Brescia Court rules on counterfeiting of gym machines
The Court of Brescia, in a ruling dated May 8, 2024, found that the EU and international design lines for "Purestrength," "Selection," and "Selection Pro" gym machines had been infringed by three individuals who sold the equipment in question online and/or used it in their own gyms. The Court’s ruling prevented the defendants from using, advertising, and marketing the infringing machines, setting a penalty for each violation of the restraining order, and ordering the defendants to permanently withdraw the machines from the market.
(EU design no. 002438937-0001)
(EU design no. 002438937-0002)
The plaintiff had already obtained a description, injunction, seizure, and withdrawal of trade against the defendants as a precautionary measure, and then acted on the merits for a final finding of wrongdoing, final injunctions, and damages.
In confirming the infringement of the registered designs by the plaintiff, which had already been summarily ascertained during the interlocutory phase, the Court noted that visual comparison was already sufficient to determine the similarity between the registered designs and the censured machines. In this regard, the Court rejected the defendants' defense about alleged differences between the marketed machines and the registered designs relating to weight, size, and colour, noting that the weight and size of the machines are abstract elements which are ineligible to exclude infringement, as they are outside the scope of protection of Community designs, and are therefore irrelevant for the purpose of the interference judgment. As for colour, the Court noted that the characteristics of the registered designs did not include a particular colour, and that in any case the use of a different colour did not give the machines, marketed by the defendants, a significantly different appearance from that of the original model.
The judge also rejected the good faith argument, asserted in the form of a lack of knowledge of the infringed patents, noting that in matters of titled industrial patents, possible ignorance of infringing another's right does not exonerate any wrong doing.
Curiously enough, the plaintiff in p.c. had waived her claim for an award of damages and asked instead for the mere establishment of a "damages claim." The judge declared the latter claim inadmissible due to a lack of interest with respect to the alleged injury, particularly because the requested assessment:
(a) would not have removed any state of future uncertainty, the injury having now been consummated and the prejudicial consequences consolidated;
(b) would not have offered any remedy for the consequences of the injury, a judicial pronouncement of condemnation being necessary;
(c) would have had no effect on the substantive level of the injured right, given that the interruptive effects of the statute of limitations on the right to compensation for damages derive from the communication of the will to exercise that right, and that the permanent interruptive effects deriving from the filing of a judicial claim last until the settlement of the lawsuit;
(d) it would not have been suitable in any case to avert new violations in the future, since the assessment does not have a deterent effect.
In conclusion, the Court, having ascertained the infringement of the EU and international designs related to the gymnasium machines, prevented the defendants from using, publicising and marketing the infringing machines, fixing for each defendant a penalty of €1,000.00 for each violation of the injunction, and ordering the defendants to permanently withdraw from the market and destroy the said infringing machines, with an order to pay the costs.
