**The winery is the owner of the trademark "combination of Chinese characters and Chinese watch graphics". A winery in Luzhou, Sichuan produces and sells "Zhonghua" without authorization **winery sued the Luzhou winery for trademark infringement. During the trial, the Luzhou winery proposed that the outer packaging box of the Chinese series of wines it produced and sold had obtained a design patent certificate and did not infringe the trademark of the ** winery. The first-instance court determined that the Luzhou winery constituted trademark infringement, and the second-instance court also upheld the determination of trademark infringement. In trademark infringement cases, there are many cases in which the right to enjoy a design patent is used as a defense. So can a design patent protect against trademark infringement? Let’s analyze it below.
It still constitutes infringement
Applying for a design patent for packaging, trademark markings, etc. that are similar to the famous brand, for the purpose It is to imitate the packaging, decoration or trademark labeling of famous brand products, causing consumers to mistake them for famous brand products. When a company is sued or subject to administrative investigation, it is a method favored by those who favor famous brands, claiming that they have design patent rights to defend against accusations of trademark infringement. This method is actually not new. As early as 1995, the State Administration for Industry and Commerce issued a document specifically proposing guiding opinions on how to solve this problem: "Trademark exclusive rights and design patent rights are important intellectual property rights, and are subject to the "Trademark "Law" and "Patent Law". The acquisition of these rights shall abide by the principle of good faith in the "General Principles of Civil Law" and shall not infringe on the prior rights of others. For those who use design patent rights to compete with others' exclusive rights to trademarks, if the If the preliminary approval announcement date of a trademark precedes the design application date, before the design patent is revoked or declared invalid, the industrial and commercial administrative authorities can handle trademark infringement cases in a timely manner in accordance with the Trademark Law." That is to say, if If the appearance patent application is later than the preliminary announcement date of the trademark, the industrial and commercial administration department will still investigate and deal with it as trademark infringement. The attitude of the court can also be seen from the above cases. When the court hears similar cases, it also decides on the basis of infringement.
Patent rights will be revoked
A package often contains the manufacturer's trademark, and the package Designs can be applied for appearance patents. Because appearance patents do not undergo substantive examination, it is generally easier to obtain a patent for appearance designs, which leaves room for bad intentions to take advantage. Both appearance patents and trademark rights are protected by law. If trademark rights and patent rights belong to two different entities, conflicts will inevitably arise. Article 20 of the Patent Law revised at the 17th Session of the Ninth National People’s Congress on August 25, 2000Article 3 stipulates: “The design for which a patent right is granted shall be different from and similar to the design that has been publicly published in domestic and foreign publications or publicly used domestically before the filing date, and shall not conflict with the legal rights previously obtained by others. ." This amendment actually provides a legal basis for resolving the conflict between patent rights and trademark exclusive rights. If a design patent imitates someone else’s existing product packaging, the design patent will be invalidated because there is no novelty. Of course, the conflict between design patent rights and trademark rights does not rule out another form, which is to register a design that others have a design patent right as a trademark. According to the provisions of the Trademark Law, such a trademark can also be revoked. Such conflicts are beyond the scope of this article.
From the above analysis, we can see that using appearance patents to fight against trademark infringement does not actually make any sense. Whether it is the industrial and commercial administrative department in administrative investigation and handling of trademark infringement cases, Whether the court is hearing related trademark infringement cases, appearance patents cannot serve as a shield for trademark infringement and cannot be used to defend against accusations of trademark infringement. Having a design patent does not exempt or reduce infringement liability in the case of trademark infringement accusations. In this way, those who follow famous brands have no need to deliberately imitate other people's packaging and apply for patents, and trademark owners do not need to consider whether the other party has applied for a design patent for their outer packaging, and must resolutely crack down on their infringement of their own trademark rights.
