bluuebunny/crossref_metadata_2025 huggingface dataset:
Remedies for equitable wrongs
Authors: Burrows Andrew
Published: March 2021

Torts and breach of contract are termed common law wrongs because they were historically developed in the common law courts. Equitable wrongs are civil wrongs that historically were developed in the Court of Chancery. Despite the fusion of the common law courts and the Court of Chancery by the Supreme Court of Judicature Acts 1873–1875, much of the substantive law has not been fused. One example is the continued distinction between common law and equitable wrongs. In a rational fused system, nothing should turn on whether a civil wrong is common law or equitable. But that is not the present law.
Historical Introduction
Authors: Stone David
Published: March 2021

Interest in an EU-wide design law dates back to the origins of the European Union. Realizing that early dream, however, has taken many decades. This chapter provides a brief overview of the history of the adoption of Directive (EC) 98/71 of 13 October 1998 on the legal protection of designs (the Directive) and Council Regulation (EC) 6/2002 of 12 December 2001 on Community designs (the Regulation), and the main debates that stymied their progress.
The System of Courts and Tribunals with Jurisdiction for European Union Design Disputes
Authors: Stone David
Published: March 2021

The system of courts and tribunals determining issues under the Regulation and the Directive is complex, and, occasionally, counter-intuitive.
Prior Designs
Authors: Stone David
Published: March 2021

Article 4 of the Regulation provides that ‘a design shall be protected by a Community design to the extent that it is new and has individual character’. Both novelty and individual character are assessed against designs made available to the public prior to the relevant date (the date of disclosure in the European Union for unregistered Community designs and the application or priority date for RCDs).
The Office
Authors: Stone David
Published: March 2021

By the time of passage of the Regulation, the Office had already been established pursuant to the CTM Regulation. It was therefore unnecessary to provide in the (Designs) Regulation for the establishment or workings of the Office and many of the procedural provisions in the Regulation could be adopted from the CTM Regulation. The necessity to set up a separate Community Design Office, mooted in the Green Paper, was therefore avoided.
Loss of RightsRequirement of Use, Conversion to Generic Indication
Authors: Mühlendahl Alexander , Botis Dimitris , Maniatis Spyros , Wiseman Imogen
Published: March 2021

The rights arising from trade mark registration may be lost. First, when registration is not renewed, the registration will be deleted from the register. Second, a registered trade mark is liable to be revoked if it has not been put to genuine use for more than five years. Third, a trade mark is subject to revocation when it has become the generic indication, the ‘name’ of the product. Fourth, a mark is also subject to revocation when it has become misleading. The last two revocation grounds are the mirror image of the absolute grounds for refusal, the difference being that revocation is available when the mark, although properly registered initially, has become generic or misleading at a later time. The first ground for revocation, absence of genuine use, has no counterpart at the time of filing or registration. Rather, the legislation provides trade mark proprietors with a period of five years following registration after which revocation is possible.
Scope of Protection, Limitations,  and Enforcement
Authors: Mühlendahl Alexander , Botis Dimitris , Maniatis Spyros , Wiseman Imogen
Published: March 2021

This chapter explores the scope of protection and considers trade mark conflicts from the perspective of trade mark infringement and enforcement. It also considers conflicts between trade mark and other types of rights over commercial indicia. The concepts of use, confusion, and protection of trade marks with reputation together with their related tests have been developed in Chapter 5. In this chapter we revisit them from an infringement perspective where the comparisons courts have to make become more concrete, and market and factual contexts become even more relevant. Issues specific to the enforcement of the Community trade mark are considered towards at the end of this chapter together with a discussion on goods in transit.
Trade Marks and Competition Law
Authors: Mühlendahl Alexander , Botis Dimitris , Maniatis Spyros , Wiseman Imogen
Published: March 2021

In this chapter we will examine briefly the formal interaction between trade marks and competition law. We have seen that competition questions were raised in the previous chapter in respect of the potential function of trade mark rights as tools for compartmentalizing the common European market into national markets. We have also highlighted the competition arguments and rationale considered by the Court first in determining what constitutes a protectable trade mark and second in delineating the scope of protection. Here, the focus shifts to how trade mark rights and agreements involving trade marks are weighed up by competition law. The two primary competition rules that are described below deal with anti-​competitive collusion (Article 101 TFEU, previously Article 81 EC) and abuse of market dominance (Article 102 TFEU, previously Article 82 EC).
Data Protection
Authors: Tajti Tibor
Published: March 2021

