For long, when we compare the trademark with that of a design, the inclusion of trademark in the design was not meant much when we talk about the design patent infringement analysis. In one of the recent cases of Columbia Sportswear North America Inc. vs. Seirus Innovative Accessories Inc., where it was put to question that whether any such inclusion or a trademark's appearance and placement might "give an ordinary observer a different visual impression" than the patented design. 3:17-cv-01781 (S.D. Cal Aug. 6, 2021). The jury was of the view that the design patent at issue was not infringed if the accused design included a trademark. This verdict departs from the precedent from Federal Circuit in L.A. Gear v. Thom McAn Shoe Co., 988 F.2d 1117, 1126 (Fed. Cir. 1993), where it held that including a mark or labelling does not avoid design patent infringement as shown in the following shoe design and accused shoe.
With the increase in the importance of patents across the world, the design patents are the next stop destination for various multinational companies around the world. We have seen the series of engagement of Apple and Samsung in their patent war, across various courts in the world. A fact that remains on the paper is the reliance of Apple on design patent to prevail over Samsung. This gives the impetus for an effective usage of design patents having unique visual presentation to the products, and in this case, the industry should consider adding design protection to the patent portfolio. Let us understand the issue of design patents.
Knowing the Design Patent
It is essential to understand what rights come up with the design patent and also what limitation it consist of. Well, the biggest limitation that comes up with it is not protecting invention as compared to the fact of utility patent protecting the same. The design will only protect the ornamental design of what is pictured. It focuses on the exterior and not the interior which means that the functional aspects are not protected. Design patent limits the protection since the design patent are all about drawings and the explicitly shown images issued in the design patents. If there is any such infringement, it needs to be done based on the ordinary observer. In case, there are alternative visual presentation possible, chances are that the single design patent cannot protect each visual representation. Therefore, in the design patent, each such unique presentation must be covered. As specified, the design patents does not protect the functionality but only the visual representation, in case, for protection of the interior functioning, it is advisable that the patent application must be filed in conjunction with the design patent.
Present discussion
In the previous case, the main crux was that the presence of trademark cannot be an absolute defence to design patent infringement. A would-be infringer should not achieve "avoidance of infringement by labelling." Getting along with similar case of Columbia and Seirus dispute, the action was bought for infringing the design-patented surface pattern for a heat reflective material used in liners for gloves and sleeping bags.
The district court disregarded the SEIRUS trademark, and granted summary judgment of infringement to Columbia. The Federal Circuit reversed, reasoning that a fact finder cannot "ignore elements of the accused design entirely, simply because those elements included the name of the defendant." The Federal Circuit reiterated to "consider[] an ornamental logo, its placement, and its appearance as one among other potential differences between a patented design and an accused one." The Federal Circuit concluded that the district court had made impermissible factual findings as to "whether an element of Seirus's design would give an ordinary observer a different visual impression than Columbia's design," and returned the case to the district court for a trial on infringement.
On remand, the jury rendered a verdict that Seirus's design did not infringe Columbia's design patent. The district court entered judgment on August 10, 2021. Post-judgment motions will be due in early September, and an appeal to the Federal Circuit may follow after that.
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