On January 6, 2020, the attorney of the Japanese plaintiff, BRIDGESTONE CORPORATION (hereinafter referred to as “Bridgestone”) came to the Shanghai Intellectual Property Court (hereinafter referred to as the “Shanghai IP Court”) and gave presiding judge, Mr. Jiangang Shang, a banner and letter of thanks to express heartfelt gratitude to the court for its fair trial.
In the above case, our attorney was the legal representative of the plaintiff Bridgestone. After the judgment was made and enforced, on January 6, 2020, entrusted by the client，our attorney went to Shanghai IP Court to give presiding judge the banner and letter of thanks. The Shanghai IP Court reported this case on its WeChat official account.
According to the letter of thanks, in the design infringement case between the plaintiff Bridgestone and the defendants Huasheng Corporation and Hongsheng Corporation, the Shanghai IP Court, based on a thorough understanding of the legal provisions and legislative purposes and a correct analysis of the facts of the case, made fair judgement on whether the related acts constituted infringement. Also the court adopted scientific calculation methods to determine the amount of damages, and reasonably allocated the burden of proof to protect the legitimate rights and interests of the right owner. The judgment of the case reflects the determination and effectiveness of China’s judicial protection of intellectual property rights.
The plaintiff is a well-known tire enterprise, and is the patentee of the design patent (hereinafter referred to as “the patent-at-issue”) named "Automobile Tire" with the patent number ZL200830004694.1, which was filed on February 14, 2008, granted on April 29, 2009, and expired on February 14, 2018.
In 2015, the plaintiff found that the two defendants manufactured and sold products similar to their patented tire product Model IceMax RW501 (hereinafter referred to as “infringing product”) without the plaintiff's permission.
Among them, in 2016, the label of the alleged infringing product purchased by the plaintiff with notary was printed with the name of defendant, Hongsheng Corporation as the manufacturer and engraved with the defendant’s DOT code, trademark and other information. In addition, the two defendants published publicity materials of the alleged infringing products on the company's homepage and attended the exhibition to advertise the alleged infringing products and implemented offering for sale. The plaintiff believed that the two defendants' joint manufacturing, sales, and offering for sale of the products similar to their design patents without their permission constituted an infringement of their patent rights, so they filed a lawsuit with the court and requested the court to order the two defendants to compensate the plaintiff for the economic loss of RMB 3,000,000 and the plaintiff's reasonable expenses for investigating and stopping the two defendants' infringements of RMB 300,000.
The defendant
Huasheng Corporation argued that:
The company never actually manufactured or sold the alleged infringing product, and they only carried out propaganda activities for the tire products to be manufactured in the future within the scope authorized by the defendant Hongsheng Corporation.
The defendant
Hongsheng Corporation argued that:
The similarity between the alleged infringing product and the patent-at-issue claimed by the plaintiff was not a new design of the plaintiff but a prior design. The alleged infringing product is an independent new design of Hongsheng Corporation which does not fall into the protection scope of the patent-at-issue. Therefore, they did not infringe the patent right owned by the plaintiff.
The granted design of Bridgestone
The accused infringing design of the defendant
The defendant refused to provide account books, and the court ordered high damage
After hearing this case, the Shanghai IP Court held that the design features of the plaintiff's design patent as a whole determined the unique design style of the granted design, and these design features were basically all possessed in the accused infringing design. Several design features of the accused infringing design that differ from the granted design did not substantially affect the overall visual effect of the product. Although some of the design elements in the plaintiff’s granted design have appeared in the prior design submitted by the defendant Hongsheng Corporation, the design patent does not exclude the novelty obtained by combining related existing designs. In the comparison and determination of infringement, an individual element should not be taken out simply because it appeared in the existing design, unless the combination of elements appeared in the existing design.
In this case, the accused infringing design used a combination of design elements of the granted design, and the defendant failed to prove that the existing design combination adopted by the granted design already existed in the prior design. Therefore, the court held that there was no substantial difference in the overall visual effects between the accused infringing design and the granted patent, and the two constituted similar designs, and thus the accused infringing design fell into the protection scope of the plaintiff's design patent. Based on the evidence in the case, the defendant Huasheng Corporation and the defendant Hongsheng Corporation jointly carried out the acts of manufacturing, offering for sale and sales of the alleged infringing products.
The granted patent involved in the case expired on February 14, 2018. The infringer shall bear civil liability for compensation for infringement during the period of protection of the granted patent according to law. In this case, the actual loss suffered by the right holder due to the infringement was difficult to determine. The two defendants held account books and materials related to the patent infringement, but they refused to provide the account books required by the auditing agency without proper reasons when the court organized a third party to audit the financial books of the alleged infringing product manufactured and sold by the defendants. Therefore, taking the claims of the right holders and the evidence in the case into consideration, the court ordered the two defendants to compensate the plaintiff for economic losses and reasonable expenses totaling RMB 990,000.
Both parties accepted the judgment, ended the lawsuit with the defendant initiatively paying the compensation
Neither of the parties appealed after the first instance, and the two defendants took the initiative to fulfill their obligation to pay compensation.
During the trial, the two parties disputed the infringement comparison and whether the two defendants committed the alleged infringement act. After receiving the judgment, the defendants accepted the judgment and ended the lawsuit by paying the compensation, which on one hand indicated that both parties were satistified with the fair judgment of the case, on the other hand, it also reflected that the parties' awareness of respecting the law and respect ing intellectual property rights is increasing, and the credibility of judicial protection is constantly improving.
