Judgment on Determination of Design Features and Their Influence on Design
Similarity
——Jianlong v. Grohe
[Syllabus]
Design features comprise innovative content that distinguishes an authorized design from a prior design and the designer’s creative contribution to the prior design. If a product allegedly infringes but does not contain all design features that differentiate the authorized design from the prior design, it is generally presumed that they are not similar designs. Existence of design features shall be proved by the patentee who shall bear the burden of proof, a third party shall be allowed to rebut the same, and it shall be determined by a People’s court according to law.
[Case No.] The Supreme People’s Court (2015) Min-Ti-Zi No.23
[Cause of Action] Dispute over design patent infringement
[Collegial Panel Members] Zhou Xiang Wu Rong Song Shuhua
[Keywords] Design Patent Infringement, Similarity Judgment, Design Features
[Relevant Legal Provisions] Paragraph 2, Article 59, Patent Law of the People’s Republic of China
[Basic Facts]
Grohe Ag (“Grohe”) is the patentee of the design patent “handheld shower head No.A4284410X2”, and this patent is now legal and valid. In November 2012, Grohe brought an action against Zhejiang Jianlong Sanitary Ware Co., Ltd. (“Jianlong”) which produces, sells and offers to sell sanitary products on the ground that it infringes its “handheld shower head” design patent, and requested the court to rule that Jianlong immediately stop the infringement, destroy infringing products in stock and the molds that are specially used for producing infringing products, and compensate Grohe RMB200,000 for its economic loss. Based on the comparison conducted in the court of first instance, similarities between Jianlong’s allegedly infringing product and Grohe’s design patent are that they are both the same product type. Both designs have a shower head and a handle. Spray from the shower head of the allegedly infringing product is the same as that of the involved patent, that is, holes are distributed in a radial pattern in a region that is round on both ends and rectangular in the middle with arc-shaped edges. The differences are: 1. Peripheries of the shower head of the allegedly infringing product are inclined planes, while the front and left view of the patent involved shows that the peripheries of the shower head have arc-shaped surfaces.2. Spray from the shower head of the allegedly infringing product is separated from the panel only by a single line, while spray from the shower head of the patent involved is separated from the panel by a band made up of two lines.3. Distribution of holes on the shower head of the allegedly infringing product is slightly different from the patented product.4. There is an oblong switch on the handle of the patent involved, while there is no such switch on the allegedly infringing product. 5. There is an oblique angle where the head of the patented product and the handle connect, but the angle is so small that it almost appears as a straight line, while the connecting angle between the head and the handle of the allegedly infringing product is wide.6. The bottom view of the patent involved shows the handle has a round bottom, while the bottom of the allegedly infringing product’s handle is a fan-shaped curved surface. The lower end of the handle of the patent involved is a cylinder, which gradually turns into an ellipsoid at the point of its connection with the head, while the lower end of the handle of the allegedly infringing product is a fan-shaped cylinder, and also presents a fan-shaped cylinder at the point of its connection with the shower head, and there is an arc-like protuberance in the middle of the handle. 7. There is a decorative arc on the bottom of the allegedly infringing product’s handle that integrates the bottom of the handle and the back of the product into a whole, while there is no such design on the bottom of the handle of the patent involved.8. The proportion of the length between the head and handle of the patent involved differs from the allegedly infringing product, and the arc-shaped surface at the connection between the head and handle of the two is also different.
Holding
On March 5th, 2013, Zhejiang Taizhou Intermediate People’s Court rendered the civil judgment (2012) Zhe-Tai-Zhi-Min-Chu-Zi No.573 and dismissed Grohe’s claims. Not accepting the result, Grohe appealed to the higher court. On September 27th, 2013, Zhejiang High People’s Court passed the civil judgment (2013) Zhe-Zhi-Min-Zhong-Zi No. 255: (1) It reversed the civil judgment (2012) Zhe-Tai-Zhi-Min-Chu-Zi No.573 made by Zhejiang Taizhou Intermediate People’s Court; (2) It asked Jianlong to immediately stop producing, offering for sale and selling products that infringe Grohe’s “handheld shower head” design patent and to destroy the infringing products in stock; (3) It asked Jianlong to compensate Grohe RMB100,000 for its economic loss (including reasonable expenses of Grohe for stopping the infringement); (4) It rejected Grohe’s other claims. Jianlong was unsatisfied with the decision, and appealed the case in the higher court. On August 11th, 2015, the Supreme People’s Court made the civil judgment (2015) Min-Ti-Zi No.23: (1) It reversed the second-instance judgment; (2) It maintained the first-instance judgement.
[Reasoning]
The Supreme People’s Court’s opinions: Laws for design patent system are formulated to protect aesthetic and innovative industrial designs; a patented design should feature identifiable innovative characteristics distinctive from prior designs, and such innovative characteristics should represent the design features of authorized designs. Due to existence of these features, ordinary consumers should find it easier to differentiate authorized designs from prior designs. Therefore, they have significant impact on the product’s overall visual effect from the perspective of the design. If an allegedly infringing product does not contain all the design features that differentiate the authorized design from the prior design, it is generally presumed that the allegedly infringing product does not resemble the authorized design. The patentee may specify design features in a brief description or state the design features in the patent authorization or infringement procedures in a pertinent manner. Whether proved by the patentee bearing the burden of proof or recorded in relevant review documents of the authorization, these specific design features can be overturned by counter-evidence if any third party raises an objection. Based on cross-examination of the parties, the People’s court shall fully examine the evidence and determine design features of the authorized design according to law. The patent in this case has three design features: first, shape of the shower head and plane transitions; second, shape of the shower head spray; third, proportion between the width of the shower head and the handle diameter. Though the allegedly infringing product adopts a similar spray as the patent involved in this case, the two have large differences in design style in terms of design feature – the shape of shower head and plane transition. The second-instance judgment only considered design features of the runway-shaped spray while neglecting other design features as well as other distinctive design features that are easily noticeable in normal use of the product. Therefore, reaching a conclusion that the two are similar designs based on this is wrong.
