China's Guiding Cases in IP Law, Part III: Infringement of Design Patents
In March 2017, the Supreme People’s Court of China (the “Supreme Court”) published its 16th set of guiding cases, including ten intellectual property (“IP”) cases. Among the ten IP guiding cases, three of them relate to patent infringement.
In recent editions of the Osha Liang Newsletter, we discussed the patent infringement guiding case in connection with the liability of the e-commerce platform – June 2017 (See link here) and the guiding case involving infringement of a patent for a pharmaceutical preparation process – August 2017 (See link here). In this issue, we will look into the final guiding case relating to infringement of a design patent.
Guiding Case No. 85: Grohe AG v. Zhejiang Jianlong Sanitary Ware Co., Ltd.
Grohe AG (“Grohe Company”) is the owner of the Chinese design patent titled “Handheld Showerhead” (Pat. No. CN200930193487.X) (the “patent in suit”). In November 2012, Grohe Company filed a patent litigation against Zhejiang Jianlong Sanitary Ware Co., Ltd. (“Jianlong Company”) at the Intermediate People’s Court of Taizhou in Zhejiang Province (the “First Instance Court”) alleging that the Liya series of the bath products manufactured, sold, offered for sale by Jianlong Company (the “accused product”) have infringed the patent in suit. Grohe Company requested the First Instance Court order Jianlong Company to immediately cease the infringing conduct, destroy inventory of the infringing products and the molds dedicated to manufacturing the infringing products, and pay 200,000 RMB to Grohe Company as damages for its economic losses.
The First Instance Court held that Jianlong Company did not infringe the patent in suit and rejected Grohe Company’s requests. Then Grohe Company filed an appeal to the Higher People’s Court of Zhejiang Province (the “Second Instance Court”) against the first instance judgment. Conversely, the Second Instance Court held that Jianlong Company infringed the design patent right of Grohe Company. Jianlong Company was not satisfied with the decision and filed a petition for retrial to the Supreme Court.
According to Article 11 of the Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of the Law for Review of Disputes over Patent Infringement, when determining whether the designs at issue are the same or similar, a people’s court should, based on the design features of the patented design and those of the allegedly infringing design, conduct a comprehensive review of the overall visual effects of the designs. The court should not consider the design feature dictated primarily by technical function. The following items normally have more impact on the overall visual effects of a design: (1) the part of the product most easily observed when in normal use; and (2) the design feature that distinguishes the patented design from the existing designs. Thus, the key issues of this case are what design features distinguish the patented design from the existing designs, and whether the accused product falls into the protection scope of the patented design (see below figure showing the designs of the patent in suit and the accused product).
Through comparison, the Supreme Court held that although the accused product uses the runway-like outlet surface design highly similar to the patented design in suit, the design features of the handle, the connection between the spray head and the handle, and other design features most easily observed when in normal use are obviously different to the design of the patent in suit.
Additionally, a runway-like push-button is set on the handle of the patented design in suit, whereas the accused product does not have this push-button feature. The Supreme Court had a different view with the Second Instance Court about whether the push-button is a functional design feature. The Second Instance Court held that the push-button is a functional design feature, so it did not consider the push-button having any impact on the overall visual effect. Conversely, the Supreme Court held that a functional design feature refers to the feature solely dictated by the specific function of the product without considering any aesthetic factors from the general consumers’ point of view.
In this case, there is no doubt the push-button is a switch to control water flow. However, as long as the switch is set on the handle of the showerhead, the shape of the push-button may have a variety of designs. General consumers of such a product would voluntarily pay attention to decorativeness of the push-button design. They would consider not only whether the push-button can perform the function of controlling water flow, but also whether its design is aesthetically pleasing. Therefore, the Supreme Court held that the push-button is not merely a functional design feature. Whether or not a handheld showerhead has a push-button would impact the overall visual effects of the products. Since the design of the accused product does not have the push-button feature as in the patented design, the accused product does not include all of the design features of the patent in suit. Accordingly, the accused product did not fall within the scope of protection of the patent in suit.
The Supreme Court concluded that the second instance judgment only considered and weighed heavily on the design feature of the runway-like water outlet surface of the patent in suit. It did not look into other design features of the patent in suit. It did not consider the design features that the general consumer would see when the showerhead products are in normal use, which could distinguish the design of the accused product from the patent in suit. As a result, the Supreme Court ruled the second instance judgment as an error of law and upheld the first instance judgment.
From this guiding case we learned with respect to the infringement of a design patent, that if an accused design does not include all of the patented design features that distinguish the existing designs, the court would generally presume the accused design and the patented design are not the same or similar. As for determining whether a design feature is functional (e.g. the push-button in the present case), one should not consider the design feature is functional just because it has a certain function or technical feature. Instead, the determination should be based on whether the general consumers of the product containing the design would think the design feature is solely dictated by the specific function, and there is no need to consider whether the design feature is aesthetically pleasing. Furthermore, a functional design feature would not have a notable impact on the overall visual effects of the design. It is worth noting that in order to determine whether a design feature which is functional, as well as decorative, would have the impact on the overall visual effects of the design, one should consider the decorative strength of the design feature. The more decorative the design feature is, the more impact it may have on the overall visual effects, and vice versa.