Guangdong High People’s Court: Design Protection Remains After Design Patent Expiration

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In recent decision (2023)粤民终 4882 号 somewhat analogous to common law trade dress, China’s Guangdong High People’s Court affirmed that a design can still be protected under the Anti-Unfair Competition Law even after a corresponding design patent has expired.  The Court held that the design of the Casio GA-110 series watches constitutes a product design with a certain influence that is protected by the Anti-Unfair Competition Law.

The Court held that the design features of the GA-110 series of watches can be separated from the actual product and exist independently. These design features are obviously different from the shapes of other watches on the market. They are not common shapes of watch products, nor are they designs for achieving certain technical effects or making the products have substantial value. They have high originality and significance. Moreover, the GA-110 series watches involved in the case have been widely publicized and used by Casio Computer Co., Ltd. for a long time, and have a high reputation among the relevant public. The shape and structure have been closely integrated with the Casio brand, playing a role in identifying the source of the products.

The defendants Guangzhou Teyuan Watch Co., Ltd. and Shenzhen Tesgao Watch Co., Ltd. used designs that are basically visually indistinguishable from the product designs that have a certain influence on Casio on the same product. Even though the two products differ in price, quality, consumer level, manufacturer name, trademark, etc., it is easy for the relevant public to mistakenly believe that there is a certain economic connection between the allegedly infringing product and Casio Computer Co., Ltd., thereby weakening the distinctiveness of the design of the GA-110 watch involved in the case, damaging the market reputation of Casio Computer Co., Ltd., and damaging its rights and interests. 

The Court affirmed a lower court decision including an injunction and 3 million RMB in damages.

A copy of the full decision is available here (Chinese only) courtesy of 知产宝.

Author: Aaron Wininger

Aaron Wininger is a Principal and Director of the China Intellectual Property at Schwegman Lundberg & Woessner.

Author: Aaron Wininger

Aaron Wininger is a Principal and Director of the China Intellectual Property at Schwegman Lundberg & Woessner.