Brief Introduction

The petitioner Matsushita Electric Industrial Co Ltd obtained the design patent named "Motor" on June 25, 2014 and the patent number is ZL201330488292.4. The patent right was legal and valid when the petitioner filed a request for adjudication over an infringement dispute.

The petitioner believed that the respondent, Shanghai Liusheng Electric Co Ltd, was infringing by displaying the motor product model ZWF-60-3 on its official website and displaying and selling it on Taobao. It requested the Shanghai Intellectual Property Administration, or SIPA, on Sept 23, 2020 to order the respondent to cease manufacturing, offering to sell and conducting sales of the alleged infringing products, as well as to delete related marketing webpages. SIPA opened the case on Sept 29, 2020.

The respondent argued that the appearance of the allegedly infringing motor product was neither the same nor similar to the patented design involved in the case; the alleged infringing motor product was independently designed and developed by the respondent and was only in the experimental phase when the case was filed. Moreover, it had briefly displayed the product on its official website in 2019 and later refined the product design, which it claimed completely changed its structure and appearance. The information displayed on the official website was also updated accordingly. The respondent also claimed that it never mass-produced the alleged infringing product, nor sold it to the outside world. Its sales channels were all counterparts to well-known domestic appliance manufacturers and it never conducted online sales.

After the trial, SIPA held that the respondent displayed the three-dimensional appearance and product performance information of the alleged infringing product on the "Product Center" column of its official website – and it should be determined that its offers for sale were established. The respondent authorized the sale and actually provided the alleged infringing product to a third party and the alleged infringing product entered the marketplace, in so doing determining that the respondent's act of manufacturing and selling the alleged infringing product was established.

In this case, the overall shape of the accused product design and the involved patent design, as well as the position and shape of the component parts, were only slightly different. It was determined that there was no overall different visual effect between the accused product design and the involved patent design. They were found to be similar designs and the alleged infringing product thereby fell within the scope of protection of the design patent rights of the claimant.

Accordingly, SIPA issued an administrative adjudication, ordering the respondent to immediately cease manufacturing, offering to sell and retailing the electrical machinery products that infringed the patent rights involved in the case.

Expert Comment

Compared with other modes of safeguarding rights, administrative protection has special advantages. The claimant's successful protection of its rights in this case provides an example for foreign patentees to safeguard their rights through administrative means, while reflecting the "equal protection" provided by the administrative agency for both Chinese and foreign rights holders. (Wang Zhengzhi, Partner of Beijing Globe-Law Law Firm)