For patent cases | where there is no substantial difference in the overall visual effect through overall observation and comprehensive judgment, the two forms an approximation and fall into the scope of patent protection involved

Dispute over infringement of design patent rights between Zhongshan Shangyang Technology Co., Ltd. and Galima (Beijing) Trading Co., LTD

【 Key points of judgment 】

1. The design point of the patent in this case lies in the shape of the product. According to the evaluation report of the patents involved, the overall shape of such products is usually a long strip, but a variety of design changes can be made on the basis of the strip. In this case, the overall shape of the accused product is the same as that of the patented product involved in the case, and the design is similar to a cone with a narrow top and a broad bottom, and the height of the vertebral body, the combination of the brush handle and the connecting column, and the overall proportion are basically the same. At the same time, the irregular multi-section types, sizes and connection relationships used by the two products on the surface are similar, even if there are some differences in the design of details, it does not affect the overall similar visual effect. Therefore, through overall observation and comprehensive judgment, there is no substantial difference in the overall visual effect between the accused infringing design and the involved patent design1, and the two constitute an approximation, and the accused infringing design falls within the scope of protection of the involved patent. The court of first instance wrongly determined that the irregular multi-section design was the usual design of makeup brush products and that the accused infringing product was not similar to the patent involved, and the court of second instance corrected it.

2. Galima claims that the product accused of infringement adopts the design of patent No. ZL202030343224.9, and its behavior does not constitute infringement. In this regard, the Court of second instance held that Article 23 of the Interpretation of the Supreme People's Court on Several Issues concerning the Application of Law in the Trial of Patent Infringement Disputes (II) provides that: "Where the alleged infringing technical scheme or design falls within the scope of protection of the prior patent right involved, and where the alleged infringer argues that his technical scheme or design is not infringing the patent right involved on the ground that the patent right has been granted, the people's court shall not support it." In this case, the patent application date claimed by Galima is June 30, 2020, that is, after the announcement date of the patent involved, and according to the above-mentioned legal provisions, the non-infringement defense claimed by Galima on the ground that the patent right has been granted for the latter design cannot be established.

【 Case source 】

Guangzhou Intellectual Property Court (2020) Guangdong 73 Civil Judgment No. 2698

Guangdong Higher People's Court (2021) Yue Min End No. 4487 Civil judgment

【Party】

Appellant (original plaintiff) : Zhongshan Shangyang Technology Co., LTD

Appellee (original defendant) : Galima (Beijing) Trading Co., LTD

【Brief of the case】

On May 14, 2018, Shangyang Company applied to the State Intellectual Property Office for the design patent named "Makeup brush handle (polygon diamond)", which was authorized on October 12, 2018, patent number ZL201830219096.X. The main content of the "Brief Description" of the design patent is: the use of the design product is used for the handle of the makeup brush, the design point is the shape of the product, the picture that can best indicate the design point is design 1 stereogram, and the basic design is designated as design 1. Shangyang Company claims to protect the patented design1 in this case.

Shangyang purchased the infringing products and compared the accused infringing products with the patents involved in the case. Shangyang believed that both the accused infringing products and the patents involved in the case were makeup brushes of the same kind, both of which were diamond-shaped multilateral bodies with irregular lines and rhombohedral surfaces, and the handles of the diamond-shaped multilateral brushes were concave and easy to handle, except for the slight differences in the rhombohedral and tail. The overall appearance is almost the same as that of the involved patent, so the accused infringing product has all the components and design points of the involved patent, and the accused infringing product and the involved patent constitute an approximate design, falling within the scope of protection of the involved patent.

【Judgment observation】

The court of first instance held that the case was a dispute over infringement of design patent rights. According to the patent certificate, patent annual fee payment receipt and patent evaluation report issued by the State Intellectual Property Office submitted by Shangyang Company, it can be confirmed that Shangyang Company is the owner of the design patent with the name of "makeup brush handle (Polygon diamond)" and the patent number is ZL201830219096.X. The patent is within the validity period. The right shall be protected by law, and no other person shall exploit the patent for production or business purposes without the permission of the right holder.

