Authored By: Purity Kangai Nkoyai
Kenya School of law
- CASE TITLE & CITATION
Component Detail
Case Title AGFA NV v. Guccio Gucci S.p.A. and others 2023
Official Citation UPC_CFI_278/2023 (Order No.: ORD_598576/2023)
- COURT NAME & BENCH
Component Detail
Court Name Unified Patent Court (UPC), Court of First Instance
Bench Hamburg Local Division
Judges Presiding Judge Klepsch, Legally Qualified Judge and Judge-Rapporteur Dr. Schilling, Legally Qualified Judge Lignières, Technically Qualified Judge Sarlin
Bench Type Local Division
- DATE OF JUDGMENT
Component Detail
Date of Final Order 30 April 2025
- PARTIES INVOLVED
Claimant (Patentee) AGFA NV (Belgium-based company specializing in industrial inkjet technology).
Defendants Guccio Gucci S.p.A. and eight other European companies (subsidiaries of the Kering luxury conglomerate).
- FACTS OF THE CASE
The dispute concerns European Patent EP 3 388 490 B1, titled “Decorating Natural Leather” (application filed on 14 April 2017), which claims a manufacturing method for decorating natural leather that includes applying a base coat containing a pigment to provide an achromatic colour different from black on crusted leather, followed by inkjet printing a colour image onto the base coat. AGFA alleged that Gucci’s “Pikarar Collection,” including bags and sneakers featuring animal print designs, infringed this patent because the products used a base coat with an ivory background prior to printing the image. In response, Gucci filed a counterclaim seeking revocation of the patent in its entirety on grounds of lack of novelty and lack of inventive step.
- ISSUES RAISED
- Whether the ivory base coat used in the Defendants’ products falls within the scope of the claim feature “achromatic colour different from black.”
- Whether European Patent EP 3 388 490 B1 satisfies the requirements of novelty and inventive step in light of the cited prior art.
- Whether a counterclaim for revocation may challenge all claims of the patent, including claims that were not asserted in the infringement action, under Articles 32(1)(e) and 65(1) UPCA.
- Whether a defendant may introduce new grounds of invalidity for the first time during the oral hearing pursuant to Rule 25 RoP.
7. ARGUMENTS OF THE PARTIES
Claimant (AGFA)
Argued that “achromatic colour” should be interpreted broadly, in the context of luxury leather, to include warmer white tones like ivory, which were commercially desirable over pure white. Cited passages in the description mentioning “off-white” or “pale clay” to support a broader scope.
Defendants (Gucci)
Argued that “achromatic colour” must be interpreted narrowly based on the patent’s own technical definition, which described achromatic colours as having “no dominant hue” with “all wavelengths… present in approximately equal amounts” (i.e., pure white or grey).
Contended that ivory was a chromatic colour, thus the claims were not infringed. Counterclaimed that the patent was invalid based on prior art and prior use.
- FINAL DECISION
The infringement action was dismissed, with the Court finding no direct infringement of the patent, while the counterclaim for revocation was likewise dismissed as the patent was deemed legally valid. Accordingly, the Court held that European Patent EP 3 388 490 B1 was valid but not infringed.
- LEGAL REASONING
a) Claim Interpretation & Infringement
The Court adopted a strict interpretation of the term “achromatic colour,” emphasizing that although a patent acts as its “own lexicon,” this principle applies only where the description remains consistent with the granted claims. Relying on the technical definition in the patent— namely, that an achromatic colour must have no dominant hue because all wavelengths are present in approximately equal amounts—the Court held that ivory did not qualify as achromatic. It noted that the applicant had narrowed the claim during prosecution to exclude chromatic colours, meaning that earlier descriptive references to off-white or pale clay could not be invoked to broaden the scope of Claim 1. On this basis, the Court concluded that Gucci’s ivory base coat was chromatic rather than achromatic and therefore did not infringe, as the products did not incorporate the essential claim requirement of an “achromatic colour different from black.”
b) Validity
The Court also dismissed Gucci’s counterclaim for revocation, holding that the asserted patent claims were novel over the cited prior art and demonstrated an inventive step. Further, reaffirming the front-loaded structure of UPC litigation under Rule 25 RoP, the Court refused to entertain Gucci’s attempt to raise new inventive-step objections based on additional documents during the oral hearing, ruling that such arguments should have been introduced during the written phase of the proceedings.
c) Procedural Guidance
The Court further held that a defendant may seek revocation of an entire patent through a counterclaim, even where the claimant asserts infringement of only some of the patent’s claims. It reasoned that allowing revocation to extend to all claims prevents unasserted claims from being effectively shielded from validity challenge once infringement proceedings have been initiated, thereby safeguarding the integrity of the patent system and ensuring that all claims remain open to judicial scrutiny.
10.CONCLUSION
The AGFA v. Gucci ruling from the Hamburg Local Division of the UPC marks a significant early precedent, underscoring the critical importance of consistency between the granted claims and the specification; patentees who narrow claims during prosecution risk having inconsistent descriptive passages disregarded, ultimately constraining claim scope. The decision also reflects a UPC interpretive approach that relies heavily on the patent document itself to define technical terms, signalling a potentially more stringent or narrower construction compared to certain prior national practices. In addition, the Court reinforced the procedural discipline of UPC proceedings by strictly prohibiting late-filed arguments, reaffirming the system’s commitment to rapid, efficient patent litigation and front-loaded case preparation.
