Paul D. YU | Sep 20, 2020

Recently, Pfannenberg Europe GmbH, a leading German company in the electrical industry, defended its patent rights in China and obtained a high compensation of over RMB 600,000 (USD 86,760) successfully.

In August 2017, Pfannenberg entrusted Jiaquan IP Law to file a lawsuit against a Guangdong enterprise (referred to as Company B) for invention patent infringement at Guangzhou IP Court. Jiaquan collected and submitted a large amount of valid evidence, including proofs of offering for sale at the exhibition, sales records in the Taobao store, sales information on the defendant's website, and the on-site notarization of purchasing the infringing products at the defendant's factory. Besides, Jiaquan submitted the plaintiff's market loss statements upon the infringement.

Based on the above content, Guangzhou IP Court determined that Company B has implemented the act of manufacturing the alleged infringing products and ordered that Company B should stop infringing and pay compensation to Pfannenberg.

According to the Research on Judicial Infringement Compensation of Intellectual Property Rights completed by the Intellectual Property Research Center of Zhongnan University of Economics and Law, it is found that 97.25% of patent judgments have adopted the statutory compensation which is more than RMB 10,000 yuan, and less than RMB 1 million yuan.

In this case, it is difficult for both parties to give evidence to prove the losses of the patentee due to infringement, benefits of the infringer, or royalties of the patent. However, to obtain a higher amount of reasonable compensation, Pfannenberg entrusts our firm to actively prove the unit price, network sales, and exhibition promotion of the alleged infringing products in terms of the sales situation and impact scale of the alleged infringing products; Given the nature and circumstances of the infringing party's infringement, we shall actively prove that Company B fraudulently uses Pfannenberg’s name and trademark, the market scale and influence of both companies, and issue a market loss statement, to show that Company B has subjective malicious infringement. All these pieces of evidence provide strong support for getting a higher compensation amount within the statutory compensation scope.

Company B filed an appeal with the Supreme People's Court, but the decision was upheld finally. Afterward, Pfannenberg applied for compulsory execution at the local court and successfully received the compensation in May 2020. It took about 3 years for Pfannenberg to have a happy ending. The successful outcome of the lawsuits has enhanced their confidence in the Chinese legal system in protecting the right holder’s legitimate interests.

References

[1] The Patent Law 2009 edition;
[2] The Civil Judgment of the Supreme People’s Court of the People’s Republic of China: (2019) Supreme Court Intellectual Property Civil Final Judgment No. 524.