Combined with the claims of both parties, this case mainly examines the following issues: first, whether the design of the accused infringing product falls within the scope of protection of the design of the patent involved; 2. Whether Calima Company has carried out the act of manufacturing, selling or promising to sell the accused infringing products; 3. What civil liability shall Galima bear if infringement is constituted?

The question of whether the design of the accused infringing product falls within the scope of protection of the patent design involved. The Court of first instance held that paragraph 2 of Article 59 of the Patent Law of the People's Republic of China (amended in 2008, the same below) provides that: "The scope of protection of a design patent right shall be governed by the design of the product expressed in the picture or photograph, and a brief description may be used to interpret the design of the product expressed in the picture or photograph." Article 8 of the Interpretation of the Supreme People's Court on Several Issues concerning the Application of Law in the Trial of Patent Infringement Disputes: "Where a design identical to or similar to the authorized design is used on a product of the same or similar type as the product patented for design, the people's court shall determine that the accused infringing design falls within the scope of protection of the patent right for design provided for in paragraph 2 of Article 59 of the Patent Law." Article 11 of the Law provides: "When the people's court determines whether the design is identical or similar, it shall make a comprehensive judgment on the overall visual effect of the design based on the design characteristics of the authorized design and the accused infringing design." Where there is no difference in overall visual effect between the accused infringing design and the authorized design, it shall be deemed to be the same; Where there is no substantial difference in the overall visual effect, approximation shall be deemed."

Both the accused infringing products and the patents involved in this case are makeup brush handles, which belong to similar products and can be compared with the same or similar design. The patent design 1 involved in the case is compared with the accused infringing design. Both of them are brush handles shaped like a pen rod. The brush handle uses an irregular and uneven multi-section design, and there is a connection column design at the joint of the brush handle and the brush head. The main differences are: 1. From the main view, the concave Angle from the top to the third on the left side of the patent design involved is smaller than that of the accused infringing product. There are four convex surfaces on the right side of the patent design involved, and three convex surfaces on the right side of the accused infringing product. The fourth convex surface on the right side of the patent design is designed on the connecting column, and the third convex surface of the accused infringing product is still far away from the connecting column; 2. Observed from the left view, the upper edge of the patent design involved curves to the left, while the upper edge of the accused infringing product curves to the right. There are three convex surfaces on the left side of the patent design involved, and only one convex surface on the left side of the accused infringing product near the connection column; 3. From the uplook, the design of the patent involved appears as a circle, and the accused infringing product appears as a "+" type; 4. According to the stereogram, the overall section of the patent design involved in the case is triangular, with straight and sharp edges and a large and dense number of sections. The section plane of the accused infringing product in this case is irregular polygon, the edge line is wavy curve, and the section plane is large but the number is small; 5. The connection column designed by the patent involved is a cylinder design, and the connection column of the accused infringing product is a cylinder with horizontal and vertical grooves. The Court of first instance held that, first of all, according to the Design Patent Patent Evaluation Report of the patent involved and the patent patent evaluation report submitted by Galima Company, the use of irregular multi-section design on the handle of the makeup brush is the usual design of this kind of product, therefore, the irregular multi-section design on the handle of the makeup brush should not be used as the main design feature of the makeup brush handle that is different from similar products. As a general consumer of this type of product in the normal use of this type of product, other elements in the irregular section modeling will become the prerequisite characteristics to distinguish whether the two are the same or similar. Through overall observation and comprehensive judgment, the court of first instance held that the above differences in the accused infringing design were sufficient to cause substantial differences in the overall visual effect, especially the design of irregular section and cutting Angle, which were easily observed in the normal use of the product, and their differences had a significant impact on the overall visual effect of the two. As a result, there is a significant difference between the accused infringing design and the involved patent design, so the accused infringing design does not fall into the scope of protection of the design patent of the involved patent. Secondly, Galima claims that ZL202030343224.9 design patent is used for the accused infringing product, and the accused infringing product is compared with the patent. Through the overall observation, the irregular section and cutting Angle on the brush bars of both are designed with corrugated curves, which are observed from the main view and the left and right view. The two are identical in the number and Angle of concave and convex surfaces, as well as in the design of the connecting column, which constitutes the same design. The conclusion of the evaluation report issued by the State Intellectual Property Office on the patent has clearly stated that there is a significant difference in design between the design patent and the patent involved in the case, which has a significant impact on the overall visual effect of the design. To sum up, it is enough to determine that the accused infringing product does not fall within the scope of protection of the design patent involved in the case because the accused infringing product does not fall within the scope of protection of the design patent involved in the case, the court of first instance will not discuss the second and third focus issues.

