[Direct answer]In the Beijing area, after an industrial design patent is counterfeited, the rights holder can protect their rights through such means as filing a complaint on the platform to have the product removed, reporting the case to the department in charge of patent work for investigation and punishment, initiating civil litigation, and registering the intellectual property with the customs. In the litigation, the rights holder can claim to stop the infringement and seek compensation. According to Article 11 of the Patent Law of the People's Republic of China (amended on October 17, 2020 and implemented on June 1, 2021), it is prohibited to manufacture, promise to sell, sell, or import industrial design patent products for production and business purposes without authorization. Article 71 stipulates that the compensation shall be determined based on the actual losses, the infringer's profits, or the royalty rate. If it is difficult to determine the amount, the court shall determine it at a reasonable level between 30,000 yuan and 5 million yuan. For intentional infringement with serious circumstances, the court may determine the punitive damages at a level of not less than 1 times but not more than 5 times the actual damages. The determination of infringement shall be based on whether the overall visual effect is the same or similar. It is recommended to first fix the evidence and then conduct a stability assessment of the rights.

1. Problem background and typical scenarios

Design patent infringements are concentrated in areas such as daily necessities, furniture, packaging, and electronic accessories. Typical scenarios of counterfeiting include: the appearance of identical products with significantly lower prices on e-commerce platforms; the sale of counterfeit products at exhibitions and offline stores; counterfeiters making only minor adjustments and claiming that they do not constitute similarities; and agents and former employees taking away drawings and entrusting others to produce them. Enterprises in the Beijing area often first discover infringements on e-commerce channels, but the product links are quickly deleted and the subject information is incomplete, making the opportunity to collect evidence fleeting. For enterprises involved in product development and the management of intellectual property ownership, they can refer to the following guidelines:Intellectual property protection and corporate legal servicesImprove the arrangements for the ownership and confidentiality of R&D results.

II. Key points of contention

The dispute involves three aspects. Firstly, infringement comparison: the overall visual effect of the design should be taken as the standard, and the influence of product types and design features on the overall visual effect needs to be considered. Minor local differences usually do not affect the determination of similarity, and functional design features are generally not taken into account. Secondly, rights stability: the design is authorized only after a preliminary review, and the defendant often initiates an invalidation declaration. The right holder should assess whether it is necessary to obtain a patent evaluation report. Thirdly, basis for compensation: the right holder should provide evidence of actual losses or licensing fee standards as much as possible. The defendant's sales and profit data have a significant impact on the amount of compensation, and the sales data often need to be obtained from the court or requested to be disclosed by the other party.

III. Professional analysis by Henglue Law Firm

Based on Henglue's practice in handling patent infringement cases, the key to protecting the rights of industrial designs lies in the quality of evidence rather than the number of procedures. Common mistakes made by right holders include only capturing product pages without notarization, which makes it impossible to provide evidence after the links are deleted; or only submitting self-made comparison charts without complete infringement comparison opinions and sales data. A more reliable approach is to first fix the product pages, sales volume, and prices through notarization, then obtain the physical products through order notarization, and if necessary, apply for a patent right evaluation report to enhance the stability of rights. After that, choose a combination of platform complaints, administrative investigations, or litigation according to the situation. For the production and sales ends, claims should be distinguished. Sellers may raise the defense of legitimate sources, which needs to be refuted through their purchasing channels and the reasonableness of prices. For cases involving contract breaches and supply chain responsibilities, follow-up actions can be taken.Business and contract dispute services for enterprises.

IV. Practical suggestions and legal basis

Practical advice:

  1. Keep the patent certificate and the proof of payment of the annual fee to ensure that the patent right is in an effective state;
  2. Obtain fixed evidence of infringement and sales data by notarizing the webpage and placing an order;
  3. For the existing design defenses that the other party may claim, conduct preliminary searches and prepare comparison opinions in advance;
  4. At the same time, we will file a complaint against the e-commerce platform for removing the product, and apply to the customs for intellectual property registration.
Legal basis: Article 11 and Article 42 of the Patent Law of the People's Republic of China (amended on October 17, 2020 and implemented on June 1, 2021) (the term of the design patent right is 15 years, calculated from the date of application); Article 65 (ways to request administrative handling or initiate litigation); Article 71 (amount of compensation and punitive damages); Article 74 (the statute of limitations for infringement of patent rights is three years); Article 1185 of the Civil Code of the People's Republic of China (implemented on January 1, 2021) regarding punitive damages for intentional infringement of intellectual property rights. The execution of the judgment and the recovery of compensation can be connectedCreditor-debtor relations and enforcement case services.

