Design patents protected by patent law have similarities in their constituent elements with other intellectual property objects such as trademark rights and copyrights, leading to the possibility of conflict of rights. This article briefly analyzes the connection between these similar rights objects and the method of judging conflicts through cases, hoping to help designers enhance their legal awareness to avoid infringement and protect their legitimate rights and interests.

In my country, many of the design points of authorized design patents lie in the appearance of packaging products such as patterns and colors, such as bottle stickers, can stickers, packaging bags and boxes, etc. These designs have a certain content relevance with other intellectual property objects, such as works as copyright objects, trademarks as trademark rights objects, etc. Objects with the same or similar design content may obtain multiple intellectual property rights granted by law due to different approval and authorization procedures. If these rights belong to different subjects, so-called rights conflicts will arise.

In order to resolve the conflict between design patent rights and other prior rights, relevant laws and regulations have made special provisions. Article 23, Paragraph 3 of the Patent Law stipulates: The design for which patent rights are granted shall not conflict with the legal rights previously obtained by others. The judicial interpretation of the Supreme People's Court further explains "legitimate rights": including trademark rights, copyrights, corporate name rights, portrait rights, and the right to use unique packaging or decoration of well-known products, etc. The "Patent Examination Guidelines (2010)" also provide detailed provisions for the review of patent invalidation requests involving conflict of rights: when the prior right holder or interested party believes that a design patent is suspected of infringing upon its prior rights, it may file a request with the state The Patent Reexamination Committee of the Intellectual Property Office filed a request for patent invalidation. During the invalidation procedure, the petitioner shall provide evidence for its claim, including proving that it is the obligee or interested party of the prior right and that the prior right is valid.

From a practical point of view, most design patent invalidation cases filed on the grounds of conflict of rights involve registered trademarks and copyrighted works. A very small number of people have used other people's registered trademarks and works in patent applications without permission. After authorization, the implementation of the patent rights will damage the legitimate rights and interests of the prior rights holders. Therefore, this article focuses on analyzing the conflict between design patent rights, trademark rights, and copyrights.

1. Design patent rights and prior trademark rights

1. Causes and manifestations of conflicts

Trademarks are used to distinguish goods provided by different individuals and companies. or service logo, including text, graphics, letters, colors and other elements and combinations thereof. If it is similar to the design in terms of constituent elements, especially patterns and colors, when part or all of the design is significantly identifiable and meets the registration requirements for a trademark, it can be approved for registration; conversely, when the trademark is integrated into the packaging design of the product When it comes to the market, it is possible to obtain patent rights. This results in a certain degree of overlap between design patent rights and trademark rights in terms of protection objects, which can easily lead to conflicts of rights.

2. Conflict judgment method

In the invalidation procedure, it is first necessary to examine the subject qualifications of the petitioner and the validity of the prior rights. The petitioner bears the burden of proof and needs to prove that he is the right holder or interested party of the prior trademark, and that the trademark right is still legal and valid and within the protection period. Generally, the requester can submit trademark registration certificate, renewal certificate, exclusive license agreement, etc. as evidence.

Secondly, for the substantive judgment of conflicts, we mainly draw on the methods in trademark administrative procedures, and usually adopt the following three judgment steps:

First, the product with the design patent and the prior Whether the type of goods to which the trademark is applied is the same or similar;

Secondly, whether the corresponding part of the design patent is identical or similar to the prior trademark;

Thirdly, whether it is likely to cause confusion among the relevant public It is believed that the patented product and the product to which the trademark is applied originate from the same market entity, or that there is a specific connection between them.

3. Typical case

"Habersburg" wine packaging box case

The French Hennessy Company is a world-famous wine manufacturer.

The company registered the famous "Handheld Tomahawk" graphic trademark in China with registration number No. 890643, and the registration was valid from October 28, 2006 to October 27, 2016.

The design patent for the "Habersburg" wine packaging box with patent number 201030139650.7 involves a wine packaging box. The French company Hennessy filed a request for invalidation of this patent with the Patent Reexamination Board in 2012 on the grounds that the patent in question used a design similar to the above-mentioned registered trademark, which conflicted with the trademark rights previously obtained by the petitioner. After trial, the Patent Reexamination Board made an invalidation decision, deeming the patent involved to be in conflict with the above-mentioned prior trademark rights and declaring the patent rights invalid.

First of all, the approved registration date of registered trademark No. 890643 is earlier than the application date of the patent involved, and is still within the validity period. The two products are used in the same category. Secondly, the overall composition of the "hand-held tomahawk" logo in the patent and the prior trademark are composed of basically the same parts such as the bottom arc line, arms, and tomahawks. They are mirror images of each other and are similar designs. The patent involved uses a logo that is very similar to the prior trademark on the same type of product, which can easily mislead the public into misidentifying the source of the product and damage the legal rights of the prior right holder

Lighter How to use the editor of Packaging Box Case 6

American Zhibao Company is a world-renowned lighter manufacturer. It has also registered its famous "ZIPPO" series of trademarks in China, including the "ZIPPO" word trademark and "ZIPPO" and picture” trademark. Among them, in the "ZIPPO and Picture" trademark, the dots on the letter "i" of the "ZIPPO" logo transform into a red flame pattern, and the registration is valid from March 14, 2003 to March 13, 2013.

The lighter packaging box design patent with patent number 200630159047.9 relates to a packaging box. Zhibao Company filed a lawsuit with the court, arguing that the patent used product patterns similar to its registered trademark, which would cause a conflict with its trademark exclusive rights once implemented, and requested a ruling to order the patentee not to implement the patent.

