Kodak v Fujifilm (CoA, 14 October 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

The Court of Appeal sets aside the order of the Mannheim Local Division requiring Kodak to pay EUR 100,000 for failing to comply with the information, destruction, recall and removal orders in the decision on the merits of 2 April 2025 (EP 3 511 174). A penalty sum can only be demanded on the basis of a prior penalty order. Neither the enforcement notice, nor the debtor’s awareness of its obligations, nor a reference in the grounds can take its place. The court does, however, uphold the penalties for future non-compliance (EUR 2,500 and then EUR 10,000 per day), stripped of any present obligation to pay. The order sets out a full framework for penalty payments at the UPC.

Facts and procedure

The decision on the merits of 2 April 2025 (UPC_CFI_365/2023) attached a penalty to the injunction but not to orders B.II to B.V. Fujifilm uploaded enforcement notices under Rule 118.8 on 29 April and 9 May 2025. By order of 23 July 2025 the Local Division ordered Kodak to pay EUR 100,000 and set penalties of EUR 2,500 per day until 4 August 2025, then EUR 10,000 per day. Kodak appealed. The hearing took place by videoconference on 2 October 2025.

The applicable law

Rules 354.3 and 354.4 allow a decision to be backed by a penalty payment and its payment to be ordered. Rule 118.8 makes enforcement of a decision on the merits conditional on the claimant notifying the required translation. Art. 69(2) UPCA governs the allocation of costs.

Question

Can the UPC order payment of a penalty without a prior penalty order, and on what terms can a penalty be imposed after the decision on the merits?

Decision

A penalty may be imposed in the decision or in a later order. Its amount, set by the Court, must be deterrent yet proportionate, and the order must state when the penalty is forfeited (paragraphs 30 to 34). The decision should as a rule set compliance periods. Failing that, the claimant sets them and the Court decides if the parties disagree (paragraphs 35 to 40). Any payment order presupposes a prior penalty order (paragraphs 41 and 42). The burden of proving compliance lies on the debtor (paragraph 43). Time runs from service for provisional measures and from the Rule 118.8 notification for a decision on the merits (paragraphs 46 and 47). An order that merely sets a penalty need not be translated, nor need the enforcement notice (paragraphs 49 to 51). In the absence of a prior order, the EUR 100,000 payment has no legal basis (paragraphs 55 to 57). The future penalties are upheld without any current payment obligation. A single penalty may sanction non-compliance with several orders and be addressed to the defendants collectively (paragraphs 68 to 73). Each party bears its own costs at first instance and on appeal (paragraphs 75 and 76).

Key points for practice

• The judgment creditor must obtain a penalty order before seeking payment. A direct request for payment will fail (paragraph 41).
• A penalty application should propose amounts and time periods, and the defendant should be invited to comment (paragraphs 36 and 37).
• Mitigation arguments belong in the proceedings for payment of the penalty, not in an appeal against the penalty order (paragraph 71).
• Practical point: confidentiality for evidence of compliance should be sought during the merits proceedings, a late request will be refused (paragraphs 45 and 66).

Provisions applied

Agreement on a Unified Patent Court

Art. 69(2)

Rules of Procedure

Rules 118, 211.5, 222.1, 352, 354.3 and 354.4

Case law cited

Belkin v Koninklijke Philips, Court of Appeal, 30 May 2025 (UPC_CoA_845/2024), Koninklijke Philips v Belkin, Court of Appeal, 3 October 2025 (UPC_CoA_683/2024).

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.