Guide: This case focuses on how to determine the relationship of the existing design, the accused infringing product, and the involved patent when the defendant claims defense of existing design.

 

Brief: We represented Bridgestone, a well-known corporation in rubber tire industry, to file a design infringement lawsuit against a tire manufacturing company with regard to a tire produced by the company. The defendant claimed defense of existing design at court. The courts of first and second instance only compared the accused infringing product with the existing design and held that the defense of existing design established as the accused infringing product and the existing design constituted similar designs. On behalf of Bridgestone, we petitioned Supreme People’s Court for retrial. In the retrial, Supreme People’s Court supported our opinions and held that only when the accused infringing product is identical with the existing design, can a conclusion whether defense of existing design establishes be made through mere comparison between the accused infringing product and the existing product; otherwise, the conclusion whether the accused infringing product and the existing design constitute similar designs should take into account a design group including the involved patent. Eventually, Supreme People’s Court determined that the accused infringing product mainly incorporated the features of the involved patent by which the involved patent was distinguished from existing design. Thus, the defense of existing design did not hold; and infringement has been constituted. On such grounds, the judgments of the first and second instance were vacated. The court granted injunction and supported our claim of damages of 0.3 million yuan in full. This case was selected as the Top 50 Typical Cases of Intellectual Property Protection of Chinese Courts in 2011 by Supreme People’s Court.