German start-up triumphs over Chinese competitor with Rospatt Osten Pross

Founded by students in 2014, the Munich-based company Workaround is better known under the brand name ProGlove. The company sells wearable barcode scanners. Manufacturers worldwide use these as part of the Internet of Things in logistics and industrial manufacturing – for example in the automotive industry. The advantage is that a small portable scanner is attached to the back of the hand via a glove, leaving the employee’s hand free for other work.

In 2022, Workaround sued the European sales company of the Chinese Newland group for imitating its basic glove “Index Trigger”, protected by patent DE 10 2018 112 945 B4. Workers can trigger the ProGlove scanner using an integrated button for the thumb. The scanner itself is interchangeable.

Newland offers a similar product, the EHS glove. The Munich Regional Court found this infringed Workaround’s patent DE 945 and ordered Newland Europe to cease and desist, render accounts and provide information. If Workaround enforces the judgment against a security deposit of €430,000, Newland Europe will no longer be allowed to sell its glove in Germany. However, the Chinese company is currently considering whether to appeal against the ruling.

Unlucky in the first round

Newland is challenging the patent in a nullity action at the Federal Patent Court (case ID: 7 Ni 20/23). The court has not yet set a hearing date.

André Sabellek

The verdict from Munich Regional Court is Workaround’s first success against its Chinese competitor. Previously, Munich Regional Court had dismissed a PI application from Workaround due to a lack of urgency.

In 2022 Workaround was also unlucky at Düsseldorf Regional Court. There, the company applied for a preliminary injunction against Newland’s EHS glove on the grounds of design infringement and protection against unfair competition and imitation. However, neither the Regional Court nor the Higher Regional Court Düsseldorf agreed with Workaround. They dismissed the application that same year (case IDs: 14c O 37/22 and I-20 W 53/22).

Start-up with external advisors

Rospatt Osten Pross partner André Sabellek has advised Workaround for some time. In the past, the company has teamed up with the Düsseldorf IP law firm to take action against other barcode scanner manufacturers over an EU utility model.

The Munich law firm Prinz & Partner originally filed the patent-in-suit. From 2021, Workaround then relied on the Bavarian law firm Flach Bauer & Partner, which also took over the technical part of the infringement proceedings.

Bastian July

Workaround does not have its own IP department, but relies on the expertise of Bastian July from Good IP. He was general counsel at the ProGlove manufacturer between 2019 and 2022. July, who previously worked for Osram’s IP department, founded the consultancy Good IP in 2017. The consultancy helps young companies to protect their inventions and market patents.

Like Workaround, Newland also relies on the same law firm in all disputes. A mixed team of lawyers and patent attorneys from Grünecker is conducting the various proceedings.

Workaround
Rospatt Osten Pross (Düsseldorf): André Sabellek (partner), Melanie Strobel (associate)
Flach Bauer & Partner (Rosenheim): Johannes Trapp (patent attorney)
GoodIP (Munich): Bastian July

Sebastian Ochs

Newland
Grünecker (Munich): Sebastian Ochs (lead patent case), Holger Gauss (lead design case), Alexander Stumvoll (patent attorney, all partners); associate: Elvira Bertram

Regional Court Munich, 7th Civil Chamber
Oliver Schön (presiding judge), Hubertus Schacht (judge raporteur), Michael Juhas