[Jian Xu] Adding simple patterns/colours on top of a registered design cannot avoid infringement

The test for design infringement is pretty subjective in China. In principle, the major criteria employed by the court is the so-called “overall impression” test. Although China does recognise the “novel design feature” test as well, it is not so important as the “overall impression” principle. For the same reason, China has not adopted the partial design system yet. Otherwise, the “novel design feature” test can be an equally important test for design infringement.

Thus, as you can imagine, the word “overall” can be manipulated and argued in various ways, causing a lot of uncertainty. Moreover, it is increasingly common for infringers to modify the design patents by adding additional features relatively easily, and might argue the impression as a whole has been changed. Fortunately, a recent Chinese Supreme Court decision might help to make such simple “designing around” futile.

A French company, MAPED, which specialises in stationary manufacturing, has registered a design for scissors. A Chinese competitor has modified the design mainly in two ways (a) changing the size and position of the rivet on the handle; and (b) adding a layer of colourful patterns on the scissor. See the picture below of the MAPED design and the accused infringing scissor.

The court applied the reasoning of “undesirable consequences”. If adding a simple colours and/or patterns on top of a design can render the designs dissimilar on the argument of overall impression, then it will be far too easy for anyone to avoid design infringement. The design patent obtained can be potentially useless, and the creative effort of the applicant will be discouraged. Thus simply adding patterns/colours on top of a registered design cannot avoid infringement.

As an aside, the court, however, does consider the above difference (a), i.e. the position and the size of the rivet, will make the designs dissimilar. The reasoning is that the subject design of the scissor is quite common, with the prominent part being the handle. Since the creativity of the design is generally low, relatively simple modification of the handle can make a difference in terms of overall impression. Hence, overall, MAPED’s petition for design infringement does not stand.

Nevertheless, it is encouraging to establish the point that adding simple patterns/colours on top of a registered design cannot avoid infringement, which can be one step forward toward raising the importance of “novel design feature” test in design infringement cases in China.