Liu Shen & Associates
In China, a design can generally be protected under copyright, trademark or patent law. Copyright mainly protects a design in the artistic sense, while trademarks focus on the distinctiveness of a design. For an industrial design, only patent law is applicable.
To protect a design, it must be registered by applying for a design patent or trademark. If the design is unregistered, the only way to seek protection is under copyright; however, copyright deals only with the artistic aspects of the design and the remedies for an unregistered design are limited.
A design may be registered under a trademark or design patent. If the design is used to identify the product owner, a trademark is suitable. To protect an industrial design, a design patent is the best choice.
According to the Patent Law, a ‘design’ – with respect to a product – is a new design of the shape, pattern, combination thereof or combination of the colour with the shape and pattern, which have rich aesthetic appeal and are fit for industrial application. The design must be related to a product, and the product must be fit for industrial application. Handicrafts, agricultural products, livestock products and natural products which cannot be produced repeatedly cannot constitute a design. In addition, any component part of the product which cannot be partitioned or sold and used independently is not eligible for a design patent – for example, the handle of a cup or the tooth of a gear are not products according to patent law, as they cannot be sold or used independently.
A design patent protects the shape, pattern, a combination thereof, or the combination of the colour with the shape and pattern. Therefore, the subject to be protected by a design patent is a result of a design, not the idea of the design. The design must have a certain shape, pattern or colour. If the shape, pattern or colour of the design cannot be ascertained (eg, if it is a gas, liquid or powder), it is ineligible for patent protection.
If a single product consisting of several component parts which have a different shape or pattern can be assembled only into a certain shape by these component parts (eg, an electric pot which includes a separate base), the design for the single product can be protected by the shape or pattern of the final assembled product. If the final product cannot be ascertained (eg, a child’s construction set) and the shape of the final product can vary according to the manner of assembly, the product can be protected by the specific shape or pattern of each of the component parts.
Under the Patent Law, any individual or entity is entitled to file a design patent application before the Patent Office.
Where an applicant files a design application in China within six months of filing the first application for a design of the same subject matter in a foreign country, the applicant may enjoy the right of priority in accordance with:
- the agreement concluded between that country and China;
- the international treaties to which both countries are party; or
- the principle of ‘reciprocity on priority’.
However, if the first application is filed in China, the applicant may not enjoy the right of priority.
Design patent application documents
The documents necessary for a design patent application include:
- an application form stating the applicant’s name, the title of the design and the title of the product in which the design is embodied;
- drawings or photographs; and
- a brief description stating:
- the title of the product incorporating the design;
- the product’s use;
- the design’s essential features; and
- which drawing or photograph best shows the design’s essential features.
A filing fee is also required.
Once the application is filed, it is subject to a preliminary examination by the Patent Office. An examination regarding a design patent application usually covers:
- whether the design for application is eligible for design patent protection;
- whether the pictures or photographs clearly show the product claimed to be protected; and
- whether the designs incorporated in the application belong to the same or similar design idea and can be filed in one application.
Following the preliminary examination, where it is found that there are no grounds for rejection of the application for design, the application will be granted.
Appeal for rejection of application
Where defects exist in the application documents and remain unrectified after the applicant makes amendments to the examiner’s office action or notification regarding said defects, the examiner may decide to reject the application.
The applicant may appeal a rejection before the Patent Re-examination Board within three months of receipt of the decision and request the board to re-examine the application. Amendments may also be made alongside the appeal. On receipt of the request to appeal, the board will re-examine the application and issue a re-examination decision declaring that the decision is upheld, revoked or revoked based on the applicant’s amendment.
Where the applicant fails to satisfy the re-examination decision, it can request that the court review the decision.
Invalidation of a design patent
According to Article 45 of the Patent Law, beginning from the date that the patent administration department under the State Council announced the grant right, if a unit or individual believes that such grant does not conform to the relevant provision of the law it may request that the Patent Re-examination Board declare the right invalid.
Any individual or entity, including the patentee itself, can file a request to invalidate the granted design patent.
Invalidation grounds: For invalidation of a design patent, the grounds that can be relied on include:
- whether the subject matter of the design patent is ineligible for patent protection;
- whether the design for which the patent right is granted is identical or similar to an existing design or a combination of the features of existing designs;
- whether the design for which the patent right is granted conflicts with the lawful rights acquired by others prior to the date of application; and
- whether the design patent does not conform to the formality requirements of the Patent Law.
Existing designs are designs known to the public, both domestically and abroad, before the date of application.
The first priority is to judge whether the accused design patent is identical or similar to an existing design, a combination of existing designs or a prior existing right.
Rules of judgment
Target of judgment: The object of the judgment is the concerned design patent, particularly the design as shown in the pictures or photographs incorporated in the design patent. Any limitation in the brief description of the patent will also be considered.
