Conflict between design patent rights and trademark rights in China

 Borsam IP

Design patents and trademarks are two different types of intellectual property rights. Although there are differences in the protection objects of the two, there is also some overlap. Design patents protect the appearance of a product, including the overall or partial shape, pattern, or combination thereof, as well as the combination of color, shape, and pattern. Trademarks protect graphic identities, which are mainly composed of graphics, text, colors, symbols, and other elements. Since both of them can protect patterns and are managed by different departments, having different examination principles, design patent rights and trademark rights may have conflicts.


1. Principles of examination of designs and trademarks

Patents and trademarks are managed by different departments of China National Intellectual Property Administration. Patents are managed by the Patent Office, while trademarks are managed by the Trademark Office. In the process of being granted a patent right, the design application undergoes formal examination only, it will be granted after a preliminary examination and if in conformity with the granting conditions. The trademark authorization process is more stringent, it undergoes formal examination, substantive examination, and registration announcement.


Usually, the preliminary examination of a design is to compare it with existing designs. Whether it infringes upon the trademark rights of others is not within the scope of the examination.


2. The definition of “conflict” in relevant laws and regulations and the processing principles


1) Definition of relevant regulations


According to Article 23 of the Patent Law, any design for which patent right may be granted must not be in conflict with the legitimate right obtained before the date of filing by any other person.


Meanwhile, the Patent Examination Guideline points out that, the prior trademark right refers to the trademark right of any other person protected by laws of the People’s Republic of China before the filing date of the patent concerned. Where the patent concerned makes use of a design which is identical or similar to the prior trademark, without the trademark holder’s authorization, and the exploitation of the patent would mislead the relevant public or produce confusion in the relevant public, and infringe the trademark holder’s related legitimate right or interest, the patent concerned shall be held to be in conflict with the prior trademark right. To determine whether the respective design in the patent concerned is identical or similar to the prior trademark, generally the standard to judge the identity or similarity of trademark shall apply.


2) Processing principles


In the "Patent Examination Guidelines", chapter of "Examination of Design Patents in the Invalidation Procedure" shows:


A design patent which is found to be in conflict with any other person’s legitimate right obtained before the patent’s filing date (or the priority date, where priority is claimed)shall be declared invalid.


Legitimate right refers to the right or interest which is recognized by laws of the People’s Republic of China and is still valid prior to the filing date of the patent concerned. It includes trademark rights, copyright, right to enterprise’s name (including right to trade name), right to image and right to the special packaging and decoration of well- known goods, etc.


Therefore, during the validity period of the trademark, the trademark owner can submit a request for patent invalidation to the Patent Reexamination Committee of the State Intellectual Property Office by providing evidence to defend his or her trademark rights.


3. Manifestations of conflict


Due to the differences in the examination procedures between design patents and trademarks, such conflicts are often caused by design products containing identical or similar signs to the previously registered trademarks. The manifestations of conflict can be summarized as:


1) Design patent contains logos that are identical or similar to others’ prior trademarks;

2) Design patent involving trademark logos is identical or similar to the types of goods to which the prior trademark is applied;

3) Patented design products involving trademark logos mislead the relevant public or produce confusion in the relevant public, and infringe the trademark holder’s related legitimate right or interest.


4. Case - "Habsburg" wine packaging box


The following is an example of a case where a design patent was declared invalid due to the existence of a prior trademark:


In 2012, Hennessy, a French company, filed a request for invalidation with the Patent Reexamination Board for the design patent of the "Habsburg" wine packaging box. The infringing design patent (patent number: 201030139650.7, filed on March 10, 2010) involves a wine packaging box, and it contains the pattern of "Handheld Tomahawk" in its design. However, the "Handheld Tomahawk" pattern is a trademark registered by Hennessy Company in China (registration number 890643, filed on December 15, 1994 and registered on October 28, 1996). The outline of the "Handheld Tomahawk" pattern in the design patent is a mirror image of Hennessy's "Handheld Tomahawk" trademark, which belongs to similar designs. Furthermore, the types of goods used by both are the same. After trial, the Patent Reexamination Board made an invalidation decision, deeming the design patent involved to conflict with the above-mentioned prior trademark rights and declaring the patent rights invalid. 


                                                            (Design of "Habsburg" wine packaging box)


                                                                        (Trademark of Hennessy)


It can be concluded from the above that when trademark elements are involved in the design, it should be paid attention to whether the design patent application conflicts with other people's prior trademark rights. In addition, if someone else's design infringes upon your trademark rights, you can also take measures such as submitting a request to invalidate the design patent to protect your rights.