Heraeus Electronics v Vibrantz (CFI, ORD_53396/2024, 25 September 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By a procedural order of 25 September 2024 (UPC_CFI_114/2024, UPC_CFI_448/2024, ACT_13227/2024, ORD_53396/2024), the judge-rapporteur of the Munich Local Division rejected the applications of Heraeus Precious Metals GmbH & Co. KG, the registered proprietor of EP 3 215 288, which disputed that it was the proper defendant to the counterclaim for revocation filed by Vibrantz GmbH. The infringement action had been brought by Heraeus Electronics GmbH & Co. KG alone, whose status as actual proprietor is not in dispute. The order clarifies against whom a counterclaim must be directed when the register and actual ownership diverge.

Question

Must a counterclaim for revocation be directed against the actual proprietor rather than the registered proprietor, so that it is manifestly bound to fail within the meaning of Rules 361 and 363?

Decision

Under Rule 25.1, the counterclaim is directed against the proprietor in accordance with Rule 42. It may be brought either against the registered proprietor (Rule 8.6) or against the actual proprietor (Rule 8.5(a) or (b)). Where they differ, the registered proprietor that is not the actual proprietor must promptly apply to be replaced under Rule 305.1(c). The purpose is to spare the infringement defendant from investigating who actually owns the patent: a counterclaim against the registered proprietor is always directed at the right party. The conditions of Rules 361 and 363 were therefore not met. No costs decision was made, since no application for replacement had been filed.

Key points for practice

• Practical point: a defendant may direct its counterclaim for revocation at the proprietor entered in the register, if that party is not the actual proprietor, the onus is on it to apply for replacement under Rule 305.1(c).

Provisions applied

Rules of Procedure

Rules 8.5, 8.6, 9.1, 19.1, 25.1, 42, 48, 102.2, 305.1, 333, 361 and 363

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.