Judgment Gist
Customary design is a prior design that is well known by the general consumers and can be recalled by the general consumers upon merely mentioning of the product name. When mentioning beauty roller products, although the general consumers can immediately think of a product comprising a gripping portion and a roller, they obviously cannot immediately think of the design of the subject patent with a Y-shaped handle and spherical rollers. For the general consumers in the related field, their major focus is located in the overall shape, the shapes of the handle and the rollers, and the number of rollers of the product, which are also the main design features of the product. Therefore, the statement of the defendant that the above design features are the customary design is not based on solid grounds, and thus is not supported by the court. The defendant also states that the handle and the roller are design features determined by the product function of the product i.e. limited or unique design features for realizing the function of the product. As a beauty product, a beauty roller certainly embodies a design taking into account the functions of massaging and gripping by hand. With the above functions satisfied, there is still a large room for the design of the handle and the roller, including the overall shape, the connection therebetween, the surface patterns, the number of rollers, and the like. These features are not uniquely determined by the practical function. As an important part of the design for beauty roller products, the shape of the handle and the shape of the roller can adequately produce a significant influence on the overall visual effect.
The differences of the allegedly infringing design from the subject patent only have a local and trivial influence on the overall visual effect. In beauty roller products, the massage roller and the handle are portions attracting the attention of the general consumers. The allegedly infringing design and the subject patent have the same overall shape and structure, the same shape of the roller and the handle, and in particular the same design for the connection portion between the roller and the handle and for the patterns on the roller. Therefore, based on the knowledge level and cognitive abilities of the general consumers, the difference between the allegedly infringing design and the subject patent is insufficient to distinguish the allegedly infringing design from the subject patent. The allegedly infringing design can hardly be determined to have a substantially different overall visual effect from the subject patent. Therefore, they should be determined to form similar designs; and the allegedly infringing design falls in the scope of protection of the subject patent.
Case Information
Case Summary
MTG Co., Ltd. (hereinafter referred to as MTG) is the patentee of the design patent ZL201230103787.6 with the title “Beauty Roller” (hereinafter referred to as “the subject patent”).
Finding the advertising pictures and introduction of the 3D full-effect skincare instrument W-205 and W-206 posted on 1688.com by Foshan Nanhai Weichuang Beauty Instrument Co., Ltd. and Foshan Nanhai Jinyimei Beauty Instrument Co., Ltd. (hereinafter referred to as “the Third Party”), MTG entrusted the attorneys to purchase a 3D full-effect skincare instrument W-206 (the allegedly infringing product), accompanied by the promotion materials of the product.
On April 13, 2015, MTG moved Foshan Intellectual Property Administration (hereinafter referred to as the Defendant) for investigation on the grounds that Jinyimei produced, sold, and offered to sell products infringing the subject patent right of MTG without being licensed. After reviewing the case, the defendant opined that: through comparison, the allegedly infringing 3D full-effect skincare instrument W-206 is found to be different from the subject patent in the following aspects: 1. the allegedly infringing product has a substantially heart-shaped left end of the handle while the subject patent has a fan-shaped left end; and 2. the allegedly infringing product has an elliptical ring at the center of the left end of the handle, with a transparent elliptical convex embedded therein, while the subject patent has a rounded triangular ring at the center of the left end of the handle, with a rounded triangular curved surface embedded therein. Since it is the customary design that a beauty roller has a handle and two spherical rollers, the above differences result in a substantive difference in overall visual effect of the allegedly infringing product from the subject patent.
Therefore, on October 10, 2015, the defendant made the Administrative Decision FZJZ No. 14 (2015) and decided that the allegedly infringing product 3D full-effect skincare instrument W-206 is neither identical nor similar to the subject patent; the allegedly infringing product does not fall in the scope of protection of the subject patent; and the claims of MTG are declined.
MTG was unsatisfied with the above decision and appealed to Guangzhou IP Court (hereinafter referred to as “the court of first instance”) on October 27, 2015.
After reviewing the case, the court of first instance pointed out the following problems in determining whether or not the allegedly infringing design falls in the scope of protection of the subject patent.
The first problem is whether or not the defendant’s opinion that “it is the customary design that a beauty roller has a handle and two spherical rollers” can hold. Customary design is a prior design that is well known by the general consumers and can be recalled by the general consumers upon merely mentioning of the product name. When mentioning beauty roller products, although the general consumers can immediately think of a product comprising a gripping portion and a roller, they obviously cannot immediately think of the design of the subject patent with a Y-shaped handle and spherical rollers. For the general consumers in the related field, their major focus is located in the overall shape, the shapes of the handle and the rollers, and the number of rollers of the product, which are also the main design features of the product. Therefore, the statement of the defendant that the above design features are the customary design is not based on solid grounds, and thus is not supported by the court. The defendant also states that the handle and the roller are design features determined by the product function of the product i.e. limited or unique design features for realizing the function of the product. As a beauty product, a beauty roller certainly embodies a design taking into account the functions of massaging and gripping by hand. With the above functions satisfied, there is still a large room for the design of the handle and the roller, including the overall shape, the connection therebetween, the surface patterns, the number of rollers, and the like. These features are not uniquely determined by the practical function. As an important part of the design for beauty roller products, the shape of the handle and the shape of the roller can adequately produce a significant influence on the overall visual effect. The defense of the defendant is not supported by adequate evidence, and thus is not supported by the court.
