4.26 Intellectual Property Awareness Week | Where is the boundary between design and trademark rights? A new judicial breakthrough from the perspective of the Biao case
A case of administrative dispute over the invalidation of a design patent involving a certain European company, the National Intellectual Property Administration, and Kunshan Duomou Sporting Goods Co., Ltd. (Case No.: (2024) Supreme People’s Court Zhi Xing Zhong 860), centers on design patent No. 201230051729.3, entitled “Running Spiked Shoes (2012-6).”
Biao Company contends that the linear pattern on the upper of the patented shoe is similar to its three prior trademarks, which is likely to cause confusion or misidentification among the relevant public, thereby constituting a conflict of rights and failing to comply with Article 23, paragraph 3, of the Patent Law.
Case Timeline
The three prior trademarks of Biao Company are Trademarks No. G581191, No. G426712, and No. G925647, all designated for use on goods in the class of footwear. Duemou Company submitted Trademark No. 3016612 as counter-evidence; the designated goods for this trademark include sports shoes, among others.
Subsequently, the National Intellectual Property Administration issued Review Decision No. 59726 on the request for invalidation, upholding the validity of this patent right.
The court of first instance held that there are differences between the graphical elements of the patent in question and those of three prior trademarks owned by Biao Company, and that the patent also incorporates Dowin Company’s trademark No. 612 and the “DOWIN” mark. Consequently, consumers are unlikely to regard the shoe upper design as a distinctive sign for identifying the source of the goods, and confusion or misidentification will not result. The court therefore dismissed Biao Company’s claim.
Biao Company, dissatisfied with the first-instance judgment, filed an appeal with the Supreme People’s Court, arguing that the first-instance court erred in its findings of fact and application of law. Biao Company contended that the disputed design is similar to three prior‑registered trademarks, that the “DOWIN” mark is insufficient to eliminate the likelihood of confusion, and that Duo Company’s application for this patent was made in bad faith.
During the second-instance proceedings, Biao Company submitted extensive evidence demonstrating that the present patent is similar to three prior‑registered trademarks, that Duo Company applied for the present patent in bad faith, and that its own trademark enjoys a high degree of recognition.
Comparison Table of the Plaintiff’s Rights-Enforcing Trademark and the Patent Drawings in Question | |
Trademark of a certain company | Patent drawing for patent application No. 201230051729.3 |
Trademark No. G581191 | |
Trademark No. G426712 | |
Trademark No. G925647 | |
01
Judicial Reasoning and Methods of Argumentation
When hearing this case, the Supreme People’s Court,First, the criteria for determining whether a design patent right conflicts with a prior‑filed trademark right have been clarified.. The court noted that this essentially involves examining whether the implementation of a design patent would infringe upon the legitimate rights or interests enjoyed by others based on their prior‑registered trademarks or well‑known unregistered trademarks.
If the disputed design used in a design patent constitutes trademark use, and if, applying the standard of the average attention of the relevant public and taking into account factors such as the degree of similarity between the category of the designed product and the goods or services for which the prior‑registered trademark is approved, the degree of similarity between the disputed design and the prior trademark, as well as the distinctiveness and reputation of the prior trademark, the implementation of the design is likely to cause the relevant public to be confused as to the source of the goods or to mistakenly believe that the products covered by the design patent are specifically connected with the owner of the prior trademark, then the design patent right and the exclusive right to use another party’s prior‑registered trademark constitute a conflict of rights and are not in compliance with Article 23, paragraph 3, of the Patent Law.
01Criteria for Determining Trademark Use
The Supreme Court specifically analyzed three grounds:First, With respect to footwear products, particularly athletic shoes, the practice of placing a figurative trademark on the mid‑section of the shoe’s side panel to indicate the source of the goods was a common industry practice prior to the filing date of this patent application, and the relevant public typically identifies the source of the goods by the pattern on the shoe’s side panel.
In this patent, the disputed design is applied to the side of the shoe upper, which is a customary placement for graphical trademarks on footwear products. Moreover, it occupies a substantial area, constituting prominent use that is likely to attract the attention of the relevant public and serve to identify the source of the goods.
