How to determine design patent infringement in China?

Although design is classified as one type of patent in China, the rule for determining design infringement is obviously different from that of invention patent and utility model. Given the volume of design patent infringement cases in China, it is important to understand the detailed rules for determining design infringement in China.

Similar to trademarks, designs must be incorporated or based on a product in China. Consequently, to determine whether a design is infringed in China, one must assess whether both the product and the design are similar.

To determine whether the product is similar, the court will consider the purpose of the products. In determining the purpose of the products, the court may refer to the brief descriptions of the design, international classification for industrial designs, functions and sale of products, the actual application, and other factors.

It is less straightforward to determine whether the design is similar. In principle, the criteria are the so-called "overall observation and comprehensive judgment" on the visual effect of the designs. This is still quite subjective and vague. In trial practice, there are two major perspectives developed in China for determining design similarity.

Key design parts and key design features

The key design parts and key design features usually affect the overall visual impression of the design.

Key design parts are those parts of a product that are more easily observed by the average consumer when the product is in use. For example, the cover, the body, the handle and the base are usually more noticeable for a teapot to the average consumer, and thus they are the key design parts of a teapot.

Key design features are those elements of a design that differentiate the design from prior designs and have an obvious effect on the average consumer on the visual perception of the design. For example, for a bladeless fan, the absence of the blade in the fan body is obviously the key design feature.

The court will pay special attention to key design parts and key design features when assessing the similarity of designs.

Design scope

The design scope refers to the degree of freedom when the designer creates the design. The Chinese court often assesses the design scope of the product in question. In other words, the degree of freedom for the designer in creating the design for the product is a factor in evaluating design similarity. In general, where there is a larger design scope, it is not easy for an ordinary customer to notice a relatively minor difference between different designs; where there is a smaller design scope, it is easier for an ordinary customer to notice a relatively minor difference between different designs.

For example, for an RV (recreational vehicle), it is usually considered that there is quite a lot of scope for design changes for many parts of the vehicle, whether the top portion, the front portion, the body, or the rear portion. Thus an RV is usually considered a product with a large design scope, or freedom for designers. Consequently, the average consumer is less prone to notice small differences between different designs.

(By Dr. Jian Xu. Last updated: Jul 2024)

- This article is an excerpt from my E-book, '365 Intellectual Property Tips for China: A Comprehensive, Strategic, and Practical Guide for Legal Professionals' available on Amazon. You are welcome to check it out (and read it for free if you are a Kindle Unlimited subscriber).

- Alternatively, you may check out my China Intellectual Property Series (4 book series), which consists of my China Patent, Trademark, and Copyright Law Handbooks, in addition to the above 365 China IP Tips.

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