Case Brief:

The petitioner Ninebot (Beijing) Science & Technology Co., Ltd (hereinafter referred to as Ninebot) obtained the patent right of the design entitled "Electric Self-balancing Scooter (Mini)" (Patent No.: ZL201530316168.9) in January 2016, which was legal and valid when the petitioner submitted the request for infringement dispute resolution.

The petitioner found that self-balancing scooters sold by respondents including Hangzhou Jinfeng Smart Technology Co., Ltd., Hangzhou Jieze Trade Co., Ltd, and Shenzhen Feitewei Technology Co., Ltd. on e-commerce platforms fall within the protection scope of the patent concerned. Then, Ninebot filed a request for patent infringement dispute resolution with the Beijing Intellectual Property Office. The Beijing Intellectual Property Office accepted and heard the series of cases according to law on March 18, 2019 and placed twenty cases on file directed to the respondents and model numbers of the accused infringing products. The respondents argued that the accused infringing products are neither identical with nor similar to the patent concerned and thus do not constitute infringement for the following reasons: the accused infringing products are greatly distinguished from the patent concerned, the identical features of the accused infringing products and the patent concerned are not the essential features of the patent concerned because they have been disclosed in the prior designs, and the visual effect of the whole design is more influenced by the distinguishing features instead of the identical features of the accused infringing products and the patent concerned.

Upon examination, the Beijing Intellectual Property Office deemed that products like self-balancing scooters commonly comprise a body, wheels, a control rod, and a handle. The ratio of a diameter of wheel to a length of leg-controlling rod in the patent concerned contributes to the small and portable look of the scooter, which is absent in the prior designs and pertains to an innovative feature in design. Such a small and portable design may impress general customers and has prominence. The accused infringing products are substantially identical to the patent concerned in design features of relevant parts. According to the principle "Overall Observation and Comprehensive Judgment", the accused infringing products and the patented products are not clearly distinguished from each other and have substantially the same visual effect, and thus pertain to similar designs. The Beijing Intellectual Property Office determined that the acts of the above respondents are infringing and ordered the respondents to stop selling the products that infringe the patent right of the design concerned immediately.

Expert Comments:

This case relates to mass infringement occurred on e-commerce platforms. The Beijing Intellectual Property Office placed the case on file according to law and handled the twenty cases relating to infringement of the same patent right in the administrative region. According to the principle "Overall Observation and Comprehensive Judgment", it was determined that the accused infringing products and the patented products have substantially the same visual effect, and thus pertain to similar designs. The Beijing Intellectual Property Office timely made the administrative decision. In recent years, infringement cases relating to Internet sales happen from time to time. The hazards of such cases and the difficulty of rights protection for patentees in such cases are non-negligible and have become problems to be solved in intellectual property protection in China. The fast and efficient handling of the series of cases has referential significance for handling of such cases in future. (CHEN Suning, researcher of Jiangsu Intellectual Property Research Center)