Identification of Distinctive Design Features in Judging Infringement of Design Patent—the Case tor Infringement of Design Patent between WUvs.Zhejiang Quanji Household Supplies Co., Ltd. and BlackHor

Identification of Distinctive Design Features in Judging Infringement of Design Patentthe Case tor Infringement of Design Patent between WUvs.Zhejiang Quanji Household Supplies Co., Ltd. and BlackHorse Technology (Shanghai) Co., Ltd.

October 16, 2019 China Intellectual Property News Page 08: Rights Protection Weekly

By Li Shulan, Chen Yaoyao

[Case No.]

(2018) Hu 73 Min Chu No. 890

[Summary]

The identification of distinctivedesign features in design patents is a process of comprehensively examining and judging the evidence, and such identification should be done in an objective and accurate manner by taking into consideration the patent documents and existing design documents. If there is a big difference between the alleged infringingdesign and the patented design, and that difference can be easily noticed by ordinary consumers when using the product,then thealleged infringingdesign is not similar to the patented design and it does not fall into the protection scope of the patent.

[Case Review]

WU is the patentee of the design named "Bottle (Cat Thermos Bottle)," and the patent application date is March 30, 2016. The patent picture shows that the proportion of the body and cap is about 2:1.The body is almost cylindrical and the capalmost hemispherical, on top of which there is a pair of triangular ears.The front of the bottlehas symmetrical six whiskers. In April 2018, WU bought a yellow cat thermos bottle at "FACE Quanji Store" on JD.com, which is operated by Zhejiang Quanji Household Supplies Co., Ltd. (hereinafter referred to as “Quanji”). The packaging of the product shows that the executive producer isBlackHorse Technology (Shanghai) Co., Ltd. (hereinafter referred to as “BlackHorse”) and the manufacturer isQuanji. The product, a thermos bottle,has a cylindrical body and analmost hemispherical cat-face-shaped cap, on top of which thereis a pair of triangular ears.The front of the bottle has eyes, three whiskers on both sides, a nose and a mouth. WUbelieved that the product fell into the protection scope of the patent involved, so he sued Quanji and BlackHorse, requesting the court to order the two companies to stop the infringement and compensate himsome RMB 80,000 for his economic losses and other reasonable expenses.

The Shanghai Intellectual Property Court (SIPC), the first instance court, held that the comparison of thealleged infringingproduct andthe patent involved shows big differencesbetween the two in the distinctive design features of the patent involved, and such differences, which occur in parts of the bottles and have a large impact on the overall visual effect,can also be easily and directly noticed by general consumers whennormally using the products.In combination with thedesign differences inother parts, it can be identified thatthealleged infringingproduct and the patenteddesign involved have substantial differences in terms of the overall visual effect, so they are not similar designs. Therefore, thealleged infringingproduct does not fall into the protection scope of the plaintiff's patenteddesign involved. Accordingly, the court rejectedWU's request.

After the first instance judgment, neither party appealed, and the judgment is now in force.

[Judge's Comment]

Adistinctive design feature is the feature of a design which is different from that of an existing one. It is an innovation. It is the premise that a design patent can be licensed and also an important reference factor indeciding patent infringement. In judicial practice, the identification of distinctive design features is the most difficult and controversial issue in the trial of infringement cases, which often directly affects the infringement comparison results. The focus in this case and the difficulty of the trial both lie in how to identify the distinctive design features of the patent involved.

I. Two different views in this case

One view holds that the alleged infringing design is not similar to the patented design involved and that the plaintiff's claim of infringement cannot be established. Cylindrical bottle bodies and hemispherical caps are common designs, which have little impact on the overall visual effect of the design. The distinctive design feature of the patent involved should be the design of the combination ofcat's ears on the cap, whiskers and tail. There is a big difference between the whiskers of the alleged infringing product and those of the patent involved, and the former has no tail while the latter does. Given the differences between the ears, the radian of the caps and the separation line at the bottom of the body, it should be determined that the two products are not similar.

The other view holds that the alleged infringingdesign is similar to the patenteddesign involved, and the alleged infringingproduct falls into the protection scope of the patent involved. Although cylindrical bottle bodies and hemispherical caps are common designs, there are differences between the design of the patented bottle body and cap and the existing design.Given that the design essentialof the patent involved lies in shape, it should be determined that the distinctivedesign feature of the patent involved lies in the overall shape: theoverall stout bullet-shaped shapeand the triangular cat's ears have a big impact on the overall visual effect. The alleged infringing product also has the same stout bullet-shaped design and the cat's ears, so the two should be determined as similar.