Chapter VI is a new chapter in the EIR. Its presence signals the importance that data protection law has gained in Europe since the adoption of the Data Protection Directive 95/46/EC (DPD) and Regulation 45/2001. Although the DPD is not—though it comes close to—a maximum harmonisation directive, its implementation by Member States by the end of 1998 increased data protection standards on national levels as well. Yet the concrete reason that led to the addition of this Chapter is the expanded scope of the EIR as far as the exchange and publication of personal data is concerned. The expansion and thus the enhanced need for data protection is due in particular to the provision made in the recast EIR for newly established interconnected national insolvency registers, accessible via the European e-Justice Portal. This provision has been made at a time when data protection law is increasingly recognised as a ‘stand-alone’ subject, emancipated from privacy law, as expressed indirectly also by the popularisation of the ‘data protection’ nomenclature originating in the German term ‘Datenschutz’. This has clear implications for private and commercial law, including insolvency law.
Mistake
Authors: Ashdown Michael
Published: March 2021

The equitable doctrine of mistake as the basis for setting aside a voluntary disposition, such as a gift, is of much longer standing than the rule in Re Hastings-Bass, and is of much broader application. It is concerned essentially with the impairment of the disponor’s intention: he or she would not, for example, have made a gift, or settled property on trust, or exercised a power of appointment, or consented to the exercise of a power, but for some mistake. It is not limited in its application to trustees or fiduciaries, and indeed is most commonly seen in the context of individuals dealing with their own beneficially owned property. It has obvious affinities, though is not wholly aligned, with other instances of mistake in the law of obligations: most obviously common mistake as a ground for treating a contract as void, and causative mistake as an ‘unjust factor’ in the law of unjust enrichment. However, it also raises questions which are relevant to any analysis of the Re Hastings-Bass rule, not least since both principles may be engaged in the same factual scenario.
Scope of The EIR
Authors: Bork Reinhard , Mangano Renato
Published: March 2021

This chapter analyses the situations in which the European Insolvency Regulation will be applied, as defined in its first article and in other provisions. The scope of the EIR is marked by a notable deference to the characterizations of particular insolvency situations used by individual Member States, and this is reflected in the chapter. The chapter looks first at the personal scope of the EIR. Member States categorize debtors in a range of ways: natural and legal persons, traders and consumers, bodies governed by private or public law. All of these perspectives will be taken into account, as well as the scope of the exemptions noted within the EIR and the position of groups of companies. The chapter scrutinizes the proceedings covered by the EIR, including pre-insolvency and hybrid proceedings brought into the system via reform and looks at the issues raised regarding territorial scope of the regulation.
England & Wales
Authors: Ereira David , Sidle Paul
Published: March 2021

The material contained herein is intended as a general guide only and is not intended to be a memorandum of law study, nor to provide legal advice, and should not be treated as a substitute for legal advice concerning particular situations. Legal advice should always be sought before taking any action based on the information provided. The publishers, editors, and authors bear no responsibility for any errors or omissions contained therein.
South Africa
Authors: van der Linde Kathleen
Published: March 2021

The author would like to thank Adam Harris, partner at Bowman Gilfillan, Juanitta Calitz, associate professor at the University of Johannesburg, and Riza Moosa, director at Norton Rose Fulbright South Africa, for valuable feedback on a draft of this chapter. The author also benefitted from discussions with Stephen Gamble, chairman of the Loan Markets Association’s Africa Group, and Alex Otto, head of Structured Products and Principle Investments at Standard Bank Group. The material contained herein is intended as a general guide only and is not intended to be a memorandum of law study, nor to provide legal advice, and should not be treated as a substitute for legal advice concerning particular situations. Legal advice should always be sought before taking any action based on the information provided. The publishers, editors, and author bear no responsibility for any errors or omissions contained therein.
Switzerland
Authors: Huber Ueli , Frick Jürg
Published: March 2021

The material contained herein is intended as a general guide only and is not intended to be a memorandum of law study, nor to provide legal advice, and should not be treated as a substitute for legal advice concerning particular situations. Legal advice should always be sought before taking any action based on the information provided. The publishers, editors, and authors bear no responsibility for any errors or omissions contained therein.
Trustees’ Dispositive Powers and Discretionary Trusts
Authors: Panico Paolo
Published: March 2021

The traditional approach under English equity relies on the notion that the beneficiaries are ‘beneficial owners’ of the trust property. This has traditionally been the main difficulty for the reception of trusts in the jurisdictions that do not know equity, as is discussed in Chapter 14.
Trustee Exemption Clauses
Authors: Panico Paolo
Published: March 2021

The personal liability of trustees in the event of a breach of trust may be limited or excluded under a clause in the trust instrument. The validity of such a clause was confirmed by the House of Lords in Wilkins v Hogg of 1861, where Lord Westbury LC observed that ‘[a]‌ testator could define the duty of his trustees, and point out the extent of their liability, and the court could not extend their responsibility’.
Trustees’ Remuneration, Expenses, and Indemnity
Authors: Panico Paolo
Published: March 2021

