Save the Date to Attend the 16th Annual USPTO Design Day

The 2023 iteration of the United States Patent and Trademark Office (USPTO)’s annual Design Day will be held on May 4, 2023, with options to attend either in-person at USPTO headquarters in Alexandria, Virginia or virtually.

Registration will be made available in April 2023, and we will share the sign-up link with our blog readers at that time.  Quarles’ design patent attorneys have spoken at previous Design Days and will once again be in attendance at this year’s event.

Continue Reading SAVE THE DATE – 16th Annual USPTO Design Day Announced for May 4, 2023

In a recent district court decision, a New Jersey federal judge granted summary judgment to an accused infringer of a patented design. Skull Shaver LLC. v. IdeaVillage Products Corp., No.18cv3836 (EP) (AME) (D.N.J. Dec. 28, 2022).  In its complaint, Skull Shaver claimed that Ideavillage’s leg shaver infringed its design patent on a head shaver.  The patent-in-suit is U.S. D693,060 (“the D’060 patent”) for an electric head shaver, and the accused product is a Flawless Legs Shaver, which is itself covered by U.S. D853,645 (“the D’645 patent”). 

Continue Reading Flawless Legs and a Shaved Head? An Ordinary Observer Can Tell the Difference

Oral arguments were held on Thursday, January 12, 2023, in Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc.  The parties faced off in a rematch at the Federal Circuit following an earlier bout involving the same design patent, U.S. D657,093 (“D’093”) for a “Heat Reflective Material,” which as illustrated side-by-side below had been asserted against Seirus’s HeatWave™ material.

Continue Reading Design Patents are Heating Up at the Federal Circuit

As highlighted by a recent decision of the United States District Court for the Southern District of New York[1], a party’s failure to properly mark its products with its issued U.S. patent number(s) will very likely result in a complete loss of the ability to recover infringement damages that occurred prior to the delivery of a specific allegation of infringement to an accused infringer.  As further explained below, companies should thus very seriously consider the inclusion of patent markings on all relevant products. Continue Reading Failure to Mark Patent Number on Products Results in Complete Loss of Pre-Suit Infringement Damages

While copyright law is at the center of a few recent disputes over intellectual property protection for typefaces and fonts, design patents are an often-overlooked mechanism for protecting these designs. Those who develop or license fonts will benefit from the following summary of the available protections for the visual appearance of typefaces and fonts, which includes novel “emoji” sets. Continue Reading Protecting the Product™: Typefaces and Fonts

This article supplements our previous post with updated 2021 data.

U.S. design patents continue to grow in popularity. Although 2021 saw a slight downtick in the number of issued design patents compared to the previous two years—most likely caused by lower filings during the beginning of the COVID-19 pandemic—the number of U.S. design patents that issued in 2021 was still greater than the number of U.S. design patents that issued in each year between 2012-2018, and was more than 50% greater than the number of U.S. design patents that issued in 2012. With the number of U.S. design patent examiners also increasing, we expect the number of issued designs in 2022 to outpace 2021 and possibly set a new annual issuance record. Continue Reading Recent Trends in Article of Manufacture of Design Patent Claims: GUIs Remain King

Protecting the Product’s Editor-in-Chief James Aquilina and regular contributor Joseph Ambrose will each teach sessions at the American Intellectual Property Law Association’s “Design Rights Boot Camp” on June 23-24, 2022, in Arlington, Virginia. Continue Reading Two Quarles & Brady Design Lawyers to Present at AIPLA’s “Design Rights Boot Camp” on June 23-24

China’s Copyright Law protects “works of literature, art, natural science, social science, engineering technology and the like which are expressed in the following forms: (1) written works; (2) oral works; (3) musical, dramatic, theatrical, choreographic and acrobatic artworks; (4) works of the fine arts and architecture; (5) pictorial and photographic works; (6) audiovisual works; (7) graphic works such as drawings of engineering designs, product designs, maps and sketches, etc.; (8) computer software; and (9) other intellectual achievements conforming to the characteristics of the works.” China’s copyright law protects the expression of ideas instead of ideas themselves, which is similar to U.S. copyright law.

The term of protection in China is the life of the author plus 50 years for individual authors or 50 years from the first publication of the work for legal entities, unless otherwise provided. The protection of moral rights, including the rights of publication, authorship, alteration, and integrity, is perpetual.

