FUJIFILM v Kodak (CFI, 23 July 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By order of 23 July 2025, the Mannheim Local Division (Presiding Judge Tochtermann as judge-rapporteur, Judges Böttcher and Agergaard, and technically qualified Judge Wismeth) ordered Kodak GmbH, Kodak Graphic Communications and Kodak Holding to pay a lump-sum penalty of EUR 100,000 for failing to comply with the orders for information, destruction, recall and removal from the channels of commerce made in favour of FUJIFILM in the decision on the merits of 2 April 2025 (UPC_CFI_365/2023, EP 3 511 174). A further EUR 2,500 per day applies until 4 August 2025, then EUR 10,000 per day. The order shows that enforcement of UPC decisions can be swift and costly: no further warning is required, and translation is needed only where national authorities enforce.

Facts and procedure

The decision on the merits of 2 April 2025 found infringement and ordered, among other things, information (B.II), destruction (B.III), recall (B.IV) and removal from the channels of commerce (B.V). FUJIFILM gave notice of enforcement on 29 April 2025 for information and on 9 May 2025 for the other measures, setting three weeks for the former and one week for the others. It had only item B.III translated.

The defendants asserted compliance (letter of 12 June 2025) and later reported ongoing work on information (2 July 2025). Their confidentiality request was rejected by the panel’s order of 17 July 2025. The value in dispute is EUR 15,000,000.

The applicable law

The penalty rests on Article 82 UPCA and Rule 354.3 RoP, Rule 354.1 RoP makes decisions enforceable, and Rule 118.8 RoP makes enforcement subject to notice of the intention to enforce and, where applicable, a translation. The panel contrasts this regime with Section 890(2) of the German ZPO, which requires a prior warning, and relies on the Court of Appeal’s order in Belkin v Philips of 30 May 2025.

Question

Did the defendants fail to comply with the orders in the decision on the merits, and does a penalty require a prior warning and a translation of the items enforced?

Decision

No further warning is needed: neither Rule 354.3 nor Rule 354.4 RoP requires one, unlike German law, and the decision on the merits stated unambiguously that penalties could follow. A translation is required only where enforcement is not carried out by the UPC itself. Since English is the language of the proceedings and the defendants operate across Europe, the items enforced by the UPC did not need translating into German, nor did the whole decision.

The time limits set were reasonable. On information, the defendants did not challenge the period in time, and their confidentiality arguments were late and unsubstantiated, as were their IT and staffing explanations. On recall and removal, they bear the burden of proving sufficient efforts: a mere draft recall letter, with no proof of dispatch and no customer list, is not enough. On destruction, penalties come first. Concrete measures will be ordered only if penalties fail. The amount is proportionate to the value in dispute and the degree of non-compliance. The order is immediately enforceable and the defendants bear the costs.

Key points for practice

• The warning contained in the decision on the merits is sufficient: no further caution is required before a penalty.
• Items enforced by the UPC itself need not be translated into a national language.
• The infringer bears the burden of proving compliance with recall and removal, and must produce the letters sent and the list of recipients.
• Practical point: a defendant found to infringe should document compliance from the notice of enforcement, the escalating penalty can reach EUR 10,000 per day and be increased on the proprietor’s application.

Provisions applied

Agreement on a Unified Patent Court

Art. 49, Art. 67(1) and Art. 82

Rules of Procedure

Rules 14, 118.8, 262A, 333 and 354

German law

Section 890(2) of the Code of Civil Procedure (ZPO), cited for comparison

Case law cited

Belkin v Philips, Court of Appeal, 30 May 2025 (UPC_CoA_845/2024 and UPC_CoA_50/2025), Edwards Lifesciences v Meril, Munich Local Division, 15 November 2024 (UPC_CFI_15/2023), Fujifilm v Kodak, Mannheim Local Division, 2 April 2025 (UPC_CFI_365/2023)

Related decisions

• Kodak Graphic Communications, 17 July 2025, order rejecting the defendants’ confidentiality request.

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.