Recently, SPTL has received a series of invalid decisions from the Patent Reexamination Board for the invalidation cases that SPTL worked in team against a number of design patents based on prior registered trademark right, declaring the footwear products related design patents invalid. In this way, SPTL successfully blocked the infringement of exclusive right on client’s registered trademark with patent invalidation.

The client of SPTL is an internationally renowned professional sports brand company, with more than 50 holding and associated enterprises in the world, whose sports shoes are even called “the king of professional running shoes". SPTL was entrusted with monitoring the relevant market and providing early warning service, during which it was found that the pattern design of the product surface of the design patent at issue directly or indirectly included the pattern of client’s prior registered trademark, which would have a very negative impact on the client's exclusive right on the registered trademark.

According to Art. 23.3 of the Patent Law, any design for which patent right may be granted must not be in conflict with the legitimate rights obtained before the date of filing by any other person. The Patent Examination Guidelines also make it clear that where identical or similar design to the prior trademark is used in the patent at issue without authorization from the trademark owner, whose implementation will mislead the relevant public or cause public confusion, harming the trademark owner's related rights and interests, it should be determined that conflict exists between the patent right at issue and prior trademark right.

In addition, the recognition of same or similar design contained in the patent at issue with prior trademark shall, in principle, apply the standard of judging same and similar trademarks. As for the registered trademark widely known to the relevant public within China, the product categories may be appropriately widened in determining the conflict of rights. Based on SPTL team’s comparison and analysis on the design patents, although some differences exist between the pattern of the patent at issue and that of the client's prior trademark, it is believed that there is similarity in the sense of Trademark Law, and the way of using the pattern in the patent at issue is also the same as that of the prior trademark.

The Patent Reexamination Board of the State Intellectual Property Office finds in the Invalidation Examination Decisions for a number of design patents that the design difference between the patent at issue and the prior trademark is not sufficient to affect the similarity in the overall visual effect; where the pattern that is visually similar to the prior trademark is used on the product of the patent at issue, it is likely to cause confusion among relevant public about the goods of patent at issue and those of the owner of the prior trademark, or make the public associate the producer of the patent-used products with the owner of the prior trademark for a certain specific relation. The Decisions also confirm that the prior trademark enjoys certain fame in China, and the exploitation of the patent at issue will mislead relevant public and harm the legitimate rights of the owner of the prior trademark. Therefore, the Patent Reexamination Board finds theses design patents in conflict with the prior trademark following the principle of honesty and credit as well as protecting prior legitimate rights and makes the invalidation decisions respectively declaring the patents at issue all invalid.

The series of invalidation cases for design patents has a notable reference value to the application of the article regarding conflict between design patent right and prior legitimate rights in China’s Patent Law.

 (By SPTL patent attorneys HU Xiaoping and JIANG Yi)

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