In the first substantive decision of the UPC concerning luxury fashion, the Hamburg Local Division has found Gucci not liable for infringement of patent EP 3 388 490, relating to a method for embellishing natural leather with decorative images.
The claim concerns infringement allegations made by Agfa, a company specialising in industrial inkjet technology and the proprietor of EP 3 388 490, concerning specific embodiments of Gucci’s Pikarar Collection (an example of which is depicted below). In the typical manner, Gucci counterclaimed for invalidity.
The Hamburg Local Division rejected both the infringement action and the counterclaim for revocation, for the reasons explored further below.
DETAILS
A key aspect of the dispute centred on the interpretation of the claimed feature: “the base coat (44)] containing a pigment for providing an achromatic colour different from black”. This was considered in the context of the allegedly infringing products, which have an ivory background colour.
The Court adopted the 10X Genomics and Harvard/NanoString approach to claim construction, making clear that a patent may be used as its “own lexicon”. It relied on the definition of achromatic provided in the patent description, namely colours that “have no dominant hue, meaning that all wavelengths are present in approximately equal amounts within those colours.” Achromatic and chromatic colours were considered mutually exclusive as chromatic colours have a dominant hue. The Court therefore sided with Gucci’s interpretation of the claim feature.
The validity of the patent was considered first. Various arguments were relied upon by Gucci, but all were unsuccessful. This included a novelty attack concerning prior public use in respect of Gucci’s “Flora” range of products in 2017. This attack failed on the basis that, whilst (on the evidence) there was little doubt that the Flora products were on sale prior to the filing of the patent, the products did not show all features of claim 1. In particular, the Flora products did not have an ivory-coloured base coat.
Relatedly, the Court also denied Gucci’s attempt to introduce new grounds of invalidity and prior art documents at the oral hearing. The Court confirmed that the formulation of a new inventive step attack in the oral hearing constituted an amendment of the counterclaim (pursuant to Rule 263 RoP), which requires the Court’s permission. The Court ruled that Gucci should have raised this attack in the counterclaim rejoinder filed during the written procedure, at the latest.
Having found the patent to be valid, it considered infringement. The Court found that the attacked embodiments of Gucci’s Pikarar Collection did not satisfy the above claim feature, given the base coats used were not achromatic. The ivory colour was instead considered a chromatic colour. No infringement was found.
COMMENTARY
This decision shines a light on the role of patents in the fashion industry and the UPC’s ability to handle disputes in this field (albeit still a rarity in comparison to other sectors).
The decision follows the UPC’s usual approach of undertaking detailed analysis in respect of claim construction.
The Court’s strict approach to late introduced evidence and argumentation is not surprising, given the front-loaded nature of the UPC procedure - in respect of which there is a clearly defined written procedure stage.
We await to see whether the decision is appealed.