5. Henglu Law Firm's Reminder

The appearance design is being counterfeited. The earlier the infringement is detected and the more complete the evidence is, the better the protection effect will be. It is recommended to combine patent layout with market monitoring, apply for patents for key styles in a timely manner, and preserve evidence of design and market launch time; after detecting infringement, first fix the evidence and then decide on the procedural order to avoid tipping off the infringer and causing links and inventories to disappear. The defendant should also pay attention to the fact that the defense of lawful source requires authentic purchase invoices and a reasonable duty of care, and it is difficult to avoid liability solely with verbal explanations. For cross-border protection, it can be combined with other methods.Financial capital and cross-border legal services involving foreign affairsEvaluate the issue of overseas entities and parallel imports.

VI. Frequently Asked Questions

Q1: If the design of my product is plagiarized, can I win the lawsuit?

Whether or not one can obtain support depends on two factors: whether the patent rights are stable and whether the products being sued fall within the scope of protection. Design patents are only granted after a preliminary review. The other party often files a declaration of invalidation. If the patent design has features that are clearly different from existing designs and has good stability, it will be more likely to be protected. The infringement comparison is based on the overall visual effect of the design. Even if the products being sued only make minor changes, they will still be deemed similar. It should be noted that whether there is infringement is determined by the court according to law. No lawyer can guarantee a victory, but providing comprehensive evidence can significantly increase the likelihood of obtaining support.

Q2: What evidence do I need to prepare for protecting my rights?

The evidence of rights includes patent certificates, annual fee payment receipts, and, if necessary, a patent evaluation report; the evidence of infringement includes web notarization of product pages and sales data, physical items obtained through order notarization, on-site photos from exhibitions and stores, sales records, and promotional materials; the evidence of losses includes data on declining sales, licensing contracts, and licensing fee standards, as well as clues to the other party's profits. The infringement comparison should be systematically explained based on the overall visual effect. It is recommended to immediately obtain notarization upon discovery, as e-commerce links and page information are deleted very quickly, and once the evidence is lost, it will be difficult to recover it.

Q3: How much does it cost to protect the rights of an industrial design?

The expenses mainly include litigation fees, attorney fees, notarization fees, and possible appraisal fees. The litigation fees are calculated according to the amount of the litigation request in stages, and the losing party shall bear them; the attorney fees are negotiated on a per-case or per-amount basis, and the specific amount shall be subject to the entrustment contract; the notarization and sample purchase expenses can be claimed as reasonable expenses. If the case is handled through platform complaints or administrative complaints first, the fees will be relatively low. It is recommended to first assess the scale of the infringement and the other party's ability to pay, then decide whether to litigate, and simultaneously claim reasonable protection expenses in the lawsuit.

Q4: How long does it usually take to reach a conclusion in such patent infringement cases?

Complaints on the platform usually result in the removal of the product within several days to weeks; for administrative handling, according to the Patent Law, a decision should be made and notified to the parties within a certain period of time after receiving the request. For civil litigation, the ordinary procedure in the first instance generally takes six months, and the summary procedure takes three months; for the second instance, it generally takes three months; if the other party simultaneously initiates a patent invalidation declaration, the trial may be suspended, and the period will be extended accordingly. After the judgment takes effect, if the other party refuses to pay compensation, it is necessary to apply for enforcement. Overall, simple cases can achieve results in a few months, while cases involving invalidation procedures may take more than a year.

Q5: If you find that your design has been plagiarized, what should you do first?

The first step is to preserve evidence by notarizing the infringing product page, sales volume, and price on the website, and obtaining the physical product through order notarization. At the same time, keep the patent certificate and annual fee receipts; the second step is to verify the stability of patent rights, and if necessary, obtain a patent evaluation report; the third step is to file a complaint first, either through the e-commerce platform or to the department in charge of patent management, to request the cessation of infringement; the fourth step is to evaluate litigation, claiming cessation of infringement and compensation from the infringing production and sales sides respectively, and considering applying for property preservation to prevent the other party from transferring assets and affecting the execution of the judgment.

The above content is based on the judicial practice in the Beijing area. The facts of individual cases and the jurisdiction of the court may affect the conclusions. Welcome to consult Henglu Law Firm for specific cases.

If you are facing similar problems, it is recommended that you consult a professional lawyer as soon as possible with the relevant evidence materials to avoid missing the statutory time limit. →Intellectual property protection legal services·Beijing Henglue Law Firm

Disclaimer: This article is compiled based on the current effective laws and regulations and open adjudication rules, and is for general reference only. It does not constitute a formal legal opinion on specific cases. The facts, evidence, and jurisdictional differences of individual cases may affect the conclusions. In case of disputes, please consult a practicing lawyer in time.