Docket number of the case in the first instance: 203, first instance (初), civil case (民), (2018) Shanghai Intellectual Property Court (沪73)
Docket number of the case in the second instance: 34, second instance (终), civil case (民), (2020) Shanghai High People's Court (沪)
[Basic Facts]
Appellant (Defendant in the case in the first instance): Zhuhai East Kingdom Electrical Appliance Co., Ltd. (Hereinafter: Zhuhai East Kingdom), Zhongshan Kingdom Electrical Appliance Co., Ltd. (Hereinafter: Zhongshan Kingdom)
Appellee (Plaintiff in the case in the first instance): Foreo (SHANGHAI) Trading Limited (Hereinafter: Foreo)
Defendant in the case in the first instance: Shanghai Zhuokang Industrial Co., Ltd. (Hereinafter: Zhuokang)
The plaintiff Foreo is the patentee of the design patent named “Face Cleaner (II)” (Hereinafter: the patent involved). This patent was filed on January 17, 2013. The patent involved is a design that combines the shape and pattern.
Upon notarization and preservation, Foreo found that Zhuhai East Kingdom and Zhongshan Kingdom sold KD308 face cleanser products on online stores at Tmall, Alibaba, JD and other online platforms (hereinafter: alleged infringing products). The alleged infringing products were sold by two defendants on online platforms including Tmall, Alibaba and JD after Zhongshan Kingdom produced and Zhuhai East Kingdom assembled the parts. 16 online stores on Tmall (including those operated by Zhuokang), 10 stores at 1688.com and eight stores on JD.com were authorized to sell the alleged infringing products. They also cooperated with several platforms, including NetEase Kaola, Taobao, Xiaohongshu, Vipshop, JUMEI, m.yhd.com, Suning, dangdang.com and Pinduoduo.
Foreo filed a lawsuit with the court requesting: 1. Order three defendants to immediately stop their infringement upon the patent right involved; 2. Order the defendants Zhuhai East Kingdom and Zhongshan Kingdom to destroy immediately the molds for manufacturing the infringing products; 3. Order the defendants Zhuhai East Kingdom, Zhongshan Kingdom and Zhuokang to immediately destroy all infringing products in stock; 4. Order the defendants Zhuhai East Kingdom and Zhongshan Kingdom to jointly compensate Foreo for its economic losses and reasonable expenses of RMB 3 million, and Zhuokang to bear joint and several liability for compensation within the scope of its sales of the infringing products.
In the first instance, the Shanghai Intellectual Property Court held that the design of the alleged infringing product fell within the scope of protection of the patent right. Zhuhai East Kingdom and Zhongshan Kingdom that manufactured, sold and promised to sell the alleged infringing product shall be held liable for ceasing infringement and compensating for corresponding economic losses. As Zhuokang continued to sell infringing products after receiving the complaint of this case, and legitimate source defense can’t be formed, Zhuokang shall jointly and severally bear the compensation liability for the sales behavior after receiving the complaint with the producer. Based on the above grounds, the court ruled in first instance: Zhuhai East Kingdom, Zhongshan Kingdom and Zhuokang shall immediately stop infringement upon the patent right involved enjoyed by Foreo; Zhuhai East Kingdom and Zhongshan Kingdom shall jointly compensate Foreo for its economic losses and reasonable expenses of RMB 3 million, of which Zhuokang shall bear joint and several liabilities for compensation of RMB 50,000.
Zhuhai East Kingdom and Zhongshan Kingdom refused to accept the verdict of first instance, and appealed to Shanghai High People's Court. The Shanghai High People's Court ruled in the second instance that, according to the knowledge and cognitive competence of general consumers when the alleged infringing act occurred, the alleged infringing design is similar to the design of the patent involved and falls within the scope of protection of the patent right. In this case, it is more reasonable to calculate the profit from infringement by multiplying the total sales of infringing products on the market by the reasonable profit per infringing product. According to the above calculation of the profit from infringement of Zhuhai East Kingdom and Zhongshan Kingdom and taking into account the reasonable expenses paid by Foreo to stop infringement, the compensation amount of RMB 3 million claimed by Foreo is well founded. Based on the above grounds, the second-instance court ruled to: dismiss the appeal and uphold the original judgement.
[Typical Significance]
The key of the trial of dispute cases of infringement upon the design patent right lies in the judgement of the same/similar design and the calculation of the amount of damages.
The judgment of this case makes useful explorations and summarizes the rules regarding the application of the standard to determine an infringement act, i.e., “the knowledge and cognitive competence of general consumers for the patented design product”, as well as the method for calculating the amount of damages, i.e., “multiplying the total sales of infringing products on the market by the reasonable profit per infringing product”. It’s of high reference value for the trial of dispute cases of infringement upon the design patent right, and is selected as one of the High-quality Cases Tried by Shanghai Courts in 2020.
The judgment of this case is made on sufficient reasoning and argumentation and supports all litigation claims of the intellectual property right holders, reflecting the judicial spirit of the court to enhance protection of intellectual property rights according to law and achieving a good legal and social effect. This case was selected as one of the “Top10 Judicial Protection Cases of Intellectual Property Rights Tried by Shanghai Courts in 2020".
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