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China has a big number in both patent filings and disputes. In 2015, the patent-related civil dispute cases received by the courts all over China totaled 11,607. Although there is no accurate statistics of the respective proportion of invention, utility model and design patent among the disputed patent-related cases, design patent disputes took around 60% of the all patent-related cases based on the official final judgments. A main reason of such a large number of design patent disputes is because most Chinese small and medium sized enterprises lacks the ability to conduct independent research and development, and they are still in the imitation stage. As it is not difficult in imitating design patents, design patents naturally become a target of imitation. As products with identical or similar design are likely to make consumers believe they are similar in function, the loss caused from design being imitated could not be overlooked. If a design patent is granted, it is advisable to actively enforce the patent right and stop the imitation. 

 

The validity and infringement determination are the most important issues in the enforcing granted design patents. Surrounding these two issues, common designs, functional designs, prior designs, distinguishing design features, and similarity determinations are often the focus of the controversy. This article analyzes the current judgment situation and noteworthy points of these hot issues in legal application through a design patent dispute case represented by our firm. We hope it could provide some reference and guidance to the readers. 

 

I. Case Brief   

  

MTG CO., LTD. (hereafter referred to as “MTG”) is a Japanese company specialized in and famous for beauty and health products. Its beauty rollers, “ReFa” series, are very popular around the world, and are called the “face-lift master”. This popular product rapidly became a target of imitation, and the beauty product market were filled with products with imitated design .      

 

   

 

To protect both its own legal interest and the consumers’ interests, MTG decided to take actions against infringing products. In 2015, on behalf of MTG, we submitted investigation request at the Guangdong local IP Office against a company which manufactured counterfeits of a product in the “ReFa” series, “Refa EXE for men”, in Guangdong Province based on the client’s design patent right.

 

In April 2015, upon our request, the local IP Office investigated onsite over the alleged infringing manufacturer, and found two types of alleged infringing products (See Product 1 and Product 2). There were large stock and semi-finished products of each type.    

 

After investigation, the IP Office conducted oral hearing. In oral hearing, the alleged infringer pleaded that the alleged infringing product was not similar to the MTG design. The local IP Office made an administrative decision in October 2015 and decided that the alleged infringing Product 1, which was closely similar to the MTG design, fell within the protection scope of the design patent. As for Product 2, which was of slight difference from the design, the local IP Office determined that the alleged product was different from the design in two aspects, and decided that Product 2 was not similar to the design since “a beauty roller with a handle and rollers of two balls was common design”, and they were substantially different in overall visual effect thus not similar. 

 

We were not satisfied with the administrative decision regarding the dissimilar decision of Product 2 and filed an administrative litigation at the Guangzhou IP Court. During first instance, we mainly claimed the following: the determination of “a beauty roller with a handle and rollers of two balls was common design” in the administrative decision lacked basis; our design and the infringing Product 2 both had design characteristics that were distinguishable from prior designs, which made the whole visual effect more effective, but the difference between them was trivial and unlikely to be noticed. Thus, the two were of no substantial difference and should have been determined as similar. 

As the defendant, the local IP Office, claimed in addition to the claim that the similarity of the two was common design, claimed that the handle and roller of beauty rollers were functional design. The alleged infringing manufacturer, as the third party of the litigation, submitted three pieces of patent gazettes to prove prior designs and common design. These three pieces were actually MTG’s two other products of the “ReFa” series.

 

Guangzhou IP Court made the first instance judgment in June 2016, and held that the alleged infringing products were similar to the design patent and cancelled the alleged decision. The local IP Office and the alleged infringing manufacturer were not satisfied with the judgment and appealed to Guangdong Higher Court. 

 

Guangdong Higher People’s Court heard the case publicly according to the law and summarized the issues of this case as: 1. whether common design claimed by the appellant was valid; 2. whether functional design claimed by the appellant was valid; 3. whether prior design claimed by the appellant was valid; 4. whether the design was similar to the alleged infringing product. Recently, Guangdong Higher Court made the second instance judgment, overruled the appeal of the local IP Office and the alleged infringer, and maintained the first instance judgment. However, the four issues mentioned above are the very focus issues involved in design dispute cases. 