The services of trustees in eighteenth- and nineteenth-century Britain were presumed to be gratuitous as the relationships between gentlemen should not be tainted by monetary arrangements. This rule reflected a situation where the trustee’s office was usually accepted out of a moral obligation to one’s family or close friends. The reality of professional trustees has gradually changed this approach and modern legislation has introduced a right for trustees acting in a professional capacity to be remunerated for their services.
Firewall Legislation
Authors: Panico Paolo
Published: March 2021

The ‘forced heirship’ rules existing in most civil law jurisdictions constrain a testator’s ability to dispose of his property according to his wishes. These rules usually confer a statutory entitlement to a substantial portion of a decedent’s estate on his surviving spouse, children, and occasionally some other relatives. This may be a major hindrance to generation planning at the helm of a family-run business or, more generally, to an economically meaningful devolution of an estate comprising controlling interests in business entities.
Directors and Other Officers: Requirement and Definitions
Authors: Goodison Adam
Published: March 2021

Every private company must have at least one director and every public company must have at least two directors. The Model Articles do not provide for minimum or maximum numbers of directors, leaving that matter to the Companies Act, but Table A, reg 64 provides: ‘Unless otherwise determined by ordinary resolution, the number of directors (other than alternate directors) shall not be subject to any maximum but shall not be less than two.’
Termination Of Appointment Of Directors
Authors: Brown Edward
Published: March 2021

It is an essential feature of the management of any company that directors’ appointments are capable of termination, either voluntarily or upon the occurrence of some specified event, such as a resolution of the company. Termination provisions may be relied upon for a number of reasons: a director may be removed as part the process of accountability to company shareholders; a director may become incapacitated or otherwise unable to perform his duties; or from time to time a director may simply resign and move on or retire. This chapter considers the provisions of the Companies Act and company articles that govern termination, together with the rights and liabilities that arise in the event of termination.
Directors’ Liabilities: Provision of Insurance
Authors: Hill Stuart
Published: March 2021

The Companies Act, s 233 deals with the provision of insurance as a valid means of indemnifying a director against liability attaching to him in connection with any negligence, default, breach of duty, or breach of trust.
Reorganizations and Takeovers
Authors: Smith Tom
Published: March 2021

The Companies Act, Parts 26, 27, and 28, ss 895–992, contain provisions about arrangements and reconstructions, mergers and divisions of public companies, and takeovers. Chapters 1 and 2 of Part 28, ss 942–73, concerning the Takeover Panel and impediments to takeovers, were new provisions introduced by the 2006 Act, while the remaining sections in these Parts restate with minor amendments provisions contained in the 1985 Act. The purpose of this chapter is to discuss the role of directors in relation to these procedures and to identify their duties and liabilities. For this purpose each part of this chapter begins with an introductory description of the provisions and procedures, which is followed by a discussion of the relevant functions and duties of directors.
Duties and Liabilities of Directors of Foreign Companies
Authors: Smith Tom
Published: March 2021

One of the features of the increased globalization of the world economy is that many of the companies which carry on business in England and Wales are companies incorporated abroad. Many of these companies may carry out a substantial part, or even all of their activities in England. The question which arises for the directors of such companies is to what extent they are subject to the provisions of the Companies Act 2006 and to the other aspects of English company law.
Emergency Sales in the US and the UK
Authors: Mallon Christopher , Waisman Shai Y , Schrock Ray C
Published: March 2021

Any business that relies on confidence in its financial position, its brand name or goodwill, talented (but mobile) employees, or short-term contracts with customers or counterparties will be particularly hard hit by suggestions that it is or may soon be experiencing financial distress. Businesses of this type have been likened to ‘melting ice cubes’—once exposed to the heat of potential insolvency, value in the business melts away rapidly as customers and counterparties look to terminate relationships, key employees look to exit, and the goodwill and brand name of the business become tarnished. The catastrophic and rapid collapse during 2008 of famous Wall Street and the City of London names illustrated this in dramatic fashion, but businesses of almost every type will suffer negative effects once financial difficulties become more widely known.
Arriving at a Compromise with, and identifying Key Stakeholders: Waivers, Amendments and Standstills, Participations, Debt Buy-backs, Intercreditor Agreements, and Make-Whole Provisions
Authors: Mallon Christopher , Waisman Shai Y , Schrock Ray C
Published: March 2021

In the context of a book on the law and practice of restructuring, waivers, amendments, and standstills are generally the paths of least resistance and, if no further procedures need to be pursued to reach the desired resolution, should be the preferred route to a successful consensual restructuring. They are the keyhole surgery alternatives to the more radical procedures discussed elsewhere in this work. For some companies they will be all that is required to enable a return to full health. For others, amendments, waivers, and standstills will be just a triage technique; a method of putting off or stabilizing the patient before the deep cuts needed can be made.
Restructuring Issues in Energy, Shipping, and Insurance Companies
Authors: Mallon Christopher , Waisman Shai Y , Schrock Ray C
Published: March 2021

