"Hand-held Shower Sprinkler" Design Patent Infringement

Civil Case

Design Patent

–Determination of Offer to Sell

[Headnotes]

Whether the product’s images displayed in the online store album is an action of offering to sell, depends on whether the album is open to public or private, whether the store visitors can produce the idea that the store may sell the product, and whether the right holder can further prove that store visitors have browsed the album. When the alleged infringer puts forward the demand for product purchase, and the seller sells or offers to sell the same product, proves that there is an invitation to offer from the store album. Thus, the display of images in store album has the attributes of invitation to offer, constitutes an action of offer to sell.

[Synopsis]

First instance: (2018) Zhe 02 MinChu No. 1289

Plaintiff: Hansgrohe Europe Co., Ltd. (Hansgrohe)

Defendant: Fangfang Sanitory Products Factory in Hangzhou Bay Xin Qu, Ningbo (Fangfang)

Hansgrohe is the patent holder of a "hand-held shower sprinkler" design under patent number ZL201330372386.5, which was filed on August 5, 2013 and authorized on January 22, 2014, and the patent is valid to date.

Hansgrohe filed a lawsuit with the Ningbo Intermediate People's Court, requesting: 1. Ordering Fangfang to immediately cease from manufacturing, selling or offering to sell products that infringed the its design patent; 2. Ordering Fangfang to immediately destroy the infringing products (including recalling the infringing products that have been in circulation), destroy the special molds and delete the web pages that have promoted the infringing products; 3. Ordering Fangfang to compensate the economic loss and the reasonable expenses totalling 400,000 Yuan; 4. Ordering the defendant to bear the case litigation costs.

The infringing product and design patent are both hand-held shower sprinklers, belonging to the same type of products. The infringing products is only different from the design patent in the water holes placed in the center of the sprinkler, other design features are highly similar to the design patent. Moreover, these design features are the parts that a general consumer would have direct contact with. Observing from a general consumer's knowledge level and cognitive ability, the overall visual effects of the two are similar with no substantive difference. Thus, the infringing design fell into the design patent’s scope of protection.

Hansgrohe also argued that Fangfang included a number of images of the products involved on its online store, and believed that displaying the images of the infringing products was an action of offering to sell. The court held that the store album was operated by the store owner and can set for open to browse or private, it also served as an Internet image gallery. When the owner set for the images to be open to browse, the store visitor might think that the sellers are selling such products. But compared with actual selling of products in the online store, if the images display does not contain the corresponding intention to sell in writing, it does not prove the seller has the invitation to offer.

However, if the plaintiff further proved the following: after browsing the defendant's store album and contact the defendant for product purchase, if the defendant offers to sell or actually sell the infringing product, then the invitation to offer is confirmed, and the album display is an action of offering to sell. 

Thus, the court concluded that the defendant’s display of the infringing product in its online store album was an offering to sell infringement.

[Typical Significance]

This case combined the traditional civil law’s definitions of invitation to offer and patent law’s definition of offering to sell, taking into account the current "Internet plus" environment, made a decision on whether the product’s image displayed in an online store album was an action of offering to sell.