Second, Duomou Company has applied for multiple figurative trademarks on footwear products that are similar to the disputed design. In addition to this patent, it has also filed several design patents for athletic shoes, all of which feature a pattern on the mid‑section of the shoe side that is identical or highly similar to the disputed design, with the pattern occupying substantially the same area, proportion, and specific layout on the shoe side. Considering that Duomou Company has registered numerous trademarks on footwear products that are similar to the disputed design, it can be determined that the disputed design is not, or is not solely, a decorative element intended to complement the shoe’s style or function; rather, Duomou Company has the intention of using the disputed design to identify the source of its goods.
Third, In this case, Duomou Company contends that its use of the disputed design constitutes legitimate use of its legally registered Trademark No. 612; accordingly, it also acknowledges that the use of the disputed design in the present patent amounts to trademark use.
This innovative standard for determining trademark use breaks away from the traditional approach that focuses solely on the design itself, instead incorporating industry practices and the perceptions of the relevant public into the assessment, thereby ensuring that the determination better reflects actual market conditions and consumer cognitive patterns.
Analysis of the Determination of Degree of Approximation
The Supreme People’s Court holds that, in determining whether the design in dispute in a design patent infringement case is similar to a prior‑registered trademark, the standard should be the general attention of the relevant public. The determination shall be made by comprehensively considering factors such as the degree of similarity between the categories of products covered by the design patent and the goods or services for which the trademark is registered, the degree of similarity between the design in dispute and the prior‑registered trademark, as well as the distinctiveness and reputation of the trademark.
The Supreme People’s Court conducted its analysis based on the categories of goods and the degree of similarity of the marks. First, in terms of the degree of similarity between the goods, the present patent pertains to spiked running shoes, while the three prior trademarks owned by Biao Company are registered for use on goods including shoes and athletic footwear. The court determined that the goods covered by the present patent and those covered by Biao Company’s three prior trademarks belong to the same class of goods.
Secondly, in terms of the degree of similarity between the marks, the court conducted a detailed comparison of the design features of the disputed pattern used in this patent with those of three prior trademarks owned by Biao Company, noting that both employ flowing lines to form an arc-shaped track pattern that extends from the lower left to the upper right. The striped patterns in both cases consist of three parallel lines, curving outward toward the lower left and converging toward the upper right, rendering them highly similar in shape, the proportional distribution of their constituent elements, overall composition, and line orientation.
03Consideration of the Prior Trademark’s Distinctiveness and Reputation
When assessing the distinctiveness and reputation of a prior trademark, the Supreme People’s Court no longer confines its evaluation to the trademark registration itself, but extends it to the actual use of the trademark and its market influence. The court conducted a thorough examination of the historical evolution, usage, and market influence of three prior trademarks owned by Biao Company.
includes: Beginning in 1958, a certain company, “Biao,” started using a track-and-field motif on both sides of its athletic shoe uppers. At the 1964 Tokyo Olympics, the 1968 Mexico City Olympics, the 1970 World Cup Final, the 1973 NBA Finals, and the 1986 FIFA World Cup, numerous renowned athletes wore Biao-branded athletic shoes featuring the track-and-field logo. During the 2008 Beijing Olympics, Usain Bolt competed while wearing Biao athletic shoes bearing the track-and-field logo. In September 2005, a trading company named “Biao” was established and began distributing footwear products nationwide. Prior to the filing date of this patent application, several television stations aired advertisements for Biao athletic shoes featuring the track-and-field logo, and newspapers and online media also conducted extensive promotional coverage of Biao’s products.
Supreme CourtIt is particularly noted that the three prior trademarks involved in this case are all runway‑style logos: Trademark No. 712 was approved for registration in China in 1976, Trademark No. 191 in 1991, and Trademark No. 647 in 2007—each predating the filing date of the present patent application. Moreover, through the use and promotion by Biao Company, these trademarks had already attained a high level of distinctiveness in relation to athletic footwear prior to the filing date of this patent application.
