On April 10 2007, the famous French luxury brand Louis Vuitton Malletier filed an action with the Beijing First Intermediate People's Court against Mr Wang, owner of design patent registration no 02367907.7, for his unauthorized copying of its trade marks: (Louis Vuitton's corresponding Chinese mark), and , and all registered in Class 18 in respect of, among others: travelling bags, women's handbags and shopping bags for application on bags, the subject matter of Wang's design patent registration. Wang's registered design patent consists of the shape of a handbag.

According to the PRC Patents Law, any design for which a patent right may be granted must not conflict with any prior legal rights obtained by any other person. The registered design patent shall be declared invalid if it is contrary to this provision. However, the Patents Reexamination Board will not consider a petition for invalidation in the absence of a decision/determination affirming such conflict with the prior rights of another person. The People's Court may however make a decision/determination of conflict even if the design patent in question had not yet been put to use.

Louis Vuitton's trade marks have a filing date prior to the filing date of Wang's design patent. Thus Louis Vuitton has prior rights over those trade marks. In determining whether there is any conflict with those prior rights, the Court considered the fundamental question to be whether ordinary consumers would be confused that Wang's design patent products are those of Louis Vuitton, thereby causing damage to Louis Vuitton's trade marks. In this regard, Wang's design patent products (handbags) and Louis Vuitton's registered goods (travelling bags, women's handbags, shopping bags) belong to the same type of goods. Also, not only does Wang's design patent bear signs identical or similar to Louis Vuitton's trade marks, those signs are the prominent design features of Wang's design patent. As such, the Court believed that once Wang's design patent products are put to use it would mislead the general consumers to believe that those products are Louis Vuitton products. In this way, Wang's design patent registration is considered in conflict with Louis Vuitton's trade marks.

According to the Court, although there was no evidence that Wang has put the design patent into use, the act of applying for registration indicated an intention to put the design into use and those products must necessarily be put into actual use in the market. In order to prevent those activities causing harm to Louis Vuitton's trade marks, the Court considered Wang's act of application for the design patent in question constituted "other acts infringing the exclusive rights of a registered trade mark" and ordered that Wang refrain from using the design patent in question.

This is a very interesting case involving conflict between trade marks and design patent rights. It is also very encouraging to see that the Court was prepared to order Wang not to put the subject matter of his design patent registration to use on the basis of trade mark infringement before the design patent was invalidated by the Patents Reexamination Board.

Mena Lo and Florence Lam

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