Short Summary
NJOY Netherlands B.V. filed five revocation actions at the Central Division (Paris Seat) of the Unified Patent Court against five European patents owned by Juul Labs International, Inc., but mistakenly named the defendant as 'Juul Labs, Inc.' in the statements for revocation. The Court of First Instance rejected Juul Labs' preliminary objection and ordered rectification of the defendant's name. On appeal, the Court of Appeal rejected the appeal, holding that rectification was appropriate because it was clear from the circumstances that NJOY intended to sue the registered proprietor, and Juul Labs was not unreasonably prejudiced.
Detailed Summary
NJOY Netherlands B.V. (the respondent) brought five revocation actions at the Central Division (Paris Seat) of the Unified Patent Court relating to five European patents (EP 3 498 115, EP 3 504 990, EP 3 504 989, EP 3 504 991, and EP 3 430 921). The statements for revocation, first filed on 11 September 2023, incorrectly named the defendant as 'Juul Labs, Inc.' instead of 'Juul Labs International, Inc.' The actual registered proprietor of the patents at issue is Juul Labs International, Inc. (the appellant).
On 25 October 2023, Juul Labs International, Inc. filed a preliminary objection under Rule 48 in connection with Rule 19.1(b) RoP, arguing that the revocation actions were brought against the wrong entity and that the Central Division would therefore not be the competent division under Art. 33(4) UPCA in combination with Art. 32(d) UPCA and Rule 42.1 RoP. NJOY argued that the two entities operated under similar names and shared the same registered address, leading to a clerical error, and requested rectification of the defendant's name. Alternatively, NJOY requested substitution under Rule 305.1(c) RoP.
By orders dated 3 November 2023, the judge-rapporteur at the Court of First Instance rejected the preliminary objection and ordered the Registry to rectify the defendant's name to 'Juul Labs International, Inc.' Leave to appeal was granted.
On appeal, Juul Labs International, Inc. requested that the Court of Appeal set aside the orders of the Court of First Instance, declare the revocation actions inadmissible, and stay the proceedings. NJOY defended the orders and, at the oral hearing, brought forward a claim for reimbursement of costs.
The Court of Appeal (Panel 1a: Klaus Grabinski, Françoise Barutel, Peter Blok) held that the appeal was admissible under Rule 220.2 RoP, as the Court of First Instance had granted leave to appeal. On the merits, the Court of Appeal applied the principle that if a claimant has not correctly named the defendant, the Court may allow rectification provided the defendant is not unreasonably prejudiced. As a rule, there is no unreasonable prejudice if it must have been clear to the defendant and the Court that the claimant intended the action to be directed against the defendant.
The Court of Appeal found that rectification was appropriate because: (1) the name 'Juul Labs, Inc.' differed only slightly from the appellant's actual name (missing only the word 'International'), and the address provided was that of the appellant's registered office; (2) the statements for revocation expressly stated that the defendant was registered as the sole proprietor of the patents at issue, which was undisputed to be the appellant; and (3) the Registry served the statements on the appellant's representative, who accepted service. The Court therefore concluded that the appellant was not unreasonably prejudiced.
The appellant's request to declare the revocation actions inadmissible was rejected, as the actions were indeed directed against the registered proprietor. The appellant withdrew its request to stay the proceedings during the interim conference. The Court did not need to decide on NJOY's auxiliary request for substitution.
Regarding costs, the Court of Appeal held that no decision on reimbursement of legal costs would be made in this appeal, as the order was not a final order or decision concluding the revocation actions. Rule 242.1 RoP was interpreted to mean that if the Court of Appeal's decision is not final, it will not issue an order for costs in respect of proceedings at first instance and at appeal, though the outcome of the appeal must be considered in the final decision on costs under Article 69 UPCA.
The Court of Appeal rejected the appeal.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before Luxembourg (LU). Understanding the court's reasoning in Juul Labs International, Inc. vs NJOY Netherlands B.V. is valuable context for structuring arguments or assessing risk in similar proceedings.
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