Chinese design patents provide protection for novel designs of products. According to Article 2 of the Chinese Patent Law, designs means any new design of shape, pattern, combinations thereof, or combinations of color with shape or pattern of a product. Based on such requirements, it is generally believed that “functional elements” of designs are not eligible for protection. However, functions are premise of designs of a product, and may pose limitation to design elements of the products. In this sense, designs and functions of a product are actually inseparable. Based the above facts, there is the question of whether and to what extend a design/element developed (also) for functional purposes should be protected. A case decided recently and listed in the Annual Report on IPR Protection by the Supreme Court of China might shed some light on the question.
The case will be reviewed briefly in the following.
Design Application No. 200930121299.6 titled A Pole Vacuum Contactor filed on April 28, 2009 by Zhang Chunjiang (hereafter “design at issue”) was granted on February 3, 2010. After that Zhang licensed the design at issue to Weike Corporate (hereafter “Weike”) on September 15, 2010. In 2012 Weike Corporate instituted a litigation against Chennuo Corporate (hereafter “Chennuo”) on infringing the design at issue. The perspective view of the design at issue is illustrated in Fig. 1 and that of the allegedly infringing product is illustrated in Fig.
Chennuo made a prior design argument and supplied similar designs published in 2003 as evidence. The first instance court accepted the argument and turned down the request by Weike, holding that Chennuo does not infringe the design at issue.
Weike appealed and the second instance decision revoked that of the first instance court and held that products under the same class all have three columns and a box, in this sense, an ordinary consumer, when determining whether Chennuo’s product is similar or identical to the prior art and/or the design patent at issue, will pay more attention to specific designs of the columns and box. It is decided by the second instance court that Chenuo’s product does not belong to prior designs; instead, design elements other than the corrugations on the columns, among others, between the design patent at issue and Chenuo’s product are quite similar. Therefore, the design at issue is infringed.
At the same time, Patent Reexamination Board, which is the sole authority responsible for validity issues of patent rights, upheld the validity of the design at issue, deciding that the design is neither similar nor identical to prior designs supplied by the defendant.
The Supreme Court reopened the case per request by Chennuo and made a decision on December 20th, 2014. In the decision, the Supreme Court affirms that corrugations on the columns of the contactor always exist on such kind of products, due to the functional consideration. However, specific shape, pitch of the corrugations and the distribution of the corrugations are not solely decided by the function of the product. Therefore, such design element shall be considered when determining whether infringement exists. For the present case, the specific shape, pitch of the corrugations and the distribution of the corrugations on the columns suffice for an ordinary consume to distinguish the design at issue from Chennuo’s product. Based on the above, Chennuo’s product is neither identical nor similar to the design at issue, and does not infringe its rights.
In summary, in deciding infringement/validity disputes, elements producing different overall visual effect on ordinary consumers are considered more important. In the case of functional elements, the “only possible design” principle is generally adopted. If a functional element is the only or one or several limited possible designs for realizing a certain function, it generally will not be considered. Otherwise, such functional element should be considered in determining whether the designs are identical or similar to each other.