II. The role of distinctive design featuresin design patent

"Design" in the Patent Law means any design of the shape, the pattern or their combination, or the combination of the color with shape or pattern of a product, which creates an aesthetic feeling andis fit for industrial applications. An organic combination of artistic beauty and utility, a design is associated with artworks to some degree. Therefore, the international practice of protecting appearance design varies: some protect it from the perspective of industrial property right, some from copyright. Under either circumstance,one thing is essential: the object of right should have a certain degree of creativity or originality.

In China, design is now protectedunder thePatent Law. Innovation is the core of the patent system, so appearance design, as the object of patent, should be innovative. For instance, under Article 23 of the Patent Law, the design for which a patent is granted shall not be an existing design; and a patented design shall be markedly different from an existing design or a combination of existing design features. After a design is patented, any person may request for invalidating that patent on the grounds that the design is an existing design or a simple combination of existing designs. In other words, a distinctive design feature is the premise that adesign can be patented.

Distinctive design features are important to determine the protection scope of the patent. After a patent is granted, the patentee shall have the right to prohibit others from using the same or similar design on the same or similar product without permission. Whileoverall observation and comprehensive judgment is adopted to determine whether two designs are the same or similar, distinctive design features undoubtedly have more influence on the overall visual effect of the design. Under Article 11 of the Interpretation of the Supreme People's Court on Several Issues concerning the Application of Law in the Trial of Patent Infringement Dispute Cases,compared with other design features in the patented design, those differentiating the patented design from an existing design usually have more influence on the overall visual effect of the design. The emphasis on distinctive design features in infringement judgment, on the one hand, echoes the innovation standard of patent granting; on the other hand, it makes the standard forinfringement judgment more objective, clarifies the content of comparison and simplifies the judgment standard, thereby making the comparison results more objective.

III. Judicial identification of distinctive design features

The identification of distinctive design features is a process of comprehensivelyexamining and judging the evidence, and it can be dealt with from the following two aspects:

One is to refer to the patent documents. Under Article 28 of the Detailed Rules for the Implementation of the Patent Law,the summary of a design shall contain the name and uses of the design and the design essentials and specify a drawing or photograph which best demonstrates the design essentials; the same is provided for under the Guidelines for Patent Examination (2010).

In this case, the summary of the patent involved states that the name of the patent is "Cat Thermos Bottle." The design essential is the shape of the bottle,which can be best demonstrated on a stereogram. Unlike a six-sided view, the stereogram is more like a side view, which can show clearly the two ears on the cap, the whiskers and the tail. To some extent, it can reflect the patentee's understanding of his design. To put it another way, the cat shape, which is composed of the ears on the cap, the whiskers and the tail, is the distinctive design feature of the patented design.

The other is to refer to the existing design documents. According to the relevant provisions of the Patent Law, an existing design refers to the design known to the public at home and abroad before the date of patent application. The carriers of an existing design can be patent documents, pictures on web pages, products, design drawings and product brochures.As long as the carrier can reflect the specific design and it is known to the public at a time earlier than the application date of the patent involved, it can be used as an existing design document, whether the design is owned by the plaintiff or the defendant, or any third party. In practice, it is necessary to give full play to the role of the patent evaluation report in the identification ofexisting designs, so the court should require the patentee to submit the patent evaluation report in time. The patent evaluation report of similar patents can also be used as references.Besides, the people's court should also step up efforts in terms of interpretation and clarification in the trial of infringement cases, so as to ensure that the parties can fully adduce evidence regardingthe status of existing designs.

In this case, the plaintiff submitted the patent evaluation report of the existing designs and the defendant submitted several documents of prior patents. It can be found that several existing designsare about cylindrical bottles(body and cap included): the body has unchanged radius, or narrower upper partandwider lower part; thecapis nearly hemispherical or circular, and some caps are designed as a cat. Therefore, it can be concluded that cylindrical bottle body and hemisphericalcap areconventional existing designs, and the distinctive design feature of the patented design involved mainly lies in the specific design of thecap.

(Authors from: Shanghai Intellectual Property Court)

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