4.8.8 Judgment of infringement of design patents
The scope of protection of a design patent is subject to the design shown in the picture or photograph. Article 8 of the Interpretation of Patent Infringement Dispute Cases stipulates the following:
Where a design identical or similar to a design patent is applied to a category of products identical or similar to the products carrying the design patent, the people’s court shall determine that the alleged infringing design falls within the scope of protection of the design patent as provided for in Article 59 paragraph 2 of the  Patent Law.
In the judgment of patent infringement, the people’s court does not only determine whether the design is identical or similar but also determines whether the categories of products are identical or similar. The criteria for determining the product category in a patent infringement case are consistent with those in the procedures involving patent grant and confirmation: both are based on the use of the product.
When determining whether designs are identical or similar, ordinary consumers are the subject to make such a determination, and it is necessary to accurately clarify the knowledge and cognitive ability of these ordinary consumers and carry out the “overall observation” and “comprehensive judgment” of the visual effect of the whole. Article 11 of the Interpretation of Patent Infringement Dispute Cases stipulates the following:
When determining whether designs are identical or similar, the people’s court shall consider the design features of the patented design and the alleged infringing design, and make a comprehensive judgment depending on the overall visual effect of the designs; and the people’s court shall not consider design features mainly determined by technical functions, and material, internal structure, and other features of a product which have no effect on the overall visual effect.
In the following circumstances, the overall visual effect of a design is usually more significantly affected:
- (1) The part of a product that is easy to be directly observed during normal use t as opposed to other parts;
- (2) design features that are distinct from those of the prior designs as opposed to other design features of the patented design.
Where there is no difference in the overall visual effect between the alleged infringing design and a patented design, the people’s court shall determine that the two designs are identical; or if there is no substantive difference in the overall visual effect between them, the people’s court shall determine that they are similar.
There are two main considerations for these provisions. First, a design patent protects the improvement and innovation of the visual effect of the product’s appearance rather than the innovation of its function and technical effects. Hence, any material, internal structure or other features of the product that have no impact on the overall visual effect – and any design features determined primarily by a technical function – are not considered in the determination of infringement. Accordingly, the parts of a product that can easily be directly observed during normal use will be more likely to have a significant impact on the visual effect; and, conversely, parts that cannot be observed or are almost impossible to be observed during normal use will not have a significant impact on the overall visual effect. Second, the fundamental criterion for determining whether a design is identical or similar is the overall visual effect, and the design features of the innovative part are an important part affecting the overall visual effect. The features distinct from the prior design are identified based on evidence cross-examined by the parties. Since design patents in China are not substantially examined before granting, the essential features described in the brief description of the design can be used as a reference for finding the innovative part.
In Friedrich Grohe AG v. Zhejiang Jianlong Sanitary Ware Co.,179 a dispute over the infringement of design patent rights, it was indicated that the design features of a patented design not only reflect the innovative features, which are different from those in prior designs, but also reflect the designer’s inventive contribution to the prior designs. Thus, if an alleged infringing design does not include all of the design features distinguishing the patented design from prior designs, it can be presumed that the alleged infringing design is not similar to the patented design. For the determination of design features, the patentee must present evidence for the design features claimed. Based on hearing the cross-examination opinions of the parties, the court shall fully examine the evidence and determine the design features of the patented design according to the law.
In a case involving a dispute over the infringement of design patent rights, Lanxi Changcheng Food Co. v. Chen Chunbin,180 the Supreme People’s Court held that the protection scope of the design patent was the shape of the product without claiming the pattern of the design. Although the alleged infringing product used a pattern on the product, this additional pattern did not have a substantive or significant impact on the overall visual effect. Therefore, the alleged infringing product fell within the protection scope of the involved patent.
In a case involving a dispute over the infringement of design patent rights, Arc International v. Yiwu Lanzhiyun Glass Crafts Factory,181 the Supreme People’s Court pointed out that a design protected under Patent Law should be incorporated into products and cannot exist independently. The product category of a design patent should be determined based on the use of the product, which has a form independent of the design and can be sold separately. In a case involving a dispute over the infringement of design patent rights, Fujian Jinjiang Qingyang Weiduoli Food Co. v. Zhangzhou Yueyuan Food Co.,182 the Supreme People’s Court pointed out that the object to be protected by a design patent is neither the product alone nor the design independent of the product category defined by the design patent. The determination of whether the product category is identical or similar should be based on whether the use of the product is identical or similar. The sale and actual use of a product can be a reference for determining the use of the product.
Articles 15–17 of the Interpretation (II) of Patent Infringement Dispute Cases contain the provisions on the determination of infringement of design patents for combination products, products in a set and products having variable states.