Summary of the judgment

The defendant’s use of the picture of the tyre GST67 in its product brochure without the plaintiff’s permission during the validity term of the plaintiff’s patent constituted the act of offering to sell, which constituted an infringement of the plaintiff’s patent.

Case information

Case brief

Bridgestone Corporation (hereinafter referred to as “the plaintiff”) filed an application for a design patent for tyre with the CNIPA on 24 July 2001, which was granted on 17 April 2002.

The plaintiff’s investigation revealed that Qingdao Jinke International Trade Co., Ltd. (hereinafter referred to as “the defendant”) was an enterprise specializing in tyre manufacturing, and its tyre products were not only sold in China, but also exported to Southeast Asia, the Middle East, Central and South America, Africa, etc. The tyre GST67 the defendant produced, sold and offered to sell belong to the same category as the plaintiff’s patent. By way of comparison, the main tread of the tyre GST67 was found to be substantially the identical to the main tread of the plaintiff’s patent, and therefore, the tyre GST67 infringed the plaintiff’s design patent and the defendant shall bear civil liability such as elimination of danger and compensation for losses Moreover, when selling the accused infringing product, the defendant described the product as “Equal to 90% of BRIDGESTONE” in the product description on its website, which shows the defendant maliciously imitated the plaintiff’s design patent despite being familiar with the plaintiff and the plaintiff’s product and knowing that the product incorporated a patented design of the plaintiff and which is apt to cause misunderstanding among consumers that there was relevance between the plaintiff and the defendant or between the plaintiff’s product and the defendant’s product. In addition, from the defendant’s publicity information, the defendant’s tyre products had been sold in a variety of fields, causing extensive adverse effects to the plaintiff. In view of the above, the circumstances of the defendant’s infringing act were severe, and in order to protect the plaintiff’s legitimate rights and interests, the plaintiff filed a lawsuit with the Qingdao Intermediate People’s Court, and requested the court to order the defendant to compensate for the plaintiff’s economic losses since the involved patent had expired.

