Bridgestone v Bull - prior design defence in China

Many of our readers have questions about the enforceability of designs in China.  We are delighted to bring you this report of a recent case on tyres, courtesy of the eminent Mr Chixue Wei of Linda Liu Group in Beijing, which was recently published in their IP Newsletter No 9. 

Bridgestone Corporation v Zhejiang Hang Ting Dun Bull Rubber Co., Ltd. and Beijing Bang Li Xin Tire Co., Ltd.

Basic Information

The patentee
(plaintiff in the first instance, appellant in the second instance, applicant in the retrial procedure): Bridgestone Corporation (hereafter referred to as Bridgestone Company)

The accused infringers

(defendant in the first instance, appellee in the second instance, respondent in the retrial procedure): Hang Ting Dun Bull Rubber Co., Ltd. of Zhejiang Province (hereafter referred to as Bull Company); Beijing Bang Li Xin Tire Co., Ltd.

Competent Courts and Case No.

The first instance: Beijing No. 2 Intermediate People’s Court of P.R.C. (2007) No.2 Intermediate Court Civil First Instance No.391

The second instance: Beijing Higher People’s Court of P.R.C. (2007) Higher Court Civil Final No.1552

The retrial: The Supreme People’s Court (2010) Civil Arraignment No.189

Type of the Case:
Infringement on the Patent for Design

Final Decision:
Bridgestone Company won the litigation

Date of Judgment:

March 1, 2011

Course of Events
Bridgestone Company enjoyed a patent right for design over their tire (hereinafter referred to as the Design). In 2006, Bridgestone Company found that a tire manufactured by Bull Company was exactly the same as the Design, and therefore started infringement litigation over the patent for design with the Beijing No. 2 Intermediate People’s Court of P.R.C.

During the litigation, Bull Company presented a prior design defense. After the hearing, the court of first instance held that the prior design defense was tenable and did not constitute an infringement on the patent for design. Therefore, the court overruled the claims put forward by Bridgestone Company.

Bridgestone Company was dissatisfied with the judgment of first instance and appealed to the Beijing Higher People’s Court of P.R.C. The Higher Court affirmed the original judgment after a hearing.

Bridgestone Company was dissatisfied with the judgment of second instance and filed an application for retrial with the Supreme People’s Court. Through the hearing, the Supreme People’s Court held that the original judgment was wrong in application of the law and retried the case.
After the hearing, the Supreme People’s Court issued a final judgment that reversed the judgments of the first and second instance and decided that the defendant in the first instance shall cease the production and sale of the infringing tire. The court also required Bull Company to destroy the model and stock of the tire and reclaim the stocks from the distributors and destroy them, and pay for damages to Bridgestone Company.

Disputed Issues
1. The method of examination and judgment of the prior design defense in the determination of an infringement of the patent for design.

2. Whether the accused infringing product falls into the protection scope of the Design.

3. Burden of the civil liability of infringement.

Judgment of the Courts
Court of first instance
(1) The defendant presented its prior design defense and provided evidence of prior design. When applying a prior design defense, only the accused infringing product needs to be compared with the prior design to decide whether they are identical or similar.

(2) Although the accused infringing product constituted a similar design to the Design, it also constituted a similar design with the prior design when comparing them as a whole.

Therefore, the prior design defense claimed by the defendant is tenable, and accordingly, it does not constitute an infringement on the patent for design.

Court of second instance
When judging whether the design is identical or similar, the decision should be based on the knowledge and cognitive ability of average consumers. Comparing the accused infringing product with the prior design, it can be found that they are similar as a whole. The difference insisted by Bridgestone Company was not a significant impact on the overall visual effects. Consequently, the accused infringing product and the prior design constituted only a similar design.

Therefore, Bridgestone Company’s grounds of appeal are untenable.

