Posted: October 14th, 2020
With its decision no. 1094 of 14th May 2020, the Court of Appeal of Milan issued a ruling on the recovery of profits from the patent infringer, one of the most debated topics of the Italian legislation on Industrial and Intellectual property rights.
The case at stake concerned Cama 1 S.p.A. (“Cama”), a packaging company, owner of several Italian and European patents protecting certain inventions concerning cartoning machines for coffee capsules including European patents no. EP 2 497 612 (EP ‘612) and no. EP 2 500 151 (EP ‘151).
The defendant Gima S.p.A. (“Gima”) sold to the Canadian company Mother Parkers Tea & Coffee Inc. (“Mother Parkers”) eight complete packaging lines for coffee capsules, each including a cartoning machine. Five of these sales took place after Cama became the owner of the EP ‘612 and EP ‘151.
Cama obtained in the first instance from the Court of Milan a declaration of infringement of said patents and the the awarding of damages for patent infringement against both Gima and IMA S.p.A. (“IMA”), the mother company controlling of Gima, notwithstanding the partial invalidity of EP ‘612.
Cama appealed the decision before the Court of Appeal of Milan, challenging inter alia the criteria adopted by the judge of the first instance for determining the recovery of profits.
IMA and Gima cross-claimed the unconstitutionality of the Italian provision on the disgorgement of profits of the infringer, for its alleged inconsistency with EU Directive no. 2004/48.
Indeed, with the entry into force of Decree no. 140 of 16th March 2006, the Italian legislator implemented Directive 2004/48 and provided a new wording of Art. 125 of the current Italian Industrial Property Code (“IIPC”), introducing under paragraph 3 the possibility for the rightsholder to obtain the recovery of profits:
“In any event, the owner of the infringed right may request the recovery of the profits obtained by the infringer, either as an alternative to compensation for the loss of profits or to the extent that they exceed that compensation.”
According to such paragraph, disgorgement of profits is conceived as an alternative to the compensatory remedy of the refund of lost profits, or cumulatively with it should the profits exceed such compensation.
Headnote and summary: Luca Giove and Filippo Biancotto, GR Legal