Oerlikon Textile v Bhagat Textile Engineers (CFI, 4 November 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By decision of 4 November 2024 (UPC_CFI_241/2023, ACT_549585/2023), the Milan Local Division (P. Perrotti, presiding, A. Zana, rapporteur, and C. Gillet) held that Bhagat Textile Engineers, an Indian company, infringed Oerlikon Textile’s EP 2 145 848, for a false twist texturing machine, by promoting and offering the accused machine at the ITMA fair in Rho-Milan in June 2023. It granted an injunction for Italy and Germany, with penalty payments of EUR 12,000 per breach, and an interim award of EUR 15,000 in damages, but refused recall, information and publication.

With neither validity nor infringement contested, the decision shows how the Milan Local Division calibrates remedies where infringement is confined to a display at a trade fair.

Facts and procedure

An ex parte order under Rules 192 et seq. was executed on 14 June 2023 at the ITMA fair, where the defendant exhibited the machine. The infringement action was filed on 12 July 2023 and the Statement of defence on 4 January 2024, the interim conference took place on 27 May 2024 and the oral hearing on 27 September 2024. Settlement talks failed. The defendant sought, in the alternative, a stay under Rule 295(m).

The applicable law

Offering to the public is an infringing act under Art. 64(2)(a) UPCA. Arts 63(1) and (2), 64, 67(1) and 80 UPCA govern injunctions, penalty payments, corrective measures, information orders and publication. Rule 119 allows an interim award of damages. Costs follow Art. 69(1) and (2), and the value of the dispute is challenged under Rule 24(i).

Question

What remedies are appropriate where uncontested infringement consists solely of promoting a machine at an international trade fair?

Decision

The stay request is admissible although raised at the hearing, but is refused: validity and infringement are not contested and the defendant gave no specific reason (paragraphs 5.3 to 5.6). Infringement is established by non-contestation (Rule 171.2), offering at an international fair being an infringing act, limited to Germany and Italy (paragraphs 6.5 to 6.8). An injunction is granted: the risk of repetition is presumed, the defendant’s undertaking being insufficient, and it extends to commercialisation in view of preparatory acts and public statements (paragraphs 7.1 to 7.6). Penalty payments of EUR 12,000 are proportionate to the value of the machine and royalty rates in the sector (paragraphs 8.1 to 8.6).

Recall is refused for lack of evidence that the machine was placed on the market (paragraphs 9.1 to 9.7), information for lack of evidence of present or past infringing conduct, the point remaining open at the damages stage (paragraphs 10.1 to 10.3), and publication as disproportionate (paragraphs 12.1 to 12.4). The interim award is reduced from EUR 100,000 to EUR 15,000, reflecting minor reputational harm (paragraphs 11.1 to 11.8). The late challenge to the value of the dispute is rejected and the value set at EUR 750,000 (paragraphs 13.1 to 13.8). The defendant bears 80% of the costs, 20% being set off on equitable grounds, given the settlement history, the claimant’s shifting demands and the defendant’s cooperation (paragraphs 14.1 to 14.7).

Key points for practice

• Offering a machine at an international trade fair is enough to establish infringement and to justify an injunction extending to commercialisation.
• The risk of repetition is presumed. A mere undertaking by the infringer does not dispel it.
• Recall, information and publication require evidence of actual distribution or infringement of some scale.
• Practical point: a seizure at a fair followed by a merits action can quickly secure an injunction, but further remedies remain proportionate to the actual extent of infringement.

Provisions applied

Agreement on a Unified Patent Court

Arts 32(1)(a) and (c), 33(1)(a), 63(1) and (2), 64(2) and (4), 67(1), 69(1) and (2), 73(1), 80 and 83(3)

Rules of Procedure

Rules 24(i), 119, 126, 171, 192, 220.1(a), 224.1(a), 295(m) and 354

Directive 2004/48/EC

Arts 11 and 13(3)(a)

Case law cited

DexCom v Abbott Laboratories, Paris Local Division, 30 January 2024, Koninklijke Philips v Belkin, Munich Local Division, 13 September 2024, Amgen v Sanofi-Aventis Deutschland, 20 September 2023 (UPC_CFI_1/2023), Oerlikon Textile v Himson Engineering, Milan Local Division, 27 September 2023.

Related decisions

• Oerlikon Textile v Bhagat Group, 14 June 2023, earlier ex parte order, executed at the ITMA fair.

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.