Case about dispute over infringement upon design patent right

 Grohe Joint-Stock Company v. Zhejiang Jianlong Sanitary Ware Co., Ltd.
(Issued on March 6, 2017 as deliberated and adopted by the Judicial Committee of the Supreme People's Court)
Keywords: civil; infringement upon design patent; design features; functional features; overall visual effect
Key Points of Judgment
1. The design features of a patented design reflect not only its innovations different from existing designs but the innovative contributions made by the designer to existing designs. If the alleged infringing design does not include all design features of the patented design different from existing designs, in general, it may be presumed that the alleged infringing design is not similar to the patented design.
2. To identify a design feature, the patentee shall bear the burden of proof for the design feature he or it claims. The people's court shall, on the basis of soliciting cross-examination opinions from all parties, fully examine evidence and legally determine the design feature of the patented design.
3. The identification of a functional design feature depends on whether the design is only determined by a specific function for an ordinary consumer of a design product and it is unnecessary to consider whether the design is aesthetic. A functional design feature does not have an obvious impact on the overall visual effect of the design. For the impact of a design feature that is both functional and decorative on the overall visual effect, the degree of decorativeness shall be taken into consideration. The more decorative the design feature is, the greater the impact on the overall visual effect is and vice versa.
Legal Provisions
Paragraph 2 of Article 59 of the Patent Law of the People's Republic of China
Basic Facts
Grohe Joint-Stock Company (hereinafter referred to as “Grohe Company”) was the right holder of the design patent of “hand-held shower nozzle (No. A4284410X2)” and such design patent was legal and effective. In November 2012, Grohe Company filed a lawsuit against Zhejiang Jianlong Sanitary Ware Co., Ltd. (hereinafter referred to as “Gllon Company”) on the ground that the Liya Series of sanitary products produced, sold, and offered for sale by Gllon Company infringed upon the design patent of “hand-held shower nozzle” of Grohe Company and it requested the Intermediate People's Court of Taizhou City, Zhejiang Province to order that Gllon Company should immediately cease the alleged infringing act, destroy the infringing products in stock and moulds for producing such infringing products, and pay Grohe Company CNY200,000 for its economic loss. Upon comparison in the court trial of first instance, it was found that the alleged infringing products produced by Gllon Company and the design patent involved of Grohe Company were identical in the following aspects: Both of them were like products. In general, both of them consisted of the nozzle and the handle. The shape of the drainage surface of the alleged infringing product was the same as that of the patent involved. Drainage holes were distributed in the radial pattern in the area with semicircles at both ends and a rectangle in the middle, and the area had arc-shaped margins. The differences between them were as follows: (1) there was slope surface around the nozzle of the alleged infringing product and such slope surface was tilted from the reverse side to the water outlet, while the front view and the left view of the patented product involved showed that there was arc surface around the nozzle; (2) the drainage surface of the nozzle of the alleged infringing product and the panel were divided only by a line, while the drainage surface on the nozzle of the patented product involved and the panel were divided by a banding formed by two lines; (3) there was slight difference in the layouts of drainage holes on the drainage surface of nozzles of the alleged infringing product and the patented product involved; (4) there was a switch on the handle of the patented product involved, while the alleged infringing product did not have such design; (5) although there was a certain angle in the junction of the central nozzle of the patented product involved and the handle, the angle was small and it was almost a straight line, while the angle formed at the junction of the nozzle of the alleged infringing product and the handle was bigger; (6) seen from the upward views of the patented product involved and the alleged infringing product, the handle bottom of the former was round, while that of the latter was a fan-shaped arc. The lower part of the former was a cylinder, which was gradually shrunk and flattened to a flat ellipsoid to the direction of the nozzle junction, while the lower handle of the alleged infringing product was a fan-shaped cylinder and the transitional area between the handle and the nozzle junction was also a fan-shaped cylinder, and there were curved ledges on the central handle in the transitional area; (7) there was an arc-shaped decoration line at the bottom of the handle of the alleged infringing product and such line connected the handle bottom with the back of the product, while there was no such design at the bottom of the handle of the patented product involved; and (8) the length proportion of the nozzle and the handle of the patented product involved was different from that of the alleged infringing product and the arc-shaped surfaces at the junctions of the nozzles and handles of both products were also different.
