We successfully invalidated the design patent “Shop Front (Milk Tea Shop)” for Shen-Keng Food and Beverage Co., Ltd
Guide: In this case, we filed an invalidation request against the design patent titled “Shop Front (Milk Tea Shop)” with a prior trademark right as evidence, which was approved by the Reexamination and Invalidation Hearing Department of the CNIPA to invalidate all rights of the design.
Introduction:
Under the efforts of Shen-Keng Food and Beverage Co., Ltd to develop the Mainland China market, “
” (a little tea) milk tea has become a well-known brand of made-on-spot milk tea in Taiwan province and the Mainland China. Meanwhile, milk tea shops that imitate “
” mushroomed, as well as similar registered trademarks and counterfeiting patents. Shen-Keng Food and Beverage Co., Ltd, noting that a design patent containing the mark “
” was granted to someone else, entrusted us with the invalidation procedure against the above-mentioned design patent.
After research and analysis, we filed an invalidation request against the design at issue with Shen-Keng Food and Beverage’s authorized word trademark “
” as evidence.
After the oral hearing, the Reexamination and Invalidation Hearing Department of the CNIPA fully supported our claims and invalidated all rights of the patent at issue. The invalidation decision held that: the identifying characters contained in the patent at issue have the same pronunciation and nearly the same visual effect with the prior trademark; and the slight difference can hardly distinguish the two on the whole. Therefore, without paying special attention, the relevant public is prone to confuse the identifying characters in the patent at issue with the prior trademark, thereby mistaking the source of relevant products and the service.
Highlights:
The evidence used by the invalidation petitioner was the prior word trademark; and the patent at issue is a design of a milk tea shop front with the characters “垚燚一点点” contained in a partial view. In principle, a design does not protect the pronunciation and the meanings of the characters contained in the views. However, when it is taken into consideration whether or not a conflict is formed with the prior right, not only the figures but also the characters in the design should count. Eventually, by presenting the prior word trademark“1點點”, the invalidation petitioner invalidated all rights of the design titled “Milk Tea Shop Front”.
On the other hand, although two characters “垚燚” were added to the design by the patentee, the characters took in the most eye-catching position of the shop front, serving to identify the source of goods or services, and compared with the characters “垚燚”, the characters “1點點” was enlarged and bolded to be more obvious and recognizable for the consumers. What’s more, the slight difference in font pattern hardly distinguishes the design patent from the prior trademark of the petitioner on the whole. Without paying special attention, the relevant public is prone to confuse the identifying characters in the patent at issue with the prior trademark, thereby mistaking the source of relevant products and the service.
Conclusion:
Those who imitate other’s trademark in bad faith and are granted a design application on such basis cannot obtain a stable design right.
In addition, when applying for a design patent, if the characters or figures in the view are at the risk of being identical or similar to a prior trademark or copyright, it is advisable to file the application after deleting such characters or figures, or, alternatively, to file an application containing designs with and without the characters as similar designs, so as to prevent the patent from being invalidated all rights due to conflict with the prior right.
