China: Factors For Determine Products Of The Same Or Similar Categories In Design Patent Infringement Arc International V. Yiwu Lan Zhi Yun Glass Handcraft Factory Et.Al. (Article No. 26 From "China Patent Case Review 2015" By Beijing East IP Ltd.)

Sticker for Tableware

Arc International v. Yiwu Lan Zhi Yun Glass Handcraft Factory et.al. - Factors for Determine Products of the Same or Similar Categories in Design Patent Infringement (Civil Ruling (2012) Min Shen Zi No. 41 by the Supreme People's Court on May 16, 2012)

In design patent infringement disputes, there is a certain number of copies or imitations across categories. Regarding the problem whether such copy and imitation constitutes infringement, there are different practices among courts. Usually, the question of whether the alleged infringing product and the product incorporating the patent concerned belong to products of identical or similar categories is the prerequisite to whether the alleged infringing product falls into the protection scope of the design patent concerned. Therefore, if the categories of products are neither identical nor similar, a conclusion of non-infringement can be obtained without comparison.

The patentee owns a design patent with patent No. ZL200430104787.3, titled "Sticker for Tableware (Lemon)." The alleged infringing product is a glass cup printed with lemon pattern, wherein the lemon pattern is similar to the design patent concerned.

In the first instance, the infringement was ascertained. The second instance court held that purposes of use for sticker and glass cup are different, and the categories for sticker and glass up are neither identical nor similar, thus there was no infringement. The second instance court reversed the first instance's judgment.

The patentee requested retrial before the Supreme People's Court, arguing that the "purpose of use" of a product shall be interpreted as the purpose of use of its appearance in term of visual perception, rather than the technical use or functional use of the product. The patented "sticker for tableware" and the alleged infringing product "glass cup" with identical or similar pattern and color shall belong to products of identical or similar categories.

After the trial, the Supreme People's Court held that the patented product sticker is a product that independently exists and can be sold independently. Although the pattern on the cup is the same as the pattern of the patented "sticker for tableware," it is made from printing ink and cannot individually exist and be separated from the cup. "Sticker for tableware" is used to garnish and decorate tableware, while "cup" is used to store drinks or food. Therefore, the purposes of use of "sticker for tableware" and "cup" are different. Accordingly, the two products neither belong to identical nor similar categories. Therefore, the alleged infringing product does not fall into the protection scope of the design patent concerned.

Remarks

According to Rule 8 of Interpretations of the Supreme People's Court on Certain Issues Concerning the Application of Law in the Trial of Patent, in judging whether an alleged infringing product falls into the protection scope of the patent concerned, the following aspects shall be considered: (1) whether categories of the alleged infringing product and the product incorporating the patent concerned are identical or similar1; and (2) whether the alleged infringing product and the patent concerned in terms of their overall visual effect are identical or similar.Thus, the prerequisite of judging whether the alleged infringing product falls into the protection scope of the patent concerned is whether the alleged infringing product and the product incorporating the patent concerned falls into identical or similar product categories. If the product categories are neither identical nor similar, a conclusion of non-infringement can be reached without comparison.

In judging whether categories of products are identical or similar, it shall be based on the products' purposes of use. In determining a product's purpose of use, reference to the brief explanation, international classification may be made for the design and function of the product, as well as other factors such as the sale or actual use of the product2. In the present case, the patent concerns sticker for tableware, and the alleged infringing product is glass cup, the purposes of use of the two products are obviously different, and therefore both products do not fall into identical or similar categories.

However, a question remains unsolved. It is a common business practice to transform some designs from one category of products to another. For example, the design content in one label can be directly printed on another product which the label is intended to attach to, or the design of true cars is used for toy cars, etc. In these cases, what measures the patentee shall take in order to protect his/her own legal right to the maximum extent?

Herein, it should be noted, in proceedings for patent validation and patent infringement, requirements for categories of products may be distinct. Article 23, Paragraph 2 of the Chinese Patent Law (2009), which was amended on December 27, 2008, provides that "any design for which patent right may be granted shall significantly differ from prior design or combination of prior design features." According to the provisions in Part 4, Chapter 1, Section 6.1 of the Guidelines for Patent Examination, the above provisions preclude transformation, i.e. application of the design of one product to another product3. In other words, if one design is transformed from the prior design, then the design will not be granted a patent right. If the above prior design is a valid design patent (hereinafter referred to as "previous patent"), the subject design cannot be granted, but this does not mean that the protection scope of the previous patent covers the subject design. The reason is that, in the judgment of infringement, the prerequisite still lies in judging whether products categories are identical or similar, and if categories of products are neither identical nor similar, non-infringement can be established without comparison. Therefore, the applicant shall reasonably predict the products to which his/her own design may be applied and apply for design patents corresponding to all potential products, while avoiding the situation that a previous patent/application constitutes the prior design for subsequent applications, causing the subsequent applications not to be granted. Doing so, the design patent can be protected to the maximum extent.

Footnotes

1 Rule 8 of the Supreme People's Court's Interpretations of Application of Law Concerning Hearing Patent Infringement Disputes provides, where any alleged infringing design, whose category is the same or approximate as that of the product incorporating the design patent, adopts the design that is the same or similar to the granted design, the people's court shall determine that the alleged infringing design falls into protection scope of the design patent right in accordance with the provisions of Article 59, Paragraph 2 of the Chinese Patent Law (2009).

2 Rule 9 of the Supreme People's Court's Interpretations of Application of Law Concerning Hearing Patent Infringement Disputes provides, the people's court shall determine whether categories of the products incorporating the design are same or appropriate in accordance with the use of products. In determining the use of products, reference may be made to the brief explanation, international classification for designs and function of the products as well as other factors such as the sale or actual use of the product.

3 The patent concerned significantly does not differ from prior design or the combination of prior design features in the following circumstance: the patent concerned is transformed from the prior design, the design features of the two are identical or only have very slight difference, and there's an inspiration for the specific transformation in the prior design of the product of the same or approximate category.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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