Design patent may signal new development in crocodile fight

China

French company Lacoste's battle over its rights in a crocodile logo may not be over in China. On January 26 2005 the State Intellectual Property Office (SIPO) granted Huang Weidong, an individual from Zhejiang Province, a design patent (ZL200430045934.4) for a left-facing, open-mouthed crocodile. The design is strikingly similar to Lacoste's famous crocodile trademark registered in China. The design patent was granted for use on signs, signboards and advertising devices.

In China, a design patent can be granted to a new design of the colour and/or shape or pattern - or their combination - of a product, provided such design has aesthetic qualities and is fit for industrial application. A design patent is valid for 10 years.

The design must also satisfy the novelty requirement, which means that the design must not be identical with or similar to any prior designs published anywhere in the world, or used in China.

SIPO only conducts formality examinations for design patent applications; novelty and conflicts with prior rights are not among the examined elements enumerated on SIPO's Guidelines for Patent Examination.

It is unknown as yet whether Lacoste will apply to cancel Huang's design patent. However, a likely basis for cancellation would be lack of novelty. Cancellation of a design patent on lack of novelty grounds is a two-step process. Firstly, similarity or close proximity needs to be found between the products incorporating the prior design and those covered by the patented design at issue. Only then will the designs themselves be compared and, if the patented design is found to be similar to the prior design, the patent will be cancelled.

Huang's design registration covers a broad selection of advertising goods, namely signs, signboards and the general "advertising devices". Lacoste's prior use of its right-facing crocodile trademark includes similar goods.

The question would then be whether Huang's left-facing crocodile is similar to Lacoste's right-facing crocodile. It is worth noting that the Changsha Intermediate People's Court recently found that a left-facing crocodile (similar to Huang's design) infringed Lacoste's crocodile logo (see Lacoste wins battle at last in crocodile war). In that case, the court held that the left-facing crocodile, when used without the name Cartelo, was the mirror image of Lacoste's crocodile, and was thus indistinguishable from the Lacoste logo and accordingly infringing.

Horace Lam, Lovells, Beijing

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