The Supreme Court published a ruling in 2015 in a design
patent infringement lawsuit that aroused some controversy.
The lawsuit was filed with the IP Court by the owner of a
design patent for an electric bike against a competitor. At
first instance, the IP Court found the two parties' designs
highly similar so as to cause consumer confusion, and the
defendant was found to infringe the design patent.
Not satisfied with the ruling, the defendant filed an appeal
with the IP Court of second instance, arguing that the rear
trunk provided on the alleged infringing electric bike renders
the two parties' bikes to be readily distinguishable and should
not be overlooked.
The IP Court of second instance dismissed the appeal for two
reasons: (1) as no rear trunk is included in the drawings of
the subject design patent, the scope of the patented design
should be construed to include rear trunks of any shape; and
(2) even if the rear trunk provided on the alleged infringing
electric bike were given weight, this ornamental feature would
not be significant enough to preclude the possibility of
confusion among consumers.
After the case was brought to the Supreme Court, the Supreme
Court rescinded the ruling rendered by the IP Court of second
instance in favour of the design patent owner, and remanded the
case to the IP Court of second instance for re-consideration.
The Supreme Court made the following findings: (1) since the
defendant owns a design patent for the alleged infringing
electric bike, it is reasonable to assume that this bike is
patentably distinguishable from the patented design; and (2)
the curved patterns and colours illustrated on the sticker
attached to the front panel of the alleged infringing electric
bike should not have been removed from consideration since they
serve to distinguish the alleged infringing electric bike from
the patented design in outer appearance.
The two opposing parties subsequently reached an amicable
out-of-court settlement. As such, there is no insight into how
the IP Court would have responded to the Supreme Court's
In our opinion, whether or not the defendant owns a design
patent is immaterial to a finding of infringement. As to the
rear trunk and the sticker on the alleged infringing electric
bike, according to the regulations recited in the Guidelines
for Determining Patent Infringement, which are in conformity
with international practice, they should not be taken into
account in the test of similarity. On this issue, we share the
opinion of the IP Court that the scope of a patented design
should be construed on the basis of the overall outer
appearance of the design illustrated in the drawings. In other
words, a design patent is infringed if an ordinary observer
would think that the alleged infringed design is highly similar
to the patented design when the two designs are compared in the
context of the prior art.
Even though the Supreme Court's opinion in this one single
case is not binding, it is still worth asking (1) whether the
ruling rendered by the Supreme Court will be cited in the
future by any parties as a reference point when they encounter
similar issues; and (ii) how the IP Court would respond.
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