In a retrial case before the Supreme People's Court of China, Great Wall Food Ltd. of Lanxi City (requester for retrial, defendant of the first instance) v. Chen Chunbing (plaintiff of the first instance), Beijing MinshengJiale Business Management Ltd. (defendant of the first instance), Supreme Court(2014) Min Shen Zi No. 438, the Supreme Court rejected the retrial request of the defendant, Great Wall Food, and held that where the shape of the accused product is similar to that of the product incorporating the alleged design patent, the presence of patterns on the accused product shall not bar the court to find design patent infringement.

In the retrial request, Great Wall Food alleged that,

  1. The design of the arc concave can body of the alleged design patent is a common design in the art.
  2. The methods and principles for judging design patent infringement differ from those for patents for inventions and utility models. Even if the accused product contains all of the design features of the alleged design patent, if the additional design features on the accused product would cause a different visual effect from the design patent, the accused product doesn't fall within the protection scope of the alleged design patent.The alleged design patent concerns purely the shape of the product without any patterns, and shall not cover products including a combination of "the shape and the patterns".

In this case, the accused product is different from the alleged design patent in shape and additionally contains patterns.It creates a visual effect significantly different from the alleged design patent, and therefore doesn't infringe the alleged design patent.

The Supreme Court found, both the accused packaging can and the product incorporating the alleged design patent are packaging cans for foods and are products of the same category; the differences between the two lie in that, 1) the cross section of the body of theaccused packaging can is substantially in an oval shape with eight symmetrical concaves, while the cross section of the body of the product incorporating the alleged design patent is substantially in an oval shape with four symmetrical concaves; 2) the accused packaging can presents patterns on it, while the product incorporating the alleged design patent has no patterns.

At issue here is whether the design of the accused packaging can is identical with or similar to the alleged design patent, and whether the existence of the patterns on the accused packaging can will influence the finding of a design patent infringement. The Supreme Court held,

The accused packaging can and the product incorporating the alleged design patent both are substantially oval in their cross sections and the symmetrical concaves make the body contours of the two present a wave configuration.Although the accused packaging can presents additionally four concaves which make the overall visual effect of its body contour change slightly, with the level of knowledge and the ability of cognizance of anordinary consumer, said local variation does not constitute an essential difference, and is insufficient to differ the shape of the accused product from that of the product incorporating the alleged design patent. Since the overall shapes of the accused product and the product incorporating the alleged design patent are all determined by the cross sections thereof, while the cover and the handle of the accused product are substantially identical with those of the product incorporating the alleged design patent respectively, the accused packaging can is similar to the alleged design patent as far as their shapes are concerned. It is noted that the SIPO has actually deregulated its strict requirements on later submitted experimental data and/or embodiments for the kind of patent applications to some extent now.

Regarding the influence of the patterns on the body of the accused product, the Supreme Court held,

The drawings of the alleged design patent show only the shape of the product without patterns. This implies that the protection scope of the alleged design patent covers only the shape of the product excluding patterns. Despitethat the accused productcontains patterns on its body, while the alleged design patent contains no patterns, in view of the fact that the protection scope of the alleged design patent covers only the shape of the product, and the shape of the body of the accused product is similar to that of the product incorporating the alleged design patent, the second instance court did not err in adjudicating that the accused product falls within the protection scope of the alleged design patent.

According to Article 2(4) of the Chinese Patent Law (2008), design means any new design of the shape, the pattern, or their combination, or the combination of the color with shape and/or pattern, which creates an aesthetic feeling and is fit for industrial application. Generally, when assessing whether an accused product is similar to the design patent so as to constitute design patent infringement, the standard of"overall observation, and comprehensive judgement"shall be followed. That is, all three elements of a design, i.e. the shape, the pattern and the colors if any shall be considered comprehensively.

In spite of the above standard, the court will consider effectively protecting the innovation or contribution of the designer made to prior designs during a design patent litigation. Some courts have made it clear that, when the design patent claims solely the shape of a product, it excludes others from making a product in the identical or similar shape with or without patterns and/or colors. Especially, when a design patent contains solely the shape of a product, while the accused product contains both the shape and the patterns, the later falls within the protection scope of the design patent.