The court holds that, although the disputed design differs from Biao Company’s three prior trademarks in certain respects, such as line width, spacing, and curvature, taking into account the distinctiveness and reputation of the prior trademarks, the use of a mark in this patent that is similar to Biao Company’s prior trademarks—combined with its specific placement and manner of use, which also resemble those of the prior trademarks—may easily cause relevant consumers to be confused regarding the source or to mistakenly believe that the patented product has a specific connection with Biao Company, thereby infringing upon Biao Company’s exclusive rights in its three prior trademarks.Conflicts with the three prior trademark rights of Biao Company.。
With regard to Duo Company’s defense that the present patent constitutes lawful use of its registered trademark No. 612,Supreme Court was subjected to a detailed analysis.
The court held that although the disputed design used in this patent is also similar to Trademark No. 612, a comparison between the two reveals that in Trademark No. 612, the three separate arcs extend to the center, where they merge into a single arc that continues upward and to the right for a considerable distance, with the left and right portions of the arc exhibiting distinct characteristics. In contrast, in the disputed design, the three separate arcs narrow as they extend upward and to the right but do not merge into a single arc; instead, they create a continuous, flowing effect. Moreover, in Trademark No. 612, the three separate arcs and the merged arc each occupy approximately half of the overall graphic, leading the relevant public to devote roughly equal attention to both parts. By contrast, in the disputed design, the three separate arcs constitute a larger proportion of the entire graphic, making them more likely to attract the attention of the relevant public.
The aforementioned distinctive design elements incorporated in the disputed mark more closely resemble the design features of three prior trademarks owned by Biao Company.
02Extraction of the Judicial Breakthrough in the Judgment
In its judgment in this case, the Supreme People’s Court set forth several groundbreaking judicial principles, thereby providing important judicial guidance in the field of cross‑protection of intellectual property rights. These breakthroughs are not only reflected in the application of the law, but also in the evolution of judicial approaches and protective principles, which are of great significance for improving China’s intellectual property protection system.
01Innovation in the Legal Application at the Intersection of Trademark Law and Patent Law
Supreme CourtThe first judicial breakthrough in this case lies in the clarification of the criteria for determining conflicts between design patent rights and prior trademark rights.The court noted that, in essence, the examination centers on whether the implementation of a design patent would infringe upon the legitimate rights or interests enjoyed by another party based on its prior‑registered trademark or an unregistered well‑known trademark.
Where the requestor in an invalidation proceeding alleges a conflict of rights between a design patent and a prior‑registered trademark, the standards for determining trademark infringement shall apply. It is necessary to examine whether the use of the disputed design in the industrial design constitutes trademark use and whether such use is similar to the prior‑registered trademark, thereby creating a likelihood of confusion or misidentification among the relevant public.
The significance of this innovation in the application of law lies in,It has broken the traditionally compartmentalized nature of intellectual property protection across different legal domains, establishing an organic connection between trademark law and patent law.。
Supreme CourtIt does not simply set design patent rights against trademark rights; rather, it proceeds from the fundamental objective of protecting the legitimate rights and interests of right holders and upholding market order.By incorporating the criteria for determining trademark infringement into the examination of invalidation proceedings for design patents, coordination and alignment among different intellectual property law domains have been achieved.。
Supreme Court The second judicial breakthrough of lies in the flexible application of evidentiary rules.The National Intellectual Property Administration argues that the evidence submitted by Biao Company in the second-instance proceedings was not presented during the invalidation request examination stage. With the exception of corroborative evidence, the People’s Court should not review the remaining evidence pursuant to Article 30 of the Judicial Interpretation on Regulations Concerning Patent Grant and Confirmation of Rights.
ButSupreme Court holds that, in administrative disputes concerning the invalidation of a patent for industrial design on the ground that it conflicts with another party’s prior‑registered trademark right and thus fails to comply with Article 23, paragraph 3, of the Patent Law, the key issue is whether the implementation of the patented design would infringe upon the prior‑registered trademark right. Specifically, the determination is made by applying the standard of the average attention of the relevant public: whether the disputed design used in the patented industrial design is similar to the prior‑registered trademark, thereby likely causing confusion or misidentification among the relevant public.
