In order to implement the work arrangements of the Provincial Party Committee and the Provincial Government on comprehensively strengthening intellectual property protection and to effectively intensify the sanctions against acts of intellectual property infringement and counterfeiting, the Guangdong Provincial Administration for Market Regulation has published a batch of “Model Cases of Administrative Protection of IP in Guangdong”. The series of design patent infringement disputes concerning the “controller for electronic devices” handled by Lusheng Law Firm in cooperation with its strategic partner Rouse International on behalf of a certain internationally renowned game company has been honorably selected.
Brief Case Overview
The requester is an internationally renowned game company and the patentee of the design patent entitled “controller for electronic devices”. In February 2023, Lusheng Law Firm assisted the right holder in filing 13 requests with the Dongguan Administration for Market Regulation for administrative adjudication of patent infringement disputes involving multiple respondents, and assisted the Administration for Market Regulation in advancing the progress of the cases. The present case is one of this series. The respondent raised defenses in succession, including prior design, limited design space of the product involved, instability of the patent in question, and that the accused infringing products were not manufactured by it.
Upon trial, the case-handling authority held that product appearance size and design space are two different concepts. Although the game controller is small in size, this does not mean that the design space is also small. The comparison for infringement should follow the principle of overall observation and comprehensive judgment, taking the overall visual effect being identical or similar as the criterion. With respect to the respondent’s defense that the accused infringing products were not manufactured by it, through supplementary inspection and evidence collection, the authority enumerated related evidence and, by drawing on the principle of “high probability”, determined that the accused infringing products were manufactured by the respondent. In June 2023, the Dongguan Administration for Market Regulation rendered an administrative adjudication, finding that infringement was established and ordering the respondent to immediately cease manufacturing products that infringe the requester’s design patent right.
Typical Significance
1. Reasonably determining the principles for infringement determination. When the accused infringing product is a small item, the respondent will usually raise defenses such as limited design space and minor differences in certain parts. This case clarifies that appearance size and design space are two different concepts, thereby reasonably determining the principles for infringement determination.
2. Applying the “high probability” principle, which is commonly used in civil disputes, to the determination of the relationship between the seller and the manufacturer.
3. Reflecting the principle of “equal protection” of intellectual property rights. The requester in this case is an internationally renowned enterprise in the video game industry. The 13 related cases were handled lawfully and impartially, which effectively safeguarded the legitimate rights and interests of the intellectual property right holder.