 

II. Common design

 

1. Determination of common design in this case

 

During the administrative period, the alleged infringer did not claim common design and provide any evidence. It was the local IP Office declared in the administrative decision that “a beauty roller with a handle and rollers of two balls was common design.” 

 

In the administrative litigation, we fully refuted this point. On the one hand, we emphasized that common design requires high level of public awareness such that the design can be associated with just the name of the product. Thus, the determination of the alleged decision lacked basis in the facts. On the other hand, according to the evaluation report of the design patent, we pointed out that the 10 disclosed designs clearly showed that a handle and two ball rollers were not necessary for beauty rollers, particularly in the shape of roller. Most prior designs applied circular shape or hemisphere shape, and the number of rollers varied from 1 to 4. The evaluation report also clearly indicated that no other design identical to or substantially identical to this design was found. Therefore, a beauty roller composed of a handle and two ball rollers is not even treated as prior design, let alone common design. 

 

The first instance judgment supported our opinion and stated that although it was easy to associate structures such as the handle part and the roller when mentioning beauty rollers, it was obvious that the present design patent, “Y” shape and ball roller, could not be immediately associated with. 

 

However, the local IP Office and the alleged infringer in the appeal, on the one hand , only argued that the “handle and roller” was a common design for beauty rollers in the relevant market, which could directly come to the mind among consumers when mentioning the product name, but kept silent about the shape and number of the handle and the rollers. On the other hand, they mixed this with functional design, and claimed that handle and roller were designs defined by function, which both belonged to common design. Such claim obviously lacked basis and rejected also by the second instance court. 

 

2. Influence of common design on infringement determination 

 

In this case, the local IP Office stated “a beauty roller with a handle and rollers of two balls was common design” when determining whether the design was similar to the alleged infringing product in the administrative decision. That is, the Office held that the main identical features of the design and the alleged infringing product were common design, which was one of the major reasons that the Office decided that the design was not similar to the alleged infringing product.

Article 11(2) of Interpretations of Supreme Court on Several Issues of Application of Law regarding Trial of Patent Infringement Dispute Cases, which was in force since January 1, 2010, stipulates: “the following circumstances usually have more influence on visual effect to design:

 

(1) easily observable parts compare to other parts when in use ;

 

(2) distinguishing design features relative to other features of a granted design from prior designs.”

 

Although the Judicial Interpretations does not mention common design directly, it could be seen that the design features of prior design have little influence on the overall visual effect. Common design, which has higher public awareness among prior designs, obviously has less influence on the overall visual effect.  

 

Section 6, Chapter 5, Part 4 of the Examination Guidelines states clearly: when some designs of a product are proven a common design of the product type (for example, cylinder-shaped design of a beverage can), the changes of other designs usually have more influence on the overall visual effect. 

 

In conclusion, common design is regarded as of no obvious influence on the overall visual effect when comparing two designs whether in the infringement or the invalidation procedure. Thus, whether a design feature constitutes common design will influence similarity determination.  

 

3. Definition of common design and proof

 

The 2010 Examination Guidelines clearly stated that only the designs, among prior designs, which are widely known by the average consumers, and can be associated by mentioning the product’s name, can be called common design. For example, when mentioning packing box, cuboid and cube may be associated immediately, and when mentioning tires, circular shape comes into the mind of an average person. Thus, the requirement of public awareness for common design is very high, much higher than that of prior design. 

 

Although it requires such a high level of public awareness for common design, whether proof is necessary remains an open issue. Some people believe it is not necessary to prove common design and no proof should be made because common design is widely known and accepted in the relevant industry. If it needs to be proved, it means the design is not common. Some other people believe, since the Examination Guidelines stated “be proved”, common design should be proved following the Guidelines. 

 

A more consistent view is that it is not necessary to prove common design for daily used products, such as cylinder-shaped design of a beverage can, cuboid and cube shape for gift boxes. The common design for specialized products can be proved by providing evidence. 