After the first and second instances, the court made a final judgment and determined that Zhibao Company’s “ZIPPO and Picture” trademark belonged to prior legal rights. Once the patent involved was implemented, it would easily lead the relevant public to mistakenly believe that the product came from Zhibao Company may be related to it, thus misleading the relevant public, and the patentee was ordered not to exploit the patent involved.

Zhibao Company also submitted a request for invalidation to the Patent Reexamination Board for the same reason. After review, the Patent Reexamination Board believed that the above patent conflicted with Bao Company's prior trademark rights and declared the patent invalid.

2. Design patent rights and prior copyrights

1. Causes and manifestations of conflicts

The objects protected by copyright law are the fields of literature, art and science Works with "originality", such as fine arts, photography, etc. The shape, pattern design elements and “beautiful” nature of the exterior design make it possible for the content to overlap with these works. For example, when a work of art or photography is used as a pattern element in the appearance of a product, it may be protected by a patent; or when the product's unique appearance design has a high aesthetic value and becomes a practical work of art, it may also be protected by a copyright. protection. Due to the overlapping of protected objects, conflicts of rights may arise.

2. Conflict determination method

In the invalidation procedure, to determine whether the design patent right conflicts with the prior copyright, we mainly draw on the copyright infringement determination method in judicial trials. Usually Take the following three steps:

First, the legality of the subject. Authors and other citizens, legal persons and other organizations that can enjoy copyright according to legal provisions are the copyright subjects. Generally, the author is the copyright owner. In the absence of proof to the contrary, the citizen, legal person or other organization that signs the work is deemed to be the author, but is required to provide evidence such as the original, manuscript, book, copyright registration certificate, etc. of the work for which the copyright is claimed.

Second, the legitimacy of the object, that is, whether it has "originality." According to review practice, most of the prior works are fine arts, photography, etc., which generally meet the requirements.

Third, conflicting entity judgments. Using the “contact plus substantial similarity” standard, we first look at whether the patentee has come into contact with or may have come into contact with the work. Here the petitioner bears the burden of proof, which can be proved by submitting direct evidence that the patentee has had access to the work or indirect evidence such as the work has been made public or published. Then look at whether the corresponding parts of the design are identical or substantially similar to the prior work.

3. Typical cases

“Phoenix Nirvana” porcelain bottle case

The design patent with patent number 201130394300.X involves a phoenix-shaped porcelain bottle. In response to this patent, Jingdezhen Falan Porcelain Industrial Co., Ltd. filed a request for invalidation with the Patent Reexamination Board in 2013 on the grounds that it conflicted with its previously acquired copyright. After trial, the Patent Reexamination Board made an invalidation decision, deeming the patent involved to be in conflict with the petitioner’s prior copyright and declaring the patent invalid.

The decision held that: the copyright registration certificate submitted by the National Copyright Office of the petitioner can prove that it enjoys the copyright to the artistic work No. FZ02108; there is other evidence that can prove that the work was in a state of public knowledge before August 11, 2010 , it is presumed that the patentee has the possibility of accessing the work.

Compared with the prior works, the patent involved is highly consistent in all aspects such as the expression of the phoenix shape and the use of design elements. Although there are changes in the shape of the device, it does not deviate from the prior works. The original expression of the phoenix shape, the design shown is substantially similar to the previous works. The implementation of the patent involved in the case will damage the relevant legal rights of the prior copyright owner and conflict with the prior copyright.

The "Talking Tom Cat" case

Outfit7 is a well-known mobile game developer whose "Talking Tom Cat" has become popular around the world. With this excellent game and peripheral products, Outfit7 has made a lot of money around the world. The popularity of the game has also attracted many manufacturers to imitate, many of which have applied for design patents for "copycat" products.

The patent number is 201230022409.5. The design patent involves a toy product. In response to this patent, Outfit7 filed a request for invalidation with the Patent Reexamination Board in 2014 on the grounds that the patent involved was similar to its artistic work and conflicted with the petitioner's previously acquired copyright. After trial, the Patent Reexamination Board made an invalidation decision, deeming the patent involved to be in conflict with prior copyright and declaring the patent invalid.

The decision held that: the copyright registration certificate submitted by the National Copyright Office of the petitioner can prove the copyright to work No. 2014-F-00141282; there is other evidence to prove that the work was created at least on February 8, 2012 Completed and in a state known to the public, it is presumed that the patentee has the possibility of accessing the work.

The facial features and body proportions of cartoon cats in previous works make the overall image significantly different from other cartoon cats. The patent in question contains all the unique identifying features of the prior work. Although the details are different, an ordinary observer can still recognize the two as the same cartoon cat image at a glance. Therefore, the patent in question and the prior work are substantially similar. The patent involved is the appearance design of a three-dimensional product, and the prior work is a graphic art work. The patent involved is a copy of the prior work from two-dimensional to three-dimensional. Its implementation will damage the prior copyright of the petitioner and conflict with the prior copyright. .

The conflict between design patent rights, trademark rights, copyrights, etc. fundamentally stems from the contradiction between "copycat" and "innovation." By relying on cleverness and plagiarism, companies will never become successful, and the country will not be very competitive. With the integration with the world economy, domestic intellectual property awareness and intellectual property protection are gradually strengthening, but there is still a big gap between the world's advanced levels. Abandoning "copycats" and promoting "innovation" is a long way to go.

Avoiding infringement and safeguarding rights in a timely manner are also lessons that we need to improve urgently.