The result of the first instance judgment

In summary, Shangyang company's lawsuit claims lack of basis, the court of first instance rejected. In accordance with Article 59, paragraph 2, of the Patent Law of the People's Republic of China, Articles 8, 9, 10, and 11 of the Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Disputes, and Articles 64 and 142 of the Civil Procedure Law of the People's Republic of China (amended in 2017), According to the Interpretation of the Supreme People's Court on the Civil Procedure Law of the People's Republic of China (amended in 2020), Article 90, paragraph 1, the Court of first instance ruled:

Dismiss all claims of Shangyang Company.

The Court of second instance held that，This case is a dispute over infringement of design patent rights. According to the appellant's appeal request, reasons and the appellee's defense opinion, the focus of the dispute in this case is: 1. Whether Galima Company has carried out the act of manufacturing, selling or promising to sell the accused infringing products; 2. Whether the accused infringing design falls within the scope of protection of the patent involved; 3. If infringement is constituted, how shall Calima bear civil liability?

First, the question of whether Galima Company has carried out the act of manufacturing, selling or promising to sell the accused infringing products

In this case, Shangyang Company notarized and purchased the accused infringing products on the Tmall online store "Tmall Beauty galimard Cosmetics Flagship Store", claiming that Galima Company carried out manufacturing, selling and promising to sell. The Court of second instance held that according to the facts ascertained by the court of first instance, Galima was the operator of the Tmall online store involved in the case, and displaying and selling the accused products by setting product links on the online store constituted a sale or promise of sale, which was also confirmed by Galima at the trial of first instance. Therefore, the court of second instance found in accordance with the law that Galima Company had carried out the act of selling and promising to sell the accused infringing products.

Regarding the issue of whether Galima Company implemented the manufacturing act, the court of second instance held that, first of all, according to the content of notario No. 2265, the Tmall online store business model involved is "brand direct sales", and the details page of the accused product shows that its brand is "GALIMARD" and its name is "Galima multi-functional makeup brush"; Secondly, according to the contents of notary certificate No. 2266, the outer packing boxes, product packaging boxes and product storage bags of the accused products purchased by notarization were printed with brand logos such as "GALIMARD" and "Galima". It can be seen that Galima will be accused of infringing products as its own brand products, and on the packaging box and product storage bag of products marked with "Galima" and other relevant logos, has indicated the identity of its manufacturer, and it has not submitted any evidence about the source of the product. Therefore, Shangyang Company's claim that Galima Company has carried out the act of producing the accused infringing products has a certain factual basis, and the court of second instance also supported it.

