(2017 Top Ten Typical Cases) M&G vs. Deli, et al. over Infringement of Design Patent

M&G vs. Deli, et al. over Infringement of Design Patent

- The “ holistic observation and synthetic judgment” approach in

a case involving the infringement of a design patent

 

[Case Brief]

Plaintiff: M&G

Defendant: Deli

Defendant: Kunsen

The Plaintiff is the patentee of the design patent titled “ (A Pen) (AGP67101)” (Patent No.: ZL200930231150.3; date of application: November 26, 2009; date of authorized announcement: July 21, 2010), which is now still in valid state.

On November 30, 2015, the Plaintiff bought in the presence of a notary a roller ball pen A32160 (the “allegedly infringing product”) produced by Deli from “Deli Kunsen Store” which was operated by Kunsen at “Tmall”. Through comparison, the design of the allegedly infringing product was found to be basically the same as the patented design with respect to the basic components, the overall shape of barrel and cap, the shape at the top of barrel and cap, the length of cap in relative to the barrel, the connection mode between the clip and the cap, the clip length in excess of the cap length, etc. To be specific: 1. they both consist of a barrel and a cap, with a clip on the cap; 2. the barrel and cap are cylinder with even thickness and four round corners; 3. they both have square frustums that protrude from the top of the barrel and the cap while there is a hole in the middle of the frustum on the top of the barrel; 4. the cap length is about one fourth of the barrel; 5. the clip has a curvy connection with the frustum at the top of the cap; 6. the clip is slightly longer than the cap for about one tenth of the total length of the clip; 7. the main body has slightly smaller inner diameter close to the point, with a convex in the middle around the surface and a cone-shaped point. They differ from each other mainly as follows: 1. the infringing design has an annular concave line around the barrel about one third to the point, which does not exist in the patented design; 2. the infringing design has a rectangular frustum protruding from the outside of clip, which does not exist in the patented design; 3. the inner surface of the clip of the infringing design is very smooth while that of the patented design is covered by protrusions that look like waves; 4. the lower part of the clip of the infringing design is flat, while that of the patented design is curved.

On January 21, 2016, M&G filed an action to Shanghai Intellectual Property Court, alleging that the Deli product bought by M&G from Kunsen and the product with patented design of the Plaintiff were substantially the same with similar design, and the act of Defendants constituted infringement to the patent right of the Plaintiff, and requested the court to order that: 1. the Defendants shall immediately stop their act of infringement of the Plaintiff’s patent right for design No. ZL200930231150.3, which means that Deli shall immediately stop its act of manufacturing and selling the infringing products and Kunsen shall immediately stop its act of selling and offering for sale the infringing products; 2. the Defendants shall destroy the inventory of infringing products and equipment and molds dedicated to the manufacture of infringing products; 3. Deli shall pay RMB 1.8 million to the Plaintiff as compensation for its economic losses and RMB 0.2 million as reasonable expenses incurred by stopping the infringement.

Deli argued that although the allegedly infringing product was manufactured and sold by Deli, it was neither different from nor  similar to the Plaintiff’s patented design, and the Defendant’s act did not constitute any infringement of the Plaintiff’s patent right. If any, the Plaintiff’s claimed amount and the alleged reasonable expenses were too high. The Plaintiff’s claims were made without factual and legal basis, so it requested the court to reject all claims of the Plaintiff.

Kunsen made no response.

 

[Adjudication]

After the trial, Shanghai Intellectual Property Court concluded that both the allegedly infringing product and the Plaintiff’s patented product are a pen of the same kind. They show some differences in overall visual effect and have different appearance designs. Therefore, the main issue of this case lies in whether the allegedly infringing design is similar to the patented design, namely whether they are substantially different in the overall visual effect. In solving this issue, the similarity between the allegedly infringing design and the patented design, as well as the difference, shall be taken into consideration. How the same design features and distinguishing design features between the allegedly infringing design and the patented design impact the overall visual effect shall be considered respectively and the judgement shall be made in the principle of “overall observation and synthetic judgement”.

When it comes to the same design features, such design features as the shape of barrel body, the shape at the top of barrel, the shape of cap body, the shape at the top of cap, the cap length in relative to the barrel, the connection mode between the clip and the cap and the clip length in excess of the cap length of the patented design, holistically determine the design style of the patented design, while all such design features are present in the allegedly infringing design; therefore, they can be considered similar with respect to the overall design style and the main design features.