During the last few years, restructuring professionals have been faced with new and unique situations in industries that do not fit into well-established restructuring frameworks. As this book goes to press, companies in the energy, shipping, and insurance sectors are experiencing unprecedented levels of distress and charting new territory in the restructuring world. In the chapter that follows, we review some of the salient issues that restructuring professionals should study when wading into these new areas of the law, with the caveat that these topics are evolving in real-time as we write these words.
Article 7 Treating a European patent with unitary effect as a national patent
Authors: Tilmann Winfried
Published: March 2021

A patent right is a right to exclude others from committing certain acts by which a protectable invention is used. For that reason, Art 3 EPUE Reg and Arts 25 and 26 UPCA highlight the right of prohibition of the patent proprietor to exclude such parties from use as the core power, central to all other powers that he holds. The other powers (claims, rights of action) of the patent proprietor (disclosure of information, correction, damages, evidentiary aids, provisional orders) are derived from an infringement of the right of prohibition (to exclude from use), and are thus subsidiary to the parent power of the right of exclusivity (right of prohibition).
Distribution
Authors: Tilmann Winfried
Published: March 2021

The EPO shall retain 50 per cent of the renewal fees referred to in Article 11 paid for European patents with unitary effect. The remaining amount shall be distributed to the participating Member States in accordance with the share of distribution of the renewal fees set pursuant to Article 9(2).
Notification by the participating Member States
Authors: Tilmann Winfried
Published: March 2021

The PMSs give the EPO a number of tasks pursuant to Art 9 EPUE Reg. They ensure compliance with the Regulation in fulfilling their international obligations undertaken under the EPC and cooperate to that end. They monitor the implementation of the measures assigned to the EPO, ensure the correct determination of the level of renewal fees and their distribution, and ensure legal protection against administrative decisions of the EPO.
Legal status
Authors: Tilmann Winfried
Published: March 2021

Para 1 is modelled on paras 1 and 2 of Art 5 EPC, which in turn corresponds to the current Art 335 TFEU. But while Art 335 TFEU refers to the ‘Union’ and Art 5 EPC to the European Patent Organisation (Art 4 EPC), and both confer legal personality on those associations of states and attribute to them extensive legal capacity, para 1 attributes these characteristics only to the Court (which under the EPC would correspond to the EPO). Consequently, the association of states itself does not possess any legal personality and as such does not have any legal capacity. Only the individual state participating in organizing the Court and the Court itself have legal capacity.
Liability for damage caused by infringements of Union law
Authors: Tilmann Winfried
Published: March 2021

The Court of Justice developed a liability for Member States for infringements of Union law, first, relating to Directives that are not transposed into domestic law or not transposed properly. The ‘Francovich decision’ was of fundamental importance. The basic condition is a sufficiently serious breach of a rule of law. This is to be assumed if a Member State manifestly and significantly exceeds the degree of discretion accorded to it. In this regard, the following criteria have to be taken into account: the clarity of the infringed norm, the scope of discretion, whether the infringement is intentional or excusable, and involvement of an EU institution.
Limitations of the effects of a patent
Authors: Busche Jan
Published: March 2021

The use of the patented invention in the construction or operation of aircraft or land vehicles or other means of transport of countries of the International Union for the Protection of Industrial Property (Paris Union) or members of the World Trade Organisation, other than those Contracting Member States in which that patent has effect, or of accessories to such aircraft or land vehicles, when these temporarily or accidentally enter the territory of a Contracting Member State in which that patent has effect;
Exhaustion of the rights conferred by a European patent
Authors: Busche Jan
Published: March 2021

The rights conferred by a European patent shall not extend to acts concerning a product covered by that patent after that product has been placed on the market in the European Union by, or with the consent of, the patent proprietor, unless there are legitimate grounds for the patent proprietor to oppose further commercialisation of the product.
Case management
Authors: Tilmann Winfried
Published: March 2021

The Court shall actively manage the cases before it in accordance with the Rules of Procedure without impairing the freedom of the parties to determine the subject-matter of, and the supporting evidence for, their case.
Legal capacity
Authors: Tilmann Winfried
Published: March 2021

Any natural or legal person, or any body equivalent to a legal person entitled to initiate proceedings in accordance with its national law, shall have the capacity to be a party to the proceedings before the Court.
Language of proceedings at the Court of Appeal
Authors: Tilmann Winfried
Published: March 2021

The fundamental principle that the languages of proceedings must be the same applies in the first and second instance. The Court of Appeal thus has to be capable of conducting proceedings in all languages that may be used before a local, regional, or the central division. As a general rule, that means all EU official languages which are also official languages of at least one CMS.
Decision on the validity of a patent
Authors: Faehndrich Martin , Klicznik Alexander , Tilmann Max
Published: March 2021

The Court shall decide on the validity of a patent on the basis of an action for revocation or a counterclaim for revocation.
Power to order the communication of information
Authors: Tilmann Winfried
Published: March 2021

