AGFA v Gucci Sweden (CFI, 30 April 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By decision of 30 April 2025 (UPC_CFI_278/2023), the Hamburg Local Division (Judges Klepsch, presiding, Schilling, judge-rapporteur, Lignières and Sarlin, technically qualified judge) dismissed AGFA NV’s infringement action against nine Gucci group companies under EP 3 388 490, which concerns the decoration of natural leather, and also dismissed their counterclaim for revocation. Two procedural points are of practical interest: a counterclaim may target the whole patent, including claims that are not asserted, and new attacks raised for the first time at the oral hearing are late. On the merits, the decision shows the patent acting as its own lexicon and the court setting aside passages of the description that are inconsistent with the granted claims. AGFA bears 40% and the defendants 60% of the costs, and the total value in dispute was set at EUR 2,500,000.

Facts and procedure

AGFA asserted claims 1, 3 to 7, 10 and 12 to 14 against products from the « Pikarar Collection » and sought, among other things, an injunction for Belgium, Germany, France, Italy and Sweden, recall and destruction, information and a declaration of liability for damages. The defendants sought revocation of the patent in its entirety for those five states, relying on prior art HLAR 7, 8 and 9 and on alleged prior public use of the « Flora » products. AGFA filed five auxiliary requests to amend.

The oral hearing took place on 13 February 2025. The division disregarded as late several exhibits from both sides (HLAR 47a, 49, 50, 50a and 51, VB 51) and a leather sample produced for the first time at the hearing without leave.

The applicable law

The division based the admissibility of the counterclaim on Arts 32(1)(e), 33(4), 41(3) and 65(1) UPCA, claim interpretation on Art. 69 EPC and its Protocol, following the Court of Appeal in 10x Genomics v NanoString, validity on Arts 54 and 56 EPC, and the exclusion of late submissions on Rules 9.2, 25, 36 and 263 RoP.

Question

May a counterclaim target a claim that the claimant does not assert? How is the feature « achromatic colour different from black » of the base coat to be construed, and do the contested products embody it?

Decision

The counterclaim may target the whole patent, including unasserted claim 15: Arts 32(1)(e) and 65(1) UPCA refer to the patent as such, the Rules of Procedure do not confine a counterclaim to the asserted claims, and Art. 33(4) UPCA would otherwise leave the defendant with no means of challenging those claims before the Central Division. The division relied on the Paris Local Division’s decision in DexCom v Abbott.

The patent may be its own lexicon: the base coat as a whole must have a colour with no dominant hue, all wavelengths being present in approximately equal amounts, as defined in paragraph [0021]. Paragraph [0029] and example 3, which combine chromatic and achromatic pigments, no longer fall within granted claim 1 and cannot support a broad reading.

Validity was upheld: HLAR 7, 8 and 9 do not disclose all the features of claim 1, and the ivory base coats of the Flora products are chromatic, leaving open whether they were made available to the public. Inventive step attacks raised for the first time at the hearing were rejected as late, and the auxiliary requests were not examined.

Infringement was not proved: the measured reflectance spectra deviate significantly from a flat curve, the subjective assessment of AGFA’s expert is insufficient, and the base coat appears yellowish and ivory-coloured. The commercial descriptions « white printed leather » and « ivory printed leather » do not amount to an offer of infringing products under Art. 25 UPCA. The measured chroma C* values (9.46 to 14.51) confirm, as a cross-check, that the base coats are chromatic. For the loafers, AGFA also failed to prove the use of UV-curable inks, the defendants having shown that latex inks were used, and the burden of proof does not shift merely because the evidence lies with the other side. The intermediate white ink layer and the prior user defence therefore did not need to be decided.

As both sides failed, AGFA bears 40% and the defendants 60% of the costs. The action was valued at EUR 1,000,000 and the counterclaim, increased by 50% under the Administrative Committee guidelines, at EUR 1,500,000.

Key points for practice

• A counterclaim for revocation may extend to claims that the proprietor does not assert against the defendant.
• A definition in the description governs the feature to which it relates. Passages inconsistent with the granted claims cannot broaden the scope of protection.
• New grounds of invalidity and new prior art cannot be introduced for the first time at the oral hearing.
• Practical point: where a claim turns on colour, infringement must be proved by rigorous spectral measurement, visual impressions or trade descriptions will not do.

Provisions applied

Agreement on a Unified Patent Court

Arts 25, 32(1)(e), 33(4), 36(3), 41(3), 63(1) and 65(1)

Rules of Procedure

Rules 9.2, 25, 36, 263 and 370.6

European Patent Convention

Art. 54, Art. 56 and Art. 69

Case law cited

10x Genomics v NanoString, Court of Appeal, 26 February 2024, SES-imagotag (VusionGroup) v Hanshow, Court of Appeal, 13 May 2024, DexCom v Abbott, Paris Local Division, 4 July 2024, Regeneron v Amgen, Munich Central Division, 16 July 2024

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.