As for the effect of distinguishing features on the overall visual effect, the court held that: 1. the internal smooth surface of the clip is a common design, cannot be easily observed by ordinary consumers and has very limited impact on the overall visual effect; 2. the curved lower part of the clip is merely a subtle feature for the pan and even the clip, which is not sufficient to influence the overall visual effect; 3. the external rectangular frustum protruding from the clip covers a large area of the clip, but a clip influences the overall visual effect mainly in such aspects as its overall shape and size, its connection mode with the cap, and its length in excess of the cap length. Given that all the other factors are the same, the external frustum protruding from the clip has limited impact on the overall visual effect of the pen and is not sufficient to constitute substantial difference; 4. the concave line around the barrel about one third to the point laterally surrounds the barrel and covers a small area, so it is a local design feature and has limited impact on the overall visual effect. In conclusion, there are four distinguishing design features between the allegedly infringing design and the patented design, which are not sufficient to constitute substantial differences in the overall visual effect.

As for the impact of the color and pattern of the allegedly infringing design different from those of the patented design on the judgement of similarity, the court held that the protection scope of the design patent shall be subject to be design of product as shown in the picture or photo. The shape, pattern and color are three basic design elements that constitute the design of a product. Since the color protection is not explicitly claimed in the brief description of the patented design, the color shall not be taken into account in the determination of the protection scope and any infringement. Apart from this, as shown in the picture or photo, the patented design has no pattern arising from any changes in the brightness and shade due to different shapes, so the pattern element shall not be considered as well in the infringement determination. The color, pattern and other elements added to the similar shape used by the allegedly infringing design to the patented design, are additional design elements and have no substantial impact on the infringement judgement. Otherwise, others may easily circumvent the patent infringement merely by addition of pattern, color and etc. to the patented design, which is undoubtedly contrary to the legislation intent of encouraging inventions, and promoting scientific and technological progress and innovations.

In conclusion, the court held that in the principle of “overall observation and synthetic judgement”, the allegedly infringing design represented a style similar to that of the patented design and used the design features influencing the overall visual effect of the patented design, and its differences from the patented design are not sufficient to have substantial impact on the overall visual effect, namely not constituting substantial differences. Therefore, the allegedly infringing design is similar to the patented design and falls in the protection scope of the Plaintiff’s design patent. Both the Plaintiff and the Defendant Deli are influential stationery producers in China and shall put more energy in independent research and development of their new products and be aware of possible legal risks involved during the research and development of their products. The Defendant Deli’s act of adopting the Plaintiff’s design patent by changing or adding non-substantially different design elements as well as patterns and colors to the Plaintiff’s patented design without making any creative efforts constituted infringement of the Plaintiff’s design patent and shall bear the civil liability of stopping infringement and making compensation payment.

In the application of statutory compensation, the court mainly considered the following aspects in consideration of the actual situation of this case: 1. the Plaintiff’s patent was granted for a design; 2. the patent became valid on November 26, 2009 and the infringement act occurred when the patent was already half way through its protection term; 3. pen products contribute to limited profits; 4. apart from the shape of a pen, consumers also considers other factors such as brand, cartridge quality, pattern, color and so on, which means that the infringement profits from Deli’s use of the shape of the patented design is only a part of the total profits of the allegedly infringing products and such total profits shall not be taken as the infringement profits in this case. According to above statements and in combination with other facts, the court decided at its discretion the compensation amount to be paid by Deli.

The Plaintiff did entrusted its lawyer for the suit and had paid a legal service fee of RMB 0.2 million. The court respects the efforts made by all participants in the proceeding, including lawyers, in ascertaining the facts and distinguishing responsibilities. The lawyer’s fee is the result of the autonomy of will between the principal and the lawyer, and shall not be interfered by the court. The infringer’s liability for the Plaintiff’s expenses as required by law shall be limited within a reasonable scope, the amount beyond which shall not be borne by the infringer; therefore, according to the complexity of this case, the workload of lawyers, the actually awarded compensation and the amount claimed, and by reference to the standards for lawyer’s fee issued by the administrative department for justice, the court decided at its discretion that the Defendant Deli shall pay a lawyer's fee of RMB 50,000 to the Plaintiff.

Shanghai Intellectual Property Court made the judgment of first instance: 1. the Defendant Deli shall immediately stop its act of manufacture and sales of products that infringe the Plaintiff’s patent right for design; 2. the Defendant Kunsen shall immediately stop its offering for sale and sale of products that infringe the Plaintiff’s patent right for design; 3. the Defendant Deli shall pay RMB 50,000 to Plaintiff as compensation for its economic losses and 50,000 as reasonable expenses for stopping the infringement.