The Court may, in response to a justified and proportionate request of the applicant and in accordance with the Rules of Procedure, order an infringer to inform the applicant.
Decision on appeal and referral back
Authors: Tochtermann Peter
Published: March 2021

If an appeal pursuant to Article 73 is well-founded, the Court of Appeal shall revoke the decision of the Court of First Instance and give a final decision. The Court of Appeal may in exceptional cases and in accordance with the Rules of Procedure refer the case back to the Court of First Instance for decision.
Article 83 Transitional regime
Authors: Tilmann Winfried
Published: March 2021

During a transitional period of seven years after the date of entry into force of this Agreement, an action for infringement or for revocation of a European patent or an action for infringement or for declaration of invalidity of a supplementary protection certificate issued for a product protected by a European patent may still be brought before national courts or other competent national authorities.
Removal from office
Authors: Tochtermann Peter
Published: March 2021

A judge can be removed from his office. Removal becomes effective on notice of a decision to that effect taken by the Presidium which is responsible for deciding on any removal from office.
President of the Court of First Instance
Authors: Tochtermann Peter
Published: March 2021

As with the President of the Court of Appeal, the President of the Court of First Instance is elected by all judges of the Court of First Instance for a term of three years. Only full-time judges can be elected (arg ex Art 14(1) UPC Statute). The President may be re-elected twice, thus the maximum term of office is nine years. If the office of the President of the Court of First Instance falls vacant before the expiry of his term, a successor will be elected for the remainder of the term (para 4, Art 13(4) UPC Statute).
Appropriations for unforeseeable expenditure
Authors: Tochtermann Peter
Published: March 2021

Art 28 is an exception to the general rule that all appropriations have to be set out under different headings according to type and purpose (Art 27(3) UPC Statute). This is to ensure that the Court has financial resources if unexpected expenditure occurs so that the Court can fulfil its obligations in order to guarantee the functioning of the Court.
Provisional budget
Authors: Tochtermann Peter
Published: March 2021

If a budget has not been adopted by 1 January, Art 31 UPC Statute allows a provisional budget to be drawn up according to which expenditure may be effected on a monthly basis, so that the financial obligations of the Court are fulfilled in the interim. However, the financial resources which may be spent on that basis are limited by para 1 with the Budget Committee able to authorize higher expenditure in accordance with para 2 if necessary. According to the Draft Financial Regulations, an authorization by the Budget Committee in that regard must be substantiated and the auditor must be heard (Arts 27(2) and 77 Draft Financial Regulations).
Secrecy of deliberations
Authors: Tochtermann Peter
Published: March 2021

The secrecy of deliberations is a principle of high importance within the UPC system. Accordingly, the oath taken by the judges refers to the secrecy of deliberations (Art 6 UPC Statute). First and foremost, opinions relating to the legal aspects of a case which a judge has expressed during the course of deliberations must be kept secret as well as the voting in a case if a unanimous verdict has not been reached. Preliminary views expressed in draft judgments as well as notes made during the course of an oral hearing or during deliberations must also be kept secret. This principle aims to ensure the independence of the judges in making their decisions and also applies with regard to the Court as an institution and its administration.
Rule 3 Power of staff of the Registry and a sub-registry to perform functions of the Registry
Authors: Tilmann Winfried
Published: March 2021

Where these Rules refer to the Registry or Registrar and provide for the Registry to perform any act that reference shall include—where applicable—the Deputy-Registrar and the relevant sub-registry and that act may be performed by the Registrar, the Deputy-Registrar or by a member of staff of the Registry or sub-registry of the relevant division.
Service and supply of orders, decisions, written pleadings and other documents
Authors: Tilmann Winfried
Published: March 2021

The provisions of the Rules of Procedure on service of orders (Rule 351) and decisions (Rule 350) are found in Rules 276–277. For normal service, Rule 276.1 refers to Rules 270–275. For decisions by default (Rule 355) in the case of Rules 50 and 65, service to the address of the representative (Art 134 EPC) is permitted (Rule 276.2). A decision by default may be issued only if the Court is satisfied that the Statement of claim has been duly served on the defendant (Rule 277).
Appeal against decision or order on a Preliminary objection
Authors: Plassmann Clemens , Steininger Steffen
Published: March 2021

Rule 21 UPCARoP deals with the appeal against the decision on the Preliminary objection pursuant to Rule 19. The appeal is the only remedy before the UPC and is allowed only if provided for in the UPCA (Art 73) and in the Rules of Procedure (Rule 220). For details on the appeal, → commentaries on Art 73 UPCA and Rule 220 UPCARoP.
Lodging of the Statement of defence
Authors: Plassmann Clemens , Steininger Steffen
Published: March 2021