Court of retrial
(1) When judging whether the prior design defense of the accused infringer is tenable, the accused infringing product should be compared with the prior design first to confirm whether they are identical or have no substantial differences. If the accused infringing product is identical with the prior design, the prior design defense would be tenable. If not, it should be further decided whether they have substantial differences or constitute similarity. When judging the similarity, if there is only a simple comparison between the accused infringing product and the prior design, the difference between them and the effects on both of the overall visual effects from the difference may be ignored. This may lead to a wrong judgment and lead to a situation where the design of the accused infringing product, prior design and the Design all constitute similarity. Therefore, when the accused infringing product is different from the prior design, in order to draw a correct judgment conclusion on the infringement of patent for design the prior design should be used as the base, and then a separate comparison conducted among the accused infringing product, the prior design and the patent for design and to make a comprehensive judgment. During this process, attention should not only be paid to the difference and the similarity between the design of the accused infringing product, the prior design and the impact on the overall visual effects, but also the difference between the Design, the prior design and the impact on the overall visual effects. Whether the design of the accused infringing product makes use of the difference between the design patent and the prior design should also be taken into consideration when judging whether there is a substantial difference between the design of the accused infringing product and the prior design.

(2) In this case, the accused infringing product is not identical with the prior design. In terms of the difference among the accused infringing product, the Design and the prior design, the difference between the Design and the prior design brings conspicuous impact on the overall visual effects. As the accused infringing product makes use of the above difference, the above difference also constituted the difference between the accused infringing product and the prior design. Compared with the similarity between the accused infringing product and the prior design, this similarity brings a more conspicuous impact on both of their overall visual effects. From the perspective of average consumers, the accused infringing product is not identical with the prior design, and they bear no substantial similarity on the overall visual effects.

Therefore, the prior design defense was not tenable, and accordingly the accused infringing product constitutes an infringement on the patent for design.

Our Comment
Although the prior design defense was stipulated expressly for the first time after the third amendment of the Patent Law of the P.R.C, there have been precedents recognized earlier in the judicial practice. However, as there are no explicit provisions on its principle of application and method of judgment, the way of handling the cases by each court vary accordingly.
As for infringement litigation over patents for design, when the defendant presents a prior design defense, the viewpoints of the courts of first instance and second instance are that it only needs to compare the accused infringing product with the prior design, and it compares the accused infringing product and the Design only when the accused infringing product and the prior design are not identical and similar.

With respect to the above viewpoint of the court, we are of the opinion that it lacks legal basis and is not in accordance with the purpose of the legislation. Thus, as the agent of Bridgestone Company, we filed an application for retrial and the Supreme People’s Court retried this case.

 From the written judgment of the Supreme People's Court, we can see that the Supreme People's Court expressly denied the method that only compares the accused infringing product with the prior design and then decides whether the prior design defense is tenable or not when the accused infringing product is not identical with the prior design. The Supreme People's Court held that infringement should be judged according to the following steps when the accused infringer presents a prior design defense in the infringement litigation of the patent for design:

Step 1:  Compare the prior design with the accused infringing product. If they are identical, the prior design defense is tenable and accordingly the infringement is not tenable.
Step2: If they are not identical, the prior design should be used as the coordinate, and then a separate comparison conducted among the prior design, the accused infringing product and the Design. The comparison should also be based on whether the accused infringing product makes use of the difference between the Design and the prior design as well as its impact on the overall visual effects so as to decide whether the accused infringing product is similar to the prior design and the Design.
It can be seen that the reasoning of the Supreme People’s Court took into full consideration the comparison of the Design and the prior design so as to seek a balance between the benefit to the patent holder of the patent for design and that of the public. This method is in accordance with the purpose of the legislation for the design and the prior design defense. Therefore, the Supreme People's Court has made a fair judgment in this case. However, as this method requests a separate comparison among the three designs and needs a comprehensive consideration of the impacts on the visual effects brought by the differences and similarities, it has a high requirement for a judge’s ability. We expect that the local courts can apply the prior design defense correctly in future judicial practice.

Author: Wei Chixue Law Firm