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Overview · Filed: Jul 13, 2023

UPC_CFI_241/2023

False twist texturing machine

InfringementMain Infringement ActionMilan LDInfringementCase Closed
OverviewDecisionsReasoningCitationsDocumentsTimeline
Plain-English summary

Oerlikon Textile brought a UPC infringement action against Indian manufacturer Bhagat Textile Engineers for exhibiting a texturing/structuring machine at the ITMA 2023 fair in Milan in infringement of EP 2145848. Bhagat did not contest infringement or validity; the court's decision focused on whether to grant a permanent injunction, the penalty, and costs allocation. The Milan Local Division granted a permanent injunction in Italy and Germany, a EUR 12,000-per-breach court penalty, and EUR 15,000 in provisional damages, with Bhagat bearing 80% of costs due to a 20% equity offset reflecting Oerlikon's increasingly expansive settlement demands.

Accepted arguments
What the court agreed with — by party.

  • Infringement of EP 2145848 by exhibiting texturing machine at ITMA 2023 trade fair

    ClaimantLegal basis: Art. 63(1) UPCA

    Note: Defendant did not contest infringement; the court found infringement established for Italy and Germany.

  • Risk of repetition sufficient to justify permanent injunction given defendant's prior conduct

    ClaimantLegal basis: Art. 63(1) UPCA

    Note: Court granted permanent injunction; defendant had burden to prove no risk of repetition for already-ascertained infringing conduct.

Rejected arguments
What the court did not agree with — and why.

  • Stay of proceedings pending revocation counterclaim by different defendant in parallel action

    RespondentLegal basis: Rule 295(m) RoP

    Reason: No basis to stay infringement proceedings where defendant has unconditionally conceded validity and infringement; Rule 295(m) stay discretion does not extend to such circumstances.

  • Full costs offset in Oerlikon's favour should be denied due to Oerlikon expanding settlement demands during negotiations

    RespondentLegal basis: Art. 69(1)(2) UPCA

    Reason: Court granted only a 20% partial offset, not total offset, recognising Bhagat's cooperative behaviour and Oerlikon's escalating demands as equity factors under Art. 69(1) UPCA.

Key legal principles
Doctrines and rules cited in the reasoning.
Permanent injunction under Art. 63(1) UPCA is discretionary, not automatic on finding of infringementFor past infringing conduct, burden to disprove risk of repetition lies with defendantFor future (not yet realised) infringing conduct, claimant must prove risk through objective and subjective elementsRule 295(m) residual stay power does not apply where defendant has admitted infringement and validityCourt may apply partial costs offset under Art. 69(2) UPCA for equitable reasons related to settlement conduct

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