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The cost of infringing industrial designs

By Rafael Dias de Lima & Juliana Nogueira de Sá Cardoso Coelho, Dannemann Siemsen´s partners

The payment of over R$ 9 million to Honda in a dispute over motorcycle industrial designs provides a concrete example of the economic impact of intellectual property. The outcome also highlights the strategy required to transform design rights into effective protection. When infringement results in substantial financial compensation, the risk of copying a product becomes a factor in investment and market entry decisions.

Developing a product, including its appearance, requires significant, validation and investmentchoices, testing. In markets where visual design influences consumer preference, reproducing protected elements may allow a competitor to capitalise on part of that investment without bearing the same costs. Legal protection of design must produce consequences capable of countering this advantage.

Honda received more than R$ 9 million from Shineray in 2024. The case, which began in 2012, involved the SH 150 Max and 150 GY Explorer models and the industrial designs of the CG 150 Titan and NXR 150 Bros motorcycles. The final judgement on the merits was handed down in 2020 and the settlement was finalised four years later. The disclosed amount includes monetary adjustment, with lawyers’ fees paid separately to the firm.

The dispute also involved a rescissory action filed subsequently, in which the company sought to overturn the judgements relating to the calculation of compensation, challenging aspects such as the starting date for monetary adjustment, tax deductions and the number of motorcycles taken into account in the calculations. The action was dismissed by the São Paulo Court of Justice, upholding the contested decisions. This episode highlights that a protection strategy must also encompass the defence of the results obtained, including in the face of attempts to reopen discussions after a judgment has become final.

Another case, against Bull Motocicletas, involves industrial designs for the Honda Biz and Honda Lead. During the enforcement phase , an expert report submitted in September 2026 assessed material damages at R$ 2,180,639.88. This figure is still subject to cross-examination and judicial review. It does not yet amount to a sum that has been definitively set or received by Honda.

The distinction between these stages warrants attention. The judgment recognises the right to compensation, the enforcement determines its monetary value, and receipt depends on the satisfaction of the claim. For business management, the legal strategy must follow this process. Its aim is to ensure that the legal victory produces the e y result sought by the company.

The Industrial Property Law protects new and original ornamental designs, with limitations that exclude shapes essentially determined by technical or functional considerations. To calculate loss of profits, Article 210 provides for the criterion most favourable to the aggrieved party, choosing between the profits they would have obtained, the profits realised by the infringer, and the remuneration corresponding to a licence. The existence of these alternatives makes it possible to bring the compensation closer to the economic reality of the infringement.

The application of these criteria requires consistent evidence and monitoring by the expert witness. In the case involving Shineray, for example, the work of the legal team did not end with the submission of the accounting report. This was because there were queries regarding specific assumptions used in the calculation, including the origin of the motorcycles in question, discounts applied to the calculated amounts, and the time periods used to adjust the compensation for inflation-which, in that case, was calculated on the basis of the benefits received by the infringer¹. The dispute continued at the appeal stage and resulted in a revision of the amount initially recognised in the enforcement phase , given an adjustment to the starting point for monetary adjustment. This case illustrates how the quantification of damages can depend both on the evidence produced and on the ability to identify and correct economic and accounting assumptions that influence the outcome. The integration of legal knowledge, technical analysis and report accounting enables the extent of the damage to be demonstrated and a commensurate award to be sought. This process begins with the adequate protection of the industrial design and continues through the production of evidence and the conduct of the proceedings.

Legal action can also halt the continuation of the damage. In another case involving Shineray, relating to the Ray 50 model, the Fourth Panel of the Superior Court of Justice upheld, in May 2026, an injunction granted by the São Paulo Court of Justice. The state court had deemed a visual comparison sufficient for that initial examination. The Superior Court dismissed the appeal on the grounds of procedural limitations regarding the review of the injunction and the evidence. The decision upheld the injunction, without constituting a final judgement on the infringement or a general waiver of the need for an expert report.

The strategy should also extend to debt recovery. Once the amount has been established and the legal requirements met, the instruments for enforcing a judgement allow for the recovery of payment and the seizure of assets. In certain circumstances, interim measures may preserve assets to satisfy the debt. The choice and timing of these measures require an assessment of the stage of the proceedings and the specific conditions for recovering the amount.

The time elapsed between the judgment and receipt of payment helps to illustrate the importance of the legal team’s ongoing involvement. In the case reported against Shineray, four years elapsed between the final judgment on the merits and the completion of the enforcement legal proceedings The quality of the technical work in quantifying damages and persistence in recovery are central components of the protection of intellectual property. For the company, the time and resources required by this process are also part of the assessment of the results.

The economic repercussions of these decisions extend to the market. A substantial award of damages signals to those considering copying protected elements of leading products that infringement may jeopardise the expected financial gain. Legal action, by putting a stop to the infringing conduct and enabling compensation, can deter further infringements and lend greater credibility to the protection of investments in in-house development.

The cases involving Honda thus provide a benchmark for companies needing to defend their products. Proper registrations and market monitoring must be linked to a legal strategy capable of proving the infringement, quantifying its consequences and pursuing the recovery of damages. It is through this consistent approach, sustained by the specialised work of the team, that the protection of intellectual property can generate significant financial results and provide a concrete response to illegal copying.

See Article 210(II) of the Intellectual Property Law: “Article 210. Loss of profits shall be determined on the basis of the criterion most favourable to the aggrieved party, from among the following: II – the benefits derived by the infringer”.