The Beijing First Intermediate People’s Court has issued a decision on the conflict between trademarks and design patents.
French luxury brand Louis Vuitton Malletier (LV) filed an action with the court on 10th April 2007 against an individual, Wang, owner of design patent registration 02367907.7, for his unauthorised copying of its trademarks. All the LV trademarks are registered in Class 18 in respect of, among other things, travelling bags, women’s handbags and shopping bags.
(Louis Vuitton’s corresponding Chinese mark)
Wang’s registered design patent consists of the shape of a handbag as represented below.
According to the Patent Law, any design for which patent rights may be granted must not conflict with any prior legal rights obtained by any other person. The registered design patent shall be declared invalid if it contravenes this provision. However, the Patent Re-examination Board will not consider a petition for invalidation in the absence of a decision or determination affirming such conflict. The courts, on the other hand, may make a decision or determination of conflict even if the design patent in question has not yet been put to use.
As LV’s trademarks were filed before Wang’s design patent, LV had prior rights over those trademarks. In determining whether there was any conflict with those prior rights, the court considered that the fundamental question was whether consumers would be confused that Wang’s design patent products were those of LV, thereby damaging LV’s trademarks. In this regard, the court held that Wang’s design patent products (handbags) and LV’s registered goods (travelling bags, women’s handbags, shopping bags) were the same type of goods. In addition, not only did Wang’s design patent distinctly bear signs that were identical or similar to LV’s trademarks, but those signs were also the prominent design features of Wang’s design patent. As such, the court held that once Wang’s design patent products were put to use, general consumers would be misled that these were LV products. Wang’s design patent registration was thus considered to conflict with LV’s trademarks.
According to the court, although there was no evidence that Wang had put the design patent into use, the act of applying for registration indicated an intention to do so. In order to prevent these activities from causing harm to LV’s trademarks, the court considered that Wang’s application for the design patent in question constituted “other acts infringing the exclusive rights of a registered trademark” and ordered that Wang refrain from using the design patent.
It is particularly striking, and encouraging to mark holders, that the court was prepared to order Wang not to put the subject matter of his design patent registration to use on the basis of trademark infringement even before the design patent was invalidated by the Patent Re-examination Board.