UPC refuses extension of deadline for review of seizure order after refusal of service

Sichuan Yuanxing Rubber Co., Ltd. and China Council for the Promotion of International Trade, Automotive Sub Council

Order of 14 July 2025 (ORD_26742/2025 [1])

This article follows up on the UPC decision we previously reported here [2].

This Decision from the Local Division of the Unified Patent Court in Milan relates to EP3519207. Pirelli Tyre S.P.A. ("Pirelli"), was previously granted an order for evidential seizure of motorcycle tyres against Sichuan Yuanxing Rubber Co., Ltd. ("Sichuan") and China Council for the Promotion of International Trade, Automotive Sub Council ("CCPIT"), to be served and carried out at the "International Motorcycle Exhibition" ("EICMA") in Milan between 5 and 10 November 2024 (ORD_59754/2024 [3]). Pirelli subsequently brought proceedings on the merits against Sichuan and CCPIT, filing its statement of claim on 5 December 2024.

Sichuan requested a time extension after missing the deadline to seek a review of the order for seizure, pursuant to Rule 197.3 RoP, arguing that the order ORD_59754/2024 was not duly served.

The Court did not grant Sichuan's request, indicating that according to Italian law, Sichuan's refusal to accept the documents relating to the order amounted to valid service.

Sichuan's request

On 3 June 2025, Sichuan filed an application pursuant to Rules 9 and 300 of the RoP, requesting an extension of time in order to be able to file a request for review of Order No. 59754/2024, pursuant to Rule 197.3 of the RoP. Sichuan argued that at the time of execution of the order, service had not been effected in accordance with the procedures stated in the order: in particular, Sichuan stated they did not receive a copy of the application, its annexes and the order, either at EICMA or subsequently.

The Court stated that Sichuan's request must be classified as a request for relief under Rule 320 RoP even though it was formally submitted by the applicant as based on Rules 9 and 300 of the Rules of Procedure, since Sichuan claimed that they were unable to comply with the 30-day time limit provided for in the combined provisions of Rules 212.3 and 197.3 RoP for reasons beyond their control.

The Court mentioned the recent decision of the Court of Appeal ORD_69091/2024, relating to remedying failure to meet a time period through re-establishment pursuant to Rule 320 RoP, which allows the Court to authorise the extension of time limits under certain conditions and, in any event, within pre-set time limits. The Court explained that the decision of treating Sichuan's request as a request under Rule 320 RoP rather than under Rules 9 and 300 RoP, was reached to protect objective reasons of legal certainty, as to avoid unreasonably exposing the other party to a reopening of the time limits at a later date than their normal expiry: the existence of a specific rule in the Rules of Proceedings should take precedence over a more lenient general rule.

Decision

The Court stated that the enforcement of decisions and orders issued by the UPCA is governed by the law of the Contracting Member State where enforcement is sought, pursuant to Article 82.3 UPCA and Rule 354.1 RoP. As stated in the order for seizure dated 5 November 2024, the enforcement of ORD_59754/2024 was to take place at the EICMA Fair, in Rho, Milan, and therefore subject to Italian law.

Based on the report of service drawn up by the bailiff, Sichuan had been informed of the documents on 6 November 2024 but refused to accept them. The provision of Article 138 of the Italian Code of Civil Procedure was therefore taken to apply in the event of an attempt to serve a document: "if the addressee refuses to accept the copy, the bailiff shall record this in the report, and the service shall be deemed to have been effected in person".

The Court did not grant Sichuan's request for re-establishments of rights, further stating the stating that, under Rule 320.7 RoP, this decision cannot be appealed.

Related cases

At the same time as obtaining ORD_59754/2024 [3], Pirelli sought a preliminary injunction against Tianjin Kingtyre Group Co., Ltd. and Kingtyre Deutschland Gmbh ("Kingtyre") for the alleged infringement of EP2519412 by Kingtyre at the same exhibition (ORD_59764/2024 [4]). The Local Division of the Unified Patent Court in Milan issued a seizure order to be served on Kingtyre at EICMA between 5 and 10 November 2024.

On 5 December 2024, Pirelli brought proceedings on the merits before the Milan Local Division on the matter relating to EP2519412. Pending the outcome of the proceedings on the merits, Pirelli and Kingtyre Deutschland GmbH entered into a settlement agreement, effective as of 25 February 2025, aimed at amicably settling the dispute.

By order of 15 July, 2025, ORD_24978/2025 [5], the Court acknowledged the settlement agreement concluded on 25 February 2025 between Pirelli and Kingtyre Deutschland Gmbh and suspended the litigation between Pirelli Tianjin Kingtyre Group Co., Ltd.. The settlement agreement was published in redacted form together with this decision, but the Court ordered the unredacted version of the settlement remain confidential. The Court also ordered the reimbursement of 30% of the total court fees to Pirelli, departing from the usual 60% (Rule 370.9(c) RoP) on the ground that there were two defendants.

[1] https://www.unified-patent-court.org/en/node/136370

[2] https://eip.com/uk/latest/article/upc_grants_two_orders_to_seize_suspected_infringing_motorcycle_tyres/

[3] https://www.unified-patent-court.org/en/node/1293

[4] https://www.unified-patent-court.org/en/node/1294

[5] https://www.unified-patent-court.org/en/node/136393