Horl 1993 v Magna-Tec e.K (CFI, 6 May 2026)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

In a decision of 6 May 2026 (UPC_CFI_388/2025), the Hamburg Local Division rules on Horl 1993’s infringement action against Magna-Tec concerning the ‘Trinity-S’ knife sharpener, under the unitary patent EP 4 117 857 B1 (roller sharpener). The Division finds claims 1 and 14 infringed within UPC territory and grants in principle an injunction, a recall limited to commercial buyers, destruction and information. Its headnotes matter for practice: claims for non-UPC states require concrete facts, and publication of the judgment requires a legitimate interest.

Facts and procedure

Horl relied on claims 1 and 14, with auxiliary requests based on dependent claims 3, 9 and 10, and extended its claims to Switzerland, Liechtenstein, Spain, Ireland, Norway, Turkey and the United Kingdom (paragraphs 1 to 10 and 96 to 105). Magna-Tec, which has sold the ‘Trinity-S’ since 2011, denied infringement, arguing that the disc is fixed to a roller and so turns at the same speed (paragraphs 9, 22 and 23). After the hearing of 19 March 2026, a request to file a further written submission (Rule 9 RoP) was refused on 20 April 2026 and then made the subject of a review request (paragraphs 11 to 14).

The applicable law

The Division’s international jurisdiction over non-UPC states follows from Art. 31 UPCA and Art. 4, 7(2) and 71b of Regulation 1215/2012, the law governing infringement in each state remains that of the country of protection. Claim scope is assessed under Art. 69 EPC. Corrective measures and information are governed by Art. 63, 64 and 67 UPCA.

Question

Does a device with a disc fixed to one roller embody features 3 and 4 of claim 1, and did the claimant sufficiently substantiate infringement in the non-UPC states?

Decision

The Division has jurisdiction, no opt-out having been filed, and standing is presumed from the register entries (Rules 8.4 and 8.5 RoP, paragraphs 43 and 47 to 50). Feature 3 is functional and does not require a direct causal link between moving the device and rotating the disc, the coupled embodiments in the description not limiting its scope (paragraphs 65 to 76). Feature 4 does not require a roller ‘assigned’ to the disc: a disc fixed to one roller, combined with a second roller turning at another speed, is covered (paragraphs 77 to 86). The ‘Trinity-S’ therefore embodies claims 1 and 14 (paragraphs 87 to 93).

For non-UPC states, the Division separates jurisdiction from applicable law (paragraph 98): Horl’s general and belated allegations do not establish acts of infringement, and shipping offered by a German-language website is not enough (paragraphs 96 to 105). The recall is limited to commercial buyers and the proportionality objection fails given the small quantities sold (paragraphs 110 to 113), information is owed and is not to be confined to the claimant’s lawyers, within three weeks and without the month of grace known in German law (paragraphs 117 to 120).

The interim award of damages is limited to EUR 3,000, the fixed fee for the future damages proceedings, whose value cannot yet be estimated and need not match that of the infringement action (paragraphs 122 to 125). Publication is granted exceptionally, since the defendant presented the claimant’s product as a negative example on its website and promoted its own in « MESSER MAGAZIN », but is limited to a summary of at most half a page in that journal, the request for publication in public media generally being too vague (paragraphs 129 to 136). The request for panel review of the judge-rapporteur’s order of 20 April 2026 is rejected (paragraphs 144 and 145). The order grants the injunction for the eighteen Contracting Member States concerned, with penalty payments of EUR 1,000 per infringement and per product, information, recall and destruction with penalty payments of EUR 500 per day of delay, declares liability for damages since 24 April 2024 and dismisses the rest. The defendant bears two thirds of the costs and the value in dispute is set at EUR 250,000 (paragraph 142).

Key points for practice

• The broader jurisdiction recognised in BSH v Electrolux does not dispense with pleading concrete acts in each non-UPC state and the applicable national law.
• A functional feature is not limited to the preferred embodiments in the description.
• A disparaging comparison published by the infringer may found a legitimate interest in publication, limited to the medium used to promote the product (paragraphs 131 to 136).
• An interim award under Rule 119 RoP requires a substantiated estimate. Failing that, only the fixed fee for the damages proceedings is awarded (paragraph 124).
• Practical point: claims for non-UPC states should be substantiated from the statement of claim onwards, country by country, with specific acts and an account of national law.

Provisions applied

Agreement on a Unified Patent Court

Arts 25(a), 26, 31, 32(1)(a), 63, 64, 67, 68, 69, 80 and 82

Rules of Procedure

Rules 8.4, 8.5, 9, 19, 119, 131.2, 132, 333, 352.1, 354.3 and 354.4

European Patent Convention

Art. 69

Regulation (EU) No 1215/2012

Art. 4, 7(2) and 71b

Case law cited

Avago v Tesla, Hamburg Local Division, 26 August 2024, 10x Genomics v Curio Bioscience, Düsseldorf Local Division, 30 April 2024, Court of Appeal, 26 February 2024 (UPC_CoA_335/2023), 13 May 2024 (UPC_CoA_1/2024), 25 September 2024 (UPC_CoA_182/2024) and 3 March 2025 (UPC_CoA_523/2024), Rematec v Europe Forestry, Court of Appeal, 17 February 2026, CJEU, 25 February 2025, BSH Hausgeräte v Electrolux, C-339/22

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.