China’s SPC clarifies the Limits of Design Patents vs Trademarks: Key takeaways from the Puma cases

1. Introduction

The Puma case refers to several closely related disputes between Puma and two Chinese sports footwear manufacturers concerning the registration and enforcement of design patents for athletic shoes. Puma owns several trademarks consisting of curved stripe designs applied to the sides of footwear and has held trademark registrations for such designs in China since as early as the 1970s. These marks have been used consistently on sports shoes and promoted in China over a long period of time.

Between 2010 and 2022, the Chinese manufacturers obtained multiple design patent registrations covering athletic shoe designs that featured stripe‑like graphic elements positioned prominently on the side of the shoe. In the disputes, the patentee either argued that the designs reflected lawful use of its own registered trademark, or it relied on the allegedly licensed use of a registered trademark owned by an affiliated company.

Puma filed invalidation requests before the China National Intellectual Property Administration (CNIPA), asserting that the patented designs conflicted with its earlier trademark rights and should be invalidated under Article 23(3) of the Patent Law. Although those requests were initially rejected and the decisions upheld on first‑instance judicial review before the Beijing IP Court, the outcomes were later overturned on appeal. We set out the key highlights from the Puma case below.

Images: Puma’s registered trademarks:

One of the design patents by Puma’s adversaries, by way of example:

The trademark licensed to one of Puma’s adversaries and relied on as a defence:

2. Key highlights of the SPC judgments

Across the five disputes in this Puma case, the Supreme People’s Court (SPC) overturned the earlier rulings that had upheld the disputed design patents and ordered the CNIPA to reissue decisions, as those designs conflicted with Puma’s prior trademark rights. In doing so, the SPC focused on how the patented designs were used on footwear in practice, how consumers were likely to perceive those designs, and whether reliance on registered or licensed trademarks could justify their implementation. Taken together, the Puma case sets out a clear framework applied by the SPC for resolving conflicts between design patents and earlier trademarks.

Some of the key lessons are:

• Conflicts of design patents with prior trademarks may be assessed using trademark infringement standards: the SPC held that where a design patent is alleged to conflict with earlier trademark rights, the assessment must follow trademark infringement criteria rather than a purely design‑focused comparison.
• Trademark use is a threshold issue in design patent disputes involving alleged conflict with earlier trademark rights: the SPC examined whether the disputed designs functioned as source identifiers in practice and found that design features may constitute trademark use even when protected by design patents.
• Industry practice and consumer perception are central to the analysis: in the context of athletic footwear, the SPC recognised that side‑of‑shoe graphics are commonly perceived by consumers as indicating product origin, which strongly influenced the assessment of confusion.
• Overall impression prevails over minor design differences: despite differences in line width, spacing or curvature, the SPC focused on the overall visual impression of the designs, their placement on the product, and the distinctiveness and reputation of the earlier trademarks.
• Registered or licensed trademarks do not justify materially altered use: the SPC rejected defences based on registered or licensed trademarks where the implemented designs significantly departed from the original mark’s distinctive features and incorporated elements closer to the prior Puma trademarks.
• Adding a house mark or other branding may not cure confusion if the disputed feature itself functions as a source identifier: the SPC held that the use of “DOWIN” and other branding on the products was insufficient, without more, to eliminate confusion where the disputed design feature itself operated as a source-indicating sign.
• Evidence of distinctiveness, fame, consumer perception and confusion risk can be critical: the SPC also held that such evidence was admissible in administrative litigation, even if not fully developed before the CNIPA, as it was not a newly raised invalidity ground but evidence relevant to assessing the relevant public’s knowledge, attention and perception.
• Design patents cannot be used to circumvent earlier trademark rights; the Puma case confirms the SPC’s position that design patent protection does not provide a shield where the implementation of a design encroaches upon the scope of protection afforded to prior trademarks.

3. Takeaways from the Puma case

Taken together, the related Puma cases significantly strengthen the position of trademark owners faced with imitation products that seek legitimacy in China through formal IP registrations. The SPC made clear that the existence of a design patent does not prevent a substantive assessment of whether the protected design encroaches upon earlier trademark rights, particularly where the design functions in practice as a source identifier. This is a critical development for in‑house trademark teams operating in China, where design patents are granted without substantive examination and are frequently used by imitators to give counterfeit or “dupe” products a veneer of legality or a shield from infringement.

The decisions also demonstrate that Chinese courts are prepared to look beyond formal IP layering and assess the actual market reality. Where a product’s visual features are likely to be perceived by consumers as indicating origin, the SPC will apply trademark infringement standards to determine whether a conflict exists, even if those features are embedded in a registered design patent. This approach directly addresses a common enforcement challenge, where copycats rely on minor design variations or registered design patents to resist trademark claims.

Importantly, the Puma case also shows that registered or licensed trademarks will not protect bad‑faith imitation where the mark has been materially altered in use. The SPC rejected attempts to rely on trademarks that had been modified in a way that moved them closer to Puma’s reputable branding, reinforcing that formal registration cannot sanitise conduct that undermines the trademark system. This is particularly relevant in dupe and grey‑market scenarios in China, where sophisticated infringers often combine registered marks, licences and design patents to complicate and obstruct enforcement.

Finally, the Puma case highlights the strategic value of design patent invalidation as a complementary enforcement tool. For in‑house counsel facing entrenched imitators in China holding registered rights that are difficult to challenge directly under trademark law, the SPC’s reasoning now provides a viable pathway to dismantle those structures. By allowing trademark principles to invalidate design patent protection, the case offers brand owners a more effective means of addressing “IP‑laundered” counterfeits and reinforce the primacy of trademarks in protecting brand identity in China.

Authored by Stefaan Meuwissen, Mingjia Deng, and Helen Xia.