Partner Tony Song and attorney Sun Jun of our firm recently represented KYMCO to win the design patent infringement case in Shanghai No.1 Intermediate People’s Court (the “Court”).

KYMCO is the biggest motorcycle manufacturer in Taiwan. Its own brand “KYMCO” is popular in Taiwan and also famous in global market. From the year of 1993, KYMCO began manufacturing and selling motorcycle, engine and relevant spare parts in the Mainland and set up four factories herein. In 2005, KYMCO applied to the PRC Intellectual Property Bureau for two design patents named “Motercycle (66) (No. ZL200530018735.9)” and “Lamp (No. ZL200530139532.5)”. These two patents had been publicized in the year of 2006. In 2008, KYMCO found that the design of the motorcycle manufactured and sold by a large manufacturer located in Shanghai is almost the same as its design patent.

At the beginning of 2009, Partner Tony Song and attorney Sun Jun of our firm represented KYMCO claiming such motorcycle manufacturer infringed KYMCO’s design patent and sued it in the Court. In May 2009, the Court held the hearing publicly. On Dec. 20, 2009 the Court issued the judgment and decided in favor of KYMCO. In the judgment, the Court ordered the defendant to cease the infringement against design patent immediately and compensate KYMCO for its economic losses and reasonable fees paid to stop the infringement by KYMCO.

The influences of this judgment are as follows:

1.       It re-confirmed the standard of “same” and “similar” in design patent infringement-“to pay general attention in the way of wholly comparison and easy to cause the public to misunderstand from the visual effect”.

2.       Although some of the spare parts were purchased by the defendant from third party, considering the defendant used these spare parts and other parts to assemble the whole motorcycles and sell them in its own name, the defendant shall be deemed the manufacturer and seller of the involved spare parts and constituted infringement.

Considering the new Patent Law just took effective on Oct. 1, 2009, such judgment undoubtedly complies with the spirit of this new Patent Law to strengthen the protection of design patent of the enterprises.