Posted: October 10th, 2016
Golden helmet for a small French company: more than €1,500,000 in damages for the infringement of a patent covering a bike helmet (after a $8,100,000 settlement agreement with a prior infringer)
Time Sport International v. Decathlon and D-H-G Knauer, tribunal de grande instance de Paris, France, 1 June 2016, docket № 10/05487, with thanks to Pierre Véron, Véron & Associés
The tribunal de grande instance de Paris awards €1,524,036.04 to Time Sport International in compensation for the damage caused to it by the infringement committed by Decathlon and D-H-G Knauer of a patent relating to a device for fixing a cyclist helmet.
Time Sport International was the holder of European patent EP 0 682 885 relating to a “Device for retaining a helmet on the occiput” applied on 10 May 1994 and granted on 25 August 1999 (today expired).
This patent has been asserted in many proceedings: the 10 June 2016 judgment mentions that, “During the first half of 2007, the proceedings brought against Bell resulted in the signature of a settlement agreement awarding $8.1 million compensation to Time Sport and the conclusion of a licence agreement”.
Knauer is a German company specialised in the design, manufacturing and marketing of protective helmets for sports; it distributes its products under the trade name “Ked”; it has sold in particular models of helmets named “Ked Joker” and “Ked Meggy”.
Decathlon is the French leader of the distribution of sporting goods.
The Decathlon stores have marketed Knauer’s helmets “Ked Joker” and “Ked Meggy” and “B’Twin Mix” as well as models of helmets “B’Twin Urban Helmet” from another manufacturer.
Considering that the helmets implemented the teachings of its European patent EP 0 682 885, Time Sport International brought infringement proceedings against Knauer and Decathlon on 1 April 2010.
By a judgment dated 7 September 2012, the tribunal de grande instance de Paris dismissed the counterclaim for revocation of this patent lodged by the defendants, and held that they had committed acts of infringement; as is usual in France, the tribunal ordered that the defendants lay open their books to a court-appointed expert to assess the damage suffered.
The cour d’appel de Paris affirmed this judgment by a decision dated 16 December 2014.
In the 10 June 2016 judgment, rendered in the light of the report filed on 7 November by the expert appointed by the 7 September 2012 judgment, the court decided on the sums to be paid to Time Sport International.
Decision of the tribunal
The tribunal awards to Time Sport International an overall sum of €1,524,036.04 for the acts of infringement committed between 2 April 2007 (beginning of the infringement period) and the judgment ruling on the principle of infringement, on 8 September 2012; it rules separately on the acts of infringement committed until 30 October 2007 and those committed after that date as the French Act of 29 October 2007 (implementing in French law Directive 2004/48/EC of the European Parliament and of the Council of 26 April 2004 on the enforcement of intellectual property rights) changed the rules of assessment of the damage; the sums awarded are detailed as follow:
€64,681.44 for the period from 2 April to 30 October 2007 by applying an 8% royalty rate to the turnover made by Knauer, manufacturer; the tribunal considers that, before the French 29 October 2007 Act, only the situation of the victim of the infringement was taken into account and the compensation for the damage caused by the acts of infringement was awarded with regard to the loss of earnings and the loss suffered, the profits made by the infringer not being taken into consideration;
€1,349,354.60 for the period from 1 November 2007 to 8 September 2012; this sum corresponds to 20% of the profits made by the infringers; the tribunal considers that, under Article L. 615-7 of the French Intellectual Property Code derived from the 29 October 2007 Act, in its version applicable at the time, the situations of both the victim and the infringer should be taken into account and the compensation for the damage should take into consideration the negative economic consequences suffered by the injured party, the profits made by the infringer and the moral prejudice caused to the right-holder by the infringement; however, the tribunal does not award to the patent holder the entire profits made by Knauer and Decathlon considering that the patent holder did not exploit its invention at the time of the infringement;
€50,000 for the moral prejudice;
€60,000 for the defence costs.