Basis of judgment: The judgment must be made by a specific subject, therefore determination of the subject of the judgment is the premise of the judgment.
Under current practice, the judgment will be made according to the knowledge and cognitive capability of a normal consumer of the product incorporating the patent concerned.
A normal consumer of a certain category of product incorporating a design should have the following characteristics:
- common knowledge of the designs and commonly used design methods incorporated in the same or similar products as that incorporating the patent concerned before its filing date; and
- certain capability of distinguishing differences in shape, pattern and colour between design patent products, but without noticing the minor differences in shape, pattern or colour.
In the Motor Wheel case the first-instance court held that: “the motor wheel belongs to a middle product, and the consumer of motors will not directly buy a wheel and mount the wheel on a motor, therefore, the common purchaser or user for the motor wheel shall be the motor assembling person or repairing person, and shall be the subject of judgment.”
However, the higher level court reversed this judgment and ruled that “the subject of judgment shall include both the motor assembling or repairing person and common consumers, because the motor wheel is a main part of a motor and is visible and noticed by the common consumer, therefore, the common consumer shall be also considered.”
Judgment criteria: The comparison and assessment of designs is based on the perspective of a normal consumer according to on a one-to-one comparison, direct observation, whole observation or comprehensive assessment. The comparison will be targeted at the appearance of a product only; features invisible from outside will not be included.
Cause of action
Like utility patents, the owner of a design patent is entitled to enforce its patent in order to inhibit others from exploiting its design patent. Exploitation includes:
- offering to sell;
- selling; or
- importing the design patent products.
When facing infringement, the rights holder may file a suit before the court immediately without issuing a caution or applying for a temporary injunction. In China, the validity of a design patent in suit is not assessed by the court. The accused infringer may file a request before the Patent Re-examination Board for invalidating the design patent, while the invalidation proceedings are independent of the infringement proceedings. The court may therefore not stay the infringement proceedings to wait for the invalidation outcome. The infringement proceedings in the court include first and second instance, and may last 18 months to two years.
In the enforcement of a design patent, determination of the scope of that design patent is key when identifying infringement. According to the Patent Law, the scope of a design patent is confined to the design of the product as shown in the drawings or pictures. A brief description may be used to explain the design as shown in the drawings or pictures.
After the scope of the design patent is determined, the court will compare the patent and the accused product to determine whether the accused product falls within the scope of the design patent (ie, to determine whether the accused product is identical or similar to the design rendered in the patent).
The comparison is made based on a number of factors.
Basis of judgment
As in the invalidation procedure, the subject of the judgment is the normal consumer. In an infringement determination, the normal consumer is often a direct purchaser.
In the Car Bumper case, the court held that the subject was a direct purchaser rather than a final purchaser (ie, the purchaser of the car). In the A Device Used in a Conference System case, the court held that the normal consumer was the person who purchases, installs and repairs the conference system.
Content of judgment
Element of the product: According to the judicial interpretation of the Supreme Court, the design constituting infringement belongs to the same or similar kind of product. Based on this, applying a car design to a car model does not constitute infringement, as it belongs to different product type.
Element of design: When the design patent and the accused product are to some extent similar in their whole appearance but maintain some differences, elements of design or novelty points can be introduced as an assistance measure.
In the Vent Hood case, the court emphasised that compared with existing design elements, creative design elements or novelty points have a more significant impact on visual effect. In this case, the accused product did not include the creative design element of the design patent; therefore, it did not fall within the protection scope of the patent.
Criterion of judgment: As in the invalidation process, the judgment is based on the perspective of a normal consumer in the way of direct observation, whole observation and comprehensive judgment. The comparison is targeted at the product’s appearance only; features invisible from the outside will not be considered.
The remedies available to the design patent owner in the event of infringement include:
- monetary relief;
- equitable relief; and
- costs and attorney’s fees.
Monetary relief in the form of compensatory damages is evaluated by the court according to:
- the benefit of the infringer acquired by the infringement;
- loss of the patentee incurred by the infringement; or
- statute damage.
Equitable relief includes preliminary injunction and permanent injunction. In Panasonic v Zhuhai Jindao, the patentee Panasonic was awarded to Rmb3 million relief assessed on the basis of the profit of the infringer acquired by the infringement.
Ownership changes and rights transfers
Like other patents, a design patent can be transferred or licensed to others. The design patent must be transferred or licensed as a whole, and the agreement for assigning the patent right should be in written form and be registered before the Patent Office.
When a design patent conflicts with other rights (eg, copyright and trademarks), the prior right will generally be respected. For example, Article 23.3 of the Patent Law provides that designs for which a patent right is granted will be ones which do not conflict with the lawful rights acquired by others prior to the date of application. The other rights may include, but are not limited to, copyright and trademarks. If there is a conflict, the holder of the prior right can invalidate the granted design patent.