Feng Zheng October 3 2022 Creating consistency across civil and invalidity action involving same design patent Wanhuida Intellectual Property | Intellectual Property - China Feng Zheng Intellectual Property IntroductionFactsCNIPAGuangzhou IP CourtGuangdong High CourtCommentIntroductionIn China, design patent infringement litigation often proceeds in parallel with the counteraction – an invalidity proceeding instituted by the defendant challenging the validity of the design patent at issue. Since civil litigation and invalidity proceedings fall within the remit of the judiciary and the China National Intellectual Property Administration (CNIPA), respectively, this could give rise to the application of inconsistent criteria in the parallel yet closely intertwined proceedings. Where a design patent's validity is maintained for incorporating certain features that differentiate it from the prior design and the accused infringing product also has certain distinguishing features from the design patent, can infringement still be established? This article describes a live example of this situation.FactsKidsland is a leading toy brand operator in China. It was sued by a Chinese individual Huang Yongjun (Huang) for design patent infringement on the ground that one of its nutcracker toys featuring a drumming soldier standing on a podium (the accused product) (Figure 1) infringed his design patent (Figure 2).Figure 1: the accused productFigure 2: Huang's design patentHuang filed a patent infringement lawsuit before the Guangzhou IP Court against Kidsland. As a counteraction, Kidsland filed an invalidation action against Huang's design patent before the CNIPA. There are quite a few prior nutcracker toy designs featuring a drumming soldier standing on a podium – for example, see Figure 3.Figure 3: a prior designCNIPAThe CNIPA sustained the validity of Huang's design patent. The panel held that, despite some common features the design shared with prior designs, it incorporated features that distinguished it from prior designs, including:the shape of the soldier's hat;the pattern of the soldier's uniform; andthe shape of the drum and the podium.This made the overall visual effect of the design obviously different from prior designs.Guangzhou IP CourtThe Guangzhou IP Court, without analysing the rationale behind the CNIPA's invalidity decision, found that the accused product and the design were similar and confirmed Kidsland's infringement liability. Kidsland appealed to the Guangdong High Court.Guangdong High CourtThe Guangdong High Court analysed the CNIPA's invalidity decision. The Court found that the common features shared between the accused product and the design were features disclosed by prior designs, while the difference between the accused product and the design were the features that distinguished the design from prior designs. The lower court had erred in finding the accused product and the design similar based on the shared common features disclosed by the prior design, and it had thus erroneously broadened the design's protection scope. The Court thus revoked the first-instance decision.CommentIt is paramount that courts and the CNIPA employ consistent criteria in assessing similarity of designs across infringement and invalidation proceedings. Another issue merits attention is whether the validity of the design patent at issue was only maintained because the CNIPA had set a low bar as to the patentability of design patents. If the agency recalibrated its patentability test of design patents on whether the design achieved new aesthetic visual effect, Huang's design would have been invalidated in the invalidity proceedings in the first place and this would have saved the defendant the trouble and cost of filing an appeal.For further information on this topic please contact Feng (Janet) Zheng at Wanhuida Intellectual Property by telephone (+86 10 6892 1000) or email ([email protected]). The Wanhuida Intellectual Property website can be accessed at www.wanhuida.com.