Rules 23–28 UPCARoP deal with the Statement of defence and the possible Counterclaim for revocation. The Statement of defence is the defendant’s answer to the Statement of claim and is to enable the claimant to make a specific response. The purpose of the Statement of defence is to enable the Court to make effective preparations for the proceedings by enabling it to gain at the earliest possible stage the most comprehensive overview possible of the subject matter in dispute. For that reason, the defendant, already in the Statement of defence, must present his means of defence and counter-arguments as fully as possible. In the rejoinder, he may only respond to the matters raised in the reply (second sentence of Rule 29(e), second sentence of Rule 52). Details on the content of the Statement of defence are set out in Rule 24. Pursuant to Rules 12.2 and Rule 25.1, the defendant has the possibility, together with the Statement of defence, of lodging a Counterclaim for revocation.
Preliminary objection
Authors: Plassmann Clemens , Steininger Steffen
Published: March 2021

Rule 19.1 to .3 and .5 to .7 as well as Rules 20 and 21 shall apply mutatis mutandis.
Rule 70: Fee for the action for a declaration of non-infringement
Authors: Plassmann Clemens
Published: March 2021

The fixed fee and, where applicable, the value-based fee for the action for negative declaration (€11,000, Rule 370.2 UPCARoP, Fee Scale Section I) is to be paid in advance.
Rule 76: Actions for declaration of non-infringement within Article 33(6) of the Agreement
Authors: von Falck Andreas , Dorn Stephan
Published: March 2021

The period of three months provided for in Art 36(6) is reasonable. The intention is that the patent proprietor should not be deprived of his free choice of forum for the infringement action pursuant to Art 33(1) by the pending action for declaration of non-infringement. However, that choice cannot be preserved for an unlimited time because it would block the claimant in the action for a declaration of non-infringement for an unlimited time. Therefore, the obligation to stay proceedings is limited to a three-month period. The practical reason for this exact time limit is that the Reply to the Statement of claim in the proceedings for the action for declaration of non-infringement must be handed to the Court within two months of service of the Statement of claim. Therefore, after three months a first exchange of written submissions has already been completed. The procedure for the action for declaration of non-infringement would now have reached an advanced stage which would not admit a regular stay of proceedings.
Rule 118 Decision on the merits
Authors: Tilmann Max
Published: March 2021

The orders of the Court referred to in paragraphs 1 and 2(a) shall be enforceable on the defendant only after the claimant has notified the Court which part of the orders he intends to enforce, a certified translation of the orders in accordance with Rule 7.2, where applicable, into the official language of a Contracting Member State in which the enforcement shall take place has been provided by the claimant and the said notice and, where applicable, a certified translation of the orders have been served on the defendant by the Registry. The Court may subject any order or measure to a security to be given by the successful party to the unsuccessful party as determined by the Court in accordance with Rule 352.
Rule 134 Examination as to formal requirements of the Application for the determination of damages
Authors: Steininger Steffen
Published: March 2021

Similar to Rule 16 UPCARoP concerning the Statement of claim, Rule 134.1 sets out an obligation to examine whether the Application for the determination of damages complies with formal requirements. This examination is carried out by the Registry and aims to expedite the proceedings as stipulated in the Preamble to the UPCA. It also aims to ensure the purpose of the Rules of Procedure to provide for an efficient and cost-effective procedure as required by Art 41(3) UPCA. For details, → Rule 16 UPCARoP.
Rule 144 Decision on the Request to lay open books
Authors: Steininger Steffen
Published: March 2021

Rule 144 provides the different options for the Court’s decisions on the Reply to lay open books. In its decision, the Court must take into account the confidentiality of information and the principle of proportionality. The efficient continuation of the proceedings for the determination of damages is ensured by specifying time periods. The decision lies in the hands of the judge rapporteur unless he referred the matter to the panel according to Rule 102.
Compensation for costs of interpreters and translators
Authors: Plassmann Clemens
Published: March 2021

The compensation for costs of interpreters shall be the rates that are customary in the country of the division in question, depending on the interpreter’s training and professional experience.
Appeal against the cost decision
Authors: Plassmann Clemens , Dold Dennis
Published: March 2021

Rule 157 provides that an appeal against a cost award may be lodged only in accordance with Rule 221. By cost award, only the decision concluding the proceedings for the cost award decision is meant, not the cost decision. This is supported by the systematic relationship of Rule 157 to Rules 150 ff, which relate to the proceedings for the cost award decision alone, but also by the fact that the cost decision pursuant to Rule 118.5 is delivered not by the judge rapporteur but by the respective panel.
Duties of a court expert
Authors: Ahrens Hans-Jürgen
Published: March 2021

The court expert shall present an expert report in writing within the time period specified by the Court [Rule 185.4(f)]. The court expert shall be under the supervision of the Court and shall inform the Court of his progress in carrying out his task.
Rule 209 Examination of the Application for provisional measures
Authors: von Falck Andreas , Dorn Stephan
Published: March 2021

