Written by Haoyu Zhou (Elliot) 

 

When a design patent owner sues someone for design infringement at a Chinese court, the defendant will normally argue for “no infringement” by listing the differences between the sued product and the design patent. Sometimes, even if the differences are minor, the defendant may also want to argue that the design features shown in the patent are primarily “functional”, and the functional features shall not be considered to have a big influence on the overall visual effect when the court makes the comparison. 

According to our experience, if an accused infringer wants to use “functional design” as a counter-argument for “no infringement” of the design patent, it is usually required for the accused infringer to show that the feature is designed as such simply because the feature needs to perform an intended “technical function”. Namely, if the feature is designed in any other structures or shapes, the technical function would not work properly. A good example is the wheel of a car, which must be substantially circular based on a general consumer’s knowledge and conception. Therefore, the circular shape of a wheel is normally considered to be a “functional feature”, and a wheel is usually believed to be associated with a relatively small freedom of design. 

Interestingly, if a feature is arguably functional but said function could be realized by other possible configurations or shapes, then the Chinese court will likely hold that such a feature is not a “functional design”. For example, as shown in the shower head below, there is a push-button on the handle of the shower head, which functions to control the water flow. Although the push-button is associated with a controlling function, however, such a function is realized by the valve within the shower head but not by the outer appearance of the push-button. In other words, the push-button can still be freely designed to be circular shape, oval shape, rectangular shape, star shape, or any other possible structure or shape based on a general consumer’s knowledge. Therefore, if an alleged infringer of this shower head design patent argues that the push-button on the shower head is a functional design and should not be deemed as having a major influence on the overall visual effect, such an argument will be hardly accepted by a Chinese court. 

 

Additionally, if a design feature has both functional part and ornamental part, then the infringement assessment will depend on the extent of its ornamental part. According to the Supreme Court’s exemplary case No. 85, the court believed that the larger is the ornamental effect of a feature versus its functional effect, the higher is the impact of the feature on the overall visual effect, and vice versa. 

If you have any questions about this topic or any other topics on the Chinese patent or trademark law and practice, please feel free to contact Mr. Haoyu Zhou (Elliot) at patent@foundin.cn.