Neither party involved in the case instituted an appeal upon the judgement of first instance, and the rule has come into effect.

 

[Comment]

The “overall observation and synthetic judgment” approach for the judgment of design similarity is put forward in the  Interpretation on Several Issues Concerning the Application of Law in the Adjudication of Patent Dispute Cases by the Supreme People’s Court, but it is more of a principle, according to which different judges may come to opposite conclusions on the judgment of similarity due to difference in personal experiences and perceptions. The application of the “overall observation and synthetic judgment” approach in specific case is explored in this case to come to a relatively objective conclusion by mitigating the impact of subjective factors in the trial.

First of all, the same design features and distinguishing design features between the allegedly infringing design and the patented design are identified respectively. This was completed at the courtroom investigation stage. Under the guide of the court, the parties involved made a statement on the same design features and the distinguishing design features in the comparison, so that attention was also paid to the identification of same design features except the distinguishing design features. If focusing only on the distinguishing design features, such features may be subjectively amplified when determining whether any differences exist in the overall visual effect between the allegedly infringing design and the patented design, thus rushing into a conclusion that the allegedly infringing design is not similar to the patented design.

Then, the impacts of the same design features and distinguishing design features on the overall visual effect are analyzed respectively based on the knowledge level and cognition of ordinary consumers. For this, the following aspects shall be noted:

(I) In analyzing the impacts of the same design features on the overall visual effect, elements that are unique to a function or have become common design for other reasons shall be excluded. For instance, a car tyre has to be round due to its function and the impact of such shape on the overall visual effect shall not be considered. Care must be taken to distinguish the common design and the existing design. An existing design can only become a common design when ordinary consumers are familiar with it and it is the first thing that comes to their mind at the mention of the product. For instance, by the mere mention of packing box, a rectangular or square box will pop up in their mind.

II. The impact of a design element on the overall visual effect cannot be excluded just because it appears in the existing design, unless such element has become a common design or the similarities between the allegedly infringing product and the patented design are already present in a single existing design. Among current granted design patents in China, there are few new designs that are created without reference to existing designs. Most design patents are based on some elements of existing designs by coordinating them differently. In this case, some of the elements that are the same as or similar to several design elements of the barrel, the cap and the clip can be found in existing designs, but the presence of a certain element in an existing design shall not be taken as the reason for the denial of the stability of the patented design, or the exclusion of such element from those having an impact on the overall visual effect.

III. In the defense for an existing design, a design shall not be  compared with a single existing design, instead of multiple existing designs. Furthermore, the existing design shall be compared with the allegedly infringing design rather than with the patented design. When the allegedly infringing product is different from but similar to some extent to the existing design, the following aspects shall be considered in determining whether such similarity constitutes substantial similarity: 1. whether the difference between the allegedly infringing product and the existing design is subtle and insignificant; 2. whether the allegedly infringing product is obtained by the diversion of the existing design and whether the specific method of such diversion is inspired by the existing design of a product of the same or similar kind; 3. whether the allegedly infringing product is obtained from the existing design or the combination of existing design features and whether the specific method of such combination is inspired by the existing design of a product of the same or similar kind. If that’s the case, then the Defendant’s defense for the existing design shall be accepted.

IV. For a normally used product, the part that can be directly seen has more significant impact on the overall visual effect than other parts; the part that are not easily visible and local subtle changes are not sufficient to have significant impact on the overall visual effect. For instance, the internal design of the clip is located between the clip and the cap, and cannot be easily observed by ordinary consumers, so it shall not be deemed as having an impact on the overall visual effect. In this case, this applies when it comes to the distinguishing design features of the internal wavy surface of the clip of the allegedly infringing product.

V. The proportion of distinguishing design features in the overall design can be taken as the reference for determining whether the impact on the overall visual effect is significant or not. For instance, the concave line on the barrel and the curve design of the clip take up an insignificant portion in the overall design, thus deemed as having insignificant impact on the overall visual effect.

VI. As for a design for which the protection of color and pattern is claimed, the impact of the color and pattern of the allegedly infringing design on the overall visual effect shall not be taken ino account. Otherwise, others may easily circumvent the patent infringement by merely adding pattern, color and other elements to the patented design, which is undoubtedly contrary to the legislation intent of encouraging inventions, and promoting scientific and technological progress and innovations.

 

Index

First instance: Shanghai Intellectual Property Court (2016) H73MC No. 113

Members of collegiate panel: Wang Qiuliang, Liu Junhua, Xu Fei

 

By Xu Fei

 

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