Supreme Court points out that,The distinctiveness of the prior trademark, as well as its level of recognition resulting from use and promotion, constitutes an important factor influencing the average attention of the relevant public and is also a key consideration in determining the likelihood of confusion.. Therefore, the evidence submitted by the parties in an administrative lawsuit concerning the invalidation of a design patent to demonstrate the prior trademark’s distinctiveness, reputation, and likelihood of confusion does not constitute a newly raised ground for invalidation; rather, it is used toThe basis for objectively determining the general attention and common understanding of the relevant public, in accordance with the provisions of the judicial interpretation, the people’s court shall conduct a review.
Improving the Criteria for Determining Trademark Use
Supreme CourtIn this case, the refinement of the criteria for determining trademark use is primarily reflected in the following aspects:
First, the Supreme CourtSpecific factors for determining trademark use have been clarified.This includes the specific manner in which the design at issue is used within the overall appearance design, industry practices, the level of attention and common understanding of the relevant public, as well as the subjective intent of the applicant for or owner of the design patent. provides clear criteria for adjudicating similar cases.
This multi-factor comprehensive evaluation approach avoids the one-sidedness inherent in relying on a single factor, ensuring that the adjudication outcomes are more consistent with actual market conditions and consumers’ cognitive patterns.
Second, the Supreme Court emphasizedThe Important Role of Industry Practice in Determining Trademark Use. In this case,Supreme Court It is pointed out that, for footwear products—particularly athletic footwear—the practice of placing a figurative trademark on the mid‑section of the shoe’s side panel to indicate the source of the goods was a common industry practice prior to the filing date of this patent application, and the relevant public typically identifies the source of the goods by the pattern on the shoe’s side panel.
This type of determination, based on industry practice, ensures that the assessment of trademark use better reflects actual market conditions and avoids mechanically applying rules in a way that is detached from the marketplace.
Third,Supreme CourtThe subjective intent of the applicant for or the owner of a design patent shall be taken into account as a factor in determining whether use constitutes trademark use.. In this case,Supreme CourtBy analyzing the fact that Duomou Company has applied for multiple figurative trademarks on footwear products that are similar to the disputed design, and has used the same or similar designs in numerous design patents for athletic shoes, it is determined that Duomou Company had the intention to use the disputed design to identify the source of its goods.
This consideration of subjective intent makes the determination of trademark use more comprehensive and thorough.
03Refinement of the Criteria for Assessing the Likelihood of Confusion
Supreme CourtIn this case, the refinement and deepening of the criteria for assessing the likelihood of confusion are primarily reflected in the following aspects:
First,Supreme CourtIt has been clarified that confusion encompasses not only source confusion but also confusion regarding a specific connection. Duomou Company argues that this patent designates Duomou Company’s registered trademark No. 612 on the shoe’s fastening mechanism and the “DOWIN” trademark on the outer side of the shoe upper, making it unlikely for the relevant public to perceive the disputed design as an indicator distinguishing the source of the goods.
ButSupreme CourtIt has been pointed out that trademark similarity giving rise to confusion or misidentification among the relevant public encompasses not only the mistaken belief that the products originate from the same source, but also the mistaken belief that goods bearing the disputed mark are specifically connected to goods protected by another party’s trademark. The court finds that the fact that this patent bears the trademark No. 612 of a certain company as well as the “DOWIN” trademark is insufficient to affect the conclusion of this case.
Second,Supreme CourtThe criteria for assessing the degree of similarity between trademarks have been refined.In this case,Supreme CourtNot only was the visual similarity between the disputed design and the prior trademark compared, but also the attention allocation of the relevant public across different elements was analyzed.Supreme CourtIt was pointed out that in Trademark No. 612, the three separate arcs and the single merged arc each account for half of the overall design; therefore, the relevant public would devote roughly equal attention to both parts. However, in the disputed design, the three separate arcs constitute a larger proportion of the entire graphic, making them more likely to attract the attention of the relevant public.
This analysis method, which is based on consumers’ attention allocation, makes the assessment of logo similarity more scientific and precise.
Third,Supreme CourtIt emphasizes the crucial role of the distinctiveness and reputation of a prior trademark in assessing the likelihood of confusion.In this case,Supreme CourtAfter a thorough review of the prior use history and promotional activities of Biao Company’s trademarks, it was determined that its three prior trademarks had already attained a high level of distinctiveness and well‑known status in relation to athletic footwear as of the filing date of this patent application.