 

Usually, highly regarded text books and well-known standards in the industry etc. can be used as proof. A large number of patent literature and disclosed designs can also be used as proof of a common design. However, a few pieces of patent literature alone in this case are far from sufficient to prove common design. 

 

In addition, it is worth noting that usually it requires pictures of the proof to be identical rather than similar to the object to be proved. 

 

III. Functional design

 

1. About this case

 

During the administrative period of this case, the alleged infringer did not raise any claim and evidence regarding functional design. However, in the first instance administrative litigation, the local IP Office emphasized that beauty rollers were defined by their physical features and technological function, thus the design of the handle and ball rollers were hardly being surpassed during the response and court hearing. The alleged infringer then followed the local IP Office and claimed that the handle and ball roller design features of this design were only to fulfill the function of the product, and they were not for decoration and had no aesthetical appeal. 

 

In response, we emphasized on the one hand that not all designs with function were functional designs. Functional designs should be determined only by a particular function that the product is to fulfill, without any consideration of aesthetic factors. On the other hand, we pointed out, according to the evaluation report of the design patent in this case, that the situation of prior designs fully suggested that there were many reasonable design solutions to fulfill the function of the product.  

 

The first instance judgment clearly denied the other party’s claim, and pointed out that beauty rollers, as a product for beauty purposes, , surely should be considered functions such as massage and handheld in design. However, there is still sufficient designing space for designing the handle and the rollers, including the shape, the manners of jointing the handle and the rollers, the patterns on the surface of the handle and the rollers, the number of the rollers under the circumstance that the above mentioned functions being met, and the design is not decided solely by its function. Thus, the shape of the handle and the rollers, as important design for such product, is sufficient to have influence on the overall visual effect of the design.  

 

Although the local IP Office and the alleged infringer emphasized again in the appeal their view of functional design, they had no new and strong proof. We believe there is a very unlikely that the higher court will admit the claim. 

 

2. Influence of functional design on infringement determination 

 

Design patents are used on industrial products, and naturally function becomes a precondition of industrial design. Functionality may limit design features of a product, thus, it is hard to completely separate design from function. Usually, functional factor and aesthetic factor are both need to be considered in any product design. Furthermore, a design must first achieve the function, and then the aesthetic factor will be considered. Thus, a design’s functionality or decorative features are relative to each other. Designs are rarely decided solely by the function. Therefore, a design will at least has functional features, decoration features and features that are both functional and decorative. The influence of the overall visual effect of a design cannot be denied just because the design features are based on the functionality of the product. In general, functional design features have no substantial influence on the overall visual effect of a design, while a design with both functional and decoration features needs to be evaluated based on the extent of decoration. The more decorative it is, the more influential it will be on the overall visual effect, and vice versa. 
 

Article 11(1) of Interpretations of Supreme Court on Several Issues of Application of Law regarding Trial of Patent Infringement Dispute Cases, which was in force since January 1, 2010, stipulates: when determining whether designs are identical or similar, the people’s court shall make a comprehensive consideration between the granted design and the design features of the alleged infringing design based on their overall visual effects; design features mainly decided by the technological function and the design features with no influence on the overall visual effect such as material and inner structure shall not be considered. 

 

In addition, Section 6 of Chapter 5, Part 4 of the Examination Guidelines stated clearly: a particular shape solely decided by the product function typically has no significant influence on the overall visual effect. For example, the circular shape of vehicle tires is solely decided by its function, but the patterns on the tire surface have significant influence on the overall visual effect.

 

The above mentioned judicial interpretations and examination guidelines stated clearly that functional designs have no influence on the overall visual effect. Thus, in determining similar designs, if the major identical features are functional, and meanwhile there are distinguishing features which are not functional, they are more likely to be distinguishing designs. On the contrary, if the major distinguishing features are functional designs, they are more likely to be similar designs. 

 

As for this view, the judicial interpretations and examination guidelines have clear stipulation and there is also no dispute in judicial practice. Dispute usually lies in whether a design belongs to functional design. 

