III. The legal risk in the lawsuit filed against design infringement
Furthermore, once Apple initiate the lawsuit basing on the design, it may be trapped in the patent validity and serial lawsuits, and it’s also a common challenge of patent lawsuits in China.
1. The poor stability of design patent
Despite the design patent is granted by the administration after approval, the organ will not examine the novelty and creativity of the patent applied for it being instable at all. For example, in the design dispute between SECO and HONDA (note: the link is in Chinese), when HONDA sued against SECO for the claimed plagiarism of SECO’s S-RV to its CR-V, the defendant filed the application of patent validity, and present the evidence including the previous design patent applied by HONDA.
And Apple may also face the same problem, for the Apple Store in Lujiazui is quite similar to other stores around the world, and once Apple filed the case on the design, the defendant may initiate the patent revocation application for less novelty of the Lujiazui Store. While, when Apple chooses to protect its right by the copyright law, the right will be automatically granted by law when the works are finished, and it’s also difficult to be overthrown by others.
2. More money and time consuming for patent infringement
In addition to the above analysis, even the failure of the defendant in invalidity application of the patent, the time of the process may be spent much. In HONDA vs SECO, the application of the invalidity of patent suspended the lawsuit. And till now no specific conclusion on the case has been made due to the numbers of patent invalidity application, the decision made by the paten review and adjudication board, and the 1st and 2nd instance of the court. (now the case is under the retrial procedure, and the decision of the 1st instance has been overthrown).
In a word, we think it has little significance to apply the design patent for Apple, for it aims at the reemphasis on the exclusive right to the store design and prevent other’s passing off. Surely, the Apple Store is a special instance for it’s the architecture works, while for other designs industry, the design patent is necessary.
Other recommended posts on our website:
1. The Actual Term of Trademark Registration in China
2. How to Apply for the Trademark Record in China Custom
3. How to improve the success rate of trademark registration in China?
4. Matters for Attention in Trademark Refusal Review in China
5. Introduction of China’s Legal System of Trademark Renewal
6. Introduction on the Regulations concerning the Capital Contribution in IPR or Domain Name in China
7. The Copyright Registration in China Could Be FREE?
8. China Copyright Protection Term Longer than EU’s?
9. Matters for Attention in the Patent Preliminary Injunction Application in China(I)
Author: Mr. Luo Yanjie
Attorney-at-law of DeBund Law Offices
Co-author: Mr. You Yunting
Founder & Editor-in-Chief of Bridge IP Law Commentary
Partner & Attorney-at-law of Shanghai DeBund Law Offices
Email: Bridge@chinaiplawyer.com, Tel: 8621-5213-4900,
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Bridge IP Law Commentary is a website focus on the introduction of commercial laws in China, especially the intellectual property laws. All the posts here are our original works. And all news or cases referred here are from public reports, and our comments or analysis are of due diligence, neutrality and impartiality, representing our own opinions only and are our original works. You may contact us shall you have any opinions or suggestions.