Fischerwerke and Dhenne Avocats prevail in fight with Art Color

Fischerwerke accused the two French competitors of infringing its EP 2 213 888. The patent protects an insulation holder — a type of rawlplug — for fixing an insulation panel. The German fixing plug manufacturer has also sued Art Color, BC Groupe and Cekomat over its community models 001990821-0001 and 001990821-0002, as well as the international word marks Ecotwist (no. 1 100 362) and Termoz (no. 983 771).

BC Groupe trades in a range of products for structural and finishing work and Art Color distributes building materials, including insulating panel support dowels. The latter obtains its supplies from Cekomat, a company specialising in the sale and supply of building materials.

One defendant in liquidation

Fischerwerke claimed the insulation brackets sold by Art Color and BC Groupe as Ecotwist plugs infringe its IP rights. Following a seizure in October 2021, the German company sued both distributors as well as Cekomat. The latter has been in the process of liquidation since summer 2023.

The German fixing plug manufacturer demanded the cessation of distribution, the recall and destruction of the infringing products as well as damages.

The defendants rejected the allegations of infringement and in turn filed a counterclaim for nullification of EP 888, due to lack of inventive step in some of the patent claims. They also asked the court to invalidate the designs and revoke the trademark Termoz for failure to use it in accordance with the goods and services in question.

Misleading or not

The plaintiff described this procedure as misleading and requested the court declare the counterclaims for invalidity inadmissible. Fischerwerke argued that Art Color and BC Groupe initially admitted infringing patent EP 888 and the Ecotwist and Termoz trademarks in their previous pleadings.

The defendants argued they had admitted the seized products were likely to fall within the scope of the patent-in-suit. However, they claimed they had never acknowledged the validity of the patent or waived their right to assert its invalidity.

The Judicial Court Paris has now found the patent valid and infringed. The judges’ bench of the 2nd Section of the 3rd Chamber comprised presiding judge Irène Benac and judges Véra Zederman and Arthur Courillon-Havy. They ordered the defendants to cease and desist and recall the products.

Furthermore, the judges have ordered the defendants to provide information concerning the names and addresses of the manufacturers, distributors, suppliers and other previous holders of the infringing products. They must also provide information concerning the quantities produced, marketed, delivered, received or ordered, and the price obtained for these products (case ID: RG 21/14061).

First time for Fischerwerke

A team from Dhenne Avocats represented Fischerwerke. Jean-Jacques Kress, patent attorney at Ipsilon, provided support in technical matters.

It was patent litigator Matthieu Dhenne’s first time representing the German fixing plug manufacturer, having taken over during his time at the patent attorney firm Ipsilon. He later founded his own law firm, Dhenne Avocats. The Paris-based IP boutique focuses on patent litigation. It regularly advises clients, especially small and medium-sized companies, in patent disputes across a wide range of technical fields.

For example, Dhenne represented Salveco in a patent dispute against various competitors, including Henkel subsidiary Swania, over ecological detergent. Recently he worked alongside former Preu Bohlig partner Konstantin Schallmoser in a UPC action for Canè against France Développement Électronique, a case that has meanwhile been settled.

In the current case, the team included associates Benjamin Mollet-Viéville and Mathilde Jean. They also advised on questions regarding penal and customs matters.

BC Groupe relied on Paris-based lawyer Maya Lahlouh. The solo practitioner specialises in IT and IP law. She represented the defendant together with Rouen-based lawyer Selçuk Demir. Art Color retained Marie-Catherine Vignes of Parisian law firm GRV Associés and Strasbourg-based Michel Mall, who was pleading the case.

Cekomat was represented by Fabienne Jenner of MJ Synergie in her capacity as the company’s liquidator.