Bridgestone's "Auto Tire" Design Patent Infringement Case

China IP,[Patent]

 

This case involves the determination of the number of damages in a design patent infringement case. The particularity of this case is that in the case of the defendant’s untrustworthy act of refusing to submit the account book without justifiable reasons, the court, based on the plaintiff's claims and the evidence provided, the court determined the number of damages from a higher level under the damage compensation system of China's Patent Law.
 
First-instance case number: (2017) Shanghai 73 Civil Judgement No. 56
 
【The main takeaway of the trial】
 
Under the circumstances of the actual loss suffered by the right holder due to the infringement is difficult to determine, the defendant holds account books and materials related to the patent infringement. The court organizes a third-party organization to audit the account books of the alleged infringing products manufactured and sold, if the account book information requested by the audit institution is refused without proper reason, the people's court shall determine the number of damages based on the claims of the right holder and the evidence provided. Where the right holder claims statutory damages without providing evidence to prove that the infringement is damaged or the profit from the infringement is significantly higher than the statutory maximum limit of damages, the people's court shall determine the number of damages within the statutory damages limit based on the circumstances of the infringer's refusal to submit the account book .
 
【Case Introduction】
 
Plaintiff: Bridgestone Corporation (referred to as Bridgestone)
 
Defendants: Shandong Huasheng Rubber Co., Ltd.(referred to as Huasheng Company), Shandong Hongsheng Rubber Co., Ltd. (referred to as Hongsheng Company)
 
Bridgestone is the patentee of the design patent with the patent number ZL200830004694.1 and the name "automobile tire". Bridgestone believes that, without its permission, Huasheng Company and Hongsheng Company jointly manufactured, sold, and promised to sell products similar to their design patents are patent infringements. Therefore, it filed a lawsuit and requested the court to order the two defendants to compensate for Bridgestone's economic loss of RMB 3 million and reasonable expenses of RMB 300,000. During the trial of this case, Bridgestone applied for a judicial audit of the account books of Huasheng Company and Hongsheng Company. During the audit process, Huasheng Company and Hongsheng Company refused to provide the accounting information requested by the audit agency.
 
After the trial, the Shanghai Intellectual Property Court held that after the design patent right was granted, within the validity period of the patent right, any unit or individual who exploits its patent without the permission of the patentee is to manufacture, promise to sell, sell, or import its design patented products for production and business purposes, which is an act of infringement of patent rights. And the infringer shall bear civil liabilities such as stopping the infringement and compensating for losses in accordance with the law. In this case, the design of “Auto Tire” No. ZL200830004694.1 was authorized by the China National Intellectual Property Administration according to law and should be protected in accordance with the law. Because the patent in question expired on February 14, 2018, the infringer should protect the patent in question. The infringer shall bear the civil liability for damages during the protection period of the patent in question.
 
Regarding the determination of the number of damages, in this case, the actual losses suffered by the right holder due to the infringement are difficult to determine. The two defendants held account books and materials related to the patent infringement and provided them when the court organized a pretrial meeting. When the court organizes a third-party organization to audit the account books of the alleged infringing products it manufactures and sells, it refuses to provide the account book information required by the audit organization without proper reason. Therefore, the court considered the claims of the right holder and the evidence in the case, determining the number of damages in this case. Regarding reasonable costs, the plaintiff provided corresponding bills for the notarization fees, translation fees, and product purchase fees claimed by the plaintiff, which the court supported. The court will comprehensively determine the attorney fees claimed by the plaintiff based on the actual situation of the case.
 
In summary, the court’s judgment of the first instance: the defendants Huasheng Company and Hongsheng Company jointly compensated Bridgestone for economic losses of RMB 900,000 and reasonable expenses of RMB 90,000; Bridgestone’s remaining claims were rejected.
 
After the first-instance judgment, neither party filed an appeal, and the first-instance judgment is now effective.
 
【Typical meaning】
 
This case involves the determination of the number of damages in a design patent infringement case. The particularity of this case is that in the case of the defendant’s untrustworthy act of refusing to submit the account book without justifiable reasons, the court, based on the plaintiff's claims and the evidence provided, the court determined the number of damages from a higher level under the damage compensation system of China's Patent Law. In this case, judging from the evidence submitted by the plaintiff, neither the actual losses of the right holder nor the infringement profits of the defendant, in this case, can be determined, and the evidence in the case cannot prove that the infringement damages in this case or the defendant’s infringement profits obviously exceed the statutory damages limit of RMB 1 million stipulated in the Patent Law. Therefore, on the basis of respecting the evidence in the case and objective facts, the court determined the number of damages from a higher level within the statutory damages limit of RMB 1 million.
 
The trial thinking of the judgment, in this case, has important reference significance for the determination of the number of damages in similar cases. It also serves as a guide and warning for the parties in good faith litigation in intellectual property infringement cases and guides the right holder to provide evidence actively. After the judgment of this case, both parties agreed to the judgment, and the two defendants took the initiative to contact the court to perform the effective judgment. The judgment of this case has achieved good social and legal effects.

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