The Supreme People’s Court of China has issued an important judgment clarifying how conflicts between design patents and prior trademark rights should be assessed under Chinese law. In the widely discussed “Beer Can” case, the Court adopted a broader interpretation of “prior lawful rights” and emphasized that the key criterion in such disputes is the likelihood of confusion caused by the implementation of the design patent.

The decision is expected to have substantial implications for future design patent invalidation proceedings, especially in cases involving prior trademarks, packaging designs, and brand-related commercial identifiers.

Background of the Dispute

The dispute arose from a Chinese design patent application filed on 28 May 2018 for a “Beer Can” design by an individual named Ma Moumao. The design patent was granted on 18 December 2018 under Patent No. 201830256268.0.

In June 2020, Carlsberg initiated invalidation proceedings before the China National Intellectual Property Administration (CNIPA), arguing that:

  • the patented beer can design was not clearly distinguishable from the previously marketed “Dali V8 Beer” can design; and
  • the prominent use of the “V8” sign conflicted with Carlsberg’s earlier trademark rights in “V8”.

However, CNIPA maintained the validity of the design patent. Carlsberg subsequently challenged the decision before the Beijing Intellectual Property Court but lost at first instance. The dispute ultimately reached the Supreme People’s Court.

First-Instance Court: No Prior Trademark Right Conflict

The Beijing Intellectual Property Court rejected Carlsberg’s claims based on three principal grounds.

First, the court held that Carlsberg’s registered “V8” trademark had been approved on 28 October 2018, which was later than the filing date of the design patent. Accordingly, the court concluded that no prior registered trademark right existed at the relevant time.

Second, the court found insufficient evidence that “V8” independently functioned as an unregistered trademark. Most evidence demonstrated combined use such as “Dali Beer V8” or “Dali V8”, while “V8” alone was considered more likely to be perceived merely as a product model designation.

Third, the court adopted a relatively narrow understanding of design patent protection. According to the first-instance judgment, design patents protect the overall visual combination of shape, pattern, and color rather than the literal meaning of words appearing on the product. Therefore, the use of “V8” in the patented design was regarded merely as part of the visual composition of the can.

Supreme People’s Court Reversed the Judgment

The Supreme People’s Court overturned both the first-instance judgment and the CNIPA invalidation decision, ordering a re-examination of the case.

The Court’s reasoning introduces several significant principles regarding the relationship between design patents and trademark rights in China.

Broad Interpretation of “Prior Lawful Rights”

One of the most important aspects of the judgment is the Court’s interpretation of “lawful rights” under Article 23 of the Chinese Patent Law.

The Court expressly stated that “lawful rights” include not only registered trademark rights, but also:

  • prior trademark application rights; and
  • unregistered trademarks that have acquired source-identifying function through use.

According to the Court, if a trademark application predates the filing date of a design patent and the mark is subsequently registered and remains valid at the time of the invalidation request, the trademark owner may rely on that earlier application right against the design patent.

This represents a notable expansion beyond the narrower approach adopted by the first-instance court, which focused exclusively on the trademark registration date.

Trademark Application Rights Recognized as Protectable Interests

The Supreme People’s Court further characterized trademark application rights as legally protected “expectant rights”.

The Court confirmed that eligible prior trademark application rights can oppose subsequent design patents.

This aspect of the decision is particularly significant because it strengthens protection for brand owners during the interim period between trademark filing and registration.

Unregistered Trademark Rights Can Also Prevail

The Court also accepted that long-term use of “V8” by Carlsberg had created protectable prior rights and interests.

According to the judgment:

  • Carlsberg’s predecessor had used the “V8” sign for more than 12 years;
  • extensive publicity and sales had established a stable market association between “V8” and Carlsberg; and
  • “V8” was not a generic beer model designation.

As a result, the Court concluded that the sign had acquired source-identifying significance among the relevant public.

Likelihood of Confusion Became the Central Criterion

Perhaps the most influential aspect of the judgment is the Court’s adoption of a confusion-based approach to assessing conflicts between design patents and trademarks.

The Supreme People’s Court emphasized that the decisive issue is:

whether implementation of the design patent is likely to cause the relevant public to mistakenly believe that the goods originate from the trademark owner.

In this case:

  • the “V8” sign appeared prominently on the beer can;
  • the sign was identical to Carlsberg’s earlier mark;
  • the products were similar; and
  • the patent holder had the possibility of access to Carlsberg’s prior branding.

The Court therefore found that the design patent was objectively likely to create confusion and could conflict with prior trademark rights.

Departure from a Purely Formalistic Approach

The judgment also signals a shift away from the more formalistic reasoning often seen in earlier design patent disputes.

The first-instance court had focused heavily on the argument that literal content itself is not protected by design patent law. The Supreme People’s Court rejected that narrow logic and instead focused on the actual market effect of the design’s implementation.

This approach aligns more closely with broader unfair competition and trademark protection principles.

Practical Significance of the Decision

The judgment provides important guidance for future Chinese IP disputes involving:

  • design patents,
  • packaging trade dress,
  • prior trademarks,
  • unregistered brand identifiers,
  • and bad-faith imitation practices.

In particular, the decision:

  • broadens protection for prior trademark interests;
  • confirms that unregistered marks may constitute protectable rights;
  • reinforces confusion analysis as the core test; and
  • discourages attempts to use design patents to appropriate established brand identifiers.

The ruling is likely to influence both judicial practice and CNIPA examination standards in future invalidation proceedings.

Case Information

  • Case: Supreme People’s Court “Beer Can” Patent Invalidation Case
  • Case Number: (2023) Supreme Court Zhixing Zhong No. 42
  • Court: Supreme People’s Court of China
  • Subject Matter: Conflict between design patent and prior trademark rights
  • Key Legal Basis: Article 23 of the Chinese Patent Law