UPC_CoA_297/2024 – Shark Ninja v Dyson
- Court
- Court of Appeal
- Date
- Outcome
- Denied
- Sector
- Other
- Decision Type
- PROCEDURAL
Expert Commentary
Period for starting cost proceedings Background Shark Ninja lost preliminary injunction (“PI”) proceedings in first instance but won on appeal, after which the issued PI was lifted. Dyson was ordered to pay the costs for both instances. The case on the merits is still ongoing. Shark Ninja sought to suspend the cost procedure or, alternatively, extend the term for initiating such proceedings. Dyson agreed. The Court of Appeal’s decision The separate cost proceedings must be initiated within one month after the service of the decision. Shark Ninja’s request was therefore premature, as the one-month term had not yet started. In an obiter dictum the Court notes that R. 150 RoP and R. 151 RoP are also applicable if a PI application is unsuccessful. Comment 1. I understand this decision means you have to await the decision (in the case on the merits) before you can lodge your cost proceedings for the PI. The Court of Appeal does not say that it means with “decision” the decision in the case on the merit but PI proceedings do not end with a decision but with an order and Shark Ninja’s request was certainly not premature if the Court meant the decision in the PI proceedings. 2. If the way I understand the decision of the Court of Appeal is correct then I think that is efficient (you can always ask for an interim award for costs). However, if a stand alone PI is lost and there is no case on the merit then it is of course possible (and necessary) to start cost proceedings within 30 days after the (final) decision in the PI proceedings.
Full Decision Text
1 ORDER of the Court of Appeal of the United Patent Court issued on 20 January 2025 application for staying the proceedings for cost decision, alternatively extension request (R. 151 RoP, R. 295(d) RoP, R. 9.3(a) RoP) HEADNOTE: - The one month period for lodging an Application for a cost decision pursuant to R. 151.1 RoP begins with the service of the decision in the proceedings on the merits, not with the service of an order on provisional measures. - If the applicant does not start proceedings on the merits of the case pursuant to R. 213 RoP, for example, if the application for provisional measures was unsuccessful, R. 150 and 151 RoP apply mutatis mutandis. KEYWORDS: Application for a cost decision (R. 150.1 RoP, R. 151.1 RoP) APPLICANTS 1. SharkNinja Europe Limited, Leeds, UK 2. SharkNinja Germany GmbH, Frankfurt am Main, Germany (hereinafter jointly referred to as SharkNinja) both represented by: attorneys-at-law Wolrad Prinz zu Waldeck und Pyrmont and Kilian Seidel (Freshfields Bruckhaus Deringer, Düsseldorf, Germany) R ESPONDENT Dyson Technology Limited, Malmesbury, Wiltshire, UK (hereinafter: Dyson) Represented by: attorneys-at-law Dr. Constanze Krenz, David Kleß and Joschua Fiedler (DLA Piper, Munich, Germany) L ANGUAGE OF PROCEEDINGS German UPC – Court of Appeal UPC_CoA_297/2024 App_283/2025 2 P ANEL AND DECIDING JUDGES: Second Panel: Rian Kalden, Presiding judge and legally qualified judge Ingeborg Simonsson, legally qualified judge and judge-rapporteur Patricia Rombach, legally qualified judge Graham Ashley, technically qualified judge Max Tilmann, technically qualified judge P OINTS AT ISSUE Application for a cost decision, Application for staying the proceedings for cost decision, auxiliary extension request (R. 151 RoP, R. 295(d) RoP, R. 9.3(a) RoP) P ATENT AT ISSUE EP 2 043 492 SUMMARY OF FACTS 1. Dyson lodged an application for provisional measures against SharkNinja with the Local Division Munich. The Local Division Munich issued an interim injunction against SharkNinja. SharkNinja appealed. On 3 December 2024, the Court of Appeal set aside the impugned order, denied the application for provisional measures and ordered Dyson to bear SharkNinja's costs for the proceedings on provisional measures in both instances. 2. Meanwhile, Dyson has lodged proceedings on the merits against SharkNinja before the Local Division Munich (ACT_35930/2024, UPC_CFI_322/2024) and SharkNinja has lodged a counterclaim for revocation (CC_54802/2024, UPC_CFI_588/2024). The proceedings on the merits are pending. INDICATION OF THE PARTIES‘ REQUESTS 3. SharkNinja requests the Court of Appeal to stay the cost assessment proceedings pursuant to R. 295(d) RoP, with the consequence that the time limit for submitting an Application for a cost decision pursuant to R. 151 RoP shall cease to run for the purposes of procedural periods pursuant to R. 296(3) RoP. Should the Court of Appeal consider a stay under R. 295(d) RoP to be inadmissible at this stage of the proceedings, it is requested in the alternative that the time limit for filing an Application for a cost decision under R. 151 RoP be extended by three months, i.e. until 3 April 2025, pursuant to R. 9(3)(a) RoP. 4. Dyson agrees to the stay and, in the alternative, the extension of the time period. GROUNDS FOR THE ORDER 5. A cost decision may be the subject of separate proceedings following a decision on the merits and, if applicable, a decision for the determination of damages (R. 150.1 RoP). Where the successful party wishes to seek a cost decision, it shall within one month of service of the decision lodge an Application for a cost decision (R. 151 RoP). 3 6. This one month period begins with the service of the decision on the merits. 7. By consequence, SharkNinja’s requests are filed too early and are inadmissible. 8. The following can be added: If the applicant does not start proceedings on the merits of the case pursuant to R. 213 RoP, for example, if the application for provisional measures was unsuccessful, R. 150 and 151 RoP do not appear to be applicable, at least on a strict literal reading. However, to fulfil the objectives of Art. 69(1-3) UPCA that the successful party can have its reasonable and proportionate legal costs and other expenses compensated by the unsuccessful party, an application of R. 150 and .151 RoP mutatis mutandis would be justified in that situation. O RDER SharkNinja’s requests are dismissed without being tried in substance. Issued on 20 January 2025 Rian Kalden, Presiding judge and legally qualified judge Ingeborg Simonsson, legally qualified judge and judge-rapporteur Patricia Rombach, legally qualified judge Graham Ashley, technically qualified judge Max Tilmann, technically qualified judge
Key Holdings
- Separate cost proceedings must be initiated within one month after the service of the decision.
- A request to suspend or extend cost proceedings is premature if the one-month term for initiation has not yet begun.
- Rules 150 RoP and 151 RoP concerning costs are applicable even if a preliminary injunction application is unsuccessful.
- Cost proceedings for a preliminary injunction are generally linked to the decision on the merits, unless it is a standalone PI.
Tags
- Appeal
- Costs
- Preliminary Injunction
- Rules of Procedure