Feng Zheng Sichun Wu August 1 2022 Fighting against bad-faith design patent filings in China Wanhuida Intellectual Property | Intellectual Property - China Feng Zheng, Sichun Wu Intellectual Property IntroductionFoundation brush caseSunflower seed oil caseCommentIntroductionIn China, since design patent applications do not go through substantive examination, a design filing will proceed to grant as long as it satisfies the formalities set by the China National Intellectual Property Administration (CNIPA). While the CNIPA issued the Measures on Regulating Patent Application Behaviour to address "abnormal patent filings" on 11 March 2021, bad faith design applications that were granted patent rights prior to the entry into force of the Measures will fall through the cracks and be left unchecked unless rights holders initiate invalidation actions of their own accord.Rights holders that have not proactively registered a design patent for their products in China could face the dilemma of whether to take legal action against an infringer that has pre-emptively registered similar products. This article sets out two examples of this situation.Foundation brush caseShu Uemura, an international cosmetics brand, designed a foundation brush and launched it on the Chinese market in 2017, without registering its design as a design patent. Known for its unique hexagonal shape – designed with a curve for good grip – and its professional quality brush that enables its user to apply foundation easily from different angles, the product became a hit in the market (Figure 1).Figure 1: Shu Uemura's foundation brushSeeing the success of the foundation brush, a Chinese individual copied Shu Uemura's foundation brush and registered it as his own design patent (the design at issue) before the CNIPA (Figure 2). An invalidation petition was filed against the design at issue.Figure 2: design at issueShu Uemura had been selling the foundation brush for years and, as the products were updated frequently, it was not easy to find published pictures of the first-generation foundation brush that the design at issue imitated. An extensive online search was conducted to collect prior design evidence, but most pictures available online were taken from angles that were neither identical nor similar to the views of the design at issue. Shu Uemura had to make a significant effort during the evidence collection process in order to invalidate the copycat design patent.Fortunately, the CNIPA found the prior design evidence adduced by Shu Uemura admissible and ruled to invalidate the copycat design patent.(1) The CNIPA used the picture of Shu Uemura's foundation brush product as the prior design and held that, from the view of an ordinary customer, the design at issue was substantially identical to the prior design and therefore had to be invalidated.Sunflower seed oil caseOleina has been a famous Ukrainian sunflower seed oil brand for more than 20 years (Figure 3).Figure 3: Oleina's sunflower seed oil A Chinese individual copied the product label of Oleina's sunflower seed oil and registered it as his own design patent (the design at issue) in bad faith. The copycat design was a slavish copy of not only the patterns, but also the tagline and even the registered trademark on the product label (Figure 4). An invalidation petition was filed before the CNIPA.Figure 4: design at issueThe CNIPA held that the design at issue was invalid on the ground that it had no material difference to distinguish it from Oleina's design.(2) The CNIPA found that Oleina's design disclosed the overall shape and pattern arrangement of the design at issue, as well as the design details, such as patterns, text and composition, which were reflected on the front of the label. The subtle differences, such as the shape of the sunflower and the words on either side of the label, were found to be insignificant in terms of their effect on the overall visual impression. As in the Shu Uemura foundation brush case, the petitioner had to go to great lengths to search and collect prior design evidence.CommentRights holders are strongly recommended to file their design patent applications before the CNIPA prior to launching a product or making it available to the public. A proactive filing strategy can ensure that no loopholes are left for infringers to game the system. If a design has been pre-emptively filed by third parties, rights holders are advised to file invalidation actions to annul the bad faith designs as early as possible.For further information on this topic please contact Feng (Janet) Zheng or Sichun Wu at Wanhuida Intellectual Property by telephone (+86 10 6892 1000) or email ([email protected] or [email protected]). The Wanhuida Intellectual Property website can be accessed at www.wanhuida.com.Endnotes(1) Invalidation decision No. 51356.(2) Invalidation decision No. 45213.