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◆ First Instance Docket: (2017) Zhe02MinChu No. 440

CASE 12 :

Zhejiang Province


For design patent, even though the combined pieces in a set share a single application number, each piece in the set may have its own separate claim. Therefore, when application is filed for the design of a set of multiple pieces, it must meet, apart from the conditions for the combined application, the patentability requirement for each individual piece. Correspondingly, in patent infringement litigation, the court, when comparing the accused which set with prior art design, it should also make independent comparison between each individual piece of the accused set with the corresponding design, rather than comparing the set as a whole with the prior art design.


Plaintiff: Stor Sociedad Limitada (Stor)

Defendants: Ninbo YaTang Daily Necessities Co., Ltd. (YaTang); Taizhou Luqiao WangHong Modes and Plastics Factory (WangHong)

Stor filed an application on May 18, 2015 for a design of “Tableware (Overlay)” to be published for approval on September 23, 2015, under No. ZL201530147586.X. Stor believes that YaTang and WangHong jointly developed the modes for the accused product, to be made by WangHong and sold by YaTang, infringing its patent and therefore files suit in court seeking injunction and damages of 150,000 plus cost of 43,974.2 yuan. At trial WangHong submitted three reference to show that the accused design was prior art design, for bowl, plate and cup, each carries a date before the filing date of the patent. Stor contends that the prior art design should not be compared with the accused design piece by piece; rather, comparison ought to be made with each prior art design for the entire set of the accused design. Ninbo Intermediate People’s Court found at trial that the accused design on the whole was similar to the prior art design.

Meanwhile, the average consumer is more inclined to focus on the overall configuration and surface patterns on bowls and plates. So the overall configuration and surface pattern deliver greater impact for the visual effect. The accused concentric circle design is mainly a functional aspect for stability of overlay at the bottoms of the plates and bowls, and are merely some minute variations in structure and strokes on visual, without substantial impact on the overall visual effect. Thus, WangHong’s defense is sustained, and no infringement on the part of YaTang and WangHong was found.

In sum, the court dismissed Stor’s complaints.

[Judge’s Comment]

The central issues of this case are:(1) whether the accused design is covered by the protective range of the design patent; (2) whether defendant WangHong’s argument is sustainable and whether the two defendants infringed the patent. 

As to the first issue, the protective range of a design patent is represented in the configuration or photograph included in the design patent document. Determination of infringement of a design patent is made from the perspective of an ordinary consumer with his level or knowledge or cognizance, by the patent appearance, the characteristics, and the overall visual effect, to make a comprehensive judgment and a comparison of the accused design and the patent for similarity of visual effect or insubstantial disparity. In this case, both the patented design and the accused design are for tableware, and are similar products. On comparison, they both contain the parts of bowl, plate, and cup which are basically the same in shape, and can be overlaid. Their differences are the inclination degrees, the number concentric circles and the contours which are merely minute differences, and all in all produce no substantial visual difference to an ordinary consumer. Therefore the accused design falls within the protective range of the design patent.

On the second issue, according to Patent Examining Guidelines, design patent application for a set of products may not include one or more similar to another. Any one piece in the set must jointly and severally satisfy patentability requirement; if a particular piece does not, it should be deleted from the set, or the application shall not be granted. In this case, the accused design is for a set, and if for patent application, each piece of the set must separately patentable. Hence, to determine whether the accused design adopts the prior art, each individual piece must be compared with the corresponding one in the references, i.e., in separate comparison. Upon such comparison, the bowl, plate and cup in the accused design have so minute differences from the prior art, as to produce no substantial impact on visual effect. Therefore, the defendants’ conduct is not infringement of plaintiff’s design patent.

The decision of this case clarifies the rules for making comparison in defense of prior art for a set of products, comfortably in line with the present prior art defense to patent infringement, so as to achieve the purpose of substantially resolve civil disputes.