Short Summary
Cardo Systems, Ltd. filed an infringement action on December 16, 2024 against two defendants concerning European Patent EP 4 240 194, alleging that products Z1-ASMAX and F1-ASMAX (and their Plus, Pro, and Pro Max variants) infringed the patent. While service was successfully completed against the Hong Kong defendant on May 29, 2025, service against the Shenzhen defendant failed twice because the Chinese central authority rejected the documents due to the naming convention used for Hong Kong. The Milan Local Division addressed whether Article 15(2) of the Hague Service Convention applies in the UPC system, concluding that it is entirely applicable regardless of any additional requirements for service within each Member State.
Detailed Summary
Cardo Systems, Ltd., the proprietor of European Patent EP 4 240 194, filed an infringement action on December 16, 2024 before the Milan Local Division of the Court of First Instance against two defendants: Hong Kong Yiheng International Technology Co., Limited (domiciled in Hong Kong) and Shenzhen Asmax Infinite Technology Co., Ltd. (domiciled in Shenzhen, China). Cardo alleged that the defendants' products, identified as Z1-ASMAX and F1-ASMAX, along with their Plus, Pro, and Pro Max variants, fell within the scope of protection of EP 194. The proceedings were conducted in English, with Judge Alima Zana serving as the deciding judge rapporteur.
The procedural dispute centered on the service of process against the Shenzhen defendant. Service against the Hong Kong defendant was successfully completed on the second attempt on May 29, 2025. However, service against the Shenzhen defendant failed on two occasions—January 16, 2025 and May 26, 2025—because the Chinese central authority rejected the documents with the explanation that the full name 'Hong Kong, China' must be used whenever referring to Hong Kong in documents. The court was required to determine the applicable legal framework for service on a defendant domiciled in China, a non-EU jurisdiction, and specifically whether Article 15(2) of the Hague Service Convention applies within the UPC system.
& Analysis
The Milan Local Division applied Rules 273, 274, and 276 of the Rules of Procedure, the Hague Service Convention, and existing UPC case law (referencing decisions from the Mannheim Local Division of July 31, 2024, CFI 330/2024, and the Court of Appeal of July 29, 2024, UPC_CoA_69-70/2024). The court noted that Regulation (EU) 2020/1784, which governs service between EU Member States, does not apply to defendants domiciled outside the Contracting Member States, meaning the conditions for applying Rule 274.1(a)(i) RoP were not met. Instead, the Hague Service Convention applied under Rule 274.1(a)(ii) RoP because the Shenzhen defendant has its registered office in China. The court reasoned that Article 15(2) of the Hague Service Convention is entirely applicable in the UPC system, regardless of any additional requirements for service within each Member State. This conclusion rested on two grounds: first, the service system in the UPC is uniform; and second, the participating Member States in the UPC system have 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. The court emphasized that the UPC has its own service provisions alongside Regulation 2020/1784 and the Hague Convention, and that national laws of a Contracting Member State do not take primacy.
Final Order & Ruling
The court concluded that the Milan Local Division had exhausted the options available under Rules 270-274 of the Rules of Procedure for formal service against the Shenzhen defendant. The order established the legal principle that Article 15(2) of the Hague Service Convention applies in its entirety within the UPC system for service on defendants domiciled in non-EU contracting states, providing a uniform framework that supersedes any conflicting national requirements.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before Milan (IT) Local Division. Understanding the court's reasoning in Cardo Systems, Ltd. vs Shenzhen Asmax Infinite Technology Co., Ltd. and Hong Kong Yiheng International Technology Co., Limited is valuable context for structuring arguments or assessing risk in similar proceedings.
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