Brief Introduction

The plaintiff – German engineering and manufacturing giant Siemens AG – in September 2018 purchased six switch products from the Aqara series on online market Tmall that had similar designs to its design patent, from defendant Shanghai Research Intelligentize Technology Co Ltd.

The products were produced by another defendant, Lumi United Technology Co Ltd. Lumi also displayed the six products on its official website and sold them through multiple channels.

Statistics showed that as of January 2019, the six products had generated sales of 42.5 million yuan ($6.6 million).

The plaintiff believed that the actions of the two defendants infringed its patent rights and that Lumi had wide-ranging sales channels, large sales volumes and profits from the infringement, which caused major economic loss to the plaintiff.

The plaintiff requested that the court order the defendants to immediately cease the infringing actions and destroy the special molds and infringing products in stock. Lumi was additionally called on to indemnify the plaintiff for economic losses and reasonable expenses, to the amount of 6 million yuan.

The Shanghai Intellectual Property Court held that the accused products and the patented product belonged to the same category and had similar designs. Only slight differences could be found when the products were being used. Thus, the accused products fell into the protection scope of the plaintiff's design patent and the defendants' behavior constituted infringement.

The defendant Lumi refused to comply with the ruling and instituted an appeal. In the second trial, Lumi subsequently applied to the Shanghai High People's Court to withdraw its appeal on the grounds that it had reached a settlement with Siemens. The court ruled acceptance.

Professional Comments

The settlement of the case protected the economic interests of the patentee and provided a precedent for handling such cases.

It also corrected some enterprises' misunderstanding that design patents are low-level patents. In determining the damages, the case conducted a detailed exploration of the issues and highlighted the importance of design patents to a product.