Are your eyes the basis for judging appearance patent infringement?
date: 2020-01-10 Jingyan Fang Read by:

Cabeau, Inc., a US company manufacturing and selling travel pillows, found that Xiamen Xinzhiheng Foam Product Co., Ltd offered for sale, sold and manufactured the pillows which infringe the design patent right (ZL201030163421.9) of Cabeau. Cabeau entrusted Kangrui Law Firm to conduct website investigation, on-site investigation to collect evidence for the lawsuit, and file a complaint before Fuzhou IP Court. The court accepted the complaint on January 8th, 2019 and held the court hearing on February 25th, 2019. Kangrui, as the representative of Cabeau, attended the court hearing and submitted the statements after the hearing.

The focuses of this case are as follows: 1. Whether the defended infringing product falls within the protection scope of the patent involved; 2 How the defendant bears legal liability

Regarding the first point, Xinzhiheng claimed: The design of the u-shaped body and the central sag of the accused product are to fit the shape and space of the head, neck and shoulders of the human body. The design features of the u-shaped main body have been disclosed by relevant existing designs. Therefore, for the general consumers, the u-shaped contour of the patent in question has a limited effect on the visual effect. Secondly, there are six differences between the infringed product and the patented product: 1. The outline of the infringing product is a light bulb shape, not a rectangle; 2. The back of the infringing product is a concave arc, not a convex arc 3. There is no “handle” for the infringing product; 4. There is no obvious fault in the main body of the infringing product; 5. The fixed buckle of the infringing product is rectangular and detachable, not ellipse and inseparable; 6. The fixed wires are not connected.

However, according to the article 59, item 2 of the Patent Law of the People's Republic of China, “the scope of protection of the patent right for design shall be determined by the product incorporating the patented design as shown in the drawings or photographs”. The brief description of the patent documents involved states that the appearance of the patented product is related to the shape of the waist. The three-dimensional drawing can best indicate the design points. The patent involved is a travel pillow and the infringing product is also a pillow, which is comparable. And according to the article 10 of the Interpretation of the Supreme People's Court on Several Issues concerning the Application of Law in the Trial of Patent Infringement Dispute Cases, “The people's court shall judge whether the design is identical or similar according to the knowledge level and cognitive ability of the general consumers of the patented product”. Therefore, subtle differences in product shape do not have a material impact on the overall vision.

In the lawsuit, the defendant was ordered to pay the compensation of CNY500,000. The damage for the infringement of Xinzhiheng is one of the largest ones in the design patent disputes handled by Kangrui, the main reason is that we collected sufficient evidence of sale quantity, the duration of the infringement, the scale of the manufacturing from the website and on-site, and we calculated the profit earned by Xinzhiheng from the infringement. The evidence from website is coincidence with the evidence collected from the onsite investigation. Therefore, the judges acknowledged most of the evidence.

The court made the decision of the first instance on March 4th, 2019, in which the judges supported the claims of Cabeau, ordering the defendant to pay the damage of CNY500,000 to Cabeau, and stop the infringing acts.

In addition, there are some changes in IP protection policy, and the government decided to strengthen the protection of IP in China Mainland and increase the price of the IP infringement. It is obvious that the damages for the IP infringement have been increasing since the beginning of 2019.

The client, Cabeau, obtained enough compensation paid for protecting their IP right, and is more confident in the IP protection in China. Meanwhile, they protected their market in China effectively. Cabeau decided to enforce their other IP right in China.