*AI-generated translation, for reference only.

Keywords: Administrative; invalidation of design patent right; prior lawful rights

[Case Facts]

Ma [REDACTED] Jun was the patentee of the design patent titled "Beer Can," Patent No. 201830256268.0. The filing date of the patent application was May 28, 2018, and the date of grant announcement was December 18, 2018. The design prominently displayed the text "V8" on the body of the can. [REDACTED] Beer Industry and Trade Co., Ltd. was the right holder of the registered trademark "V8" No. 22475245. The application date of the trademark was December 30, 2016; the date of preliminary examination announcement was July 27, 2018, and the registration date was October 28, 2018. [REDACTED] Beer Industry and Trade Co., Ltd. requested the China National Intellectual Property Administration to declare the patent right invalid on the ground that the patent did not comply with Article 23, Paragraph 3 of the Patent Law. On November 3, 2020, the China National Intellectual Property Administration made Invalidation Request Examination Decision No. 46751, maintaining the validity of the patent right. [REDACTED] Beer Industry and Trade Co., Ltd. was dissatisfied and filed a lawsuit with the Beijing Intellectual Property Court.

The Beijing Intellectual Property Court held at first instance that [REDACTED] Beer Industry and Trade Co., Ltd. obtained the exclusive right to use the registered trademark "V8" only from the date of approval of registration, which was later than the filing date of the patent application. Therefore, it was not an exclusive right to use a registered trademark that had already been obtained before the filing date of the patent application, and would not constitute a conflict with a prior right of the patent. Accordingly, on June 28, 2022, it rendered Administrative Judgment No. (2021) Jing 73 Xing Chu 2743, dismissing the claims of [REDACTED] Beer Industry and Trade Co., Ltd. [REDACTED] Beer Industry and Trade Co., Ltd. was dissatisfied and filed an appeal. On September 22, 2023, the Supreme People's Court rendered Administrative Judgment No. (2023) SPC IP Administrative Final 42:

(1) the Administrative Judgment No. (2021) Jing 73 Xing Chu 2743 rendered by the Beijing Intellectual Property Court was revoked;

(2) Invalidation Request Examination Decision No. 46751 made by the China National Intellectual Property Administration was revoked; and

(3) the China National Intellectual Property Administration was ordered to make a new examination decision on the request for invalidation filed by [REDACTED] Beer Industry and Trade Co., Ltd. against the design patent titled "Beer Can," Patent No. 201830256268.0.

[Judge's Opinion]

The effective judgment of the Court held that the legislative purpose of Article 23, Paragraph 3 of the Patent Law, which provides that "a design for which a patent right is granted shall not conflict with any lawful rights already obtained by another person before the filing date," is to avoid conflict between the exploitation of a design patent and another person's prior lawful rights. Any circumstance in which the exploitation of the design may infringe another person's prior rights falls within the regulatory scope of this paragraph. Therefore, in the trial of administrative disputes over the grant and confirmation of design patent rights, the term "lawful rights" prescribed in Article 23, Paragraph 3 of the Patent Law should not be narrowly interpreted. In general, any right or interest lawfully enjoyed, already obtained before the filing date of the patent application, and remaining valid at the time when the request for patent invalidation is filed shall be included. Trademark right is one of the prior lawful rights referred to in Article 23 of the Patent Law. Trademarks may be divided into registered trademarks and unregistered trademarks. A trademark right holder lawfully enjoys the exclusive right to use its registered trademark. As to an unregistered trademark that has, through use, established a corresponding association with the trademark right holder and in fact functions to distinguish the source of goods or services, the trademark right holder also enjoys lawful rights and interests.

In this case, the prior rights asserted by [REDACTED] Beer Industry and Trade Co., Ltd. included the prior rights and interests enjoyed through its prior use of the "V8" sign. Dali [REDACTED] Company, the predecessor of [REDACTED] Beer Industry and Trade Co., Ltd., had used and promoted the signs "Dali Beer V8" and "Dali V8" on beer products for as long as 12 years before the filing date of the patent application. These signs had acquired relatively high reputation and influence. Consumers had already understood "Dali Beer V8" and "Dali V8" as referring to the "V8" beer of Dali [REDACTED] Company, and the "V8" sign had thereby gradually formed a certain specific connection with Dali [REDACTED] Company. Moreover, the place where Ma [REDACTED] Jun resided and lived was also located in the main sales area of the beer, objectively giving rise to the possibility of imitation or copying of the trademark sign applied for earlier. It could therefore be determined that the patent did not comply with Article 23, Paragraph 3 of the Patent Law. Accordingly, the original judgment was reversed by revoking the first instance judgment and ordering a new decision to be made.

[Judgment Digest]

In administrative disputes over the grant and confirmation of design patent rights, any right or interest that has already been obtained before the filing date of the patent application and remains lawfully existing at the time when the request for patent invalidation is filed constitutes a "prior lawful right" prescribed in Article 23, Paragraph 3 of the Patent Law.

[Related Index]

Article 23, Paragraph 3 of the Patent Law of the People's Republic of China. Article 23, Paragraph 3 of the Patent Law of the People's Republic of China, as effective on October 1, 2009, applied in this case.

First instance: Administrative Judgment No. (2021) Jing 73 Xing Chu 2743 rendered by the Beijing Intellectual Property Court on June 28, 2022.

Second instance: Administrative Judgment No. (2023) SPC IP Administrative Final 42 rendered by the Supreme People's Court on September 22, 2023.