Two SIPO Typical Patent Enforcement Cases of 2017

September 21, 2018

Case 1: Honda motorcycle design patent infringement dispute


As the owner of Chinese design patent No.  ZL201430329219.7, Honda Technology Industries Co. Ltd. (hereinafter referred to as HONDA) filed a complaint to Shanghai IP Office against a Shanghai company for manufacturing, offering for sale, and selling products infringing on Hongda’s design patent without permission.


During inspection, Shanghai IP Office found that the Shanghai company published an advertisement for HL100T-5A model motorcycle in a magazine, which displayed the design of both the left side and the right side of the motorcycle, as well as their trademark and business name. Honda requested Guangzhou Notary Office for evidence preservation and notarized the purchase of a “HL100T-5A” model motorcycle with the invoice and the salesperson’s business card obtained on the spot. The Shanghai company argued that the motorcycle at issue was assembled with accessories purchased from other companies, which shall fall within the scope of fair use and shall not be held for infringement liability.


After review, Shanghai IP Office held that the alleged infringing product and the content in the advertisement are clearly connected with the Shanghai company, regardless of whether the accessories are manufactured by themselves or purchased from others, and therefore the Shanghai company should be identified as the manufacturer of the alleged infringing products. Based on overall observation and comprehensive judgement, all the design features of the design patent involved are reflected in the alleged infringing product. There is no difference between the overall appearances of the two, which shall be considered as identical and thus the alleged infringing product fall into the protection scope of the design patent involved. The Shanghai company is ordered to cease infringement immediately.



Case 2: Invention patent infringement dispute concerning “Product Quality Tracing & Anti-Counterfeiting System and Its Methods”


Beijing Jinyuan Maofeng New Technology Development Co., Ltd. (hereinafter referred to as the “Complainant”), holder of  “Product Quality Tracing & Anti-Counterfeiting System and Its Methods” invention patent which was granted on August 3, 2016 with patent number ZL201310058356.6., filed a complaint with Beijing IP Office against a local magazine and a liquor company who infringed upon the above patent by using the method protected under the patent involved without permission.


The Complainant provided the notarized evidence of purchasing liquor from the liquor company and the whole process of its use of tracing & anti-counterfeiting method, as well as the recorded video thereof. The liquor company provided a "Technical Service Contract" that was signed earlier than the application date of the patent involved and made prior art defense.


After inspection, Beijing IP Office held that, 1) the Technical Service Contract alone cannot be provn to contain the same technical solutions as in the claims of the patent involved, and therefore the prior art defense is not sustainable; 2) based on the notarization document provided by the complainant, combined with the recorded video, it can be affirmed that the “product tracing platform” label used by the liquor company and its tracing & anti-counterfeiting method are identical with all the technical features of the claims of the patent involved, and fall within the protection scope of the patent involved; and 3) the liquor company used an anti-counterfeiting voucher on its liquor packaging, the specific tracing & anti-counterfeiting method of which was supported by a product tracing platform hosted by a magazine, and therefore the magazine and the liquor company have constituted joint infringement. The Beijing IP Office determined that the magazine providing anti-counterfeiting tracing technology on its website and the liquor company using anti-counterfeiting tracing methods on its product packaging constituted patent infringement, and ordered the two cease infringement immediately.