Shanghai IP Authority Sided with BMW in Industrial Design Patent Dispute

发布时间: 2019/1/9 9:59:00

  Fly column sign:

  In order to review the great accomplishments of the Chinese IP system achieved during the 40 years of Reform and Opening-up and the 10 years' implementation of the National Intellectual Property Strategy, analyze the successes of Chinese innovation entities effectively safeguarding IP when "Going Out" and foreign innovation entities defending interests in China since the 18th National Congress of the CPC, demonstrating valuable IP work experiences and practices of the Chinese innovation entities, showcasing active fruits of "Equal IPR Protection" among foreign innovation entities in China, we will open this Foreign-related IP Cases Column to report typical cases for readers.

  On June 15, 2015, BMW (Bayerische Motoren Werke AG) lodged a request to Shanghai Intellectual Property Administration (SIPA) for administrative adjudication, accusing Shanghai Junmu Aluminum of infringing its No.ZL200830137275.5 industrial design patent on vehicle wheels, and the case would be taken by SIPA on June 23, 2015. SIPA formed a panel and sent a notification to Junmu on June 26, 2015. In its response, Junmu claimed the tires in dispute were purchased from the market instead of manufactured by itself. In addition, the tires were never in any sales transactions.

  SIPA held an oral hearing on September 16, 2015. BMW argued that Junmu's acts of displaying the wheels in  its showroom had constituted infringement of its patent. Junmu claimed that the office space was also shared by other companies and submitted four documents from a third party to SIPA to prove it after the hearing. SIPA held that YSM-352, which was shown in a product promotion brochure of Junmu obtained by BMW through notarization procedure, was similar with the patented industrial design, and fell into the range of the patent. After hearing, officials from SIPA visited the property management company recorded in the notarial certificate, who would confirm Junmu's rental of the office for business in 2014.

  SIPA denied admission of two out of the four proof documents from Junmu for devoid of official seals. Although the other two were stamped officially, they were not enough to prove  two companies rented the Junmu office in 2014. In this connection, SIPA ruled that Junmu had constituted patent infringement act of offering to sell without the permission of the patentee.

  Noting that the two parties failed to reach a mediation agreement, SIPA made an official decision on November 23, 2015, ordering Junmu to cease the act of offering to sell the patented products in dispute. Neither side brought the case to court for administrative lawsuit.

  Impact of the Decision:

  This case was a foreign-related patent infringement dispute with a renowned foreign firm involved, easily drawing spotlight. The law enforcement officers involved  handled the case by the law, investigated on scene to verify the facts and made a clear and definite injunction-type decision, safeguarding the legal right of the patentee and provoking positive feelings towards IP protection.



 (Editor Shao Jingjing)

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