China

JIANLONG V. GROHE (2015) MTZ No. 23, SPC

Cause of action: Dispute over infringement of a patented Design

Collegial panel members: Zhou Xiang | Wu Rong | Song Shuhua

Keywords: assessment of similarity, design features, design patent

Relevant legal provisions: Patent Law of the People’s Republic of China, article 59(2)

Basic facts: Grohe Ag (hereinafter “Grohe”) is the patentee of the design patent “handheld shower head No. A4284410X2”, which patent was legal and valid at the time of the case. In November 2012, Grohe brought an action against Zhejiang Jianlong Sanitary Ware Co., Ltd. (hereinafter “Jianlong”), which produces, sells and offers for sale sanitary products, on the ground that Jianlong had infringed Grohe’s “handheld shower head” design patent. Grohe asked the court to order that Jianlong immediately stop the infringement, destroy infringing products held in stock and those molds used specifically to produce allegedly infringing products, and compensate Grohe RMB200,000 for its economic loss.

Based on the comparison conducted in the court of first instance, the only similarity between Jianlong’s allegedly infringing product and Grohe’s design patent was that they are both the same product type. Viewed in their entirety, both designs have a shower head and a handle. Spray from the shower head of the allegedly infringing product is delivered in the same way as that from 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, however, were found to be as follows.

(a) The edges of the shower head of the allegedly infringing product are inclined planes, while the front and left view of the patented shower head design shows that its edges have arc-shaped surfaces.

(b) 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 patented design is separated from the panel by a band made up of two lines.

(c) The distribution of the holes on the shower head of the allegedly infringing product is slightly different from that of the patented product.

(d) There is an oblong switch on the handle of the patented design, while there is no such switch on the allegedly infringing product.

(e) There is an oblique angle where the head and the handle of the patented product connect, but the angle is so small that it almost appears to be a straight line, while the connecting angle between the head and the handle of the allegedly infringing product is wide.

(f) The bottom view of the patented design shows that 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 patented design 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, with an arc-like protuberance in the middle of the handle.

(g) 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 element on the bottom of the handle of the patented design.

(h) The proportion of the length between the head and handle of the patented design differs from that of the allegedly infringing product, and the arc-shaped surface at the connection between the head and handle is also different between the two.

Held: On March 5, 2013, the Zhejiang Taizhou Intermediate People’s Court rendered a civil judgment and dismissed Grohe’s claims ((2012) ZTZMCZ No. 573). Not accepting the result, Grohe appealed to the Zhejiang Higher People’s Court, which delivered its judgment on September 27, 2013 ((2013) ZZZZ No. 255), in which it:

(a) reversed the judgment of the first instance court;

(b) asked Jianlong to immediately stop producing, offering for sale and selling products that infringed Grohe’s “handheld shower head” design patent and to destroy any infringing products in stock;

(c) asked Jianlong to compensate Grohe in the sum of RMB100,000 for its economic loss, including Grohe’s reasonable expenses incurred in stopping the infringement; and

(d) rejected Grohe’s other claims. Jianlong was dissatisfied with the decision and appealed to the Supreme People’s Court. On August 11, 2015, the Supreme People’s Court delivered its judgment reversing the second-instance judgment and affirming the findings of the court at first instance.

Reasoning: The Supreme People’s Court affirmed that the design patent system has been developed to protect aesthetic and innovative industrial designs; as such, a patented design should feature identifiable innovative characteristics distinctive from those of prior art and only those designs that feature such innovative characteristics

shall be eligible for protection. These features should be such that they make it easier for ordinary consumers to differentiate patented designs from prior art. They therefore 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 of the design features that differentiate a patented design from prior art, it will generally be presumed that the allegedly infringing product does not resemble the patented design.

The patentee may summarize such design features in a brief description or it may explain the design features in another pertinent way when seeking verification of its patent right or pursuing infringement procedures. Whether the patentee bears the burden of proving the infringement or it is judged on the basis of examining relevant documents submitted for the granting and verification of patent rights, the courts’ findings regarding these specific design features can be overturned by counterevidence if any third party raises an objection.

Based on cross-examination of the parties, the Supreme People’s Court fully interrogated the evidence and determined the design features of the patented design according to law. It found that the patent in this case has three design features: first, the shape of the shower head and plane transitions; secondly, the shape of the shower head spray; and thirdly, the proportion between the width of the shower head and the handle diameter. Although the allegedly infringing product adopts a runway shaped spray highly similar to that of the patented design involved in this case, the two have large differences in style in terms of the shape of the shower head and plane transition. The second instance judgment considered only the design features of the runway-shaped spray, while neglecting others, as well as other distinctive design features that are easily noticeable in normal use of the product. In reaching its conclusion that the two are similar designs based on that assessment, the second-instance court’s decision was consequently wrong.