UPC imposes penalty payment on Revolt in e-bike dispute with MyStromer

The subject of the dispute is EP 2 546 134 B1, which covers a combination structure of bicycle frame and motor hub in an e-bike. The patent holders are Taiwan-based Fairly Bike Manufacturing and Swiss-based MyStromer.

The companies accuse Revolt Zycling of infringing their property rights with its Opium series of speed pedelecs. The defendant had originally announced the sale of these e-bikes on its website for April 2023. Although delivery was delayed, the pedelecs were presented at the trade fair EuroBike 2023, which took place in Frankfurt from 21 June to 25 June. Visitors at the fair could test-ride the bikes.

Shortly after the trade fair began on 22 June, MyStromer applied for a preliminary injunction against Revolt Zycling at the UPC’s local division in Düsseldorf.

A series of firsts

In the UPC’s first ex parte decision, handed down on the same day as the PI application, the Düsseldorf local division granted the first PI of the new court and ordered the defendant to cease and desist from selling in Germany, the Netherlands, France and Italy. This included the products at the EuroBike trade fair. According to the PI, Revolt Zycling would have to pay a penalty of up to €250,000 if it did not comply (case ID: ACT_525740/2023; UPC_CFI_177/2023; order no. 526778/2023).

However, the defendant’s compliance with the PI was limited and delayed. As a result, the UPC has now imposed a penalty payment the first time.

According to the reasoning, the bailiff served the PI on Revolt Zycling on June 23 at 3.30pm at the trade fair in Frankfurt. However, the stand remained open for a further two and a half hours. Although the company shut down its website promptly, visitors could still book test rides on the e-bikes until the next day via Instagram.

In addition, MyStromer accuses the defendant of having confirmed in a letter to its Belgian authorised dealers at the end of June that the sale of the Opium series to customers from Germany, the Netherlands, France and Italy would remain permitted.

MyStromer calls for penalty

MyStromer considered this to be a violation of the PI and in July applied for the imposition of a penalty payment. The court followed the claimant’s argumentation with regard to the trade fair and the offer via social media. However, the judges did not consider the letter to the Belgian authorised dealers to be a violation of the PI.

Klaus Haft

In the meantime, however, a dealer in south Germany offered pedelecs of the patent-infringing series for sale one Sunday in September. The Düsseldorf local division also considered this to be a violation of its order. It has therefore imposed a penalty payment totaling €26,500. This is mainly due to the German dealer offering the bikes for sale in September. In addition, the defendant must bear three-quarters of the costs of the proceedings.

Revolt may appeal the penalty order but has not yet taken this step.

The main proceedings on the infringement issue are pending (case ID: ACT_552758/2023). There are also parallel infringement and nullity suits pending in Switzerland.

Change of judges

Whereas Sabine Klepsch, a legally qualified judge presiding at the Hamburg local division, was on the bench in the PI proceedings, in the current case judges Bérénice Thom and András Kupecz were on the bench, with Ronny Thomas as presiding judge.

The claimant relied on a team around Düsseldorf partner and litigator Klaus Haft from Hoyng ROKH Monegier. The German team came to the client via a recommendation from the Swiss firm IPrime, with which Hoyng ROKH has collaborated in the past. The IPrime team around partner Rudolf Rentsch, a dual-qualified lawyer and patent attorney, represented MyStromer in the parallel patent case in Switzerland.

Jan Rektorschek

In the PI proceedings, patent attorney Oliver Tarvenkorn from Münster firm Tarvenkorn Wickord & Partner represented the defendant Revolt Zycling, but in the further proceedings the company relied on the experienced litigators Christoph de Coster and Jan Rektorschek from Taylor Wessing.

They also came to the client via recommendation and are leading the main proceedings on behalf of the defendant. For the technical issues the team cooperated with the Zurich firm Schaad Balass Menzl, which represents the company in the Swiss proceedings.

For myStromer
Hoyng ROKH Monegier (Düsseldorf): Klaus Haft, Christine Kanz (both partners); associate: Max von Leitner
IPrime (Zurich): Rudolf Rentsch (partner and patent attorney); associate: Raphael Zingg

For Revolt Zycling
Taylor Wessing (Munich): Christoph de Coster (lead), Jan Rektorschek (co-lead, both partners); associate: Damian Roscher
Schaad Balass Menzl (Zurich): Theodore Choi (patent attorney)

Unified Patent Court, Düsseldorf local division
Ronny Thomas (presiding judge), Berenice Thom, András Kupecz