THE NORWEGIAN FINANCIAL DAILY
Published 19. Aug. 2024 by journalist Oliver Orskaug
The alarm went off in Norway as orders poured into the US
A year and a half after a chief engineer at Black & Decker ordered ten units of Viking Arm’s patented mini jack, a competitor’s copy appeared on store shelves. Now there’s a lawsuit.
LOMMEDALEN – NORWAY
Norwegian Viking Arm is enjoying success in an international market for tools where competition is fierce. The company, headquartered in Bærum, has developed a hand-held jack that, just over four years after its launch, has become many craftsmen’s new best friend.
– Few people order just one. Most have two or more,» says Executive Chairman Øivind Resch.
He and co-founder Terje Scheen have developed and secured patents for the technology in the jacket in a number of important markets. Last year, the employees in Lommedalen produced 70,000 units that are sold in 37 countries.
– Every unit we produce is sold, and we can increase production capacity by increasing to two shifts a day,» says Resch.
Sales last year increased by 21 percent and ended close to NOK 65 million. Profit before tax was NOK 8.5 million.
| (Mill. kr) | 2023 | 2022 |
| Operating income | 64,7 | 53,3 |
| Operating result | 9,9 | 0,7 |
| Profit before tax | 8,5 | -1,1 |
| Profit for the year | 6,7 | -0,8 |
Alarm bells were ringing
When some experiences success, others emerge to skim the cream of the top.
In March, Stanley Black & Decker launched an almost identical jack under the Stanley Fatmax brand, which Viking Arm has spent years and millions of dollars developing.
– The company has also launched the jack under the brand names DeWalt and Irwin, which are not sold in Norway. «All three brands are owned by Stanley Black & Decker, which is listed on the New York Stock Exchange,» says Resch.
Resch has been worried about being copied by the world’s leading tool company since the winter of 2022.
– Then one of our distributors in the US told us that an engineer at Stanley Black & Decker had ordered ten units of our Viking Arm,» says Resch.
The man who bought the jacks provided a gmail address in the order that Resch quickly sent an email to.
– We found him on Linkedin, registered with the same email address. His profile states that he is Chief Mechanical Engineer at Stanley Black & Decker. He is responsible for the design, development and launch of new products,» says Resch.
The message that went from Bærum to the USA was not to be misunderstood.
– «I made him aware that Viking Arms’ technology is patented in a number of markets, including the US, and I wrote that if his intention was to copy our product, we would hold the company he worked for responsible,» says Resch.
He also opened the door to talks about a possible collaboration, if desired.
– I never received a reply to my email.
Suing the market leader
Viking Arm has done everything by the book and made sure to secure patents in Norway and internationally.
– Patents are supposed to protect us against copies from competitors for up to 20 years. We are now spending large resources on lawyers and advisors to defend our rights,» says Resch.
Viking Arm has hired the international law firm Schjødt as its legal representative. They have filed a lawsuit against the American tool giant in The Unified Patent Court in Stockholm.
UPC handles patent disputes across national borders in Europe. Viking Arm has chosen to sue Stanley Black & Decker’s entities in Sweden, Germany and the USA.
– The defendant has tried to stop the lawsuit against the company in the US, but the court has rejected that attempt,» says Resch.
Can crush small players
Partner Halvor Manshaus at Schjødt leads a team of lawyers in Norway and Sweden who fights for Viking Arm’s legal interests.
– This case shows how important it is to do things right when launching new products and ideas,» says the Schjødt partner.
Patents provide a time-limited exclusive right to prevent competitors from snapping up patented products at virtually no cost or risk once they have become a success.
– If it happens, it’s a dangerous situation for the small player. It costs time and resources to fight against global players,» says Manshaus.
It’s crucial to make the right decisions. In some cases, that can mean going to court.
– In other cases, it’s a matter of resolving the conflict and seeing if there is room for good commercial solutions,» says Manshaus.
– «We’ve created an entirely new product category and an award-winning patented product. So we can’t sit back and watch us being copied by the biggest player in the market,» he says.
Stanley Black & Decker
- Stanley was established in 1843 and Black & Decker saw the light of day in 1910. The two companies merged in 2010.
- It is today the world’s largest company selling handheld and power tools, implements and equipment.
- The company has offices in 60 countries, 50,000 employees, and last year had sales of USD 15.8 billion.
- Since the 1930s, the company has acquired a number of competitors in several countries. The best-known brands today are Stanley, DeWalt, Craftsman and Black & Decker.
- 67 percent of sales come from the US and Canadian markets, while 16 percent come from Europe.
- In addition to the court case against Norwegian Viking Arm, the American company is involved in a number of other patent disputes.
Source: Stanley Black & Decker annual report 2023
Claim of 175 million NOK (Euro 15 mill)
With the market muscle and major customer agreements the competitor has, he is convinced that the tool giant has already sold more units and generated more revenue than Viking Arm has managed in the few years the company has existed.
– Do you have any specific demands?
– We want to stop them from exploiting our patent. We’ve had continuous growth, but when their model came on the market, our sales leveled off. We want compensation for that loss.
– How large is that?
– «We’ve made a conservative calculation and are demanding EUR 15 million, but this is a provisional figure. We are not bound by that sum. It’s up to the court to decide how large the compensation should be,» says Resch.
Stanley Black & Deckers is represented by the international patent agency Dehns, which informs Finansavisen that they have no comment to the lawsuit at this time.
Not a unique invention
Resch does not want to go into what the other party has answered, other than to say that Stanley Black & Decker believes their technology does not conflict with Viking Arm’s patent, and that it was granted on the wrong grounds. The general tone is that the Norwegian company has not invented anything new.
– If they think we haven’t invented anything new, why didn’t they launch the product themselves several years ago? Why did they file a patent application in the US for their product – after us? And why did they need to order our Viking Arm?» asks Resch.
He describes it all as a classic David versus Goliath process.
– «I think they’ve copied us and are just doing it because they think they can. We don’t like that, which is why we’re taking this case to court,» says Resch.