We have a treat for readers interested in China - a thoughtful article by Mr Liqiang Chang of
Linda Liu & Partners discussing assessment of similarity in China with reference to two cases, reprinted with their kind permission from their IP NEWS issue 44 December 2010. The discussion has obvious resonances of the recent US debate on "point of novelty" versus "overall impression" assessments. Enjoy!
Judgment of Similarity of Designs under the Background of New Judicial Interpretation
Article 11 of the Interpretation of the Supreme People's Court on Several Issues concerning the Application of Law in the Trial of Patent Infringement Dispute Cases (Judicial Interpretation 21 (2009)) (hereinafter referred to as Judicial Interpretation) which came into force January 1, 2010 provides:
Article 11. When judging whether designs are identical or similar, the people’s court should conduct comprehensive judgment based on the design features of the patent design and the design accused of patent infringement as well as the overall visual effect of the designs; and consideration shall not be given to design features that are determined mainly by technical functions or features, such as the material and internal structure of a product, which do not influence the overall visual effect of a product.
In the following circumstances, the overall visual effect of a design is usually affected to a greater extent:
(a) the parts of a product, which can be seen easily when the product is used normally, have a more notable influence on the overall visual effect than the other parts of the product;
(b) the design features distinguishing a patent design from a prior design have a more notable influence on the overall visual effect than the other design features of the patent design.
Where a design accused of patent infringement is not different from a patent design in terms of the overall visual effect, the people’s court should ascertain that the two designs are identical; where a design accused of patent infringement is not substantively different from a patent design in terms of the overall visual effect, they should be ascertained as similar.
As shown above, the Supreme People's Court sticks to the previous principle, “whole observation and comprehensive judgment,” to judge similarity of designs. The Judicial Interpretation also introduces to this principle some new ideas which are embodied by the following point: it is prescribed that design features distinguishing a patent design from a prior design have a greater impact on the overall visual effect of the design than other design features of the patent design. Many applicants and patent agents have the following questions about the approaches for judging similarity of designs as provided by Article 11 of the Judicial Interpretation: Can we judge similarities between a design accused of patent infringement and a patent design only based on whether or not the accused design has the design feature which distinguishes the patent design from a prior design? Whether the courts should introduce a prior design ex officio or if it should be presented by the concerned party as evidence? How to reflect the principle of “whole observation and comprehensive judgment”? Now, the writer will give his opinions on the above questions.
For quite a long time, there has been a dispute in the field of design practice over the approaches of judging similarity of designs. The issue is whether or not we should compare the major parts of designs, or the inventive features of a patent design or the features of a patent design which distinguish it from a prior design? This dispute was reflected for the first time in the “judgment by comparing notable parts” approach established in the Guidelines for Patent Examination of 2001. In 2002, in a case about the validity of a design patent of a storage compartment at the tail of a motorcycle, the above dispute led to a result in which the court and the Reexamination Board came to completely contrary conclusions. Because such a dispute caused uncertainty in the application of law, the concept “notable part” was abolished and the principle “whole observation and comprehensive judgment” was established in the Guidelines for Patent Examination of 2006. The principle “whole observation and comprehensive judgment” has been followed until now and is universally acknowledged by members of the design practice field including the courts and the Reexamination Board.
However, we also noticed that there still exists a perspective that similarity of designs should be judged based on the inventive features of a patent design or features of a patent design which distinguish it from a prior design. For example, Article 12 of the Interpretation of the Supreme People's Court on Several Issues concerning the Application of Law in the Trial of Patent Infringement Dispute Cases (versions for comments) provides:
Article 12. When judging whether designs are identical or similar, the people’s court should comprehensively consider all the design features within the protection scope of the design patent. However, consideration shall not be given to the sole design feature which has to be adopted for realizing the technical function of a product or features, such as the material and internal structure of a product, which do not influence the overall visual effect of a product.
Where the relevant public may confuse a design accused of patent infringement with a patent design in terms of the overall visual effect, the people’s court shall consider the design accused of patent infringement and the patent design to be similar. Where a design accused of patent infringement does not have the essential features of a patent design, it shall be considered that the design accused of patent infringement and the patent design will not confuse the relevant public in terms of the overall visual effect.
