22 March 2021
Thermomix wins, Lidl’s Monsieur Cuisine loses twice over. This is how the cross-suit scenario between Lidl and Vorwerk over the Thermomix patent has turned out.
A while ago, a clear competitor to the most famous food processor, the Thermomix (Vorwerk), appeared on the market: The Monsieur Cuisine (Lidl). Thus, Lidl started to compete with Vorwerk. The Monsieur Cuisine was a big seller because it cost three times less than the Thermomix and its features were quite similar.
The following table shows a small comparison of the technical features between the two robot cookers:
|THERMOMIX® TM6||MONSIEUR CUISINE CONNECT|
|Glass capacity: 2.2 litres||Glass capacity: 3 litres|
|Speed: 40 to 10,000 rpm||Speed: up to 5,200 rpm|
|Measurements: 34,1 x 32,6 x 32,6||Measurements: 36 x 45 x 30|
|Weight: 7.95 kg||Weight: 13 kg|
|Guided recipes: 40,000||Guided recipes: 213|
|Wifi: Yes||Wifi: Yes|
|Display: 6.8 inches||Display: 7 inches|
|Scale: Yes||Scale: Yes|
|Timer: Yes||Timer: up to 99 minutes|
|Price € 1259||Price € 359|
The story unsurprisingly ended up in court. Due to the similarity of Monsieur Cuisine (on the left in the picture) with Thermomix (on the right in the picture), the two companies entered legal proceedings in Spain initiated by an infringement suit filed by Vorwerk, alleging that Lidl had copied their Thermomix food processor, which has rights acquired with a granted Spanish patent still in force ES2301589 (validation of Worwek’s European patent EP1269898). The Thermomix Spanish patent protects Vorwek’s robot and therefore prevents marketing, using and copying the Thermomix in Spain by third parties.
The Thermomix trial was remitted for decision in November 2020 and it was focused on the technical aspects of the two robot cookers (Thermomix vs Monsieur Cuisine). The Mercantile Court Number 5 of Barcelona had to analyze if:
(1) Lidl´s product infringed the alleged patent or, on the contrary,
(2) Thermomix’s patent ought to be declared invalid, as Lidl filed a parallel invalidity action on Vorwek’s patent.
Thus, a scenario of cross-claims arose. On one hand, the patent infringement suit filed by Vorwek, and, on the other hand, the invalidity action regarding Thermomix´s patent filed by Lidl.
In relation to the invalidity action brought by Lidl, the judgment decided that Vorwerk’s Spanish patent is valid because it meets the requirements of “novelty” and “inventive step”, which are the patentability requirements for inventions under the Spanish and European patent conventions. Hence, Vorwerk’s patent nullity claim was therefore dismissed.
In relation to the infringement claim brought by Vorwek, the judgment states that the Monsieur Cuisine robot cooker reproduces some technical features of the Thermomix and, therefore, Lidl is “engaging in acts of direct exploitation of that invention” which are prohibited by the Patent Act 2015 which protects patented inventions that are in force, and this includes, of course, the Thermomix Spanish patent ES2301589.
The judgment states that the Monsieur Cuisine machine reproduces certain features of the Thermomix and, therefore, Lidl is “engaging in acts of direct exploitation of that invention” which are prohibited by the Patents Act 2015.
Finally, the Mercantile Court Number 5 of Barcelona ruled that Lidl’s Monsieur Cuisine food processor infringed Vorwerk’s Thermomix patent rights, as the first covered technical features of the Thermomix protected by a patent. The judgment ordered Lidl to recall all copies of Monsieur Cuisine as well as to refrain from selling, in the future, “cooking machines which correspond to those characteristics” of the Thermomix. The decision of The Mercantile Court Number 5 of Barcelona therefore finds in favor of the German company Vorwerk in the lawsuit against Lidl. In particular, the ruling, dated 19 January 2021, stated the following:
The infringement claim of Vorwerk & Co. against Lidl Supermarkets S.A. is upheld and the invalidity claim of Lidl Supermarkets S.A. against Vorwerk & Co. is dismissed.
1. The court declares that the importation, offering for sale and marketing by the defendant Lild of the Monsieur Cuisine machine constitutes an infringement of the exclusive rights deriving from the Spanish patent ES2301589, validation in Spain of the European patent EP1269898, owned by Vorwerk (Thermomix); and
2. Orders the defendant Lidl to pay the costs.
3.The court furthers orders Lidl to cease importing, stocking, offering and/or marketing the Monsieur Cuisine machine which is the subject of the action.
4.The court furthers orders the defendant Lidl to withdraw from the market all copies of the robot in their possession and in that of their distributors, as well as all commercial documents, advertising and promotional material or other documents in which that product is reproduced, including the Internet, and to destroy them at their own expense, and
to refrain in the future from importing, stocking, offering and placing on the market cooking machines corresponding to the characteristics claimed in patent Thermomix patent ES2301589.
The court furthers orders the defendant Lidl to compensate the applicant Vorwerk for the damage caused, to the extent to be determined at the enforcement stage of this judgment, once it has become final, and to pay the costs of the proceedings.
The decision against Monsieur Cuisine has been appealed by Lidl Supermarkets. Hence, the Provincial Court of Barcelona will have to rule on the issue and the case could even reach the Supreme Court, in a judicial procedure that could last years.