2. Whether the accused infringing design falls within the scope of protection of the patent right involved

Both the accused infringing products and the patented products involved in this case are makeup brush handles, which belong to the same kind of products and can be compared with the same or similar appearance design. Comparing the patent design1 claimed by Shangyang Company with the accused infringing design, the similarities between the two are as follows: 1. All of them are brush handles with the overall trend of thick up and thin down, and the overall proportion of handle body is basically the same; 2. Irregular and uneven multi-section design is used on the brush handle, and the section surface is triangular or diamond shape, and the direction and connection relationship of each section surface are basically the same; 3. There is a connection column design at the joint of the brush handle and the brush head. The main difference between the two is that each section connection line of the patent design has no chamfer design, the style is sharper, and the connection column is cylindrical; The accused infringement design has a slight chamfer design for each section connection line, the style is slightly rounded, and the connection column is a cylinder with a groove design. The Court of second instance held that the design point of the patent in this case was the shape of the product. According to the evaluation report of the patents involved, the overall shape of such products is usually a long strip, but a variety of design changes can be made on the basis of the strip. In this case, the overall shape of the accused product is the same as that of the patented product involved in the case, and the design is similar to a cone with a narrow top and a broad bottom, and the height of the vertebral body, the combination of the brush handle and the connecting column, and the overall proportion are basically the same. At the same time, the irregular multi-section types, sizes and connection relationships used by the two products on the surface are similar, even if there are some differences in the design of details, it does not affect the overall similar visual effect. Therefore, through overall observation and comprehensive judgment, there is no substantial difference in the overall visual effect between the accused infringing design and the involved patent design1, and the two constitute an approximation, and the accused infringing design falls within the scope of protection of the involved patent. The court of first instance wrongly determined that the irregular multi-section design was the usual design of makeup brush products and that the accused infringing product was not similar to the patent involved, and the court of second instance corrected it.

Galima Company claims that the product accused of infringement adopts the design of the appearance patent No. ZL202030343224.9, and its behavior does not constitute infringement. In this regard, the Court of second instance held that Article 23 of the Interpretation of the Supreme People's Court on Several Issues concerning the Application of Law in the Trial of Patent Infringement Disputes (II) provides that: "Where the alleged infringing technical scheme or design falls within the scope of protection of the prior patent right involved, and where the alleged infringer argues that his technical scheme or design is not infringing the patent right involved on the ground that the patent right has been granted, the people's court shall not support it." In this case, the patent application date claimed by Galima is June 30, 2020, that is, after the announcement date of the patent involved, and according to the above-mentioned legal provisions, the non-infringement defense claimed by Galima on the ground that the patent right has been granted for the latter design cannot be established.

Third, how should Galima assume civil liability

In this case, as mentioned above, Galima Company, without the permission of the right holder, carried out the act of manufacturing, selling and promising to sell the accused infringing products, and shall bear the civil liability to stop the infringement and compensate for the loss according to law. Shangyang Company's request to order Jialimah Company to stop manufacturing, selling and promising to sell the accused infringing products has factual and legal basis, and the court of second instance supported it. Shangyang also requested an order to order Galima to destroy infringing products that had not yet been sold, but did not provide evidence to prove that Galima had infringing products that had not yet been sold, and the court of second instance did not support its claim.

Article 65 of the Patent Law of the People's Republic of China states: "The amount of compensation for patent infringement shall be determined according to the actual losses suffered by the right holder as a result of the infringement; If the actual loss is difficult to determine, it may be determined according to the benefits the infringer has obtained as a result of the infringement. Where it is difficult to determine the loss of the right holder or the benefit obtained by the infringer, it shall be reasonably determined by reference to the multiple of the license fee of the patent. The amount of compensation shall also include the reasonable expenses paid by the right holder to stop the infringing act. Where it is difficult to determine the loss of the right holder, the benefits gained by the infringer, and the royalty of the patent license, the people's court may, in the light of such factors as the type of patent right, the nature and circumstances of the infringing act, determine the compensation of not less than 10,000 yuan but not more than one million yuan." In this case, Shangyang Company claims that the amount of compensation should be calculated based on the online sales of the accused infringing products. In this regard, the court of second instance held that, first of all, there are multiple products connected to the alleged infringing product chain, and the total sales volume of the alleged infringing product cannot be calculated according to the monthly sales volume and other data displayed by the link; Secondly, the profit margin claimed by Shangyang Company is the gross profit margin of cosmetics contained in the accounting data of the company in 2016, which cannot represent the profit margin of the accused infringing products. Therefore, the basis for Shangyang company to require the sales volume of the sued products to calculate the infringement profit is insufficient, the documented evidence can not prove the loss of Shangyang company due to the infringement, and there is no patent license fee involved for reference, and the legal compensation should be applied in accordance with the law. Taking into account the types of patent rights involved, the nature and circumstances of the accused infringement, and Shangyang's reasonable rights protection expenses for the case, the court of second instance determined at its discretion that Galima Company should compensate Shangyang Company for economic losses and reasonable expenses totaling 100,000 yuan, and the court of second instance would not support Shangyang Company's claim for compensation exceeding this amount.

