LONGAN LAW FIRMPuma Receives First Administrative Judgment on the Invalidation of Design Patents Infringing Its Trademark Rights
Over the past two years, Puma Se (“Puma”) has filed quite a lot requests for invalidation of design patents that infringe on its prior trademark rights. Most of these requests have received support from the China National Intellectual Property Administration (CNIPA), and most design patent holders have complied with the decisions of the CNIPA without further litigation. However, Do-win Sports Goods Co., Ltd. (“Do-win”) disagreed with the CNIPA’s decision to invalidate its design patent and initiated a lawsuit with the Beijing Intellectual Property Court.
The disputed design patent features a symbol on the side of sports shoes that is similar to Puma’s form strip device mark. In 2022, Puma filed a request for the invalidation of the design with the CNIPA, and the request received support from the CNIPA.
Do-win, dissatisfied with the CNIPA’s invalidation decision, filed an administrative lawsuit. Recently, the Beijing Intellectual Property Court rejected Do-win’s lawsuit and upheld the CNIPA’s invalidation decision.
In this administrative lawsuit judgment, the court once again affirmed Puma’s claims, stating that “using a pattern similar to the prior trademark as a component of the design composition without the authorization of the prior trademark owner will mislead the relevant public or cause confusion among the relevant public.” Additionally, the court did not support Do-win’s argument that the disputed symbol was a legitimate use of its own trademark.
With this administrative lawsuit judgment, Puma has achieved a significant milestone in its efforts to attack counterfeiting design patents based on its trademark rights. Lawyers Fu Jianjun and Piao Yuan from the Beijing Longan Law Firm represented Puma in this administrative lawsuit and the patent invalidation proceedings.