Judgment
On March 5, 2013, the Intermediate People's Court of Taizhou City, Zhejiang Province rendered a civil judgment (No. 573 [2012], First, Civil Division, IPC, Taizhou) that the claims of Grohe Company should be dismissed. Grohe Company refused to accept the judgment and appealed. On September 27, 2013, the Higher People's Court of Zhejiang Province rendered a civil judgment (No. 255 [2013], Final, Civil Division, HPC, Zhejiang) that: (1) the civil judgment (No. 573 [2012], First, Civil Division, IPC, Taizhou) rendered by the Intermediate People's Court of Taizhou City, Zhejiang Province should be set aside; (2) Gllon Company should immediately cease the acts of producing, offering for sale, and selling products infringing upon Grohe Company's design patent of “hand-held shower nozzle,” and destroy the infringing products in stock; (3) Gllon Company should pay CNY100,000 to Grohe Company as compensation for Grohe Company's economic loss (including reasonable expenses assumed by Grohe Company for stopping the infringement); and (4) other claims of Grohe Company should be dismissed. Gllon Company refused to accept the judgment and filed an application for retrial. On August 11, 2015, the Supreme People's Court rendered a civil judgment (No. 23 [2015], Civil Petition, Supreme People's Court) that: (1) the judgment of second instance should be set aside; and (2) the judgment of first instance should be affirmed.
Judgment's Reasoning
In the effective judgment, the Supreme People's Court held that the issue of this case was whether the design of the alleged infringing product fell into the protection scope of the design patent involved.
Paragraph 2 of Article 59 of the Patent Law prescribed that “The protection scope of a design patent shall be subject to the design of a product in drawings or photographs and brief descriptions may be used for interpreting the design of the product as expressed in such drawings or photographs.” Article 8 of the Interpretation of the Supreme People's Court on Several Issues concerning the Application of Law in the Trial of Cases regarding Patent Infringement Dispute (hereinafter referred to as the “Interpretation on Patent Infringement Dispute Cases”) provides that “Where a design identical or similar to a design patent is applied to a type of products identical or similar to the products carrying the design patent, the people's court shall determine that the alleged infringing design falls into the protection scope of the design patent as provided for in paragraph 2 of Article 59 of the Patent Law.” Article 10 thereof provides that “The people's court shall determine whether designs are identical or similar based on an ordinary consumer's knowledge and cognitive ability to a product carrying the design patent.” In this case, both the alleged infringing product and the product carrying the patented design involved were shower nozzles. Therefore, the key issue in this case was whether the design of the alleged infringing product was identical or similar to the product carrying the patented design involved for an ordinary consumer. The following four aspects were involved:
1. Design features of the patented design involved
The legislative purpose of the design patent system is to protect aesthetic innovative industrial design schemes. A design may be granted a patent when it had identifiable innovative design different from existing designs and such innovative design was the design feature for granting a patent. Under normal circumstances, the designer of a design made innovations based on existing designs. For an existing design, a design to which a patent was granted generally has some features of the existing design and also features that are not identical or similar to the existing design, which makes the patented design innovative, so as to satisfy the condition for substantial patent granting as prescribed in Article 23 of the Patent Law: There is no conflicting application to the existing design; and as compared with the existing design or combination of the existing design features, the patented design has distinctive features. The descriptions on features that are not identical or similar to the existing design are design features of the patented design. Such features embody innovations made by the patented design, which are different from the existing design, and creative contributions the designer makes to the existing design. Due to the existence of design features, an ordinary consumer would easily differentiate the patented design from an existing design. Therefore, design features have significant impact on the overall visual effect of the product carrying the patented design. If the alleged infringing design did not include all design features based on which the patented design was different from the existing design, it may be generally presumed that the alleged infringing design and the patented design did not constitute similarity.
With respect to the identification of a design feature, in general, a patentee may record a design feature in the brief description or make a corresponding statement of the design feature in the procedure of patent granting confirmation or infringement. According to the evidence rule that “whoever raises a claim shall bear the burden of proof,” the patentee should bear the burden of proof for the design feature it claimed. In addition, the procedure of patent granting confirmation aimed at examining the patentability of a design. Therefore, the relevant records in the examination documents are of great reference significance for determining a design feature. Under ideal conditions, for the confirmation of a design patent granting, the patentability of the design should be determined on the basis of retrieval of all existing designs; however, for such reasons as restrictions of search databases and limitations of retrieval capabilities of the claimant for announcement of invalidation, the design feature determined in the relevant examination documents under the procedure of patent granting confirmation may be concluded not after the retrieval of all existing designs is exhausted. Therefore, regardless of a design feature proved by the patentee or a design feature as determined by records of the relevant examination documents in the granting confirmation, if a third party raises an objection, the third party may be permitted to provide counterevidence to overturn such design feature. The people's court should, on the basis of soliciting cross-examination opinions from all parties, fully examine evidence and legally determine the design feature of a patented design.
