Docket number of the case in the first instance: 2099, first instance (初), civil case (民), (2017) Nanjing Intermediate People’s Court (苏01)
[Prefatory Syllabus]
The design features of a design patent are usually reflected in multiple views. When the multi-view design features can’t be fully embodied in the pictures of the alleged infringement products but the installation diagram can supplement the design features not reflected in the pictures of the alleged infringement products, the design features of the alleged infringing products shall be "explained" according to the installation diagram, and the comparison of infringement shall be implemented between the “explained” design features of the alleged infringing product and the design patent claimed by the plaintiff.
[Basic Facts]
Plaintiff: Philips Lighting Co., Ltd. (Hereinafter: Philips)
Defendant: Danyang FMLZIPS Lighting Co Ltd. (Hereinafter: FMLZIPS), Zhang XX
The plaintiff Philips is the patentee of the design patent named "Road Lighting Device" (No. ZL201630218653.7). The application and authorization announcement dates were June 2, 2016 and December 21, 2016 respectively, which still remain valid. The patent announcement pictures consist of multiple views. The shareholders of the defendant FMLZIPS at its establishment are the defendants Zhang XX and his wife He XX. In March 2017, FMLZIPS was investigated and punished by the administrative organ for infringing upon the exclusive right to use the registered trademark of Royal Philips. On June 7, 2017, Zhang and He transferred their shares in FMLZIPS to Zhang's mother, Chao XX, with Zhang still as the actual controller of the company.
The plaintiff Philips obtained the product manuals of FMLZIPS at the Guangzhou International Lighting Exhibition in June 2016 and June 2017, respectively. On the product manual of 2016, there was one LED street lamp picture of BRP711 and BRP712 products each, which were the same as those of ZYL-7010 and ZYL-7009 in the product manual of 2017, respectively. Both the plaintiff and the defendant agree to use the street lamp pictures of BRP711 and BRP712 products as the basis for infringement comparison.
Before and after obtaining the product manuals mentioned above, the plaintiff purchased several products alleged to have infringed upon the plaintiff's other patent rights from the defendant. On February 21, June 29 and 30, 2017, Zhang received the payment made by the plaintiff for the above-mentioned products in his personal account, and the documented evidences were not enough to prove that Zhang transferred the payment received to FMLZIPS. On these grounds, the plaintiff Philips filed nine related lawsuits against the defendants FMLZIPS and Zhang to the Intermediate People's Court of Nanjing, Jiangsu Province, claiming for fair apportionment of reasonable costs in each case. Holding that the pictures of the alleged infringing product were the same as the plaintiff's design patent involved in the case, the plaintiff claimed that the defendant FMLZIPS shall be liable for stopping infringement and compensating for the loss, and the defendant Zhang XX shall be jointly and severally liable for the damages of FMLZIPS. The defendant held, as there were insufficient views for the pictures of the alleged infringing product, the infringement comparison can’t be implemented.
The Intermediate People's Court of Nanjing, Jiangsu Province ruled in the first instance that: Corresponding installation schematic diagrams attached to two alleged infringing products can better reflect the design characteristics of two products, and be used as a basis for infringement comparison. The main, view and left views of the design patent involved are consistent with the installation diagrams of the alleged infringing product, respectively; the design essentials shown in the space diagram of the design patent involved are consistent with those comprehensively shown in the BRP712 street lamp picture and corresponding installation diagrams; the design essentials (except the semicircle) shown in the upward view of the design patent involved are consistent with those shown in the BRP711 street lamp picture; and the design essentials shown in the vertical view of the design patent involved are consistent with those shown in the space diagram. Therefore, the design of the alleged infringing product is similar to the design patent involved in the case, falling within the scope of protection of the design patent right involved. The defendant FMLZIPS promised to sell the alleged infringing product, which infringed upon the plaintiff's design patent right, and shall bear civil liability for ceasing infringement and compensating for the loss. The defendant Zhang XX, as the shareholder or actual controller of FMLZIPS, received payment from FMLZIPS and didn’t submit evidence to prove that such payment had been returned, which harmed the interests of the company's creditors. Zhang XX shall be jointly and severally liable for the company's debts. Based on the above grounds, the court ruled in first instance that: FMLZIPS shall immediately stop promising to sell infringing products, and compensate the plaintiff for an economic loss of RMB 100,000; the defendant Zhang XX is jointly and severally liable for the compensation; and other claims of the plaintiff shall be dismissed.
Neither the plaintiff nor the defendant filed an appeal against the first-instance judgment. The judgment of first instance has gone into effect.
[Typical Significance]
The Patent Law provides that, the scope of protection of the design patent right shall be subject to the design of products shown in pictures or photographs, and a brief description can be used to explain the design of products as shown in pictures or photographs. It can be seen that when the scope of protection of the design patent right is not clear enough, a brief description can be used for explaining. Similarly, when the design features of the product recorded in the pictures of the alleged infringing product are not clear enough and there are other "brief descriptions" to supplement, the "brief description" can be used to "explain" the design features of the alleged infringing product, so as to an infringement comparison can be implemented between the "explained" design features of the alleged infringing product with the design patent claimed by the plaintiff. In this case, the plaintiff claimed that the defendant promised to sell the alleged infringing product on the ground that there were pictures of the alleged infringing product in the defendant's product manual. When there are many pictures of the alleged infringing product and the views displaying the product from multiple angles, the design features of the alleged infringing product can be displayed in a complete way. However, as the pictures of the alleged infringing product in this case are insufficient, an infringement comparison can’t be implemented only according to these pictures. Therefore, it’s necessary to "explain" the design features of the alleged infringing product with the installation diagram as a "brief description". Through "explanation", the multi-angle view features of the alleged infringing product are reconstructed, so that the alleged infringing product can be accordingly compared with the design features of multiple views recorded in the plaintiff’s design patent involved. Finally, it can be determined from a visual angle whether the two are the same or similar with the method of “overall observation and comprehensive judgment”.
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