AMAD Menneks Holding GmbH & Co. KG (AMAD) v. Shanghai Maichi Electric Co., Ltd.; Mannai Kesi (Shanghai) Electric Co., Ltd.; Zhejiang Ke Rui Pu Electric Co., Ltd.

The design patent in suit was the Design Patent No.ZL200530125566.9 – “socket” that was filed with the SIPO on 10 October 2005 and registered on 1 November 2006. On 18 May 2012, the registrant was changed to “AMAD”.

AMAD claimed that it had found at the well-attended China Import and Export Fair (Canton Fair) held in Guangzhou, that three defendants, the manufacturer - Zhengjiang Ke Rui Pu, the distributor – Shanghai Maichi, and the retailer – Mannai Kesi - were exhibiting and selling “MANLAKIS” branded sockets which infringed its design patent right. AMAD purchased suspect products respectively from the retailer and the manufacturer and also got the purchase notarized for evidence preservation purposes. AMAD then filed a patent infringement write in the Shanghai No.1 Intermediate People’s Court against the three defendants’, requesting various orders, and a damages claim of RMB500,000.

The Shanghai No.1 Intermediate People’s Court initially found that the product MXCOB- 134003 (purchased from the distributor) was substantially similar to the registered design owned by AMAD based on overall visual effect – they constituted the same design, since the specific differences between them were immaterial. The defendants’ claim that the alleged infringing products were manufactured according to other design patents and were covered by a utility model patent, was not supported by the Intermediate Court, since the filing of the design and utility model patent were both later than the filing of the plaintiff’s design patent in suit. The court also looked at a second purchased product (MXCOB- 134001) which had also been purchased from the distributor and concluded that it did not infringe the registered design patent owned by AMAD, since the colorings were materially different, so that substantial/material differences existed in relation to the overall visual effects of the product and the registered design patent. The plaintiff’s claim that colors should not be looked at by the court when judging whether a design patent has been infringed or not, as the colors in this case were not a design feature, was rejected by the court since the plaintiff clearly referred to colors in the brief description included in the registered design patent that it was seeking to enforce.

The Intermediate Court ordered the manufacturer, distributor and retailer to immediately stop dealing in the products that infringed AMAD’s design patent, and ordered them to jointly pay compensation of RMB50,000 to AMD.

Dissatisfied with the Intermediate Court’s decision, the plaintiffs and defendants appealed the decision to the Shanghai Municipal Higher People’s Court. The Higher Court, in the trial of second-instance, concluded on 25 July 2013 that since color was specially referred to in the brief description of the design patent in suit, the color in the pictures of the patent further limited the protection scope for the design patent. According to the national standards on industrial sockets provided by AMAD, the rated working voltage of the product was related to the color of the product –so that relevant consumers (entities knowing about the technical parameters of industrial socket products instead of general consumers) would not be confused by socket products. The Higher Court concluded that the Intermediate Court’s determination on the non-infringement by product MXCOB- 134001 and the infringement by product MXCOB-134003 was proper and thus all appeals were dismissed.