In this case, the patentee Grohe Company claimed that the track-shaped drainage surface was a design feature of the patented design involved and Gllon Company did not recognize such claim. To this issue, the effective judgment of Supreme People's Court held that: First, there was no brief description on the design features of the patented design involved; in the 12 documents of the design patent of the shower nozzle product submitted by Grohe Company in the trial of second instance, the publication date recorded in seven of such documents was prior to the application date of the patented design involved and the design in the attached pictures did not adopt the track-shaped drainage surface. In the procedure of examining a request for announcement of invalidation of the patented design involved, the patent reexamination board issued the No. 17086 Decision. According to the aforesaid Decision, upon comparison between the patented design involved and evidence (1) of the nearest comparative design, it was found that “there were great differences between the patented design involved and the design published prior to the patent in the shape of the transitional area between the nozzle and the surface, the design of the drainage area on the front side of the nozzle, and the proportion between the width of the nozzle and the diameter of the handle, and the aforesaid differences were the design content an ordinary consumer could easily notice.” In other words, it was determined in the Decision that the design of the drainage surface on the nozzle was one design feature of the patented design involved. Second, although Gllon Company did not recognize the track-shaped drainage surface as a design feature of the patented design involved, it did not submit the corresponding evidence in the trials of first instance and second instance to prove that the track-shaped drainage surface was an existing design. In the phase of retrial examination, Gllon Company submitted the view of the design patent of a shower nozzle (No. 200630113512.5) to prove that the track-shaped drainage surface has been publicized by the existing design. Upon examination, it was found that the publication date of the design patent was prior to the application date of the patented design involved and such design patent was an existing design for the patented design involved; however, it was a rectangle other than an arc pattern at both ends of the drainage surface as shown in the general view and the reference diagram of usage state and the drainage surface was not in the shape of a track. Therefore, the Supreme People's Court did not uphold Gllon Company's retrial application grounds that the track-shaped drainage surface was not a design feature of the patented design involved.
2. Parts that were easily and directly viewed in the normal use of the product carrying the patented design involved
The parts that could be easily and directly viewed in the normal use of the product carrying the patented design involved should be identified from the perspective of ordinary consumers, according to the product purpose, and by taking into full account of various usage status of such product. In this case, first, the patented design involved was the design of a shower nozzle product, which consisted of a nozzle and a handle and there was little difference in the proportions of the nozzle and the handle in the product structure. The shower nozzle product may be handle-held or hung on a wall. In the normal use, for ordinary consumers, the nozzle, the handle, and the junction between the nozzle and the handle were the parts that could easily and directly viewed. Second, evidence (2) for the design applied earlier as determined in No. 17086 Decision and the patented design involved adopted the same track-shaped drainage surface; however, in the patented design involved, “the nozzle and the handle are integrated into one body. There is cambered surface from the nozzle to the junction between them and the nozzle bents forward, which is greatly different from the design applied earlier. The aforesaid difference is the design content an ordinary consumer can easily notice.” Therefore, it was determined that they were designs that were neither identical nor similar. It could be seen that the parts of a shower nozzle product that could be easily and directly viewed were not limited to the drainage surface of the nozzle. When drawing an integrative conclusion on the overall visual effect of the design of a shower nozzle product, the nozzle, the handle, and the junction between them should be considered as parts that could be easily and directly viewed.
3. Whether the button on the handle of the product carrying the patented design involved was a functional design feature
The functional design features of a design refer to features that are uniquely determined by the specific functions to be realized by a product without considering aesthetic factors for ordinary consumers of design products. Under normal circumstances, when a designer designs a product, he would consider both functional factors and aesthetic factors. On the premise of realizing the product functions, he would improve the design by observing the humanity rules. In other words, a product must first realize its functions and second it must be visually beautiful. For a certain feature of a design, the design is both functional and decorative in most situations. The designer would select one design he deems having the aesthetic perfection from various designs that could realize the specific functions. The design that is uniquely determined by the specific functions exists only under few special circumstances. Therefore, there are two types of functional design features of a design: unique design for realizing the specific functions; and one of various designs for realizing the specific functions, which is only determined by the specific functions to be realized and is irrelevant to aesthetic factors. The determination of functional design features does not lie in whether the design was selective due to restrictions of functions or technical conditions, but lies in whether the design is only determined by the specific functions without considering whether the design is aesthetic for ordinary consumers of design products. In general, functional design features have no significant impact on the overall visual effect of a design; for the impact of the design feature that is both functional and decorative on the overall visual effect, it is necessary to consider the degree of decorativeness. The more decorative the design feature is, the greater the impact on the overall visual effect is and vice versa.
