In China, there are many design points in the authorized design patents, such as the appearance of packaging products such as patterns and colors, such as bottle stickers, can stickers, packaging bags and packaging boxes. These designs are related to other intellectual property objects, such as works as copyright objects and trademarks as trademark objects. Objects with the same or similar design content may obtain intellectual property rights granted by many laws due to different approval and authorization procedures. If these rights belong to different subjects, there will be a so-called conflict of rights.
In order to solve the conflict between the patent right of design and other prior rights, relevant laws and regulations have made special provisions. Paragraph 3 of Article 23 of the Patent Law stipulates that a design granted a patent right shall not conflict with the legal rights previously obtained by others. The Supreme People's Court's judicial interpretation further explains "legal rights", including trademark rights, copyright, enterprise name rights, portrait rights, and the right to use the unique packaging or decoration of well-known commodities. The Patent Examination Guide (20 10) also makes detailed provisions on the examination of patent invalidation cases involving rights conflicts: when a prior obligee or interested party thinks that a design patent is suspected of infringing its prior rights, it may file a patent invalidation request with the Patent Reexamination Board of the State Intellectual Property Office. In the procedure of invalidation, the claimant shall provide evidence for his request, including proving that he is the obligee or interested party of the prior right and that the prior right is valid.
From a practical point of view, most of the invalid cases of design patents filed on the grounds of rights conflict involve registered trademarks and works with copyright. Very few people use other people's registered trademarks and works in patent applications without permission, and after being authorized, the implementation of the patent right will harm the legitimate rights and interests of the prior obligee. Therefore, this paper focuses on the conflict between patent right, trademark right and copyright of design.
First, the design patent right and prior trademark right
1. Causes and manifestations of conflict
Trademark is a sign that distinguishes goods or services provided by different individuals and enterprises, including words, graphics, letters, colors and other elements and their combinations. If it is similar to the design in terms of constituent elements, especially patterns and colors, the registration may be approved when part or all of the design has obvious identifiability and meets the requirements of trademark registration; On the other hand, when the trademark is combined with the packaging design of the product, it is possible to obtain a patent. This leads to a certain degree of overlap between the patent right of appearance and the trademark right in the object of protection, which is easy to cause rights conflict.
2, conflict judgment method
In the procedure of invalidation, the applicant's subject qualification and the validity of prior rights should be examined first. The claimant bears the burden of proof and needs to prove that he is the right holder or interested party of the prior trademark, and that the trademark right is still legal and valid and within the protection period. In general, the claimant can submit the trademark registration certificate, renewal certificate and exclusive license agreement as evidence.
Secondly, for the substantive judgment of conflict, we mainly learn from the methods in trademark administrative procedures, and usually adopt the following three judgment steps:
First, whether the product of the design patent is the same as or similar to the product of the prior trademark;
Second, whether the corresponding part of the design patent is the same as or similar to the prior trademark;
Third, whether it is easy to cause the relevant public to think that the patented product and the goods to which the trademark applies come from the same market subject, or mistakenly think that there is a specific connection with it.
3. Typical cases
Habsburg wine packaging box
Hennessy France is a world-famous wine producer. The company registered the famous "Handheld Tomahawk" graphic trademark in China with the registration number of 890643, and the registration period was from 2006128 to 2006127.
The patent number of Habsburg wine packaging box is 20 1030 139650.7, which relates to a wine packaging box. On 20 12, Hennessy Company of France filed a request for invalidation of the patent with the Patent Reexamination Board, on the grounds that the patent involved used a design similar to the above-mentioned registered trademark, which conflicted with the trademark right previously obtained by the claimant. After hearing the case, the Patent Reexamination Board made a decision to declare this patent invalid, considering that the patent involved conflicts with the above-mentioned prior trademark right, and declared this patent invalid.
First of all, the approved registration date of registered trademark No.890643 is earlier than the application date of the patent involved, and it is still within the validity period. They both use the same commodity. Secondly, the overall composition of the "Handheld Tomahawk" logo in the patent and the previous trademark consists of basically the same parts such as the bottom arc, the arm and the Tomahawk, which are mirror images of each other and belong to an approximate design. The patent involved in the case uses a logo very similar to the prior trademark on the same commodity, which is easy to mislead the public, make them misunderstand the source of the commodity, and damage the legal rights of the prior obligee.
How to use the editor of lighter box 6
Meibao Company is a world-renowned lighter manufacturer, and also registered its famous "ZIPPO" series trademarks in China, including "ZIPPO" word mark and "ZIPPO and Tu" trademarks. Among them, the dot on the letter "I" of the "ZIPPO" logo was changed into a red flame pattern in the trademarks of "ZIPPO and Tu", and the registration period was from March 4, 2003 to March 3, 2003.
The patent for design of lighter packaging box with patent number 200630 159047.9 relates to a packaging box. Zhibao Company brought a lawsuit to the court, arguing that the patent used a product pattern similar to its registered trademark, and once implemented, it would cause conflict with its exclusive right to use the trademark, requesting the patentee not to exploit the patent.
