Peugeot and August Debouzy keep scooters rolling in France

Peugeot customers can continue to drive the company's three-wheeled scooters on French roads. The Paris Court of Appeal has now limited a previous first-instance ruling that favoured competitor Piaggio.

Piaggio is known for its Vespas but it also manufactures two- and three-wheeled motorcycles. The Italian manufacturer accuses French automotive company Peugeot of infringing several property rights with its motorcycle model “Metropolis”.

The patents originally at issue are EP 1 363 794, EP 1 561 612, EP 1 571 016 and EP 1 635 234 as well as community model 487723-0001. These cover a tilting technology that allows riders of three-wheeled scooters to lean into corners.

Piaggio filed an infringement claim with the Judicial Court Paris in 2015.

And then there was one

In September 2021 the first-instance court concluded that Peugeot had not infringed EP 794, EP 016 or the community model. The EPO had already revoked EP 234 in 2018 due to lack of novelty.

Regarding EP 612, the Judicial Court Paris ruled that Peugeot was indeed infringing parts of Piaggio’s patent and issued comprehensive sales, distribution, production, import and manufacturing bans (case ID: 15/06549). In addition, the Judicial Court awarded Piaggio damages of €1.5 million.

However, these bans and payments were not enforced pending the appeal.

Peugeot appealed the decision regarding infringement of EP 612. At the same time, Piaggio filed a cross-appeal against the decision of the Judicial Court to invalidate one claim of EP 612 as well as the ruling of non-infringement of the community model. The patent holder did not appeal the non-infringement decisions regarding EP 794 and EP 016.

Now, the Paris Court of Appeal has confirmed the first-instance judgment concerning infringement of EP 612 and non-infringement of the community model. At the same time, the 1st chamber of the court’s 5th division overruled the injunction.

Injunction disproportionate

The judges held the injunction to be disproportionate. In their judgment they reasoned that EP 612 was about to expire in February 2025. Furthermore, it had been subject to disputes regarding several of its claims which limited the scope of the infringement.

In view of this and the declining market share of Peugeot’s motorcycles in France since 2021, the requested recall and prohibition measures seemed to the judges “disproportionale to the interest at stake” and would entail “excessive hardship for the infringer, but also for bona fide third parties, unjustified by the right of exclusivity”.

Therefore, the Court of Appeal considers financial compensation to be more appropriate to compensate Piaggio for the damage suffered and to restore the patentee’s right. Especially since Piaggio had also granted licences to another competitor to use the patent. The court found that the amount of damages awarded by the first-instance decision sufficiently compensated Piaggio for the loss.

Italian connection

In parallel, the two parties disputed the same patents in Italy. In a first-instance ruling in September 2021, the District Court Milan recognised patents EP 794 and EP 016 as valid, but dismissed the infringement action. Piaggio filed an appeal against this.

In a further ruling, the Milan judges rejected Peugeot’s nullity action against EP 612 and found the patent infringed in some claims. The court then ordered a ban on the sale of Peugeot’s Metropolis model scooters. The Court of Appeal confirmed the validity of EP 612 and its infringement in a ruling in October 2022. In April 2024, the Italian Supreme Court dismissed Peugeot’s appeal against this judgment and awarded Piaggio damages of over €1 million.