Supreme CourtIt is held that, although the disputed design differs from three prior trademarks owned by Biao Company in certain aspects such as line width, spacing, and curvature, taking into account the distinctiveness and reputation of the prior trademarks, the use of a mark in this patent that is similar to Biao Company’s prior trademarks—coupled with its similar placement and manner of use—may easily cause relevant consumers to be confused regarding the source or to mistakenly believe that the patented product has a specific connection with Biao Company.
Professional Analysis and Practical Recommendations
In this case, the Supreme People’s Court not only resolved the specific dispute at hand but also advanced innovative judicial principles in the field of cross‑protection of intellectual property rights, thereby contributing significantly to the refinement of China’s intellectual property protection system. From the perspective of a professional lawyer, the theoretical significance and practical value of the judgment in this case are primarily reflected in the following aspects:
(I) Theoretical significance and practical value of the judgment
The theoretical significance of the judgment in this case lies inIt has broken the traditionally relatively isolated state of various legal fields in intellectual property protection, establishing an organic connection between trademark law and patent law.Supreme CourtRather than simply pitting design patent rights against trademark rights, this approach—guided by the fundamental objective of safeguarding the legitimate rights and interests of right holders and maintaining market order—introduces the criteria for determining trademark infringement into the examination of invalidation proceedings for design patents, thereby achieving coordination and alignment across different areas of intellectual property law.
This innovative approach to the application of law provides an important theoretical foundation for the cross-protection of intellectual property rights.
The practical value of the judgment in this case lies inIt provides enterprises with clear guidance on intellectual property protection. In this case, the court emphasized that, where a prior trademark enjoys a high degree of reputation and distinctiveness, the patent holder should more strictly adhere to proper use of its registered trademark and may not, in disguised form, appropriate the distinctive elements of another party’s prior trademark.
This judicial view is of great significance in guiding enterprises to operate with integrity and respect the intellectual property rights of others. At the same time, the courts’ refinement and deepening of the criteria for determining trademark use, the degree of similarity between marks, and the likelihood of confusion have also provided enterprises with specific practical guidance on intellectual property application and protection.
Practical Recommendations for Corporate Intellectual Property Protection
Based on the reasoning and judicial breakthroughs in this case’s judgment, enterprises can take the following steps to strengthen their intellectual property protection:
01
Strengthen the systematic layout of intellectual property.
A comprehensive consideration should be given to the coordination and alignment among different types of intellectual property, particularly in the intersection between design patents and trademarks, with a focus on ensuring synergy between patent applications and trademark registrations to mitigate the risk of infringement.
02
Enhancing trademark awareness and distinctiveness
Actively use and promote the trademark, expand its influence through various means, and strengthen trademark protection.
03
Standardize the use of registered trademarks
Use the trademark strictly in accordance with its registered form, and avoid any disguised use of the distinctive elements of another party’s prior‑registered trademark.
04
Strengthen intellectual property risk prevention
Before product design and application, conduct thorough research and patent searches to avoid infringing on the prior rights of others.
05
Actively safeguard intellectual property rights.
When your rights and interests are infringed upon, promptly take legal action to protect them.
In conclusion, enterprises can draw on the reasoning set forth in this case to comprehensively strengthen intellectual property protection and thereby foster their own innovative development.
lawyer
Introduction
Attorney Qu Bangxi
Zhiheng (Foshan) Law Firm
Attorney Qu Bangxi holds professional qualifications as both a patent attorney and an intellectual property economist. Prior to practicing law, he/she worked for a well-known ceramics company for an extended period, focusing on technology management and intellectual property, and has a deep understanding of corporate IP strategy and enforcement practices. Since commencing practice, he has focused on intellectual property, civil and commercial disputes, and labor controversies, successfully representing numerous landmark cases—ranging from securing a well‑known trademark designation for a client and obtaining RMB 3.2 million in damages to facilitating multi‑million‑yuan settlements through systematic evidence collection. His client base includes industry leaders such as Xinmingzhu, Arrow, and Dongpeng. Leveraging a dual background in industry and law, he is able to provide clients with pragmatic and efficient solutions to intellectual property and commercial disputes.
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