Amid the dazzling array of commodities on e-commerce platforms, a product shaped like a "pecking bird" has quietly become popular. It is touted as a "creative doorbell" by sellers, yet seen as a "fun toy" by buyers. Recently, a court heard and delivered a clear judgment on an infringement dispute over the industrial design patent of the pecking bird toy, safeguarding the legitimate rights and interests of the patent holder and drawing a clear line for market entities in determining industrial design patent infringement.
Case Recap
The plaintiff is an enterprise holding the industrial design patent for the "pecking bird toy". However, the plaintiff discovered that a product sold by the defendant on the Taobao platform was almost identical in appearance to its patented product – with a high degree of overlap in overall shape, color matching, and structural functions. The plaintiff sued the defendant, demanding that it cease the infringing acts and compensate for economic losses.
Faced with the accusation, the defendant raised a defense: the product was clearly labeled under the "doorbell" category on its Taobao store page, which falls into a different category from the plaintiff’s patented "toy" product. This, the defendant claimed, failed to meet the prerequisite of "the same category of products" for industrial design patent infringement, and thus no infringement was constituted.
Court Trial
In the trial, the court clearly pointed out that in determining industrial design patent infringement, the definition of "product category" cannot be based solely on the one-sided labeling of the infringing party; instead, it should be comprehensively judged by combining the actual appearance, functional use of the product and the actual usage cognition of market consumers.
In terms of appearance comparison, the product sold by the defendant was completely identical to the plaintiff’s patented pecking bird toy in overall shape, color matching, structural functions and other aspects, falling within the protection scope of the plaintiff’s industrial design patent.
In terms of actual usage scenarios, the court found key evidence: in addition to containing the words "door knocking gadget" and "creative doorbell", the defendant’s product link title also included the word "toy", showing a subjective intent to guide consumers to purchase it as a toy. A large number of buyer reviews such as "So cute, kids love it" and "Baby has a great time playing with it" also confirmed that the product is widely used as a children’s toy in practice and has the core attributes and functions of a toy.
Based on the above analysis, the court held that the product sold by the defendant fell within the protection scope of the plaintiff’s industrial design patent, and ordered the defendant to immediately cease the infringement and compensate for economic losses.
Legal Analysis
The judgment of this case reveals the key criteria for determining "product category" in industrial design patent infringement. In accordance with the relevant provisions of the Judicial Interpretation of the Supreme People's Court on the Application of Law in the Trial of Patent Infringement Dispute Cases, the determination of industrial design patent infringement mainly considers the following three core elements:
First, the comprehensive definition of product category. To determine the product category by clarifying the product’s intended use, it is necessary to refer to comprehensive factors such as the brief explanation of the industrial design, the International Classification of Industrial Designs, product functions, as well as sales and actual usage conditions. The determination of a product category can never be based solely on the one-sided labeling of sellers; instead, it is required to see through the form to the essence and examine the product’s actual use and market cognition.
Second, the judgment of identical or similar product categories. Where an industrial design identical or similar to the authorized design is applied to a product that is identical or similar to the product of the industrial design patent, the alleged infringing design shall be deemed to fall within the protection scope of the industrial design patent right. In this case, although the defendant labeled the product as a "doorbell", its actual functions and uses highly overlapped with those of a "toy", and thus it should be deemed a similar product category.
Third, the cognitive standard of the ordinary consumer. People's courts shall make judgments based on the knowledge level and cognitive ability of the ordinary consumer of the product with the industrial design patent, and conduct a comprehensive judgment based on the design features of the authorized industrial design and the alleged infringing design, as well as the overall visual effect of the design.
Implications and Suggestions
For patent holders, for products with overlapping and cross-cutting uses, they should clearly specify the scope of the product’s intended use as much as possible in the brief explanation of the product’s industrial design, laying a solid foundation for subsequent rights protection. At the same time, they should attach importance to market monitoring, promptly detect infringing acts, fix evidence, and safeguard their rights in accordance with the law.
For market operators, they must not attempt to evade liability for industrial design patent infringement by "labeling products under different categories". The actual attributes and usage scenarios of a product are the core basis for determination, and any attempt to adopt the trick of "hanging a sheep's head to sell dog meat" will be exposed before the law.
For e-commerce platforms, they should further improve the intellectual property protection mechanism, strengthen the review of commodity category labeling, establish a patent infringement early warning mechanism, provide more convenient and efficient rights protection channels for right holders, and jointly create a market environment of fair competition.
Intellectual property protection is the cornerstone of encouraging innovation and promoting high-quality development. With the continuous strengthening of intellectual property protection, both patent holders and market entities should further raise their awareness of intellectual property protection and compliant operation, and jointly create a sound market environment that respects innovation and protects intellectual property.
