Guiding Case No. 85: Grohe Joint-Stock Company v. Zhejiang Jianlong Sanitary Ware Co., Ltd. (Case about dispute over infringement upon design patent right)
- Guiding Case No. 85: Grohe Joint-Stock Company v. Zhejiang Jianlong Sanitary Ware Co., Ltd.
- (Issued on March 6, 2017 as deliberated and adopted by the Judicial Committee of the Supreme People's Court)
- （最高人民法院审判委员会讨论通过 2017年3月6日发布）
- Keywords: civil; infringement upon design patent; design features; functional features; overall visual effect
- 关键词 民事/侵害外观设计专利/设计特征/功能性特征/整体视觉效果
- 1. The design features of a patented design reflect not only its innovations different from existing designs but the innovative contributions made by the designer to existing designs. If the alleged infringing design does not include all design features of the patented design different from existing designs, in general, it may be presumed that the alleged infringing design is not similar to the patented design.
- 2. To identify a design feature, the patentee shall bear the burden of proof for the design feature he or it claims. The people's court shall, on the basis of soliciting cross-examination opinions from all parties, fully examine evidence and legally determine the design feature of the patented design.
- 3. The identification of a functional design feature depends on whether the design is only determined by a specific function for an ordinary consumer of a design product and it is unnecessary to consider whether the design is aesthetic. A functional design feature does not have an obvious impact on the overall visual effect of the design. For the impact of a design feature that is both functional and decorative on the overall visual effect, the degree of decorativeness shall be taken into consideration. The more decorative the design feature is, the greater the impact on the overall visual effect is and vice versa.
- Grohe Joint-Stock Company (hereinafter referred to as “Grohe Company”) was the right holder of the design patent of “hand-held shower nozzle (No. A4284410X2)” and such design patent was legal and effective. In November 2012, Grohe Company filed a lawsuit against Zhejiang Jianlong Sanitary Ware Co., Ltd. (hereinafter referred to as “Gllon Company”) on the ground that the Liya Series of sanitary products produced, sold, and offered for sale by Gllon Company infringed upon the design patent of “hand-held shower nozzle” of Grohe Company and it requested the Intermediate People's Court of Taizhou City, Zhejiang Province to order that Gllon Company should immediately cease the alleged infringing act, destroy the infringing products in stock and moulds for producing such infringing products, and pay Grohe Company CNY200,000 for its economic loss. Upon comparison in the court trial of first instance, it was found that the alleged infringing products produced by Gllon Company and the design patent involved of Grohe Company were identical in the following aspects: Both of them were like products. In general, both of them consisted of the nozzle and the handle. The shape of the drainage surface of the alleged infringing product was the same as that of the patent involved. Drainage holes were distributed in the radial pattern in the area with semicircles at both ends and a rectangle in the middle, and the area had arc-shaped margins. The differences between them were as follows: (1) there was slope surface around the nozzle of the alleged infringing product and such slope surface was tilted from the reverse side to the water outlet, while the front view and the left view of the patented product involved showed that there was arc surface around the nozzle; (2) the drainage surface of the nozzle of the alleged infringing product and the panel were divided only by a line, while the drainage surface on the nozzle of the patented product involved and the panel were divided by a banding formed by two lines; (3) there was slight difference in the layouts of drainage holes on the drainage surface of nozzles of the alleged infringing product and the patented product involved; (4) there was a switch on the handle of the patented product involved, while the alleged infringing product did not have such design; (5) although there was a certain angle in the junction of the central nozzle of the patented product involved and the handle, the angle was small and it was almost a straight line, while the angle formed at the junction of the nozzle of the alleged infringing product and the handle was bigger; (6) seen from the upward views of the patented product involved and the alleged infringing product, the handle bottom of the former was round, while that of the latter was a fan-shaped arc. The lower part of the former was a cylinder, which was gradually shrunk and flattened to a flat ellipsoid to the direction of the nozzle junction, while the lower handle of the alleged infringing product was a fan-shaped cylinder and the transitional area between the handle and the nozzle junction was also a fan-shaped cylinder, and there were curved ledges on the central handle in the transitional area; (7) there was an arc-shaped decoration line at the bottom of the handle of the alleged infringing product and such line connected the handle bottom with the back of the product, while there was no such design at the bottom of the handle of the patented product involved; and (8) the length proportion of the nozzle and the handle of the patented product involved was different from that of the alleged infringing product and the arc-shaped surfaces at the junctions of the nozzles and handles of both products were also different.
- On March 5, 2013, the Intermediate People's Court of Taizhou City, Zhejiang Province rendered a civil judgment (No. 573 , First, Civil Division, IPC, Taizhou) that the claims of Grohe Company should be dismissed. Grohe Company refused to accept the judgment and appealed. On September 27, 2013, the Higher People's Court of Zhejiang Province rendered a civil judgment (No. 255 , Final, Civil Division, HPC, Zhejiang) that: (1) the civil judgment (No. 573 , First, Civil Division, IPC, Taizhou) rendered by the Intermediate People's Court of Taizhou City, Zhejiang Province should be set aside; (2) Gllon Company should immediately cease the acts of producing, offering for sale, and selling products infringing upon Grohe Company's design patent of “hand-held shower nozzle,” and destroy the infringing products in stock; (3) Gllon Company should pay CNY100,000 to Grohe Company as compensation for Grohe Company's economic loss (including reasonable expenses assumed by Grohe Company for stopping the infringement); and (4) other claims of Grohe Company should be dismissed. Gllon Company refused to accept the judgment and filed an application for retrial. On August 11, 2015, the Supreme People's Court rendered a civil judgment (No. 23 , Civil Petition, Supreme People's Court) that: (1) the judgment of second instance should be set aside; and (2) the judgment of first instance should be affirmed.
- 浙江省台州市中级人民法院于2013年3月5日作出（2012）浙台知民初字第573号民事判决，驳回高仪股份公司诉讼请求。高仪股份公司不服，提起上诉。浙江省高级人民法院于2013年9月27日作出（2013）浙知终字第255号民事判决：1.撤销浙江省台州市中级人民法院（2012）浙台知民初字第573号民事判决；2.浙江健龙卫浴有限公司立即停止制造、许诺销售、销售侵害高仪股份公司“手持淋浴喷头”外观设计专利权的产品的行为，销毁库存的侵权产品；3. 浙江健龙卫浴有限公司赔偿高仪股份公司经济损失（含高仪股份公司为制止侵权行为所支出的合理费用）人民币10万元；4.驳回高仪股份公司的其他诉讼请求。浙江健龙卫浴有限公司不服，提起再审申请。最高人民法院于2015年8月11日作出（2015）民提字第23号民事判决：1.撤销二审判决；2.维持一审判决。
- In the effective judgment, the Supreme People's Court held that the issue of this case was whether the design of the alleged infringing product fell into the protection scope of the design patent involved.
- Paragraph 2 of Article 59 of the Patent Law prescribed that “The protection scope of a design patent shall be subject to the design of a product in drawings or photographs and brief descriptions may be used for interpreting the design of the product as expressed in such drawings or photographs.” Article 8 of the Interpretation of the Supreme People's Court on Several Issues concerning the Application of Law in the Trial of Cases regarding Patent Infringement Dispute (hereinafter referred to as the “