2D designs and texts on a product or packaging may be protected as written, pictorial, photographic, and graphic works, or even works of fine art, depending on the nature of the design elements. The situation is much more complex for product designs and 3D packaging. If the author is a foreign natural person or legal entity, the product design or 3D packaging may be protected as a foreign work of applied art under the Berne Convention for the Protection of Literary and Artistic Works (“Berne Convention”) for 25 years in China.

For Chinese authors or foreign authors of product designs and 3D packaging that are no longer protected under the Berne Convention, Chinese courts need to find protection under works of fine art in judicial rulings because China’s Copyright Law is still ambiguous on this issue. In the guiding case* “Crosplus Home Furnishing (Shanghai) Co., Ltd. v. Beijing Zhongrong Hengsheng Wood Industry Co. and Nanjing Mengyang Furniture Sales Center,” issued in 2021, China’s Supreme People’s Court (“SPC”) confirmed that works of applied art could be protected as work of fine arts under China’s copyright law. The SPC ruled that, for works of applied art to be protected, the following must be met:

  • the practical functionality and aesthetic value must be separable;
  • the aesthetic value must meet the high standards of fine art; and
  • copyright protection is limited to the aesthetic value only.

To be specific, the SPC found the “Tang Yun Cloakroom Furniture” (see the specimen of work below) of Crosplus Home Furnishing (Shanghai) Co., Ltd. to be original and of high aesthetic value because of the designed wood texture and patterns, handmade brass accessories, and overall Chinese-style symmetrical structure. According to the SPC, any changes to the wood textures and patterns, brass accessories, and overall structure would not affect the functionality of the furniture. Thus, the practical functionality and aesthetic value were indeed separable.

For comparison, U.S. copyright protection is also available for artistic works first appearing in the context of 3D products, as we discussed in this earlier post relating to a furniture design.  The U.S. has a similar test to China for “separable and creative authorship,” but a much lower threshold of originality required for an artistic work to be eligible for protection than the “high aesthetic value” test used in China.

(Specimen of work in the copyright registration of Crosplus Home Furnishing (Shanghai) Co., Ltd.)

*SPC’s Guiding Cases are not binding precedents but “have guiding effect on adjudication and enforcement work in courts throughout the country,” according to the Provisions of the Supreme People’s Court Concerning Work on Case Guidance issued on November 26, 2010.

Like in the U.S., in China a copyright is automatically attached to a work upon its completion without registration. However, a copyright registration certificate serves as evidence of ownership, which is required for enforcement actions by administrative authorities. Copyright registrations can also be recorded at China customs to stop infringing goods from being exported overseas. Copyright applications can be filed with the Copyright Protection Centre of China (CPCC) or provincial copyright protection centers, and the registration certificates provide similar protection. The registration process is straightforward and requires minimum documentation and information because the copyright protection centers conduct a formality examination only.

In addition to copyright registration, Chinese courts accept electronic evidence obtained via blockchain technology to prove copyright ownership and facts of infringement. In a judicial interpretation entitled Opinions on Strengthening the Protection of Copyright and Copyright-Related Rights, issued in 2020, the SPC allowed parties to preserve, fix, and submit evidence by blockchain and digital timestamp. Because there is no evidence discovery process in China, this new rule can help alleviate the burden of proof from the shoulders of copyright owners.

Like the United States, China offers protection for 2D and 3D designs of products and packaging, which is often known by U.S. consumers and practitioners as “trade dress.” This four-part miniseries of posts provides a birds-eye view of protections available in China for two-dimensional (2D) and three-dimensional (3D) design elements of products or packaging under trademark, copyright, design patent, and anti-unfair competition laws. It focuses on the similarities and dissimilarities of different aspects of intellectual property (IP) law in China and how they interact with each other.

It is worth noting that there is no clear border between different types of IP rights. When a product or packaging design belongs to key IP or business assets, such as the classic Coca-Cola contour bottle design, the best practice is to build a multilayered IP portfolio that removes blind spots and gaps in IP protection.

Before diving into details, the chart below illustrates how 2D and 3D designs are protected as different IP rights in China.

Protection of 2D DesignsProtection of 3D Designs
Trademark (symbols, designs)  Trademark (3D designs)
Trademark (color combinations) 
Copyright (written works, photographic works, graphic works, or even works of fine art, depending on the nature of the design elements) Copyright (works of applied art) 
Design Patent (overall design; partial claiming) Design Patent (overall design; partial claiming)
Unfair Competition (outside protection of trademark, copyright, and design patent Anti-unfair Competition (outside protection of trademark, copyright, and design patent)

Part I. Trademark

A word, string of letters, symbol, design, color combination, sound, or any combination thereof that distinguishes the source of the goods and services of one party from those of others can be registered as a trademark in China.

