NOVEMBER 2013

H KIEHL

ALL-CLAD ARNO CALOR KRUPS LAGOSTINAMOULINEX ROWENTA SEB TEFAL

Effective use of the French and German legal procedures with regard to IP infringement

SEB is the world wide leader of small Household appliances (4 Billion €) A mission : to improve everybody's daily life A strong innovation capacityA strong trademark portfolio A worldwide presenceA stable shareholder structure

Effective use of the French and German legal procedures with regard to IP infringement

- Who is Groupe SEB ? -

France / BelgiqueAmérique du Nord Amérique du Sud

– The world wide leader of small Household appliances (4 Billion €uros)

Direct clients : the SDA Distribution Hypermarket Mains stores Spécialistes

What is IP for SDA (Small Domestic Appliances)

A technical patent on the dry fryer principle

A trademark "ACTIFRY"

An unusual DESIGN for fryer

Internet

Effective use of the French and German legal procedures with regard to IP infringement

- The environnement -

COPYRIGHT on advertisement, photo, web presentation

– "Counterfeits" = identical copies ; in emerging countries– A fairly weak legal system, eventually influenceable – A need to create jobs on known accepted products– Peremptous cases quickly solved by administrations

– "Litigation" : modified copies ; in developed countries– A new technology recognized and appreciated by the consumer– A protection considered as "weak" by competitors – Long lasting arguments by lawyer in front of a Court

It is all "infringement", but two different kinds :

Effective use of the French and German legal procedures with regard to IP infringement

- Basics -

– Asian Fair : Hong Kong, Taiwan and mostly Guangzhou : a need for small companies to export

– Funny products

Effective use of the French and German legal procedures with regard to IP infringement

- Counterfeits -

–None found in Europe (otherwise quick action from Customs FR, DE, Etc.)

Litigation : to evaluate the chances POINT OF VIEW OF : PATENT VALIDITY CONDITION INGRINGEMENT PROBABILITY OF

FAVOURABLE DECISION PATENT OWNER P(A)

Probability that the patent is confirmed

AND P(B) Probability that infringement is recognized

P(A) AND P(B) = P(A) x P(B)

INFRINGER 1- P(A) Probability that the patent is cancelled

OR 1-P(B) Probability that the infringement is denied

[1-P(A)] OR [1-P(B)] = [1-P(A)] + [1-P(B)] – {[1-P(A)] x [1-P(B)]} =

1 – P(A) x P(B)

Preliminary thorough frank internal study Validity estimation reviewing novelty and inventive step Infringement estimation reviewing identical copy or notion of equivalent Financial considerations bearing in mind that the infringer losses more (attorney fees for both parties, loss of equipment, loss of advertising, shame) that the patent holder (attorney fees and patent) Do your homework completely and let be challenged by your local lawyer

Effective use of the French and German legal procedures with regard to IP infringement

Effective use of the French and German legal procedures with regard to IP infringement

Pre-litigation

• In most case, cease & desist letter is first addressed and preliminary arguments are exchanged with the competitor during a confidential meeting, eventually under lawyers supervision.

• Predictability of evaluation : validity under EPO standard, infringement under local case law, brings the parties to settle : stop of sales as soon as reasonable possible, no further container, eventual payment of reasonable damages.

• When predictability is high, agreement are quick.• Less chance of agreement if

– Turnover of infringement product is already too high (> 2 years sales)– Prospect of product success is too high (ex. Dry fryer)– Other reason than legal (eg. Valuation of IP)

Effective use of the French and German legal procedures with regard to IP infringement

FRANCE • One written document for each party stating respective

arguments, with illustrations, which is enhanced during each exchange.

• Household appliance's technology seems to be understandable by French judges : no expert.

• One oral hearing : few French judges seems to have read the case before

• Decision rather fair• Sometime some technical surprises : a gage for body scale taken from an

electrical piano or a reinforcing rib for a pressure cooker lid taken from a warrior shield.

• Losing party pays some money to the winning one

Effective use of the French and German legal procedures with regard to IP infringement

GERMANY• Separate jurisdiction for validity and for infringement, with the

risk of an infringement being declared before a final invalidity. • German judge for infringement do not hesitate to accept expert

witness, and to invite them at oral hearing. • One exceptional case where the expert withdraw in view of the

subject and the additional questions (incorrect choice). • The German judge has read the case and is active in questioning• Well structured written decision• The loosing party pays standard fees to the winning one

MERCI DE VOTRE ATTENTION