Basic Holdings and DLA Piper secure infringement decision over decorative fireplaces

Basic Holdings has succeeded in overturning a first-instance decision which, in 2022, found that competitor Afire had not infringed its patent EP 2 029 941. Now the second-instance Court of Appeal in The Hague has found that Afire’s artificial fireplace design does infringe EP 941. The court has also overturned the opponent’s counterclaim and confirmed that Basic Holdings’ patent is valid.

New type of flame

EP 941 covers the technology behind artificial fireplaces, and specifically relating to “simulated fires and in particular to apparatus for simulating the burning of solid fuel such as coal or logs”. There is a growing commercial interest in electrical vapour fires: since they are non-polluting, do not create real flames and do not emit heat, people living in dwellings such as apartments can more easily access featured fires. They are also more eco-friendly than traditional fireplaces, which rely on non-renewable fuels or wood.

Basic Holdings is part of the Ireland-based Glen Dimplex group, which is one of the world’s largest producers of consumer electrical goods. In 2019, it sued competitor Afire, an artificial fireplace seller based in Luxembourg which also sells online in the Netherlands, on the basis that its products infringe EP 941. Afire responded with a counterclaim for patent invalidity.

Basic Holdings overturns judgment

Alexander Tsoutsanis

The District Court of The Hague heard the first hearing in February 2022, finding that Afire did not infringe Basic Holdings’ patent. It determined that Afire’s decorative fireplaces did not fall within the patent’s scope of protection, since it does not provide protection for decorative fireplaces with one opening.

However, Basic Holdings filed an appeal, which the Court of Appeal heard in May 2023 in the second instance.

Here, the judges found that Afire does infringe based on the first grounds of appeal: namely, that the court wrongly concluded that decorative fireplaces with one opening fall outside the patent’s scope of protection. As such, the court did not examine claims two, three and four.

The current set of litigation is the seventh pursued by Basic Holdings since 2016, with this decision marking the sixth time in a row that the Dutch courts have upheld the patent. Previous opponents include Ruby Decor, Aparto and Nijhof Zelfbouw Baarn, now known as Woonwarenhuis Nijhof.

Seven-year stretch

Basic Holdings/Glen Dimplex is a long-standing client for DLA Piper’s Dutch patent team, which has acted for the company since it began proceedings against competitors in 2016. Former partner-turned-counsel Paul Reeskamp, and legal director Alexander Tsoutsanis, are especially visible as leading lawyers for Basic Holdings’ various proceedings. However, Tsoutsanis is acting as lead counsel in the current proceedings against Afire.

Arvid van Oorschot

Since parent company Glen Dimplex is based in Ireland, DLA Piper also worked alongside patent attorney Barry Moore from the Dublin office of Murgitroyd.

Amsterdam-based IP boutique Vondst acted for Afire in both the first and second instance. Young partner Arvid van Oorschot leading proceedings on both occasions.

The firm also worked alongside a patent attorney, this time Henri Kihn of Luxembourg-based firm Freylinger. Afire is based in Luxembourg.

For Basic Holdings
DLA Piper (Amsterdam): Alexander Tsoutsanis (legal director, lead); Paul Reeskamp (counsel)
Murgitroyd (Dublin): Barry Moore (patent attorney)

For Afire
Vondst (Amsterdam): Arvid van Oorschot (partner); associate: Sjoerd Peters
Freylinger (Luxembourg): Henri Kihn (partner, patent attorney)

Court of Appeal, The Hague, the Netherlands
J. I. de Vreese-Rood, Rian Kalden, Michel Bonneur