A short while ago, the Intellectual Assets and Business Courtroom (hereinafter known as “IP & Professional Court”) read a Patent dispute among Mercedes-Benz (hereinafter referred to as “Benz”) and Depo Car Pieces IND CO., LTD. (hereinafter known as “Depo”), which is concerning patent infringement, has manufactured a judgment on 14 July 2022.
The information of the circumstance
The plaintiff Benz sued and claimed that it owns the utility model patent for “Headlights for Cars (No. D128047 )”, and was infringed by the automotive headlight solutions (hereinafter identified as “disputed products”) developed and created by Depo. In this regard, Benz asked for Depo and its accountable particular person to jointly and severally compensate Benz for NT$60 million that in accordance to Post 142 of the Patent Act, Short article 96, 97 of the Patent Act, Post 184 of the Civil Act, and Article 23 of the Corporation Act.
The first-occasion judgment granted Benz’s request to exclude the infringement, and ordered Depo and its liable individual in charge to jointly pay out Benz NT$30 million, but rejected Benz’s remaining damages claims. Thus, the two get-togethers appealed.
Supply: Taiwan Patent Search Method (No. D128047)
The patent is about a novel and exceptional design and style that not only fulfills the meant purpose but also gives a unique car or truck headlight appearance with a visually satisfying visible impact in no way witnessed in any prior art. It is set up on the entrance area of the car. The shape of the lamp is trapezoidal and is composed of two sections, which are subdivided into two parts with upright recesses. The initially aspect has a trapezoidal dimension and the next component is droplet-like.
Protection from the Depo
Initial of all, the Depo argues as follows:
- The total overall look of the merchandise in dispute is noticeably various from the physical appearance of the patent in dispute, does not represent the very same or identical, and does not infringe the patent suitable in dispute
- The disputed patent violates the provisions prohibiting the repeated grant of patent rights
- The drawings of the disputed patent are not totally disclosed and are not able to be carried out appropriately
- If the disputed patent does not fulfill the novelty preferential interval, so the proper of priority shall not be claimed
- The disputed patent is not novel or creative and has factors for revocation.
In conclusion, Depo thinks that Benz shall not physical exercise its legal rights versus it.
Secondly, Benz violated Short article 9, Report 20, and Article 25 of the Good-Trade Act in working out the legal rights of the disputed patent, and also violated Post 148 of the Civil Act, which constituted an abuse of rights. Although Benz despatched a letter to advise Depo of the reality of infringement as early as October 2014, this lawsuit was not submitted right until March 2017, and the two-calendar year statuary extinctive prescription for claiming damages has expired.
3rd, Depo could declare to deduct the price and expenditures of generating the molds for the damages, but the primary judgment did not deduct that kind of charge and costs.
In the stop, Depo has made a style all around, which ought to be an accidental infringement. On the other hand, the original judgment multiplied the full product sales of Depo’s goods in dispute, NT$23,162,107 by 1.295 periods, to compute punitive damages of NT$30 million.
IP and Business Court’s Choice
IP and Industrial Court initial stated the infringing part: it believed that Depo’s solution and Benz’s patent have common attributes that are straightforward to draw in consumers’ focus, and the unique features might be in the components that are not quick for everyday shoppers to fork out notice to following the over-all observation and comparison, then the variance is so small that it is not plenty of to impact the over-all visual effect, so the visual appearance of Depo’s solution and Benz’s patent are equivalent, which has infringed Benz’s patent ideal.
The courtroom then stated the validity of the patent in dispute: Benz’s patent and its utility model patent (No. D128048) applied for on the identical working day did not violate the provisions prohibiting recurring granting of patent rights Individuals with typical information in the field can realize its content and implement it accordingly. In comparison with the complete articles of the precedence, the drawing of Benz’s patent does not deliver unique visual effects, and really should be discovered as “the similar utility model” and the priority can be claimed. The prior art evidence presented by Depo is insufficient to prove that Benz’s patent is not novel or resourceful, and must be legitimate.
Third, the court described no matter if the plaintiff Benz violated the related provisions of the Reasonable-Trade Act: it thought that there was a significant linkage amongst the “main market” of the car sector and the “aftermarket” in this situation. That is to say, the levels of competition constraints of the principal current market are adequate to move on to the aftermarket, so the two markets ought to be regarded as the same market. And because Benz has a reduced industry share in the most important current market, and the patentee has no obligation to authorize other individuals to put into action its patent, it cannot be considered that Benz’s unwillingness to authorize Depo to apply the disputed patent appropriate is Unfair perform that violates the Truthful-Trade Act that could have an effect on good sector perform.
At last, the court described that Benz violated the basic principle of superior faith in Report 148 of the Civil Act: even though the German Vehicle Affiliation has issued a relevant assertion, the statement has no authorized effect, so it is difficult to feel that the assertion has permanent and worldwide legal binding. Hence, it is insufficient for supporting Depo’s argument.
The verdict of this demo
The disputed products made by Depo infringes Benz’s utility model patent proper. Consequently, Depo shall not manufacture or provide the disputed item and shall damage all the finished merchandise, semi-completed merchandise, molds, or other devices employed to assemble and manufacture the disputed solutions. And Depo and its liable human being shall be jointly and severally liable for damages.
When Benz despatched a letter to Depo in 2013, it was only primarily based on the pics in the catalog and experienced not but as opposed the infringement of the disputed products and solutions, so it was not able to clearly know the infringement of Depo and even more demonstrate the suitable to assert damages has exceeded the two-12 months extinctive description.
As for the damages, Depo claimed to deduct the expense and fees of creating the mould, and the court only permitted the deduction of the charge and bills of the remaining versions that match. In addition, Depo, as a company specializing in the manufacturing of auxiliary parts and lamps, should really deliberately infringe the disputed patent suitable of Benz. Hence, according to Post 97 of the Patent Act, the amount of money of proved damage is established to be 1.5%. situations the compensation. It was requested that Depo and its dependable particular person in charge need to provide a assure of NT$18,123,279 for German Merchant Mercedes-Benz Motors, to keep away from provisional execution.
The verdict of this situation has not been identified, and both equally parties may file a third-instance charm.
For the primary textual content in Zoomlaw attorneys at law (Dr. Supporter, Kuo-Hua & Ng, (Kitson) Chun-Kit), obtain below.