Decathlon design claims sink as Paris court backs Intersport

In 2014, Decathlon launched the Easybreath full-face snorkelling mask and protected it through several Community design registrations. A dispute later arose when Intersport marketed competing masks under the TecnoPro brand, leading to litigation between the parties.

The present case, heard by the Judicial Court of Paris, forms part of a broader litigation history between the parties. Earlier proceedings had already ruled out design infringement while addressing unfair competition and parasitism. The current dispute concerns newer TecnoPro models that Decathlon considered fresh acts of infringement.

Decathlon identified that Intersport was marketing two TecnoPro masks (references 289410 and 289440) in the same market segment, both in-store and online. It documented their commercialisation and initiated proceedings on November 15 2019.

A central procedural issue concerned the evidentiary value of a seizure carried out in October 2019, which was later retracted. While this affected part of the evidence, the court nevertheless proceeded to examine the merits of the claims based on the remaining elements.

Decathlon argued that the TecnoPro masks infringed its registered Community design, as they allegedly reproduced their overall appearance and created the same overall visual impression on the informed user. It also contended that these similarities were not justified by functional constraints, as sufficient design freedom existed to adopt alternative forms.

Decathlon further insisted on the degree of design freedom available in this sector. According to its reasoning, alternative designs were possible, meaning that the similarities observed resulted from a deliberate choice rather than necessity.

On unfair competition, Decathlon argued that Intersport’s conduct went beyond normal competitive behaviour by placing on the market a product that closely evoked the Easybreath mask. It claimed that this created a risk of association in the mind of consumers and allowed Intersport to benefit from the commercial attractiveness and market success of the Easybreath mask concept.

Regarding parasitism, Decathlon stressed the scale of its investments in product development, as well as in marketing the Easybreath mask. It argued that Intersport had positioned itself in its wake by offering a similar product without bearing equivalent development costs, thereby free riding on Decathlon’s economic value.

Intersport contested all claims and argued that the similarities identified resulted mainly from functional and technical constraints inherent to full-face snorkelling masks and general product features rather than protectable design elements. According to its position, these constraints significantly limited the degree of design freedom, resulting in inevitable similarities between competing products.

Intersport further submitted that the informed user is sufficiently attentive to perceive differences, leading to a different overall impression.

On unfair competition and parasitism, Intersport argued that similarity in product appearance is not sufficient without proof of separate wrongful conduct, and that there was no confusion or misappropriation of commercial identity.

Moreover, it added that investing in a product category does not create a monopoly over that market, so economic success alone does not confer exclusive rights beyond those granted by intellectual property law.

The court focused on the overall impression produced on the informed user and the degree of design freedom available to the designer. It was found that this freedom was relatively limited due to the technical constraints associated with full-face snorkelling masks.

While acknowledging certain similarities, the court considered that they largely stemmed from these constraints. The remaining differences, although sometimes subtle, were sufficient to produce a different overall impression.

The court therefore rejected the claim of design infringement. It also dismissed survey evidence submitted by Decathlon, considering that it did not adequately reflect the legal test applicable to design protection.

The court recalled that unfair competition requires proof of faulty behaviour distinct from the mere marketing of a competing product.

It held that the marketing of a competing product in the same market segment is not in itself unlawful. In the absence of evidence of confusion or misleading conduct, Decathlon’s claims could not succeed.

The court adopted a similarly strict approach. It noted that prior investments and commercial success are not sufficient to establish parasitism.

In this case, Decathlon did not demonstrate that Intersport had engaged in systematic or deliberate exploitation of its economic value, or wrongful appropriation of its investments or know-how. The court also took into account the fact that the product category had become widely developed, reducing the possibility of exclusive appropriation.

The parasitism claim was therefore rejected.

This judgment confirms the central role played by the designer’s degree of freedom in assessing design infringement. Where this freedom is constrained by technical considerations, similarities between products are more likely to be tolerated, resulting in a narrower scope of protection.

It also illustrates that design law cannot be circumvented through unfair competition or parasitism. Where no infringement is found due to a different overall impression, courts refuse to recreate exclusivity through unfair competition or parasitism without independent wrongful conduct.

The decision further clarifies that parasitism requires concrete evidence of free riding on identifiable economic value. Investments and commercial success are insufficient, particularly when the market has evolved into a competitive and widely populated segment.

Finally, the ruling reflects a pro-competitive approach, ensuring that functional and technical constraints do not lead to excessive monopolisation, and that intellectual property rights remain balanced with the principles of free competition.