In the above case, our attorney was the legal representative of the plaintiff Bridgestone. After the judgment was made and enforced, on January 6, 2020, entrusted by the client，our attorney went to Shanghai IP Court to give presiding judge the banner and letter of thanks. The Shanghai IP Court reported this case on its WeChat official account.
According to the letter of thanks, in the design infringement case between the plaintiff Bridgestone and the defendants Huasheng Corporation and Hongsheng Corporation, the Shanghai IP Court, based on a thorough understanding of the legal provisions and legislative purposes and a correct analysis of the facts of the case, made fair judgement on whether the related acts constituted infringement. Also the court adopted scientific calculation methods to determine the amount of damages, and reasonably allocated the burden of proof to protect the legitimate rights and interests of the right owner. The judgment of the case reflects the determination and effectiveness of China’s judicial protection of intellectual property rights.
The plaintiff is a well-known tire enterprise, and is the patentee of the design patent (hereinafter referred to as “the patent-at-issue”) named "Automobile Tire" with the patent number ZL200830004694.1, which was filed on February 14, 2008, granted on April 29, 2009, and expired on February 14, 2018.
In 2015, the plaintiff found that the two defendants manufactured and sold products similar to their patented tire product Model IceMax RW501 (hereinafter referred to as “infringing product”) without the plaintiff's permission.
Among them, in 2016, the label of the alleged infringing product purchased by the plaintiff with notary was printed with the name of defendant, Hongsheng Corporation as the manufacturer and engraved with the defendant’s DOT code, trademark and other information. In addition, the two defendants published publicity materials of the alleged infringing products on the company's homepage and attended the exhibition to advertise the alleged infringing products and implemented offering for sale. The plaintiff believed that the two defendants' joint manufacturing, sales, and offering for sale of the products similar to their design patents without their permission constituted an infringement of their patent rights, so they filed a lawsuit with the court and requested the court to order the two defendants to compensate the plaintiff for the economic loss of RMB 3,000,000 and the plaintiff's reasonable expenses for investigating and stopping the two defendants' infringements of RMB 300,000.
The defendant
Huasheng Corporation argued that:
The company never actually manufactured or sold the alleged infringing product, and they only carried out propaganda activities for the tire products to be manufactured in the future within the scope authorized by the defendant Hongsheng Corporation.
The defendant
Hongsheng Corporation argued that:
The similarity between the alleged infringing product and the patent-at-issue claimed by the plaintiff was not a new design of the plaintiff but a prior design. The alleged infringing product is an independent new design of Hongsheng Corporation which does not fall into the protection scope of the patent-at-issue. Therefore, they did not infringe the patent right owned by the plaintiff.
The granted design of Bridgestone
The accused infringing design of the defendant
The defendant refused to provide account books, and the court ordered high damage
After hearing this case, the Shanghai IP Court held that the design features of the plaintiff's design patent as a whole determined the unique design style of the granted design, and these design features were basically all possessed in the accused infringing design. Several design features of the accused infringing design that differ from the granted design did not substantially affect the overall visual effect of the product. Although some of the design elements in the plaintiff’s granted design have appeared in the prior design submitted by the defendant Hongsheng Corporation, the design patent does not exclude the novelty obtained by combining related existing designs. In the comparison and determination of infringement, an individual element should not be taken out simply because it appeared in the existing design, unless the combination of elements appeared in the existing design.
In this case, the accused infringing design used a combination of design elements of the granted design, and the defendant failed to prove that the existing design combination adopted by the granted design already existed in the prior design. Therefore, the court held that there was no substantial difference in the overall visual effects between the accused infringing design and the granted patent, and the two constituted similar designs, and thus the accused infringing design fell into the protection scope of the plaintiff's design patent. Based on the evidence in the case, the defendant Huasheng Corporation and the defendant Hongsheng Corporation jointly carried out the acts of manufacturing, offering for sale and sales of the alleged infringing products.
The granted patent involved in the case expired on February 14, 2018. The infringer shall bear civil liability for compensation for infringement during the period of protection of the granted patent according to law. In this case, the actual loss suffered by the right holder due to the infringement was difficult to determine. The two defendants held account books and materials related to the patent infringement, but they refused to provide the account books required by the auditing agency without proper reasons when the court organized a third party to audit the financial books of the alleged infringing product manufactured and sold by the defendants. Therefore, taking the claims of the right holders and the evidence in the case into consideration, the court ordered the two defendants to compensate the plaintiff for economic losses and reasonable expenses totaling RMB 990,000.
Both parties accepted the judgment, ended the lawsuit with the defendant initiatively paying the compensation
Neither of the parties appealed after the first instance, and the two defendants took the initiative to fulfill their obligation to pay compensation.
During the trial, the two parties disputed the infringement comparison and whether the two defendants committed the alleged infringement act. After receiving the judgment, the defendants accepted the judgment and ended the lawsuit by paying the compensation, which on one hand indicated that both parties were satistified with the fair judgment of the case, on the other hand, it also reflected that the parties' awareness of respecting the law and respect ing intellectual property rights is increasing, and the credibility of judicial protection is constantly improving.
Time: January 14, 2020
Source: Yingying Chen and Jiangang Shang (Shanghai Intellectual Property Court)
Source: Yingying Chen and Jiangang Shang (Shanghai Intellectual Property Court)