 

3. Definition of functional designs and determination standards

 

There is no expressed stipulation for functional designs and determination standards in the law. For a long time in the past, the standard of functional design lies in whether it is non-optional for design feature due to its functional or technological condition limitations, that is, to determine the functionality on whether the design feature is the sole or very limited solutions to fulfill the function. If there are other options to fulfill the same function, usually such design would not be considered as a functional design. Such standard is easily understood and is continence for providing proofs. 

 

However, recently the Supreme Court pointed out in various retrial judgments, including design infringement dispute between Luoyang Chennuo electric Co., Ltd. v. Tianjin Weike Vacuum Switch Co., Ltd., Zhang Chunjiang (a natural person), and Tianjin Zhihe Electric Appliance Co., Ltd. (2014 Civial Retrial No. 193), invalidation of design between Zhang Dijun (a natural person) v. State Intellectual Property Office and Cixi Xinglong Electronics Co., Ltd. (2012 Administrative Retrial No.14), design infringement dispute between Gaoyi Co., Ltd. v. Zhejiang Jianlong Sanitary & Bathroom Co., Ltd. (2015 Civil Retrial No.23), etc., the determination standard of functional design does not lie in whether it is it is non-optional for the design feature due to limitation from functional or technological condition limitations, but based on whether average consumers believe that the design feature is solely decided by its function, and they do not need aesthetic consideration for the design feature.

 

As for whether average consumers would consider aesthetic factor of the design feature, it is a relatively subjective issue. For example, in the above design infringement dispute between Gaoyi Co., Ltd. v. Zhejiang Jianlong Sanitary & Bathroom Co., Ltd., the second instance court and the retrial court had completely different outcomes on whether the push button at “handheld shower head” was a functional design. The second instance court held: “although the push button may have different shape in design, setting it on the handle is mainly a functional design, which has no significant influence on the overall visual effect.” The retrial court, however, held: “the function of the push button is to control water flow. Whether to set up the push button is depended on whether there is a need to fulfill the function of controlling water flow at the shower head. However, as long as the push button is set on the handle, there can be a number of designs. When average consumers seeing the button, they naturally would consider whether the button design is pretty or not, instead of only consider whether it may fulfill the function of controlling water flow.”  

 

 

 

Therefore, although the Supreme Court pointed out the determination standard of functional design lies in whether average consumers would consider the aesthetic appeal of the design, and the objective manner determines functionality on whether there are many other options to fulfill the function in a design. Obviously, when there are a number of options in design which can fulfill the function, the final design is decided by the aesthetic appeal. Likewise, if no other option is available in design, the design, of course, is made for functionality and not for aesthetic appeal. 

 

4. Noteworthy points for claiming functional design

 

As above mentioned, in practice, whether other options are available to fulfill a certain function is the objective standard to determine whether a design is functional. Thus, a claim of functional designs may be supported by explanation of the same type of products with very limited design options to fulfill a certain function with relevant evidence. When a claim to deny functional designs, it may be made by explaining the same type of products with a number of options in design to fulfill a certain function.

 

For daily essentials, whether there are multiple designs to achieve the same function can be learned from daily life experience. While for industrial equipment design, which are less common in daily life, it is more important to provide evidence to support whether multiple design options are available. The design evaluation report and professional magazines with the same type of products in the relevant industry may be strong evidence. 

 

IV. Prior design plea

 

1. About this case

 

In this case, the alleged infringer did not plea based on prior design, did not submit any prior design evidence, and the local IP Office did not have any comment on prior design in the alleged decision. The infringer submitted search result of three prior designs at the time of court hearing. But the infringer had no clear explanation whether such evidence was proof for common design or prior design. 

 

On the one hand, we refuted the argument that three prior design patents were insufficient to prove common design, and argued that the evidence was not submitted at the administrative period, which was not the basis for the local IP Office’s denial. The prior design plea and the relevant design search result were out of the scope of the trial of this case. Meanwhile, we explained the differences between the three prior design patents and the present design patent, and emphasized that there were significant differences between the present design patent and the prior design patents. As shown in the following pictures, this design patent differs on the shape of handle, patterns of the rollers, and the place and joint between the handle and the rollers. While these differences were the very identical points between the alleged infringing product and the present design patent, that is, the alleged infringing product applied the most distinguishing features and the prior design plea could not be established. 

