How to commence main proceedings before the UPC: deadlines and court fees

Decision: Syngenta Limited v. Sumi Agro Limited and Sumi Agro Europe Limited (UPC_CFI_201/2024, ORD_11873/2025), Local Division (LD) Munich (March 11, 2025)

Background

In Syngenta v. Sumi Agro, the requirements for initiating infringement proceedings were discussed by the UPC for the first time. The issue concerned R. 213(1) and R. 15(2) RoP—two important rules to keep in mind when initiating infringement proceedings.

The attacked embodiment is an herbicide composition marketed under the trade names “Kagura” and “Genki”. It is registered for use in the control of weeds in maize (EP 2 152 073). Kagura directly competes with a product sold by Syngenta under the trade name “Elumis”.

The LD Munich was sufficiently convinced of imminent infringement and, with an order dated August 27, 2024, granted a preliminary injunction (PI) against Sumi Agro.

On November 25, 2024, the respondents applied for a revocation of the order on the grounds of late payment of court fees. According to the respondents, the deadline for starting the proceedings pursuant to R. 213(1) RoP expired on September 27, 2024. The statement of claim had been uploaded to the CMS on September 27, 2024, but the court fee had not been received until September 30, 2024. The respondents argued that the proceedings should be deemed to have started on the day on which payment had been received, which was after the non-extendible deadline of September 27, 2024 and thus too late. Consequently, the court would have to revoke the order in accordance with R. 213(1) RoP. R. 15(1) and R. 213(1) RoP had to be understood as both determining the “start” of the proceedings.

On December 12, 2024 (ORD_65555/2024), the LD Munich dismissed the application. It held that Syngenta had started the main proceedings and paid the court fee in time. The court further declared that the respondents were applying R. 15(2) RoP incorrectly.

The respondents reacted with a request for a panel review (App_66415/2024).

Decision

The Court of Appeal (CoA) dismissed Sumi Agro’s appeal against the order on provisional measures on March 4, 2025, and on March 11, 2025 the panel confirmed that Syngenta had started the main proceedings and paid the court fees in due time. It shared the judge-rapporteur’s view that R. 15(2) RoP did not include any specific requirements on when the court fees need to be paid. It only stipulates that they must be paid per se. Since the payment had been issued, i.e., initiated, before the deadline, the formal requirements for starting the proceedings had been met. It wasn’t necessary for the monies to have arrived into the UPC’s bank account.

Leave to appeal this decision to the CoA has been granted because it raises fundamental questions concerning the requirements regarding the start of proceedings on the merits.

Comment

Rule 16(5) of the RoP seems to support the LD Munich’s view. It states that an action may be dismissed by the court if the payment of court fees is not made, even after the claimant has been asked to pay by the registry. However, an action can only be dismissed if it is pending, i.e., has been started.

It is not entirely clear from the decision whether the court would have found the requirements to have been met if the bank transfer had been issued after the deadline. It held that since “Syngenta has started the main proceedings and has paid the court fee in due time, the application must be dismissed.” This is most likely to be interpreted to mean that the timely issuance, rather than the timely receipt of the payment, is the requirement for having started the proceeding pursuant to R. 213(1) RoP. In other words, while the payment does not need to arrive at the UPC’s bank account by the time the deadline for initiating merits proceedings lapses, it probably does need to have been issued by the bank. This view is supported by R. 371(1) RoP, which requires the payment of fees at the time of lodging the complaint.

Key takeaways

1. Although there is no fixed deadline for when you need to file for a PI, you must swiftly initiate the subsequent proceedings on the merits if you wish to maintain your PI.
2. In order to start proceedings on the merits before the UPC and meet the deadline stated in R. 213(1) RoP, the plaintiff needs to file the statement of claim in the CMS in time and most likely also initiate the payment of the court fees.
3. However, the “start” of the proceedings does not depend on the receipt of court fees.
4. Nevertheless, patent holders should carefully monitor how the CoA decides this matter and should ensure that court fees are paid promptly to avoid any problems caused by delays.

The author thanks Laura Schnackerz for her assistance in drafting this article.