A symbol or design is generally eligible for trademark registration if it can function as a source identifier of goods and services, is not similar to a prior mark or in conflict with other prior rights of a third party, and is not otherwise prohibited by trademark or other laws in China.

A color combination is presumed to lack inherent distinctiveness based on the new Guidelines for Trademark Examination and Trial enacted by the Chinese National Intellectual Property Administration (CNIPA), effective January 1, 2022.  Therefore, a color combination cannot function as a trademark unless it has acquired distinctiveness through extensive use and promotion in mainland China. Single colors are neither recognized nor registerable as trademarks in China. The CNIPA provided the following two examples of registered color combination marks in the aforesaid Guidelines.

Registered Color Combination MarkActual Use of the Color Combination Mark

Goods: batteries
Services: Gas station

To be registered as a trademark, a 3D design must possess non-functional design elements that are prominent and the source indicator of goods and services, besides meeting the requirement of inherent or acquired distinctiveness. The CNIPA provides the following example in the new Guidelines for Trademark Examination and Trial: a toothbrush features a round bottom that cannot be registered as a 3D mark because the round bottom was designed to prevent the toothbrush from falling and getting contaminated. In other words, the design element is functional.

The most famous 3D mark in China is Ferrero S.PA.’s (“Ferrero”) chocolate packaging, which brought the protection of 3D marks to the attention of mainstream media and the general public. Back in 2005, the People’s Supreme Court (“SPC”) ruled in favor of Ferrero in the “Ferrero SPA v. Montresor Company” regarding an unfair competition case based on the finding that Ferrero’s chocolate packaging trade dress consisting of a 3D ball shaped chocolate wrapped in  gold foil, with a white sticker on top of the chocolate and a brown and gold striped paper cup bottom, was distinctive and had become well-known among Chinese consumers. The defendant, a Chinese chocolate maker, used a similar packaging design to produce and sell TRESOR DORE branded chocolates, which the SPC held were likely to cause consumer confusion.

Ferrero’s ProductsMontresor’s Products

However, the SPC’s ruling in 2005 was not based on trademark infringement because Ferrero had not yet obtained a registration for the trade dress as a 3D mark. Ferrero filed a 3D mark in China in 2002 via the international trademark registration system known as the Madrid System, but the application was refused by both the Chinese Trademark Office (which was later replaced by the CNIPA) and its Review and Appeal Board. The refusals were eventually reversed by Beijing’s First Intermediate Court in late 2007, and Ferrero’s 3D mark was consequently registered.

Unlike the U.S., China is a strict “first-to-file” country and provides little to no protection for unregistered trademarks. A registration certificate is proof of both ownership and trademark rights, which is always required in enforcement actions and is also the strongest form of evidence in civil litigation. With trademark registration, China customs can seize infringing goods manufactured in and exported from China.

Armed with the registration of the 3D mark, Ferrero went after another Chinese copycat company called Gold Monkey in 2013. Instead of civil litigation, Ferrero filed an administrative complaint with the Administration for Industry and Commerce in Shanghai (“Shanghai AIC)”, whose functions were assumed by the Shanghai Administration for Market Regulation (“Shanghai AMR”) in 2018, a law enforcement agency overseeing the business operation and consumer protection, based on trademark infringement. Shanghai AIC confiscated dozens of inventories, ordered Gold Monkey to cease infringement immediately, and fined the infringer nearly RMB 200,000 (around USD 30,769). An administrative enforcement action costs one-tenth or less of the cost of civil litigation, and the agencies often act within weeks or even days upon receiving a complaint.

Ferrero’s ProductsGold Monkey’s Products

The Quarles & Brady design rights legal team is nationally-recognized for its extensive knowledge and practice experience in this complex and important field. For questions about this article or on how to incorporate design-related legal rights into your intellectual property portfolio, please contact the author(s) of this post directly or send a message to the team via our Contact page.

Earlier this month, ten of the world’s largest companies were accused of infringing design patents claiming animated graphical user interfaces (GUIs). These assertions were made in addition to at least ten other lawsuits filed since September 2021 asserting animated GUI design patents. Given the breadth of the asserted design patents, these cases potentially raise issues of first impression related to claim construction, infringement, and functionality. Continue Reading Companies Performing Financial Transactions Stuck in GUI Design Patent Infringement Cases