One Case a Day | China: Examination of Conflicts Between Design Patents and Prior Trademark Rights - Invalidation Decision No. 57011 (2022)

Case Introduction

This case is one in a series of dash cam cases, where related litigation was recognized by the Supreme People's Court as malicious litigation. We will study that later. Today, we will learn from its invalidation decision, which involves key points in examining conflicts with prior trademark rights, including the qualification review of the requester and the qualification determination when prior rights involve transfers. It is also quite representative.

Case Information

• Application Number: 201530405545.6
• Invention Title: Dash Cam (312)
• Invalidation Decision Number: No. 57011
• Case Number: 6W120558
• Request Date: December 31, 2021
• Decision Date: July 5, 2022

Key Points of the Decision

A conflict of rights in a design patent refers to the unauthorized use of the subject matter of prior legitimate rights in the design patent, resulting in the implementation of the patent right that will harm the relevant legitimate rights or interests of the prior rights holder. If a design patent contains an identical or similar mark to a prior trademark of another party, and there is no evidence to prove that the patentee has the legitimate right to use that prior trademark mark, then the involved patent conflicts with the prior trademark exclusive right of another party. The involved patent uses the prior trademark mark shown in Evidence 1, and there is no evidence to prove that the patentee has the legitimate right to use the prior trademark mark shown in Evidence 1. Therefore, the involved patent does not comply with the provisions of Article 23, Paragraph 3 of the Patent Law.

Key Points of the Case

The involved patent is a design for a product named "Dash Cam (312)." According to its brief description, this design product is used for an instrument that records images, sound, and related information during vehicle travel. The design point is the overall shape design of the product.

Evidence 1 is an ordinary trademark consisting of the letters "NEXTBASE" and an underline (see Evidence 1 drawing), covering goods including television cameras.

The requester argued: Evidence 1-3 (Trademark File No. 3163245, transfer records, etc.) proves that the requester holds the exclusive right to the prior trademark No. 3163245. When relevant consumers exercise ordinary attention, the implementation of the involved patent will mislead them, leading them to believe that the products originate from the same provider or that their providers are closely related, causing confusion or misidentification of the product source, thereby harming the legitimate rights and interests of the prior trademark exclusive right holder.

The patentee argued that the involved patent protects the shape of the product, while the prior trademark right protects a flat text pattern. Moreover, the subject of the involved patent is a dash cam, while the pattern and text of the prior trademark right are unrelated to dash cams. The goods designated by the prior trademark right do not include dash cams, and dash cams are clearly not similar goods to those of the prior trademark right. Therefore, the content protected by the involved patent and its subject are completely different from the prior trademark right.

Invalidation Decision Points：

Article 23, Paragraph 3 of the Patent Law stipulates that a design granted a patent right shall not conflict with the legitimate rights obtained by others prior to the filing date.

1. Regarding the Qualification of the Requester

The essence of a conflict of rights in a design patent is the infringement of specific subjects' legitimate civil rights, not harm to the interests of unspecified public. As long as the prior rights holder does not assert a claim, there is no issue of conflict of rights. Therefore, whether to claim rights relief is an effective disposition by the rights holder or interested party regarding their own rights, and others have no right to assert or interfere on their behalf. Thus, in invalidation request proceedings, when a requester requests the invalidation of an involved patent on the grounds that it does not comply with Article 23, Paragraph 3 of the Patent Law, their qualification should be limited to the rights holder or interested party. If the requester's qualification is not restricted, it may contradict the will of the prior rights holder or interested party.

In this case, the exclusive period of the trademark right involved in Evidence 1 is from June 14, 2013, to June 13, 2023. The acquisition of this right predates the filing date of the involved patent (October 20, 2015), making it a prior right. According to Evidence 3, although the requester did not hold the above trademark exclusive right at the time of the patent application, the requester later obtained the trademark exclusive right shown in Evidence 1 due to its transfer. However, this does not deny that the trademark right shown in Evidence 1 itself belongs to the prior right of another party, meaning that this trademark exclusive right existed and was owned by another party before the filing date of the involved patent. Therefore, regardless of who owned this prior trademark exclusive right at the time of the patent application, it falls under "legitimate rights obtained by others prior to the filing date."

Furthermore, since there is no evidence indicating that the patentee of the involved patent obtained legitimate authorization for the above trademark mark exclusive right, the patentee's use of a mark identical or similar to the above trademark mark may constitute a conflict of rights. Given that prior to this case, the rights holder or interested party of the above trademark mark exclusive right did not assert a conflict of rights, there was no issue of conflict of rights.

However, in this case, the requester raised the issue of conflict of rights. Although the requester may not have had the qualification to assert a conflict of rights at the time of the patent application, given that Evidence 1 to Evidence 3 all prove that the current exclusive right holder of the above trademark is the requester in this case—that is, through the transfer of the above trademark exclusive right, the requester has become the rights holder of the above prior trademark exclusive right and has obtained the qualification to assert a conflict of rights—the requester in this case meets the qualification requirements for the requester under Article 23, Paragraph 3 of the Patent Law.

2. Regarding Article 23, Paragraph 3 of the Patent Law

Both this patent and Evidence 1 are devices that can be used to record images and sound, and their product categories are similar. In response to the patentee's argument that the two products have different production and sales channels, making their categories different, and that there is no evidence proving the involved patent has distinctiveness domestically, the collegial panel held that even if their production and sales channels differ, it cannot be denied that both have the same use for recording images and sound. This use indicates that they belong to similar product categories. Regardless of whether the trademark shown in Evidence 1 has distinctiveness domestically, at least the use of the trademark mark pattern shown in Evidence 1 is related to the interests of the trademark rights holder.

According to Article 23, Paragraph 3 of the Patent Law, a conflict of rights in a design patent refers to the unauthorized use of the subject matter of prior legitimate rights in the design patent, resulting in the implementation of the patent right that will harm the relevant legitimate rights or interests of the prior rights holder. If a design patent contains an identical or similar mark to a prior trademark of another party, and there is no evidence to prove that the patentee has the legitimate right to use that prior trademark mark, then the involved patent conflicts with the prior trademark exclusive right of another party.

From the drawings of the involved patent, it can be seen that the involved patent features a pattern consisting of the letters "NEXTBASE" and an underline in the middle of the product's front. This pattern is identical to the prior trademark design mark in terms of the number of letters, the shape of each letter, the positional arrangement between letters, and the overall shape formed by the letters, with an underline at the bottom in both cases. The letter patterns are completely identical. Thus, the involved patent uses a design identical to the prior trademark pattern. Since this letter pattern is located in the center of the product's front in the involved patent, when the involved patent is implemented, relevant consumers exercising ordinary attention are likely to confuse the letter pattern in the involved patent with the prior trademark, leading to misidentification of the source of related products. Therefore, the involved patent conflicts with Evidence 1 and does not comply with the provisions of Article 23, Paragraph 3 of the Patent Law.

In response to the patentee's argument that the protected subjects of the involved patent and trademark protection are different, thus no conflict of rights exists, the collegial panel held that the basis for determining whether a design patent conflicts with a prior trademark right is whether the involved patent contains a mark identical or similar to the prior trademark. This is not directly related to whether their protected subjects are the same. Although the brief description of the involved patent states that its design point is the overall shape design of the product, it does not exclude the patterns contained within. Moreover, in the drawings of the involved patent, the letter pattern is not crossed out; the letter pattern design in the middle of the product's front is still part of the design patent. Therefore, the collegial panel does not support the patentee's above argument.