The District Court of Düsseldorf
The OEM is celebrating a successful outcome to the lawsuit filed against Nazdar, and its German distributor Zaro.
In 2017, Fujifilm Speciality Ink Systems Ltd (FSIS) filed a suit against Nazdar Co., US and Nazdar Limited, UK, as well as its German distributor Zaro GmbH, before the Regional Court in Düsseldorf. FSIS claimed Nazdar had infringed its UV ink patents EP 1 803 784 B3 and EP 2 383 314 B3 in Germany, by offering its 702 & 703 Series UV inkjet inks and declaring them to be chemically compatible with the original inks designed for Fujifilm’s Acuity range of flatbed UV printers.
The patents on these inks protect specific inkjet ink compositions providing a range of properties including “improved flexibility, jetting performance and adhesion.”
In reaction to the infringement actions, Nazdar filed nullity actions against the patents in Germany before the German Federal Patents Court and asked the Regional Court in Düsseldorf to stay the infringement proceedings. Furthermore, Nazdar contested the infringement, but did also, in reaction to FSIS’ patent claims, change the chemical composition of its UV inkjet inks. However, despite redesigning the inks, Nazdar continued to market its UV inkjet inks as 702 & 703 Series and failed to indicate to customers the change in chemical composition in a way that FSIS considered necessary to avoid patent infringement.
The Regional Court in Düsseldorf has now backed Fujifilm in the dispute, confirming infringement on the part of Nazdar and enjoining Nazdar and Zaro from offering or bringing to market, or any further use of, patent infringing UV inkjet inks. It has also sentenced them to pay damages and render account. The Court also approved FSIS’s position that the change in chemical composition of the 702 & 703 Series is not sufficient to avoid infringement because Nazdar continues to market their UV inkjets inks as 702 & 703 Series without sufficient indication of the product change.
Without prejudice of the nullity proceedings at the Federal Patents Court in Munich, the Regional Court in Düsseldorf did not follow Nazdar’s invalidity arguments and therefore also rejected the stay motion.
Nazdar and Zaro have filed appeals against the judgements. Irrespectively, the judgements remain provisionally enforceable under the condition that FSIS will provide sufficient enforcement security. A date for the appeal hearing has been set for 7 November 2019. A date for a hearing in the nullity proceedings has not yet been set.
Commenting on the ruling, FSIS’ R&D Director Rob Fassam said: “I am delighted that the Regional Court in Düsseldorf has ruled in our favour. We invest significant time and resource developing new and exciting technology that benefits the inkjet industry.”
“This sends a clear message to anyone thinking of infringing our intellectual property,” Fassam continued. “We will continue to protect our investment by filing patents that cover our technology and we will take appropriate action against those who infringe.”
