If you are subject to an action of infringement, give yourself the means to analyze your risks and organize your defense as well as possible.
Summary
A good mastery of legal proceedings for infringement and of the subject of patent law in its legal and technical dimensions, is essential to defend a client whose infringement action against him jeopardizes his activities.
In more detail
Tiger grip is a newcomer in the field of non-slip safety shoes and overshoes. It has invested heavily in innovation, and the ergonomics of its models have led it to shake up its competitors on the market.
With its first significant product (the safety overshoe with “Visitor” toe cap), Tiger grip positioned itself in direct competition with the undisputed leader, Gaston Mille.
The latter, who holds several patents, considered that Tiger Grip was infringing a patent that it had very recently filed on its own safety overshoe with protective toe cap.
However, the Tiger Grip “Visitor” overshoe had been designed before the filing of the patent whose infringement was alleged.
Furthermore, the infringement was highly questionable, given the substantial differences between the “Visitor” overshoe and the claims of Gaston Mille’s patent.
First, Gaston Mille gave Tiger Grip formal notice to stop marketing its “Visitor” overshoe, then, faced with Tiger Grip’s resistance, sued it for infringement before the Paris Court.
This was preceded by a counterfeit at the headquarters of Tiger Grip, and as part of these operations, all the technical files of the “Visitor” overshoe were seized.
This legal action, which continued to prohibit the continued marketing of the “Visitor” overshoe, was extremely anxiety-provoking for Tiger Grip, which saw its main product called into question and its future in jeopardy.
Problem
The problem posed by this case was the difficulty of defending Tiger Grip, which had two defenses that were difficult to reconcile : contesting the infringement and relying on the previous design of the “Visitor” overshoe.
Indeed, if the earlier design of the “Visitor” overshoe constituted a potentially effective means of defense (Gaston Mille’s patent would become unenforceable against Tiger Grip), advancing this argument amounted to admitting that the “Visitor” overshoe reproduced the characteristics of the patent which was opposed to it.
Therefore, in the event of failure or inadequacy of the demonstration of the anteriority of the “Visitor” overshoe, the path to a conviction for counterfeiting became wide open.
Solution
The solution lay in JUNCA & ASSOCIÉS ability to convince the judges that the prior design of Tiger Grip should be considered in the alternative to demonstrating non-infringement, based on the substantial differences between the Visitor shoe and the opposing patent, whereas these two arguments are normally incompatible.
The value added by JUNCA & ASSOCIÉS
JUNCA & ASSOCIÉS is made up of lawyers specializing in intellectual property who master the legal proceedings for counterfeiting, and Industrial Property Attorneys, some of whom are representatives with the European Patent Office, who provide clients with all their expertise to assess acts of infringement, and develop the technical and legal arguments essential to resolve this very specific type of dispute.
JUNCA & ASSOCIÉS therefore has a global vision of patent litigation, which allows it to define the best possible strategy for its clients.
Result
The Paris Judicial Court rejected the action for patent infringement brought against the company Tiger Grip, then the Paris Court of Appeal upheld this decision, ordering on the occasion the company Gaston Mille to pay 85 000 euros to the company Tiger Grip, in respect of the costs incurred to ensure its defense (55,000 euros in the first instance and 30,000 euros following the appeal lodged by the company Gaston Mille).