The second problem is whether or not the allegedly infringing design is identical or similar to the subject patent. Based on comparison, the similarities between the allegedly infringing design and the subject patent include: 1. the overall shape and the structure: both are formed by a handle and a massaging head, with a shape similar to the letter Y lying down, a massaging roller being provided on each of the left side and the right side below the front end of the handle; 2. the same shape and patterns of the rollers: the rollers of the two are spherical, with hexagonal patterns evenly distributed on the spherical surface and joined with one another to form diamond patterns; and 3. the same overall structure and shape of the handle: both handles have relatively thick ends and a relatively thin middle portion, with a transparent recessed portion in the center of the upper part of the handle, and both ends of the handle bending downwards. The differences between the allegedly infringing product and the subject patent include: 1. the allegedly infringing product has a substantially heart-shaped front end of the handle while the subject patent has a substantially fan-shaped front end of the handle; and 2. the transparent recessed portion in the center of the upper part of the handle of the allegedly infringing product has an elliptical shape while the transparent recessed portion of the subject patent has a rounded triangular shape. The influence of the above differences between the allegedly infringing design and the subject patent on the overall visual effect is local and trivial. In beauty roller products, the massage roller and the handle are portions attracting the attention of the general consumers. The allegedly infringing product and the subject patent have the same overall shape and structure, the same shape of the roller and the handle, and in particular the same design for the connection portion between the roller and the handle and for the patterns on the roller. Therefore, based on the knowledge level and cognitive abilities of the general consumers, the difference between the allegedly infringing design and the subject patent is insufficient to distinguish the allegedly infringing design from the subject patent. The allegedly infringing design can hardly be determined to have a substantially different visual effect from the subject patent. Therefore, they should be determined to form similar designs; and the allegedly infringing design falls in the scope of protection of the subject patent.
Therefore, the court of first instance ruled that the sued decision of the defendant, which determined noninfringement of the third party, was not supported by adequate main evidence and should be revoked.
The defendant and the third party were not satisfied with the judgment of first instance and appealed to Guangdong Higher People’s Court (court of second instance). After hearing the case, the court of second instance dismissed the appeal on the grounds that the claims of the defendant and the third party were untenable and sustained the judgment of the original trial.
Subsequently, the defendant, Foshan Intellectual Property Administration, remade an administrative decision based on the effective judgment and determined that the allegedly infringing product fall in the scope of protection of the subject patent, and the behavior of the third party constituted an infringement to patent right.
Interpretation by the Attorney
This case is an administrative lawsuit filed against an administrative decision made by the patent administration with respect to disputes over patent infringement. Although the administrative decision denied the infringement, we reversed the unfavorable result in the administrative lawsuit.
China’s local practice provides administrative and judicial pathways for resolving disputes over patent infringement. The administrative pathway has the advantage of rapidness over the judicial pathway, and thus is often preferred by the patentees in order to stop infringement as soon as possible. If unsatisfied with the administrative decision, an involved party can petition for administrative reconsideration by a superior administrative organ or bring an administrative lawsuit to a court with jurisdiction.
In this case, the alleged infringer produced two models of allegedly infringing products, one being nearly identical to the subject patent and the other, which is the allegedly infringing product in this case, having slight differences from the subject patent. Foshan Intellectual Property Administration required filing of individual cases respectively for the two allegedly infringing products and the two respondents. So the patentee filed four petitions for administrative handling at the same time. Foshan Intellectual Property Administration determined that the allegedly infringing product that is nearly identical to the subject patent constituted an infringement, but the other allegedly infringing product having slight differences did not constitute any infringement.
Upon receiving the unfavorable administrative decision, as the attorney of MTG Co., Ltd. in the administrative stage and both instances, we proposed to seek remedies by filing an administrative lawsuit before the court in order to defend the lawful rights and interests of the patentee. As compared with the administrative organ, the court has better and more professional understanding of the laws and the technology, and is more likely to make the correct judgment.
In the administrative litigation, we protested against the obviously wrong determination of customary design asserted in the administrative decision and stressed the greater influence of the portion embodying the features distinguishing from the prior art on the overall visual effect. The defendant and the third party further made the defense of functional design and the prior design defense, which were overturned by us before the court. Finally, the courts of the first and second instances both supported our claims and decided to recall the administrative decision of noninfringement.
Subsequently, Foshan Intellectual Property Administration remade an administrative decision based on the effective judgment and determined that an infringement has been constituted. After the remade administrative decision came into effect, we filed and won a civil lawsuit for investigating the liability for compensation of the third party before Guangzhou IP Court.
Links to the court judgments
First instance:
https://law.wkinfo.com.cn/judgment-documents/detail/MjAyMDQ1MDk2NTQ
Second instance:
https://law.wkinfo.com.cn/judgment-documents/detail/MjAwOTg1NDc0Nzk%3D?searchId=8e01df01f3054521a36117648fb58b77&index=1&q=%E9%99%88%E6%9D%B0%20MTG&module=
