The particularity of the case examined by the judgment is the fact that the patented product was not commercialised by the infringer as such, but as part of a composite product. On the other hand, the plaintiff did market both the product protected by the patent and composite products incorporating the patented product.

The injured party wanted the calculation of the compensation to be made on the basis of the products he traded (retail price of the patented product and retail price of different products incorporating the patented element), from which he obtained the proportional part of the ‘price of the products corresponding to the patented element. On this basis, deducting the acquisition costs, it determined the profit obtained by the infringer in the sale of the composite products incorporating the patented element.

The Court does not accept the determination of the profit as proposed by the infringer, considering as premises for the determination of the compensation the following: a) the infringer has obtained a profit; b) to determine the profit “only” the profit actually obtained “as a consequence” of the infringement must be considered, i.e. those derived from the exploitation of the patented invention; c) the burden of proof of the profit obtained by the infringer corresponds to the plaintiff claiming it.

As a consequence, the Court cannot comply with the plaintiff’s request, because the calculation it proposes does not determine the profit obtained by the infringer. Instead, the judgment awards the plaintiff a compensation consisting of “the profit obtained by the plaintiff from the commercialization of the handles (production cost – selling price), and multiplying it by the number of units of the infringer/defendant’s product incorporating the realization questioned in the claim”.

In our opinion, the evidence provided to the process by the plaintiff is not taken into account by the Court, which is totally correct and, for this, in addition, the Court relies on the doctrine of the Provincial Court of Barcelona, September 20th, 2019 that in a matter of intellectual property and interpreting analogous rule states that “it is essential to determine the causal impact that the use of the infringed work may have on the profits.

of the infringed work, since it is not simply a matter of determining what the benefits have been in some way related to the infringement, but rather the benefits that the use of the infringed work may have brought to the party.” and the Provincial Court of Alicante, September 23rd, 2008 which imposes on the plaintiff the burden of proof of the benefit obtained by the infringer as a result of the infringement and further states that the compensation must take into consideration the fact that the benefit may have a cause other than the infringement (the fact that it is a garage that has been in operation at least since 1996 and that its clientele, during the time of the infringement, will not only have come from the sole fact constituting the infringement – (the use of the DAF mark on the road sign and on the road signs) – but undoubtedly from the dynamics of the commercial relations and the loyalty of previous clients).

The determination of compensation by means of the option of the profit obtained by the infringer is complex due to the multitude of factors involved in the generation of the profit. First, the margin is not the profit. That is to say, the difference between the resale price and the acquisition price is not profit, but margin to contribute to the structure of other costs and, if applicable, profit or loss.

Although the plaintiff has the burden of proving the existence of the profit and its causal relationship with the infringement of the industrial property right, it will normally only be able to determine the commercial margin obtained by the infringer. It seems logical to think that if the latter intends to impute expenses or costs other than the purchase price of the goods, it must prove their existence and traceability as a cost of the infringing commercial operations. These are indirect costs that, once their traceability is proven, cease to be such and are considered direct costs.

On the other hand, “infringing products” may be compounded not only because they incorporate an infringing element, but also because there may be other infringing elements (or not) owned by other persons, such as trademarks, designs, copyrights on commercial brochures or other patents. In these cases, such rights must be taken into consideration in order to determine the benefit accruing to the injured party as a result of an infringement.

Commercial Court of Barcelona Decision, October 6th, 2022