procedure. 15..As is well Known, in cases of serious and definitive refusal following an actual attempt at service, no further attempt is necessary. In the case at hand, postal service by regular mail is not a suitable alternative method because China opposed to the possibility of postal service (Art. 10(a) HCCH) and service by electronic means such as email does also not appear to be possible in China without consent (Court of Appeal, order dated July 29, 2024 – CoA 69/2024 and CoA 70/2024, GRUR-RS 2024, 18501 marg. no, 36 – NEC v. TCL) In conclusion, it must be ordered that the steps already taken as described above constitute legally valid service. Otherwise, service would be impossible. 16. In order to enable the defendant to take note of the present decision even without service, it is necessary to order that a separate reference to the present order be made on the court's publicly accessible website. Formal service of the present order pursuant to Rule 276.1 ROP is not necessary. Such service would inevitably have failed due to the same obstacles that led to the issuance of the present order. ORDER 1. the steps already taken to bring the statement of claim in case ACT_.CFI UPC_CFI_766/2025. to the attention of the defendant Shemzhen Asmax Infinite Technology Co., constitute valid service; 2. this order shall be referred to on the court's website in the following wording, stating the names of the parties and the file number, so that the order can be found among the decisions published on the website: "In the proceedings introduced by Cardo against Hong Kong Yiheng International Technology Co. Ltd and Shemzhen Asmax Infinite Technology Co., UPC_CFI 766/2024. an order replacing formal service was issued by the Local Chamber in Milan on December, 12, 2025. Issued In Milan, December, 12, 2025 The Judge rapporteur Alima Zana ZANA Firmato digitalmente da ZANA ALIMA ALIMA Data: 2025.12.12 12:30:08 +01'00'

Key Holdings

  • The Court ruled that the Chinese Central Authority's rejection of service due to 'Hong Kong' instead of 'Hong Kong, China' in the Statement of Claim was not a valid reason.
  • The Hague Service Convention is applicable, and the Court applied Art. 15(2) to allow judgment as service proved impossible.
  • The Statement of Claim is considered an attachment, not the service document itself.
  • The decision highlights that R. 275 RoP (alternative service) is irrelevant for service under The Hague Convention.

Tags

  • Hague Service Convention
  • Jurisdiction
  • Service

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