Verdict of the second instance

In summary, Shangyang Company's appeal request was partially established, and the court of second instance supported it. In accordance with Article 59, paragraph 2, and Article 65 of the Patent Law of the People's Republic of China, Articles 8, 10, and 11 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, and Article 23 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 (II), According to the provisions of Article 177, paragraph 1 (2) of the Civil Procedure Law of the People's Republic of China (Amended in 2021), the judgment is as follows:

Revoking the Guangzhou Intellectual Property Court (2020) Yue 73 Civil Judgment No. 2698;

2. Jialima (Beijing) Trading Co., Ltd. shall immediately cease manufacturing, selling and promising to sell products that violate the design patent right of Zhongshan Shangyang Technology Co., LTD., whose patent number is ZL201830219096.X and whose name is "Makeup brush handle (Polygon diamond)", as of the effective date of this judgment;

3. Jialima (Beijing) Trading Co., Ltd. shall compensate Zhongshan Shangyang Technology Co., Ltd. for economic losses and reasonable expenses totaling 100,000 yuan within 10 days after the effective date of this judgment;

4. Reject other claims of Zhongshan Shangyang Technology Co., LTD.

Statement

1. Some cases have been edited in this report based on research value and reference significance, but this does not mean that this report agrees with the views of the court and its judgment;

2. There may be errors or misunderstandings in the selection and editing of judgments or news information in this report.

More information and services

The official subscription number of "Deep Trusted Intellectual Property Rights" on the code

官方订阅号.jpg

Code on the concern [deep trusted intellectual property service platform] official service number

官方服务号.jpeg

Related Cases

Typical case of national court | Invention patent infringement dispute case of "manufacturing method of vanadium nitride"

"A hemostatic clamp" invention patent infringement dispute Case No. 1: (2020) Zhejiang 02 Zhminchu 261 ★ Case Introduction ★ Plaintiff: Nanwei Medical Technology Co., LTD. (Nanwei Company for short) Defendant: Zhuji Pengtian Medical Equipment Co., LTD. (referred to as Pengtian Company) Nanwei Company is the patent holder of the invention of "a hemostatic clamp" with patent number ZL201410222753.7. Nanwei Company referred to as Pengtian company manufacturing and sales of "disposable hemostatic clamp" product suspected of infringement of its invention patent, to the court to request rights protection.

2022-11-22

Detail

The establishment elements of the legal source defense are discussed in the "Intelligent Story Machine" case by the interpretation of the case |

The defendant Qianghua Products Store believes that the accused infringing products sold by it have legal sources and should not be liable for compensation. The Beijing Intellectual Property Court held that the Qianghua product store submitted the order page screenshot of the 1688 e-commerce platform, the enterprise information of Yamei Electronic factory and the "Letter of Authorization" and other evidence, the recipient of the order Li Yongqiang and Qianghua product store operator Zhong Rihua husband and wife relationship, The delivery address and the business premises of Qianghua product store are all in the Hakka New World, Meixian District, Meizhou City

2022-10-31

Detail

How does patent contribution Rate affect damages in infringement cases? Court ruling: Cooling the air conditioning patent dispute

Recently, the Supreme People's Court made a final judgment on an invention patent infringement dispute involving air conditioning, rejecting the appeals of both appellants, and upholding the Guangzhou Intellectual Property Court's decision that the accused infringing party Guangdong Meibo Refrigeration Equipment Co., LTD. (hereinafter referred to as Guangdong Meibo Company) immediately stop the infringement. And compensate the patentee TCL Air Conditioner (Zhongshan) Co., LTD. (hereinafter referred to as TCL Company) economic losses, a total of 1.68 million yuan of the first instance judgment.

