Key takeaways
Failure to monitor the patent landscape can establish “reasonable grounds to know”, Art. 68(1) UPCA
Under Art. 68(1) UPCA, the Court shall, at the request of the injured party, order the infringer who knowingly, or with reasonable grounds to know, engaged in a patent infringing activity, to pay the injured party damages appropriate to the harm actually suffered by that party as a result of the infringement.
An active stakeholder in the industry is at least reasonably expected to monitor the patent landscape before exhibiting its product on the market and should have had reasonable grounds to know about the existence of the patent in dispute and the infringing nature of the attacked embodiment. Failure to do so was at least negligent.
General statements are not sufficient to establish a reputational damage
When setting the damages, the Court shall take into account all appropriate aspects, such as the negative economic consequences, including lost profits, which the injured party has suffered, any unfair profits made by the infringer and, in appropriate cases, elements other than economic factors, such as the moral prejudice caused to the injured party by the infringement (Art. 68(3)(a) UPCA).
Reputational damage mainly based on general statements are not sufficient to establish a reputational damage due to the infringement of the attacked embodiment by offering it at a trade fair.
Request for evidence preservation justified without prior warning letter in urgent situations
An exception to the general rule of Art. 69(1) UPCA may apply if a claimant initiates proceedings without first sending a warning letter and the defendant submits a cease-and-desist undertaking immediately at the beginning of the proceedings. In such a situation, it may be justified to award costs to the defendant on equitable grounds, in particular because the claimant caused unnecessary costs to the defendant and the Court.
However, in the specific case, the application for presevering evidence without sending a prior warning letter did not cause any unnecessary costs to Respondent, considering the urgency and the limited time of seven days of the trade fair and without having sufficient evidence to prove a patent infringement.
Division
Court of Appeal
UPC number
UPC_CoA_8/2025
Type of proceedings
Appeal proceedings
Parties
Appellant (Defendant): Bhagat Textile Engineers
vs.
Respondent (Claimant): Oerlikon Textile GmbH & Co KG
Patent(s)
EP 2 145 848
Body of legislation / Rules
Art. 68 UPCA, Art. 69 UPCA
