Unified Patent Court: Milan local division rules on infringement in trade fairs
The Milan Local Division of the UPC has delivered a landmark decision emphasizing that the mere display and promotion of a patented product at a trade fair can constitute patent infringement 4 November 2024
This case, involving Oerlikon Textile GmbH & Co KG and Bhagat Textile Engineers, builds on an earlier ruling issued on June 14, 2023. That initial decision allowed Oerlikon to preserve evidence of alleged infringement during the ITMA 2023 trade fair in Milan, where Bhagat displayed a machine claimed to infringe Oerlikon's patent EP 2.145.848 B1 for a “false twist texturing machine”. That order, granted without prior notifying the defendant, showcased the UPC's efficient handling of urgent IP matters, balancing evidence preservation needs against potential rights impacts.
In its November 4, 2024 ruling (UPC_CFI_241/2023), the court found that Bhagat's promotion of the machine at the trade fair infringed Oerlikon's patent rights under Article 64(2a) UPCA, even without any actual sales. The order, which prohibits further promotion and sales, underlines the effectiveness of the UPC in protecting patents, even in international trade fair settings.
The court issued a permanent injunction against Bhagat, prohibiting the sale and promotion of the infringing machine in Italy and Germany, and imposed a penalty of €12,000 for each future violation. Additionally, Bhagat was ordered to pay Oerlikon €15,000 in provisional damages and cover 80% of the legal costs. The court rejected further claims by Oerlikon but underscored that publicizing the infringing machine at a major industry event constituted infringement, reinforcing the protective reach of UPCA Article 63(1) on injunctions.
During the 27 September 2024 oral hearing, Bhagat requested a suspension of the infringement proceedings based on Rule 295(m) of the Rules of Procedure (RoP), pending a decision in a parallel case involving a counterclaim for revocation action involving the same patent in a different action taken by Oerlikon against another party. The Milan Court denied this request, emphasizing that Bhagat's implicit recognition of the patent's validity by not contesting it and its own non-contestation of infringement did not justify a suspension.
This decision highlights the UPC's approach to enforcing patent rights at trade fairs, affirming that public promotion of potentially infringing products, even without sales, can trigger infringement proceedings.
Bottom line, this ruling underscores the importance for businesses to conduct thorough IP checks before showcasing products at trade fairs, especially in jurisdictions covered by the UPC.