Rule 209.1 UPCARoP gives the Court the power to use its discretion to decide on further proceedings. It has three options: giving information to the defendant about the application and inviting him to file an objection to the application (lit a); summoning both parties to an oral hearing (lit b); or summoning only the applicant, not the defendant, to an oral hearing (lit c).
Rule 238A Decision to refer
Authors: Büttner Tilmann
Published: March 2021

Art 21(2) UPC Statute provides that cases of exceptional importance in which the decision is of possible relevance for maintaining the unity and consistency of the Court’s practice may be referred to a plenary panel of the Court. Rule 238A UPCARoP provides for the procedural details for such referral.
Rule 243 Referral back
Authors: Büttner Tilmann
Published: March 2021

The Court of Appeal does not necessarily have to bring the appeal proceedings to a final decision. Pursuant to Rule 243, it can refer the action back to the Court of First Instance, but only in exceptional cases.
Examination as to formal requirements of the Application for rehearing
Authors: Tilmann Winfried
Published: March 2021

If the petitioner fails to correct the deficiencies or pay the fee the case shall be assigned to the standing judge by the Registrar (Rule 345.5 and .8) who may reject the Application for rehearing as inadmissible. He shall give the petitioner an opportunity to be heard beforehand.
Examination of the Application for rehearing
Authors: Tilmann Winfried
Published: March 2021

Rule 255 provides that the parties are to be given the opportunity to be heard (for the specific aspects, → Rule 264 UPCARoP) before the UPC decides on an Application for rehearing. Moreover, Rule 255 defines the specific content such decision may have: either the UPC rejects the application as not allowable by a majority decision or grants the application. In the latter case, the UPC sets aside or suspends the decision under review, in whole or in part, and reopens the proceedings for a new hearing and decisions.
Rule 266 Preliminary references to the Court of Justice of the European Union
Authors: von Falck Andreas , Stoll Christian
Published: March 2021

Rule 266 regulates the requirements for a question to be referred to the CJEU by the UPC (Art 267 TFEU, Art 21 UPCA). Referrals to the CJEU ensure uniform interpretation of Union law. Rule 266 specifies the meaning of Arts 20 and 21 UPCA. According to Art 21 UPCA, the UPC cooperates with the CJEU for ensuring uniform application of Union law. The UPC is a common court of the Member States and is part of the jurisdiction of the Member States and therefore functionally a court of a Member State within the meaning of Art 267 TFEU.
Rule 273 Scope of this Section
Authors: von Falck Andreas , Stoll Christian
Published: March 2021

Rules 273 ff are applicable if service has to be performed outside the territory of the CMSs, because no electronic address for the service of a Statement of claim has been provided and no other service method pursuant to Rule 271.3 is available which would enable service within the territory of the CMSs.
Powers of attorney
Authors: Tilmann Winfried
Published: March 2021

A representative who claims to be representing a party shall be accepted as such provided however the Court may order a representative to produce a written authority if his representative powers are challenged. 2. In the event of a successful challenge to a representative’s authority pursuant to paragraph 1 the Court may make an order pursuant to Rule 291.
Attorney–client privilege
Authors: Tilmann Winfried
Published: March 2021

The basis for Rules 287 and 288 is Art 48(5) UPCA, according to which representatives of the parties enjoy the rights and immunities necessary for the independent exercise of their duties, including privilege from disclosure in proceedings before the Court in respect of communications between a representative and the party or any other person, under the conditions laid down in the Rules of Procedure, unless such privilege is expressly waived by the party concerned.
Automatic extension of periods
Authors: Plassmann Clemens , Dorn Stephan
Published: March 2021

In relation to Saturdays, Sundays, and official holidays, the expiry of a time limit pursuant to para 1 is postponed until the end of the following working day if the calculation of the time limit pursuant to Rule 300 means that it ends on a Saturday, Sunday, or official holiday.
Plurality of defendants
Authors: Plassmann Clemens , Dorn Stephan
Published: March 2021

For an action to be commenced against a plurality of defendants, para 1 requires that the Court has jurisdiction and competence in respect of all of the defendants. This requirement has to be met, of course, for each defendant and, in itself, has no connection with the problems of a plurality of defendants.
Change in parties
Authors: Plassmann Clemens , Dorn Stephan
Published: March 2021

Rule 305 regulates a wilful change in parties (change in parties on the application of one of the parties). A change in parties ordered by law is regulated in Rules 310 (death or demise of a party), 311 (insolvency of a party), and 312 (transfer of the patent or patent application during proceedings). Where the requirements of these specific rules are fulfilled, there is no room for a wilful change in parties pursuant to Rule 305. The case of a wilful change in parties is, thus, a general provision designed for cases where a change in parties is not legally regulated but where it seems to be sensible but is not necessary in order to continue or end proceedings. The continuation of proceedings with one or more other parties can in certain cases even appear to be beneficial.
Proposal from the judge-rapporteur to use of the language in which the patent was granted as language of the proceedings
Authors: Keussen Christoph
Published: March 2021