The first instance judgment did not comment on the three pieces of evidence and prior design plea. We believe that the main reason was that the court agreed with what we claimed that the three pieces of evidence and the prior design plea were not raised in the administrative phrase and they were out of the scope of administrative litigation trial. 

 

However, in the court hearing of the second instance trial, the local IP Office made prior design plea the most important claim unexpectedly, and emphasized repeatedly that design in the public domain should not be used exclusively and no harm should be made to the public’s interests. The thinking of the local IP Office was not clear, but such claim was obviously out of the scope of the administrative decision and trial of the administrative litigation. Moreover, it contradicted to the administrative decision, that is, if the local IP Office agreed to the prior design plea, it meant that the alleged infringing product was similar to the prior designs, but the administrative decision was that the alleged infringing design was not similar to the present design patent. However, in fact, comparing the present design patent, the prior designs and the alleged infringing product, the extent of similarity between the alleged infringing product and the present design patent was much higher than to the prior designs, and the differences of the alleged infringing product from this design patent was also the very difference of it from the prior designs. The prior design plea obviously contradicted to the decision that the alleged infringing product was not similar to the present design patent. And their claim was overruled by the second instance court finally.    

  

1.Prior design plea in design infringement dispute

 

Article 2(4) of the Patent Law defined design as “‘any new design of the shape, the pattern, or their combination, or the combination of the color with shape or pattern, of a whole product or part of it, which create an aesthetic appeal and is fit for industrial application.” From the definition, the purpose of legislation of design patent in the patent law is to protect creative industrial application with aesthetic appeal, and only when a design which is of creative features distinguishing from prior designs can be granted. 

 

However, since there is no substantive examination in the design system in China, a design which belongs to prior design may well be granted a patent. If such design patent is allowed to be enforced, it is not a question that public interests would be damaged. And during design patent infringement disputes, the plea of invalidation of design is not admitted, and the public have to request to invalidate such design in the invalidation procedure which certainly would cost time and money. In order to balance interests of various parties, prior design is a commonly used plea in design patent infringement method. 

 

Article 62 of revised Patent Law in 2008 stipulated expressly for the first time about the prior design plea, that is, during a patent infringement dispute, if the alleged infringer has evidence to prove the technology or design it performs belonging to prior art or prior design, a patent infringement would not be established. In fact, prior design plea was commonly accepted in the judicial practice even before this. 

 

Article 14 of Interpretations of the Supreme Court on Several Issues of Application of Law regarding Trial of Patent Infringement Dispute Cases, released in December, 2009, stipulated in details of prior design plea, that is, if the alleged infringing design is identical with a prior design or there is no substantial difference, the people’s court shall determine that the design performed by the alleged infringer belongs to prior design stipulated in Article 62 of the Patent Law. 

 

2 Principles of application of prior design plea

 

Although there were a large number of cases in which prior design plea was admitted in judicial practice, the application principles and determination steps were not clear before 2009 and the courts in various places were quite different in practice. The most serious dispute lied in how to understand the relationship among the prior designs, the involved design patent, and the alleged infringing product. The application principles of prior design became clear following the release of the above mentioned Judicial Interpretations and a series of typical cases released by the Supreme Court. 

 

Firstly, when making prior design plea, the comparison should be made between the alleged infringing product and a complete prior design, instead of a number of prior designs.   

 

Secondly, the comparison should be made on whether the alleged infringing product and the prior design are identical or substantially similar. According to the judgment made by the Supreme Court in the case (2010) Civil Retrial No.189 which was represented by our firm (50 Typical Cases in 2010), under the circumstance that the alleged infringing design is not identical to the prior design, in order to have an accurate conclusion on the design infringement dispute, the prior design should be taken as a basis to establish a coordination, and the alleged infringing product design, the prior design patent, and the involved design compared on the coordination to allow a comprehensive determination to be reached. During the process, the court needs to not only pay attention to the influence of the difference and similarity of the alleged infringing product design and the prior design to the overall visual effect, but also to look at the influence of the difference and similarity of the granted design patent and the prior design to the overall visual effect. Moreover, the court should pay special attention to whether the alleged infringing design applies the distinguishing features of the granted design from the prior designs, thus to cause an overall visual effect with no substantial difference from the granted design patent. If the alleged infringing design applies all or most of the distinguishing features, usually the prior design plea could not be established. 

