JIANLONG V. GROHE (2015)
MTZ No. 23, SPC
Cause of action: Dispute over
infringement of a patented Design
Collegial panel
members: Zhou Xiang | Wu Rong | Song Shuhua
Keywords: assessment of
similarity, design features, design patent
Relevant legal
provisions: Patent Law of the People’s Republic of China, article
59(2)
Basic facts: Grohe Ag
(hereinafter “Grohe”) is the patentee of the design patent “handheld shower
head No. A4284410X2”, which patent was legal and valid at the time of the case.
In November 2012, Grohe brought an action against Zhejiang Jianlong Sanitary Ware
Co., Ltd. (hereinafter “Jianlong”), which produces, sells and offers for sale sanitary
products, on the ground that Jianlong had infringed Grohe’s “handheld shower
head” design patent. Grohe asked the court to order that Jianlong immediately
stop the infringement, destroy infringing products held in stock and those
molds used specifically to produce allegedly infringing products, and
compensate Grohe RMB200,000 for its economic loss.
Based on the comparison conducted in the court of first instance, the only
similarity between Jianlong’s allegedly infringing product and Grohe’s design patent
was that they are both the same product type. Viewed in their entirety, both
designs have a shower head and a handle. Spray from the shower head of the
allegedly infringing product is delivered in the same way as that from the
involved patent – that is, holes are distributed in a radial pattern in a region
that is round on both ends and rectangular in the middle, with arc shaped edges.
The differences, however, were found to be as follows.
(a) The edges of the shower head of the allegedly infringing product are inclined
planes, while the front and left view of the patented shower head design shows
that its edges have arc-shaped surfaces.
(b) Spray from the shower head of the allegedly infringing product is separated
from the panel only by a single line, while spray from the shower head of the
patented design is separated from the panel by a band made up of two lines.
(c) The distribution of the holes on the shower head of the allegedly infringing
product is slightly different from that of the patented product.
(d) There is an oblong switch on the handle of the patented design, while
there is no such switch on the allegedly infringing product.
(e) There is an oblique angle where the head and the handle of the
patented product connect, but the angle is so small that it almost appears to
be a straight line, while the connecting angle between the head and the handle
of the allegedly infringing product is wide.
(f) The bottom view of the patented design shows that the handle has a
round bottom, while the bottom of the allegedly infringing product’s handle is
a fan-shaped curved surface. The lower end of the handle of the patented design
is a cylinder, which gradually turns into an ellipsoid at the point of its connection
with the head, while the lower end of the handle of the allegedly infringing
product is a fan shaped cylinder and also presents a fan-shaped cylinder at the
point of its connection with the shower head, with an arc-like protuberance in
the middle of the handle.
(g) There is a decorative arc on the bottom of the allegedly infringing product’s
handle that integrates the bottom of the handle and the back of the product
into a whole, while there is no such element on the bottom of the handle of the
patented design.
(h) The proportion of the length between the head and handle of the patented
design differs from that of the allegedly infringing product, and the
arc-shaped surface at the connection between the head and handle is also
different between the two.
Held: On March 5, 2013,
the Zhejiang Taizhou Intermediate People’s Court rendered a civil judgment and
dismissed Grohe’s claims ((2012) ZTZMCZ No. 573). Not accepting the result,
Grohe appealed to the Zhejiang Higher People’s Court, which delivered its
judgment on September 27, 2013 ((2013) ZZZZ No. 255), in which it:
(a) reversed the judgment of the first instance court;
(b) asked Jianlong to immediately stop producing, offering for sale and
selling products that infringed Grohe’s “handheld shower head” design patent
and to destroy any infringing products in stock;
(c) asked Jianlong to compensate Grohe in the sum of RMB100,000 for its
economic loss, including Grohe’s reasonable expenses incurred in stopping the
infringement; and
(d) rejected Grohe’s other claims. Jianlong was dissatisfied with the decision
and appealed to the Supreme People’s Court. On August 11, 2015, the Supreme
People’s Court delivered its judgment reversing the second-instance judgment
and affirming the findings of the court at first instance.
Reasoning: The Supreme People’s
Court affirmed that the design patent system has been developed to protect aesthetic
and innovative industrial designs; as such, a patented design should feature
identifiable innovative characteristics distinctive from those of prior art and
only those designs that feature such innovative characteristics
shall be eligible for protection. These features should be such that they make
it easier for ordinary consumers to differentiate patented designs from prior
art. They therefore have significant impact on the product’s overall visual effect,
from the perspective of the design. If an allegedly infringing product does not
contain all of the design features that differentiate a patented design from
prior art, it will generally be presumed that the allegedly infringing product
does not resemble the patented design.
The patentee may summarize such design features in a brief description or
it may explain the design features in another pertinent way when seeking verification
of its patent right or pursuing infringement procedures. Whether the patentee
bears the burden of proving the infringement or it is judged on the basis of
examining relevant documents submitted for the granting and verification of
patent rights, the courts’ findings regarding these specific design features
can be overturned by counterevidence if any third party raises an objection.
Based on cross-examination of the parties, the Supreme People’s Court fully
interrogated the evidence and determined the design features of the patented
design according to law. It found that the patent in this case has three design
features: first, the shape of the shower head and plane transitions; secondly,
the shape of the shower head spray; and thirdly, the proportion between the
width of the shower head and the handle diameter. Although the allegedly infringing
product adopts a runway shaped spray highly similar to that of the patented
design involved in this case, the two have large differences in style in terms
of the shape of the shower head and plane transition. The second instance judgment
considered only the design features of the runway-shaped spray, while
neglecting others, as well as other distinctive design features that are easily
noticeable in normal use of the product. In reaching its conclusion that the
two are similar designs based on that assessment, the second-instance court’s decision
was consequently wrong.