Judgment on the Conflict Between Design Patent and Prior Trademark Rights

Case Number: (2023) Supreme Court Zhi Xing Zhong 1171 (Automobile Design Patent Confirmation Case)

This case has been selected for the Supreme People's Court Intellectual Property Court Judgment Summary (2024). The Judgment Summary is as follows: The conflict subject involved in the conflict of rights defined in Article 23, Paragraph 3 of the Patent Law is not limited to the entire product design but can also include partial designs or design features of the design.

In this case, Chang Tsi & Partners representing the third party, Yuntong Holdings (Shanghai) Co., Ltd. (hereinafter referred to as "Yuntong Company"), had the core task of maintaining the legitimacy of the client’s prior trademark rights and pushing for the invalidation of the involved design patent by the National Intellectual Property Administration. The victory in this case not only reflects Chang Tsi’ s professional ability but also has significant reference value for intellectual property cross-protection practices.

I. Accurately Grasping the Core of the Rights Conflict to Lay the Foundation for Winning the Case

Chang Tsi’ s core strategy was to focus on Article 23, Paragraph 3 of the Patent Law, which states that “the design must not conflict with the prior legal rights of others.” By submitting evidence (such as trademark registration certificates, online usage evidence, etc.), Chang Tsi successfully demonstrated:

1 Legality of Prior Trademark: The graphic trademark of Yuntong Company predates the patent application date and has been continuously used in the automobile field.

2 Commercial Significance: The wheel center and rear side pattern in the involved patent serve as commercial identifiers, which are highly similar to the prior trademark, potentially confusing consumers.

3 Proof of Fame: Through sales data, commercial activity promotions, etc., the market influence of the prior trademark was strengthened.

This strategy directly influenced the adjudication logic of the National Intellectual Property Administration, Beijing Intellectual Property Court, and the Supreme People's Court, ultimately leading the courts to rule that the patent conflicted with the trademark rights and uphold the invalidation decision.

II. Litigation Strategy Highlights: Defending with an Offensive Approach to Overcome the Defendant’s Arguments

In response to the multiple appeal reasons presented by the patent holder, Lei’s company (such as “incorrect object of rights conflict” and “non-similarity of trademarks”), Chang Tsi adopted the following measures:

1 Emphasizing the Theory of “Partial Design Element Conflict”: Countering the opponent’s view of “whole design comparison,”  Chang Tsi argued that if a partial commercial identifier of the design is sufficient to cause confusion, it constitutes a rights conflict.

2 Using Industry Practices to Prove Confusion Likelihood: By combining automobile usage scenarios (such as wheel patterns changing with angle), Chang Tsi showed that consumers would have difficulty distinguishing subtle differences.

3 Rejecting the Relevance of Foreign Evidence: Regarding the UK Intellectual Property Office decision submitted by Lei’s company, Chang Tsi pointed out the differences with Chinese judicial practices, successfully preventing the court from accepting it.

These strategies not only consolidated the legitimacy of the administrative decision but also demonstrated Chang Tsi’ s flexibility in handling cross-rights disputes.

III. Industry Value: Promoting Intellectual Property Cross-Protection Practice

The victory in this case serves as a benchmark for similar cases:

1 Clarification of Examination Standards: It further clarifies the identification rules for conflicts between design patents and trademark rights, especially strengthening the judicial review logic of "partial element conflicts."

2 Warning Effect: It serves as a legal reminder for enterprises to avoid infringing prior rights during the product design stage, as it may face the risk of patent invalidation.

3 Professional Endorsement of the Agency: Through this successful case, Chang Tsi strengthened its reputation in the field of intellectual property dispute resolution, particularly showcasing its leading position in “patent-trademark” cross-litigation matters.

As the agent for Yuantong Company, the victory in this case was achieved not only through the precise application of legal rules, but also through its deep understanding of industry practices and consumer cognition. The litigation strategy not only protected the client’s rights but also provided a practical model for intellectual property cross-protection, further enhancing market competitiveness of Chang Tsi in high-end intellectual property services.