“E-Bike Patent Dispute: Fairly Bike and MyStromer Accuse Revolt Zycling of Infringement”

In a landmark decision, the Unified Patent Court (UPC) has imposed a penalty payment on Revolt Zycling for alleged patent infringement. The dispute revolves around patent EP 2 546 134 B1, which pertains to a combination structure of a bicycle frame and motor hub in an e-bike. The patent holders are Taiwan-based Fairly Bike Manufacturing and Swiss-based MyStromer, who accuse Revolt Zycling of infringing their property rights with its Opium series of speed pedelecs.

Revolt Zycling had initially announced the sale of these e-bikes on its website for April 2023. Despite a delay in delivery, the pedelecs were showcased at the EuroBike 2023 trade fair held in Frankfurt from 21 June to 25 June. Visitors at the fair were given the opportunity to test-ride the bikes.

However, the unveiling of the bikes at the trade fair sparked legal action. On 22 June, MyStromer applied for a preliminary injunction (PI) against Revolt Zycling at the UPC’s local division in Düsseldorf. In a first for the UPC, an ex parte decision was handed down on the same day as the PI application. The Düsseldorf local division granted the first PI of the new court and ordered Revolt Zycling to cease and desist from selling in Germany, the Netherlands, France, and Italy. This included the products at the EuroBike trade fair. According to the PI, Revolt Zycling would have to pay a penalty of up to €250,000 if it did not comply.

However, Revolt Zycling’s compliance with the PI was limited and delayed, leading the UPC to impose a penalty payment for the first time. The PI was served on Revolt Zycling on June 23 at 3.30pm at the trade fair in Frankfurt. Despite this, the stand remained open for a further two and a half hours. Although the company shut down its website promptly, visitors could still book test rides on the e-bikes until the next day via Instagram.

MyStromer also accused Revolt Zycling of confirming in a letter to its Belgian authorized dealers at the end of June that the sale of the Opium series to customers from Germany, the Netherlands, France, and Italy would remain permitted. This was considered a violation of the PI by MyStromer, who in July applied for the imposition of a penalty payment. The court agreed with MyStromer’s argument regarding the trade fair and the offer via social media, but did not consider the letter to the Belgian authorized dealers to be a violation of the PI.

However, a dealer in south Germany offered pedelecs of the patent-infringing series for sale one Sunday in September. The Düsseldorf local division also considered this to be a violation of its order. It has therefore imposed a penalty payment totaling €26,500. This is mainly due to the German dealer offering the bikes for sale in September. In addition, the defendant must bear three-quarters of the costs of the proceedings.

Revolt may appeal the penalty order but has not yet taken this step. The main proceedings on the infringement issue are pending. There are also parallel infringement and nullity suits pending in Switzerland.

The case has seen a change of judges. Whereas Sabine Klepsch, a legally qualified judge presiding at the Hamburg local division, was on the bench in the PI proceedings, in the current case judges Bérénice Thom and András Kupecz were on the bench, with Ronny Thomas as presiding judge.

The claimant relied on a team around Düsseldorf partner and litigator Klaus Haft from Hoyng ROKH Monegier. The German team came to the client via a recommendation from the Swiss firm IPrime, with which Hoyng ROKH has collaborated in the past. The IPrime team around partner Rudolf Rentsch, a dual-qualified lawyer and patent attorney, represented MyStromer in the parallel patent case in Switzerland.

In the PI proceedings, patent attorney Oliver Tarvenkorn from Münster firm Tarvenkorn Wickord & Partner represented the defendant Revolt Zycling, but in the further proceedings the company relied on the experienced litigators Christoph de Coster and Jan Rektorschek from Taylor Wessing. They also came to the client via recommendation and are leading the main proceedings on behalf of the defendant. For the technical issues, the team cooperated with the Zurich firm Schaad Balass Menzl, which represents the company in the Swiss proceedings.