The above-mentioned essential features refers to design features with which a patent design, as compared with a prior design, can have a notable visual effect on the relevant public. The people’s court may identify the essential features of a design by referring to the brief explanation of the design.
According to the above provision, if a design accused of patent infringement does not have the essential features of a patent design, then it will not cause the relevant public to confuse the two designs in terms of the whole visual effect; that is, they are not similar. In other words, during the judgment process, there is no need to determine the effect other design features have on the whole visual effect if they are not essential features. Such an opinion is contradictory to the generally acknowledged principle of “whole observation, observation and comprehensive judgment.” Therefore, the above Article 12 was deleted in the final version of the Judicial Interpretation officially published at the end of December 2009 and Article 11 of the Judicial Interpretation introduced the principle of “whole observation, observation and comprehensive judgment” which incorporates the aforementioned new ideas.
As it can be seen from the Supreme People’s Court’s amendments to Article 12 of the Judicial Interpretation (version for comments), similarities between a design accused of patent infringement and a patent design cannot be determined only based on whether or not the design accused of patent infringement has the design features of the patent design which distinguish it from a prior art. Generally speaking, the inventive parts of a design, i.e., the design features of a patent design which distinguish it from a prior design, have greater influence on the whole visual effect of the design, so they deserve more attention. However, the basic standard for judging whether designs are identical or similar is the whole visual effect. That is to say, we cannot consider a design accused of patent infringement and a patent design to be similar or dissimilar only on the grounds that the accused design has or has not the features of the inventive parts. The final judgment should be made based on whether the two designs are different in the whole visual effect.
The courts have decided several cases since the new Judicial Interpretation was implemented. Although the courts followed the previous patent law when trying the cases because the patent infringements involved took place before the new patent law took effect, we can still get a hint of a trend in applying the approaches for judging similarity of designs, which were established in the new Judicial Interpretation, to the trial of patent infringement dispute cases. The writer will make an analysis with the following two typical cases.
Case 1: Design patent infringement dispute appeal case—Fu’an Bojie Electrical Machinery Co., Ltd V. Shanghai Rongtai Fitness Tech. Development Co., Ltd, No. 177 (2009)
Final Judgment of IP Tribunal of Zhejiang Higher People's Court
A brief introduction to the case: the plaintiff, Shanghai Rongtai Fitness Tech. Development Co., Ltd (hereinafter referred to as the plaintiff), filed a patent application for the design of a “massage chair (deluxe)” on December 29, 2006 and was granted a patent right on January 09, 2008. However, when the patent right was still valid, the plaintiff found that the deluxe multifunctional massage chair (hereinafter referred to as the accused product) manufactured by the defendant Fu’an Bojie Electrical Machinery Co., Ltd (hereinafter referred to as the defendant) had infringed the above patent right of the plaintiff, and the plaintiff filed a law suit against the defendant. During the trial of the case, the defendant, on the basis of a prior design 1, filed a request to the Reexamination Board of the SIPO (hereinafter referred to as the Reexamination Board), requesting the Reexamination Board to declare the concerned patent invalid. After examination, the Reexamination Board made a decision that the patent right remained valid. After trying the case, the First-Instance Court ruled that the defendant’s infringement of the patent right was a fact. The Second-Instance court upheld the original judgment.
Focus of dispute in this case: How did the inventive part of the patent concerned influence the judgment of similarity?
In its decision No. 13126 that the patent right remained valid, the Reexamination Board held that a normal consumer distinguishes one massage chair from another mainly from the unconventional designs, which are different from the designs of a common chair. Except for the conventional designs, the patent concerned and the prior design were different in the shape of the two sideboards and the differences had a notable impact on the overall visual effect, so the validity of the concerned patent was maintained.
