I’ve been catching up on some back issues of the European IP journals, and so I am a little late reporting on this decision, which was handed down in October 2024. The decision is Peugeot Motocycles SAS c. Société Piaggio & C. SpA, Cour d’appel de Paris, No. 21/18176, Oct. 16, 2024, and is discussed in a short article by Abdelaziz Khatab, Oscar Lamme, and Peter Meyer titled Redefining remedies: the Paris Court of Appeal applies proportionality to deny a permanent injunction, 2025 GRUR Patent 138; in another short article by Jacques Raynard titled Contrefaçon et contrôle proportionalité, Propriété Industrielle, Feb. 2025, p.25; and in PIBD 1238-III-1 (with a link to the full decision in French), though this last article doesn’t discuss what the other commentators (and I) perceive to be the most interesting issue.
The facts of the case, in brief, are as follows. The plaintiff (Piaggio) sued the defendant (Peugeot) for the infringement of four patents and a design model. As it turned out, only a few dependent claims of one of the patents were found to be both valid and infringed (by the defendant’s METROPOLIS line of scooters). There are several issues of importance in the case—including an award of damages which takes into account the fact that the patented feature at issue covers only one feature of a complex end product—but the most important, arguably, comes toward the very end of the decision, where the Court of Appeal reverses the lower court’s order for a permanent injunction. The defendant notes, inter alia, that the patent in suit deals with only a detail in implementing an anti-tilting system, and that the patent was due to expire on February 1. The Court of Appeal agrees that an injunction would be disproportionate, stating (in my translation):
In view of the particular circumstances of the present case, consisting of an initial proceeding involving four patents of which was invalidated, the appellate proceeding concerning no more than the EP 612 patent whose expiration is near and which has been the object of long and fruitful debates concerning its scope, concerning a relatively limited turnover and moreover that the market share occupied by Peugeot Motocycles has been decreasing since 2021, the court concludes that the corrective measures and injunction sought would appear disproportionate in regard to the interests before the court and, not only for the infringer but also for third parties acting in good faith, would entail excessive hardship, not justified by the right of exclusivity, while that a measure of pecuniary compensation suffices to remedy the right of the injured party, the plaintiff having admitted that it granted a license concerning its exploitation to another competitor.
Instead of a permanent injunction, therefore, the court awarded damages equal to €150,000, which would cover the 300 scooters the defendant was expected to sell following the entry of the lower court’s judgment up to the date of expiration.
Professor Raynard notes the source of the proportionality requirement in the Intellectual Property Rights Enforcement Directive and in the Charter of Fundamental Rights, though he expresses some concern that denying injunctive relief on proportionality grounds could result a slippery slope by which exclusive rights are rendered merely rights to demand compensation--though if I read him correctly, he believes that some departures from a purely property-rule entitlement may be necessary in the modern economy. For their part, Messrs. Khatab et al. emphasize that the decision rests upon a consideration of the relevant facts and circumstances; and both articles note some departures from a strict property-rule perspective in a few other contexts involving copyright, neighboring rights, and moral rights. According to both articles, however, this appears to be the first French patent case in which a court has denied the prevailing plaintiff a permanent injunction.
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