After the first and second trials, the court made a final judgment and determined that ZIPPO and Tu trademarks of Zhibao Company were prior legal rights. Once the patent involved is implemented, it is easy for the relevant public to mistakenly think that the commodity originated from Zhibao Company or is related to it, thus misleading the relevant public and ordering the patentee not to implement the patent involved.
Treasure company also filed a request for invalidation with the Patent Reexamination Board for the same reason. After examination, the Patent Reexamination Board considers that the above-mentioned patent conflicts with the prior trademark rights of its treasure company, and declares the patent right invalid.
Second, design patents and prior copyrights.
1. Causes and manifestations of conflict
The object of copyright law protection is "original" works in the fields of literature, art and science, such as fine arts and photographic works. The shape of design, the elements of pattern design and the characteristics of "aesthetic feeling" make it possible to overlap with these works in content. For example, when artistic works or photographic works are applied to the appearance of products as pattern elements, they may be protected by patent rights; Or the unique design of the product makes it have a high aesthetic value and become a practical work of art, which may also be protected by copyright. Due to the overlapping of protected objects, there may be rights conflicts.
2, conflict judgment method
In the procedure of invalidation, judging whether the patent right of design conflicts with the prior copyright mainly refers to the method of judging copyright infringement in judicial trial, which usually adopts the following three steps:
First, the legitimacy of the subject. Authors and other citizens, legal persons and other organizations that enjoy copyright according to law are the subject of copyright. In general, the author is the copyright owner. If there is no proof to the contrary, the citizen, legal person or other organization whose name is the work shall be regarded as the author, but it is necessary to provide the original, manuscript, book, copyright registration certificate and other evidence of claiming copyright.
The second is the legitimacy of the object, that is, whether it is "original". Judging from the review practice, most of the previous works are works of art and photography, which generally meet the requirements.
Third, the substantive judgment of conflict. To use the standard of "connection plus substantial similarity", we should first look at whether the patentee has contacted or may have contacted the work. Here, the obligee bears the burden of proof, which can be proved by submitting direct evidence that the patentee has contacted the work or indirect evidence that the work has been published or published. Then see if the corresponding part of the design is the same as or substantially similar to the previous works.
3. Typical cases
"Phoenix Nirvana" Porcelain Bottle Case
The patent number is 20 1 130394300. X relates to a phoenix-shaped porcelain bottle. In view of this patent, Jingdezhen Falan Porcelain Industry Co., Ltd. filed a request for invalidation with the Patent Reexamination Board on 20 13 on the grounds that it was in conflict with its prior copyright. After hearing the case, the Patent Reexamination Board made a decision to declare this patent invalid, considering that the patent involved conflicts with the prior copyright of the claimant, and declared this patent invalid.
The copyright registration certificate of the National Copyright Administration submitted by the judgment claimant can prove that it enjoys the copyright of FZ02 108 works of art; There is other evidence to prove that the work was known to the public before August 20 10, 20 1 1 year, and it is presumed that the patentee may have come into contact with the work.
Compared with the previous works, the patents involved are highly consistent in various aspects such as the expression of phoenix modeling and the application of design elements. Although there are some changes in the device type, it does not deviate from the original expression of the phoenix shape in the previous work, and the displayed design is also substantially similar to the previous work. The implementation of the patent involved will damage the relevant legal rights of the prior copyright owner and conflict with the prior copyright.
"Talking Tom Cat" Case
Outfit7 is a well-known mobile game developer, and its Talking Tom Cat is popular all over the world. With this excellent game and peripheral products, Outfit7 has made a lot of money around the world. The popularity of the game has also attracted many manufacturers to imitate, and many of the "cottage" products have also applied for design patents.
The design patent with the patent number of 20 1230022409.5 relates to a toy product. In view of this patent, Outfit7 Company filed a request for invalidation with the Patent Reexamination Board on 20 14, on the grounds that the patent involved was similar to its artistic works and conflicted with the copyright previously obtained by the obligee. After hearing the case, the Patent Reexamination Board made a decision to declare it invalid, holding that the patent involved was in conflict with the prior copyright, and declared the patent invalid.
The copyright registration certificate of the National Copyright Administration submitted by the judgment claimant can prove the copyright No.2014-f-00141282; There is other evidence to prove that the work was created at least on February 8, 20 12, and it is in a state known to the public, so it is presumed that the patentee may have access to the work.
The facial features and body proportions of cartoon cats in previous works make the overall image obviously different from other cartoon cats. The patents involved contain all the unique identification features of previous works. Although the details are different, the average observer can still recognize them as the same cartoon cat image at a glance. Therefore, the patents involved are basically similar to the previous works. The patent involved is the appearance design of three-dimensional modeling products, and the previous works are graphic art works. The patent involved is a copy of the previous work from plane to three-dimensional, and its implementation will damage the prior copyright of the obligee and conflict with the prior copyright.
The conflict between patent right, trademark right and copyright of design fundamentally stems from the contradiction between "shanzhai" and "innovation". By playing tricks, copying and imitating, enterprises will never be great, and countries will never have strong competitiveness. With the integration with the world economy, China's awareness and protection of intellectual property rights have been gradually strengthened, but there is still a big gap from the world's advanced level. Abandoning "shanzhai" and advocating "innovation" have a long way to go. Avoiding infringement and protecting rights in time are also our lessons that need to be improved urgently.