Written by Li Liu (Ms.)

Industrial designs, trademarks and copyrights are all known intellectual property rights. Sometimes, these three IPs overlap with each other in terms of protection scope, and could potentially conflict with each other. This article illustrates an exemplary case of how a prior trademark destroy the validity of a Chinese design patent.

 

Recently, a Chinese design patent owned by the Renault Automobile Company, the world’s leading automobile company has been declared invalid in its entirety by the Patent Reexamination and Invalidation Board of the China National Intellectual Property Administration (CNIPA). After the invalidation decision was published, it soon caused a nationwide discussion among the intellectual property industry and automobile industry. The main reason is because this design patent was declared invalid based on a ground that was seldom used by other petitioners. Usually, most of the design patents were successfully invalidated based on Article 23.1 (novelty: the design patent shall not be identical or substantially identical with another prior design) or based on Article 23.2 (apparent distinctiveness: the design patent shall have obvious difference over another prior design or the combination of other designs). However, the design patent of this case was invalidated based on Article 23.3 (namely, a design shall not be in conflict with a legal right acquired by others prior to the filing date of the design patent) of the Patent Law.

 

Specifically, this design patent was held invalid because it conflicted with a prior trademark registered by the petitioner, Human Horizons Technology, which is a Chinese company based in Shanghai that produces electric cars under the HiPhi brand. We will briefly introduce this design invalidity case and give you some tips on how to reduce the potential risk of the prior rights such as trademark right and copyrights on your design patent.

 

Part 1 Summary of the Validity Case

The design patent is entitled “automobile” and includes a pattern of “” on the four wheels and the back of its rear container.

Front view and right view of the design patent of Renault

The prior trademark

 

The petitioner filed a request for patent invalidation with the CNIPA in June 2021, claiming that the above design patent of Renault conflicted with the prior trademark registered by the petitioner on Class 12 (including automobiles). In addition, the petitioner also submitted Internet evidence to prove that this trademark has been used in their HiPhi electric automobiles for a long time, hence the related customers can easily associate this trademark with the petitioner’s automobile products. Last but not least, the pattern “” is very similar to the above trademark, especially when the wheels including this pattern rotates at a small angle. Accordingly, the petitioner argued that the design patent including the pattern “” can mislead the customers and make them believe that the automobiles adopting the design patent may come from the petitioner owning the above trademark. Although the patentee also provided a lot of evidence to prove the difference between “” and the trademark, the CNIPA was not persuaded. Finally considering that the petitioner has widely used the trademark on the automobiles for a long time and has gained a certain level of popularity and influence in the automobile industry, the CNIPA decided that the design patent including the similar pattern with the prior trademark could mislead the customers about the original source of the automobiles. Therefore, the design patent is declared invalid in its entirety as it conflicted with a prior registered trademark right of the petitioner.

 

Part 2 Legal Opinion and Tips for Both Patentees and Challengers

Under the current Chinese design prosecution system, the CNIPA will normally grant design patent rights to applicants without performing a substantive examination, which means they will not search whether there are prior art identical or similar to the design applications as filed. However, this does not mean that your granted design patent rights are safe and stable, because those who are infringing your design patent rights can file patent invalidity requests to the CNIPA later to attack the validity of the design patents. If the challenge is successful, you will lose your design patents. We are happy to see that many patent right holders have realized this situation and will hire patent attorneys to search prior art or prior designs before filing their design patents in China. However, the current search may be primarily focused on the prior art or prior designs such as patents, Internet photos and videos. Little attention is paid to the searching of the prior trademark and copyrights registered in China. From this invalidation case, it is important to learn that prior art searching should also cover trademarks or copyrights that have been registered before the filing date.

 

Moreover, at the time of filing the design patent, unless the trademark contributed significantly to the design of product, we would suggest removing the trademarks included in your design. For example, we can use partial design system (e.g., dashed lines) to disclaim the trademark included in the design. Otherwise, although it is just a small part of the design which is identical or similar to other’s prior registered rights, that may be detrimental to the entire design patent.

 

On the other hand, from the challengers’ perspective, when you wish to attack the design patent in China, don’t forget to search for trademarks or copyrights in addition to the prior art or prior design. Although the invalidity ground based on the conflict with the legal rights of others is only allowed to be filed in the name of the legal right holder. The good news is that, the patent invalidity request can be filed in the name of others in China, which is referred to as straw man, hence you can still file the invalidity request in the name of the legal right holder if they agree.