2022-09-02

Detail

Claim 10 million yuan! The case of the whole way company against the Fuaisi company for infringement of invention patent is successful

The Guangzhou Intellectual Property Court has ruled that the plaintiff, Shenzhen Quanwei Intellectual Property Operation Co., LTD. (hereinafter referred to as Quanwei Company), and the defendant, Guangdong Fuaisi Ecological Technology Co., LTD. (hereinafter referred to as Fuaisi Company), be allowed to withdraw the lawsuit. In this case, Quanwei Company appealed to the court to order Fuaisi Company to stop infringing the invention patent, dismantle the tower granulation equipment, and compensate for economic losses of 10 million yuan.

2022-09-02

Detail

Brilliance Auto is suing Dongfeng and Honda in the US over sensor-related patents

(August 31), Auto Brilliance LLC (hereinafter referred to as "Brilliance Automobile") filed a lawsuit in the United States Court for the Eastern District of Texas against Japanese automakers Nissan Motor Co. Ltd. (hereinafter referred to as "Nissan") and Honda Motor Co. (hereinafter referred to as "Honda"). The complaint alleges that Nissan and Honda infringed patents related to sensor calibration and adjustment claimed by Brilliance.

2022-09-02

Detail

Case review | The identification of the act of manufacturing patented products was jointly implemented in the commissioned processing

Appellant Boffite Co., Ltd. filed an appeal to the Court of second instance against the civil judgment of Hangzhou Intermediate People's Court of Zhejiang Province (2019) No. 2239 of Zhejiang 01 Minchu due to the dispute over design patent infringement with appellee Jingcheng Sanhe Co., LTD., Taobao Co., LTD. After accepting the case on May 13, 2020, the court of second instance formed a collegial panel to hear the case in accordance with the law. The case is now closed.

2022-08-26

Detail

Claim $130 million! Ningde Times again sued China New Air patent infringement and unfair competition dispute

One wave after another, the patent attack and defense war between Ningde Era and Zhongchuang New Aviation is still continuing to see, reflecting the intensifying competition of industry technology and talent. Ningde Times received a $5 million settlement from Hive Energy.

2022-08-02

Detail

Huada Wisdom was awarded US $325 million, or the highest patent compensation in the history of Chinese enterprises! Settled a lawsuit with Imina in the US

On July 15, Shenzhen Huada Intelligent Manufacturing Technology Co., LTD. (hereinafter referred to as "Huada Intelligent Manufacturing", MGI), a subsidiary of Shenzhen Huada Group, announced that the company and global gene sequencer giant Illumina reached a settlement of all pending litigation in the United States.

2022-07-16

Detail

A Beijing-based company that makes PTZ cameras has been sued by DJI

Dji found that the defendant Beijing Feimi Technology Co., LTD. (hereinafter referred to as Feimi Company) manufactured a PTZ Camera called "PALM Gimbal Camera" and promised to sell and sell on its official website. The defendant, Nine Days Vertical Technology (Shenzhen) Co., LTD. (hereinafter referred to as Nine Days Vertical Technology Co., LTD.), promised to sell and sell the above-mentioned pT-top camera products manufactured by the defendant Feimi Company on the 1688.com e-commerce platform. The accused infringing product is similar to the plaintiff's design patent and falls within the scope of protection of the plaintiff's design patent claim, which infringes the plaintiff's design patent right and causes great economic losses to the plaintiff.

2022-07-05

Detail

Over $100 million in damages! Minhua furniture infringes Raffel's patent and appearance rights in the United States

In November 2018, Raffel sued Minhua Holdings in the U.S. District Court for the Eastern District of Wisconsin, alleging infringement of seven patents,

2022-06-21

Detail

CASE

For patent cases | where there is no substantial difference in the overall visual effect through overall observation and comprehensive judgment, the two forms an approximation and fall into the scope of patent protection involved