In this case, one difference between the patented design involved and the design of the alleged infringing product was that there was no track-shaped button on the handle of the latter. The button served as a switch for controlling the flow of water. Whether to set such button depended on whether it was necessary to realize the function of a switch for controlling the flow of water on a shower nozzle product. Nevertheless, as long as a button was set on the handle of a shower nozzle product, there may be several shape designs of the button. When an ordinary consumer saw the button on the handle of a shower nozzle product, he would naturally pay attention to its decoration and judge whether the design of the button was pleasing to the eye rather than just consider whether the button could realize the function of a switch for controlling the flow of water. The designer of the patented design involved designed a track-shaped button on the handle for the purpose of matching it up with the track-shaped drainage surface and increasing the overall aesthetic feeling of the product. Therefore, the judgment of second instance was erroneous in the application of law in determining that the button in the patented design involved was a functional design feature and the Supreme People's Court should correct this judgment.
4. Whether the design of the alleged infringing product and the patented design involved were identical or similar
In accordance with the provisions of Article 11 of the Interpretation on Patent Infringement Dispute Cases, “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 draw an integrative conclusion based on the overall visual effect of the design; and the people's court shall not consider design features which depend on technical functions.” The parts of a product which could be easily and directly viewed in the normal use of the product as opposed to other parts, and design features of a patented design which were distinctive from those of the existing designs as opposed to other design features of the patented design usually have more influences on the overall visual effect of the design.
In this case, after comparing the design of the alleged infringing product with the patented design involved, it was found that the layout of drainage holes of the former was located in the track-shaped front area of the nozzle. Although the quantity of drainage holes and their locations at both ends of the drainage surface were slightly different from those of the patented design involved, as a whole, the alleged infringing product adopted the design of a track-shaped drainage surface which was highly similar to the patented design involved. The court of first instance summarized eight aspects of distinctive design features of the design of the alleged infringing product and the patented design involved, to which both parties raised no objection. For such distinctive design features, first, as mentioned earlier, the No. 17086 Decision affirmed that the patented design involved had three design features: (1) the shape of the transitional area for the nozzle and other surfaces; (2) the shape of the drainage surface of the nozzle; and (3) the proportion between the width of the nozzle and the diameter of the handle. Besides the design feature of the shape of the drainage surface of the nozzle, the shape of the transitional area for the nozzle and other surfaces, the proportion between the width of the nozzle and the diameter of the handle, and other design features also brought about obvious impacts on the overall visual effect of such products. Although the design of the alleged infringing product adopted a track-shaped drainage surface which was highly similar to the patented design involved, with respect to the design feature in the shape of the transitional area for the nozzle and other surfaces, there was an arc-shaped transitional area for the nozzle, the handle, and the junction surface on the product carrying the patented design involved, while there was a tilting transitional area for the nozzle, the handle, and the junction surface on the alleged infringing product. The aforesaid design features made the design of the alleged infringing product and the patented design involved obviously different. In addition, with respect to distinctive design features of the design of the alleged infringing product and the patented design involved beyond non-design features, as long as they brought about obvious differences between the design of the alleged infringing product and the patented design involved in the overall visual effect, they may be taken into consideration. Second, the nozzle, handle, and junction between them of a shower nozzle product were the parts that could be easily and directly viewed in the normal use. When an integrative conclusion was drawn by taking the overall visual effect into full consideration, examination priority should be given to the design of the aforesaid parts. In particular, there was a track-shaped button on the handle of the product carrying the patented design involved, while the alleged infringing product did not have such design. This distinctive design feature of having or not having the button affected the overall visual effect of such products; and there was a small angle in the junction between the nozzle and the handle of the product carrying the patented design involved, while there was a large angle in the junction between the nozzle and the handle of the alleged infringing product, making them obviously different in the left view. Since the design of the alleged infringing product did not include all design features of the patented design involved and there were distinctive design features between the design of the alleged infringing product and the patented design involved in terms of the handle and the junction between the nozzle and the handle, and there were obvious differences in the overall visual effects of such designs. Therefore, they were not identical or similar and the design of the alleged infringing product did not fall into the protection scope of the patented design involved. The judgment of second instance only gave priority to the design feature of a track-shaped drainage surface of the patented design involved and did not consider other design features of the patented design involved as well as the distinctive design features of the design of the alleged infringing product and the patented design involved in the parts of a shower nozzle product that could be easily and directly viewed in the normal use. The judgment of second instance was erroneous in the application of law in determining that the design of the alleged infringing product was similar to the patented design involved and the Supreme People's Court should correct the judgment of second instance.
In conclusion, the design of the alleged infringing product produced, offered for sale, and sold by Gllon Company and the patented design involved of Grohe Company were neither identical nor similar and the former did not fall into the protection scope of the latter. The production, offering for sale, and sale of the alleged infringing product by Gllon Company did not constitute infringement upon the patented design involved of Grohe Company. The judgment of second instance was erroneous in the application of law and the Supreme People's Court should correct it according to the law.
(Judges of the effective judgment: Zhou Xiang, Wu Rong, and Song Shuhua)