In the development of a new product, it is not uncommon that designers would like to create several similar designs under a single concept concurrently or in a row. Thus, soon after the launching of a new product, another product with a design modified based upon the original design may be generated and introduced to the market to meet consumers’ response or expectations. Accordingly, the old Patent Law provided the so-called “associated design” patent system. When a person has created a design which originates from and is similar to an original design of the same person already filed, he/she may file an associated design patent application for said similar design to seek a more thorough protection.
Generally, in a design patent infringement lawsuit, it is necessary for the court to first determine the scope of the patented design and then conduct a comparison to determine whether an allegedly infringed product is the same as or similar to the patented design in outer appearance. The associated design patent system under the old Patent Law was aimed to not only afford protection to similar designs created by the same person but also to help the scope of the original design patent to be more precise in the analysis of design similarity.
The role that an associated design patent played was particularly reflected in a recent design patent infringement case, in which the IP Court placed much weight on an associated design patent of the patent owner in determining the scope of the based-upon patented design secured in 2012 and in analyzing differences between the patented design and the allegedly infringed product. A summary of the infringement case is provided below.
- The design patent based upon by the design patent owner in initiating the lawsuit is entitled “beverage container.” The design patent owner claimed that the product “vacuum flask” sold by the defendant infringed upon its design patent, whereas the alleged infringer argued that the product sold did not fall within the scope of the patented design.
- The based-upon patented design comprises a cylindrical body and a lid assembled to the body, wherein the body has a storage space inside, and the body is gradually reduced near the top of the outer contour to form a neck portion and a peripheral flange is provided around the bottom of the body. The lid, assembled to the top of the body, comprises an upper part and a lower part, the upper part and lower part being interlocked by a locking element on the outer side of the lid. The locking element consists of snap-fit type semicircular rings.
The design patent owner has an associated design patent for a similar design which differs from the based-upon patented design only in the length of the bottle body (see the figures below). The associated design patent was cited by the design patent owner as a reference to determine the scope of the patented design patent; namely, the patented design patent covers a longer and narrower bottle body as disclosed in the associated design patent.
- The allegedly infringing product “vacuum flask” has the same function and intended use as the patented design entitled “beverage container” for storing fluids. After an overall comparison of the appearance of the allegedly infringing product and the patented design, the IP Court rendered the following opinion in its analysis of the similarities of the two designs:
The ornamental features common in the patented design and the design of the allegedly infringing product include:
||The upper part of the lid has a sloping top surface which slants from the front side to the back side. The top surface is slightly convex.
||The lid and body are connected to form a neck portion.
||The push button of the locking element has a gourd shape.
||The locking ring of the locking element is semicircular in shape.
||A flange is formed around the bottom of the body.
||The bottom of the body is provided with a ring element.
Differences between the patented design and the design of the allegedly infringing product:
||The body portion in each design is in a cylindrical shape. The body of the allegedly infringing product is longer and narrower than the patented design.
||In the patented design, the top surface of the upper part of the lid has a “circular ornamentation”, which is absent in the allegedly infringing product.
Differences are shown in the following figures:
The IP Court took the view that the two designs share substantially the same ornamental features and differ only in the proportion of the length of the body, and that the longer and narrower form of the bottle body has been disclosed in the associated design patent of the patented design patent. The absence of a circular ornamentation on the top surface of the lid of the accused product was considered by the Court to be merely a minor feature insufficient to affect the overall visual impression displayed by the allegedly infringing product. Since the Court found the allegedly infringing product to be nearly identical with the associated design in overall appearance, it should be also similar to the patented original design and thus constituted an infringement.
The above-referenced case emphasized the significance of an associated design patent in delineating the scope of protection offered by the original design patent. However, as the patent right of an associated design obtained under the old Patent Law is subordinate to the original design patent, an associated design patent could not be independently enforced against similar designs. In order to provide a more thorough protection to designers, a derivative design patent system was introduced into the current Patent Law in 2013 to replace the associated design patent system.
The current derivative design patent system is more to the advantage of design owners since a derivative design patent can be independently enforced. For design owners who wish to build a patent portfolio of similar designs under a single design concept, they may seriously consider filing derivative design applications to secure the broadest possible protection in Taiwan.