At any time during the written procedure and the interim procedure, the judge-rapporteur may, of his own motion or on a request by a party, after consulting the panel, propose to the parties that the language of the proceedings be changed to the language in which the patent was granted, in accordance with Article 49(4) of the Agreement. If the parties and panel agree the language of the proceedings shall be changed.
Consequences where the language of the proceedings is changed in the course of the proceedings
Authors: Keussen Christoph
Published: March 2021

An Application under Rule 321.1 or 323.1 shall specify whether existing pleadings and other documents should be translated and at whose cost. If the parties cannot agree the judge-rapporteur or the President of the Court of First Instance, as the case may be, shall decide in accordance with Rule 323.3.
Exercise of case management powers
Authors: Chakraborty Martin , Dormann Verena
Published: March 2021

Whereas Rule 331.1 assigns case management competence either to the judge rapporteur or to the presiding judge, Rule 336 defines which initiative competences exist for exercising case management powers. The powers may be exercised both on the application by a party and of the Court’s own motion, unless otherwise provided (only of the Court’s own motion or only on application by a party).
Decisions
Authors: Chakraborty Martin , Dormann Verena
Published: March 2021

The UPCA distinguishes in Art 73 between decisions (Art 73(1)) and orders (Art 73(2)). A decision contains a ruling on the merits of a claim and concludes an instance, whereas an order is a measure relating to the proceedings that does not decide on a claim with definitive effect. → Introduction to UPCA.
Enforcement
Authors: Chakraborty Martin , Dormann Verena
Published: March 2021

The Court’s decisions and orders may provide for periodic penalty payments payable to the Court in the event that a party fails to comply with the terms of the order or an earlier order. The value of such payments shall be set by the Court having regard to the importance of the order in question.
Time periods for paying court fees
Authors: Plassmann Clemens
Published: March 2021

The scope of application of the first sentence covers all cases in which fixed fees are to be paid. The list of the regulations referred to in the first sentence is now complete. Even as late as the 17th version, Rules 80.3, 88.3, 97.2, 207.8, 206.5, 250, 320.2, 333.3, and 356.2 had not yet been specified there even though payment of fixed fees is also ordered in those Rules.
Obtaining A Proprietary Interest by Implied or Presumed Agreement
Authors: Calnan Richard
Published: March 2021

This chapter considers how proprietary interests are created or transferred by implied intention or by presumed intention. As previously explained, implied or proprietary interests are much more common in equity than at common law, and this chapter is therefore mainly concerned with the creation of equitable proprietary interests. The factors which are used by the courts to find an intention to create a proprietary interest are identified. Examples of using implied agreement to obtain a proprietary interest include where one person sells another’s asset, where money is paid for an investment and where assets are set aside by one person for another. This chapter discusses the Quistclose trust, family homes, and the different rules which apply to commercial and family arrangements.
Titles II and III: Preparation and Early Intervention
Authors: Moss QC Gabriel , Wessels Bob , Haentjens Matthias
Published: March 2021

As the European Commission has succinctly explained, ‘institutions will be required to draw up recovery plans setting out arrangements and measures to enable it to take early action to restore its long term viability in the event of a material deterioration of its financial situation. Groups will be required to develop plans at both group level and for the individual institutions within the group. Supervisors will assess and approve recovery plans’. Thus, institutions must draw up ‘recovery plans’ which are to be approved by the relevant supervisory authorities, so as to have a plan in place that might be useful to help turn around a material deterioration of the financial situation that institution may face. The ‘relevant supervisors’ are the European Central Bank (ECB) under the Single Supervisory Mechanism (SSM) for systemically important institutions, and the national supervisory authorities for less systemically important institutions, as well as for institutions outside of the Banking Union.
Title IV: Resolution
Authors: Moss QC Gabriel , Wessels Bob , Haentjens Matthias
Published: March 2021

Title IV of the Bank Recovery and Resolution Directive (BRRD) concerns resolution. If ‘conditions for resolution’ are met, resolution authorities may place any entity covered by BRRD under resolution, apply the resolution tools, and exercise the resolution powers. ‘Resolution’ is often contrasted with ‘insolvency’. Resolution is a specialized regime for bank failures, and its objectives are fundamentally different from the objectives of normal insolvency law. The resolution regime has general public interest as its main, most abstract goal, whereas the insolvency regime traditionally aims at maximizing creditor value. For these reasons, resolution management is the responsibility of government authorities rather than courts. Nonetheless, insolvency law remains of essential importance to bank resolution rules. Not only will (national) insolvency law remain critical for the interpretation and application of the BRRD’s bank resolution rules such as the ‘No Creditor Worse Off’ rule (see below at paras 7.102–7.104), but insolvency law will also remain applicable to bank failures where specific bank resolution rules do not apply.