The court of first instance held that, with regard to the issue of whether the accused tyre GST67 fell within the scope of protection of the involved patent, i.e. whether it constituted an infringement, by comparing the accused tyre GST67 with the plaintiff’s design patent, the following similarities could be found between the two: the tyre tread was divided into five circumferential contact surfaces by four circumferential grooves, with the three middle circumferential contact surfaces having the same width and the other two on either side having the same width. The three middle circumferential contact surfaces were evenly arranged with transverse and broken-line-shaped grooves, of which the grooves on the left circumferential contact surface were slanted downward and then upward, with a length ratio of 2:1; the grooves on the middle circumferential contact surface were in the form of three segments of broken lines slanted to the upper right, with a gentle slope of the middle segment and a greater slope of the two side segments; and the grooves on the right circumferential contact surface were slanted upward and then downward, with a length ratio of 1:2. The defendant and the plaintiff agreed that the difference was that the two sides of the circumferential contact surface in the middle of the tread and the two sides of the tread of the accused tyre GST67 had graduation-shaped grooves, whereas the plaintiff’s patent did not; and the joining portion of the side surface and the tread of the accused tyre GST67 had three layers of chamfers, and the layer of chamfers near the tread had key-shaped grooves, whereas the plaintiff’s design patent had only one layer of chamfers and no key-shaped grooves. However, the defendant argued that there was a further difference in that the plaintiff’s patent had square and granular protrusions within the four circumferential grooves, which was a feature absent in the accused tyre GST67, whereas the plaintiff refuted that the pictures of the accused tyre GST67 showed the presence of this feature. Whether two designs are identical or similar should be judged by the knowledge level and cognitive competence of general consumers of the products incorporating the designs, based on the design features of the granted design and the infringing design, and by adopting the approach of “overall observation and comprehensive judgment”. The tyre is a functional product, and its inherent nature determines the shape and the main structure of the product, that is to say, there is not any room for design of the shape and the main structure of the product, and the difference between different tyres lies in the tread pattern of the tyre. In this regard, the comparison between the accused tyre GST67 and the plaintiff’s design patent also shows that the difference between the two lies mainly in the tread of the tyre. Furthermore, for general consumers of tyres, it is the tread of the tyre, not the side surface of the tyre, which has a significant visual impact on the tyre. The difference between the accused tyre GST67 and the plaintiff’s patent is mainly in the joining portion of the tread and the side surface of the tyre, while the tread patterns of the two tyres are the same. The presence or absence of the square and granular protrusions in the circumferential grooves of the tread of the accused tyre GST67 is not apparent from the pictures of the accused tyre GST67, but since this design feature is located inside the grooves, its presence or absence does not have an impact on the overall effect of the design. Therefore, for the general consumers, the accused tyre GST67 had no substantial differences from the plaintiff’s design patent in the overall effect, and therefore should be considered as similar to the plaintiff’s design patent. In other words, the accused tyre GST67 fell into the scope of protection of the plaintiff’s automobile tyre design patent No. ZL01322086.1.The court of first instance held that the defendant’s prior art defense based on the patent No. 99301311.2 was untenable, as the accused tyre GST67 was more similar to the plaintiff’s design patent if viewed as a whole and thus fell into the protection scope of the plaintiff’s design patent. With regard to the defendant’s claim that the accused tyre GST67 incorporates a customary design, the court of first instance held that, from the defendant’s “brochure” preserved by the plaintiff and pictures of a variety of tyre products submitted by the defendant, it can be seen that, the tyre tread pattern can have a variety of designs, different tyre treads have quite different patterns, and there is no such customary design as claimed by the defendant, and therefore the defendant’s defense was not supported. In summary, the court of first instance ruled that the defendant’s use of the pictures of the tyre GST67 in its brochures without the plaintiff’s permission within the validity term of the plaintiff’s patent was an act of offering to sell and constituted an infringement of the plaintiff’s patent. Although the plaintiff’s patent right had expired, the plaintiff was still entitled to request that the perpetrator who conducted the infringing act within the term of the plaintiff’s patent right bear the liability of compensating for the losses. Therefore, the defendant should still bear the liability of compensation for losses. As the plaintiff neither presented evidence to prove the losses suffered by the plaintiff due to infringement and the profits gained by the defendant due to infringement nor provided patent license fee for reference, the court determined the amount of compensation according to the nature and the circumstances of the defendant’s infringing act, as well as the defendant’s subjective fault and the costs incurred from the plaintiff’s safeguarding of its patent right.

Attorney’s interpretation

This case was selected as one of the “Top Ten Model Cases of Judicial Protection of Intellectual Property Rights in Qingdao of 2021”.

In this case, our firm was entrusted by the right owner to represent it from the collection of evidence to the final enforcement of the judgment. In this case, although we investigated and collected evidence from various aspects, we failed to preserve the actual infringing item, but only preserved the product brochures containing the promotional information of the accused infringing product, as the accused infringer mainly accepted orders for production and the products were mainly exported.

In the lawsuit, we accused the infringer’s act of offering to sell based on the product brochures. Although the infringing item was not preserved, we emphasized that the design of the tyre mainly focused on the tread and the pictures in the product brochures could clearly reflect the design of the accused infringing product, and the court finally approved of making a comparison between the two tyres based on the pictures in the brochures to determine whether an infringement was constituted, and finally found that the defendant’s promotion of the accused infringing product in the product brochure was an act of offering to sell and constituted patent infringement, and the court also ruled that the defendant shall bear the liability for losses caused by the defendant’s act of offering to sell. The accused infringer did not appeal against the first instance judgment and the judgment was eventually enforced successfully.

Link to the judgment

First instance

https://aiqicha.baidu.com/wenshu?wenshuId=7f395da12403b4d093b3da7c67279c95c1b6174d