The Court of Final Appeal held that the notable differences between the concerned patent and the prior design constituted the inventive part of the patent. On the basis of the statements of the concerned parties in the invalidation procedure and the decision of the Reexamination Board, the Court of Final Appeal held that the inventive part of the patent should be the appearance of the sideboards. After comparing the design features of the product accused of infringement and the concerned patent, the Court of Final Appeal concluded in its written judgment that “
the overall appearance of the product accused of infringement, especially the appearance of its sideboards, is not notably different from the patent design in terms of visual effect and it is easy for a normal consumer to mistake the product accused of infringement for the patent design, so the two designs are similar and the product accused of infringement falls into the protection scope of the concerned patent .”
As can be seen from this case:
1.
The feature of an inventive part is an important factor which has an impact on the overall visual effect, but the fundamental criterion for judging whether designs are identical or similar is the overall visual effect (“the overall appearance of the product accused of infringement, especially the appearance of its sideboards, is not notably different from the patent design in terms of the visual effect”).
2. When comparing the similarity between a patent design and a design accused of infringement, if the concerned party puts forward a prior design, then the features different from the prior deign should be identified and determined on the basis of producing evidence and a cross-examination by the concerned parties. Generally, the courts do not directly introduce prior designs or request the party concerned to provide a prior art.
Case 2: Foshan Shunde Xinshengyuan Electrical Appliances Co., Ltd. sues Shanghai Meixin Plastics Co., Ltd. for design patent infringement, No. 285 (2007)
First-Instance Judgment of Shanghai No.1 Intermediate People’s Court No. 5 Civil Tribunal (IP Tribunal)
A brief introduction to the case: The plaintiff, Foshan Shunde Xinshengyuan Electrical Appliances Co., Ltd. (hereinafter referred to as the plaintiff), enjoyed the design patent right of a product called “blower.” The plaintiff found that the defendant, Shanghai Meixin Plastics Co., Ltd. (hereinafter referred to as the defendant), manufactured a blower with the same appearance as that of the patent product of the plaintiff when the patent was still valid, so the plaintiff filed a lawsuit. During the trial of the case, the defendant filed a request to the Reexamination Board of the SIPO (hereinafter referred to as the Reexamination Board), requesting the Reexamination Board to declare the patent invalid. After examination, the Reexamination Board made a decision that the patent right remained valid. The court held that the product accused of infringement was similar to the plaintiff’s patent product as shown in the picture in terms of the overall visual effect, so it fell into the protection scope of the design patent right held by the plaintiff.
Focus of dispute in this case: if a product accused of infringement did not have the features as described in the brief explanation of the concerned patent, is it definite that the accused product did not constitute an infringement?
In this case, the plaintiff described in the brief explanation of the concerned patent “a shell of the product incorporating the present design is made of a transparent material.” The product accused of infringement was made of a non-transparent material, so the defendant argued that the accused product was not similar to the patent concerned. When judging the similarity between the two designs, the court made a comparison of the essential features shown in the picture of the patent and concluded that the essential features of the accused product’s design were similar to those of the plaintiff’s design. As for the defendant’s affirmation that the feature of “a shell of the product incorporating the present design is made of a transparent material” as described in the brief explanation of the concerned patent notably influenced the overall visual effect of the product, the court held that the brief explanation is a concise description of the essential features of the design, the omitted views, and the colors for which protection is sought. By comprehensively considering the similarity of the essential features of the two designs, it could be determined that the description in the brief explanation did not influence the judgment that the accused product was similar to the plaintiff’s patent product as shown in the picture in terms of the overall visual effect, even though the plaintiff descried in the brief explanation of the concerned patent that “a shell of the product incorporating the present design is made of a transparent material.”
As can be seen from this case:
Although the product accused of infringement does not have the features described in the brief explanation of the concerned patent, it may still constitute an infringement of the patent concerned. The key to making a judgment is whether or not the overall visual effect will be rendered different if the accused product does not have the features described in the brief explanation.
Concluding Remarks
The foregoing are the writer’s opinions on some controversial issues about the judgment of similarity of designs under the background of the new Judicial Interpretation. With the above analysis, the writer hopes to help applicants better understand the principles of judging similarity of designs. Since China does not apply Case Law, the above-mentioned two cases are for reference only. We hope that the judicial department can further clarify the specific comparison principles for the judgment of design patent infringements in the Judicial Interpretation so that patentees and the public can have a more reasonable and clearer expectation about the exercise of a design patent right.
