Developers in Ufa lost in the case of misuse of patented lighting technology

The general contractor and the customer could not prove the legality of using LED lighting on the Soty clubhouse's facade in Ufa. According to DSM LLC, which owns the exclusive rights to the lighting design, Garantservice LLC (the facility's customer) and First Trust LLC (the general contractor) did not receive permission to use the technology from the patent holders.

It follows from the case materials that DSM, specializing in architectural and artistic lighting, and First Trust LLC, the first general contractor of the Ufa Kremlin residential complex, agreed on the supply of a profile decorative cover and a hinged facade rack-and-crossbar system with integrated LED lighting for the Soty clubhouse. The inventors of the lighting system were Svetlana Gainanova (co-founder and commercial director of DSM) and Artur Faskhutdinov (founder and director of DSM-Engineering LLC). The invention (integration of LED sources into the profile cover of the facade system) was patented at Rospatent, Ms. Gainanova and Mr. Faskhutdinov received the rights of patent holders, later transferred to DSM LLC.

However, the contract between the DSM and the First Trust was not executed, as the general contractor did not pay for the services. According to the plaintiff, the developer, having familiarized himself with the technical solution of lighting and related equipment, ordered the necessary equipment from another contractor. The DSM filed a claim demanding to stop the illegal use of the invention and voluntarily pay off the damage and then appealed to the court.

The Bashkortostan Arbitration Court agreed with the plaintiff's arguments and jointly collected 1 million rubles from the developers in favor of DSM LLC for the misuse of someone else's invention while constructing a house in the Ufa Kremlin residential complex. At the same time, the court reduced the amount of compensation from 5 million rubles to 1 million rubles. In addition, the defendants undertook to withdraw the disputed products from circulation.

Sergey Zuykov, Managing Partner of Zuykov and partners, believes that since the examination established a violation of the plaintiff's rights, it would be unjustified to expect a different court decision in such circumstances. "The defendant did not convince the court of the need to appoint a re-examination, and this significantly reduces the chances of a different decision," Mr. Zuykov explained. In addition, the developers did not file a counterclaim with arguments about using a utility model before the plaintiff's priority appeared, he added.

Source: Kommersant