May 24, 2018   Wenhui News App

Authors: He Yi, Chen Yingying

Recently, Shanghai Intellectual Property Court concluded a case in which the plaintiff, a home furnishing company in Zhejiang, sued the defendants, a furniture store in Baoshan, Shanghai, and a home furnishing company in Guangdong, for design patent infringement. The plaintiff requested that the two defendants immediately stop selling the alleged infringing product and jointly compensate for the plaintiff's economic losses amounting to RMB 200,000 yuan and reasonable expenses incurred to stop the infringement totaling RMB 50,000 yuan.

The plaintiff applied to the State Intellectual Property Office in September 2015 for a design patent named "side chair (blooming flowers & full moon)" and itwas granted in December 2015. In January 2017, the plaintiff discovered that the chairs sold by the defendant, the Baoshanfurniture store, and produced by the defendant, the Guangdong home furnishing company, were very similar to their patented chairs in design. Believing that their act of manufacturing and selling the chairs for production and business purposes infringed upon its patent, the plaintiff sued to court, requestingthe Baoshanfurniture store to stop the sale of, and the Guangdong home furnishing companyto stop manufacturing and selling the product that infringed upon its design patent - "side chair (blooming flowers & full moon)", and meanwhile jointly compensate for its economic losses amounting to RMB 1,000,000 yuan and reasonable expenses totaling RMB 220,000 yuan.

The two defendants argued that they did have business dealings with each other, however, the alleged infringing product wasn’t sold by the Guangdong home furnishing company to the Baoshanfurniture store, and that it was neither identical nor similar to the patented product involved. Therefore, their act didn't constitute an infringement.

After the trial, Shanghai Intellectual Property Court held that, first of all, the design patent of "side chair (blooming flowers & full moon)" was duly granted by the State Intellectual Property Office and is still within its valid period. Therefore, the plaintiff's patent right should be protected in accordance with the law.

Secondly, as to the similarities in design between the products of the plaintiff and the defendants, the patented product has a unique design style as a whole, including circular moon-gate back with hollow sides and middle vertical structure, concave seat, brace rods, and the basic shape, size, proportional relation and the overall color of the chair back, seat, armrest, cushion, legs and brace rods. All these design featurescanalso be found on the alleged infringing product. It can be determined that two products were similar in terms of overall design style and main design features.

Shanghai Intellectual Property Court held that the protectionscope and intensity of a patent should depend on its degree of innovation.The moreinnovative a design patent is, the larger and the higherits protection scope and protection intensitywill be, and vice versa. According to the evidence in this case, the State Intellectual Property Office issued an evaluation report in May 2017 on the patent involved at the plaintiff's request. 10 existing designshas been retrieved, and according to the report, the patent involved is quite different from the existing designs in both the overall shape and the specific details, such as the shape of the chair back, seat, armrest and brace rods. They vary from each other greatly in design and style, and these differences exert a significant impact on the overall visual effects of the designs. Therefore, the patent involved is markedly different from the existing designs. Accordingly, Shanghai Intellectual Property Court concludedthat the plaintiff's design patent was highly innovative. When comparing the design patent and the chair involved, Shanghai Intellectual Property Court noticed that the design patent featured avery large cushion and the central leaning position onthe chair back waseasily visible to the consumers, which affected the overall visual effect to a considerable extent. As forthe alleged infringing product, it did have manynuancesin the burlywood vertical strip structure at the central leaning position, the color of the cushion and the number of rectangles had no substantial impact on its overall visual effect, but its design was essentially the same as that of the patent. Hence, it infringed upon the plaintiff's design patent.

The alleged infringing product was purchased by the plaintiff from the Baoshanfurniture storewhich confirmed the fact andfailed to prove that the product was legally obtained. In view of this, Shanghai Intellectual Property Court held that the defendant committed the act of selling the alleged infringing product. Although the two defendants denied to acknowledge that the Guangdong home furnishing companymanufactured the alleged infringing product and sold it to the Baoshanfurniture store, the product brochure was printedwith a text saying it was produced by the very Guangdong home furnishing company; moreover, the trademark on the alleged infringing product was registered by the Guangdong home furnishing company and neither of the defendants provided evidence against it. Therefore, Shanghai Intellectual Property Court heldthat the Guangdong home furnishing company committed the act of manufacturing and selling the alleged infringing product.

Taking into account various factors includingthe type of the patent involved, its contribution to profit, the selling price of and possible profits brought by the alleged infringing product, the nature and degreeof the infringement, etc, Shanghai Intellectual Property Court ruled that the two defendants shall jointly compensate for the plaintiff's economic losses amounting to RMB 200,000 yuan and reasonable expenses incurred to stop the infringement totaling RMB 50,000 yuan.