HL Display v Black Sheep Retail Products (CFI, 10 October 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

In a decision of 10 October 2025, given in proceedings UPC_CFI_386/2024 and UPC_CFI_610/2024, the Hague Local Division upheld the validity of HL Display’s patent EP 2 432 351 on a system for securing shelf accessories, found direct and indirect infringement by Black Sheep Retail Products (BSRP) through its « product 1 », and granted an injunction, recall, destruction, information and a declaration of liability for damages. The counterclaim for revocation was dismissed and the counterclaim for a declaration of non-infringement concerning « product 2 » was held inadmissible. The decision matters in practice on three points: the scope of jurisdiction over non-UPC states, the admissibility of a counterclaim for non-infringement, and the continuing interest in an injunction despite an undertaking to cease.

Facts and procedure

The patent, filed on 19 May 2010 and granted on 27 June 2018, is validated in fourteen states, several outside the UPC (United Kingdom, Switzerland, Norway, Ireland, Poland, Liechtenstein). Both companies supplied the Kruidvat chain through tenders. HL Display relied on claims 1, 2 and 5, BSRP had undertaken on 19 February 2025 to stop marketing product 1 from 1 July 2025 and offered a design around, product 2 (paragraphs 4 and 12.1). The hearing took place on 22 August 2025. As a preliminary matter, the panel partly varied, on review, orders on the deposit of samples (paragraphs 1.2 and 1.3).

The applicable law

For non-UPC states, the division considers, following the CJEU’s BSH Hausgeräte v Electrolux judgment, whether there is a serious, non-negligible chance that the national court would revoke the patent, and rules inter partes for non-EU states (paragraphs 5.1 and 5.2). The counterclaim for non-infringement is governed by Rule 61.1, added matter is assessed under Article 123(2) EPC, the remedies rest on Articles 67 and 82 UPCA and Rules 191 and 354.

Question

Does the patent withstand the added matter and inventive step attacks, does BSRP’s product 1 infringe it, and is the counterclaim for a declaration of non-infringement of product 2 admissible?

Decision

The non-infringement counterclaim was inadmissible: HL Display had not alleged infringement by product 2 and BSRP had not made the prior written request for acknowledgement required by Rule 61.1, treating the counterclaim itself as that request would defeat the purpose of the rule (paragraphs 6.1 to 6.3). The claims are not limited to the embodiments (paragraphs 9.1 to 9.3). Omitting optional elements such as the friction member or magnetic fixing does not add matter (paragraphs 10.1.3 to 10.1.16), and none of the prior art suggests the claimed arrangement (paragraphs 10.2.9 to 10.2.13). The patent is valid for the UPC states and, for the others, no serious chance of revocation was shown. All features are met, feature 1.6 alternatively by equivalence (paragraphs 11.4.2 to 11.4.7), infringement is direct for systems sold together and indirect for parts sold separately (paragraph 11.6.1). The undertaking to cease does not remove the interest in an injunction (paragraph 12.1), which is immediately enforceable without security (paragraph 12.2). Penalty payments may reach EUR 25,000 per day or EUR 250 per product, capped at EUR 2,000,000, BSRP bears EUR 56,000 in costs and EUR 11,000 in court fees in the action, and EUR 56,000 in the counterclaim (paragraph 12.7).

Key points for practice

• A counterclaim for non-infringement requires a prior request for acknowledgement under Rule 61.1, without it, the counterclaim is inadmissible.
• A unilateral undertaking to cease does not deprive the proprietor of its interest in an injunction, a declaration and damages.
• For non-UPC states, the division applies the test of a serious, non-negligible chance of national revocation.
• Practical point: a defendant wishing to secure a design around should send the proprietor a request for acknowledgement of non-infringement before bringing any counterclaim.

Provisions applied

Agreement on a Unified Patent Court

Arts 67, 73(1) and 82

Rules of Procedure

Rules 61.1, 118.8, 191, 333 and 354

European Patent Convention

Art. 123(2)

Case law cited

expert v Seoul Viosys, Court of Appeal, 2 October 2025, Abbott v Sibio, Court of Appeal, 14 February 2025, 10x Genomics v NanoString, Court of Appeal (UPC_CoA_335/2023), SES-imagotag v Hanshow, Court of Appeal (UPC_CoA_1/2024), Belkin v Koninklijke Philips, Court of Appeal, 3 October 2025, FUJIFILM v Kodak, Düsseldorf Local Division, 28 January 2025, SodaStream v Aarke, Düsseldorf Local Division, 31 October 2024, Texport v Sioen, Nordic-Baltic Regional Division, 31 July 2025

Related decisions

• Black Sheep Retail Products v HL Display, 6 March 2026, later Court of Appeal decision between the same parties.

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.