 

Therefore, if the prior design is identical with the alleged infringing product, when there is no need to consider the granted design patent, the court may determine directly that a prior design plea is established and there is no infringement. While if the prior design is not completely identical to the alleged infringing product, a comparison with each of the two respectively among the alleged infringing product design, the prior design and the granted design patent should be made, in order to analyze whether the alleged infringing product takes advantage of the distinguishing features of the granted design patent from the prior design. 

 

1.Noteworthy points for prior design plea

 

When making prior design plea, proper prior design evidence should be submitted first, i.e., an effective evidence should be published before the application date the granted design patent. If the prior design is a conflicting design with an earlier application date but a later publication date than the granted design patent, even though a prior design plea may be used for reference, the applicable standard should be much stricter, and usually limited to identical designs. 
 

As for disclosure evidence such as patent gazette or publications, they are the most proper prior design evidence since they have clear publication dates and detailed contents. However, if there is no patent gazette or publications, prior use evidence might be required. Since it is difficult to confirm the time of such evidence, it may face great difficulty in practice, but it does not mean it could not be used. When using such evidence, the publicity, the publication time, and content of the publication must be fully proved. For example, in the retrial case (2015) IP Administrative No.61 over design patent invalidation dispute between Dong Jianfei and Wu Shuxiang, the relevant prior design was published on a third-party platform prior to the application date. However, the Patent Reexamination Board held that network information can be very easily altered, and the release time cannot be proved to be the true publication time. During the administrative litigation, the court held that the authenticity and degree of proof of the publication time for the internet web pages which are notarized in the form of notarial certificate may be admitted if a comprehensive consideration of non-exhaustive factors such as the making process of the notarial certificate, the formation process of web pages and publication time, the qualification and credit status of the website management, the business and management situation of the website, the technological means applied by the website, and other evidence can support the disputed facts. Meanwhile, disputed facts should be admitted if the opposing party cannot weaken the credibility of the evidence. 

 

Although it was the invalidation procedure that involved determination of invalid evidence, same problems exist when proving prior design in a prior design plea in an infringement litigation. It is advisable to make a comprehensive use of the notarization system to prove the authenticity of the evidence. 

 

In addition, in light the difficulty of raising proofs of publication of prior use evidence, it is a good means to have the facts such as public selling and exhibition to be notarized in advance. For example, filming comprehensively all the samples in an exhibition, (if the samples are small, they may also be preserved) filming comprehensively the goods exhibited in the shop, or uploading the selling information and pictures of the goods on the internet and make notarization of the internet information, are also applicable options. 

 

V. Similarity determination

 

1. About this case

 

Among the four issues of this case, the focus of the first three issues were actually attributed to the fourth one. 

 

The local IP Office and the alleged infringer claimed that the alleged infringing product was not similar to the granted present design patent, and their main reason was the distinguishing features of the two had more influence on the overall visual effect, while the identical features belonged to common design and function design, which had no influence on the overall visual effect.

 

While we claimed the alleged infringing product had more identical features and less distinguishing features from the granted present design patent. Moreover, the identical features were the very distinguishing features between the granted present design patent and the prior designs, while the distinguishing features of the alleged infringing product had no substantial influence on the overall visual effect.   

 

 

From the above comparison, the two at least shared the following identical features: 1. Their overall shape and structure were identical and both composed of a handle and rollers. The overall shape of the handle looked like the letter “Y” viewed horizontally. The joint manner and place of the two designs were identical, both with a ball roller at the right and the left side of the front part of the handle. 2. The rollers’ shape and pattern were identical. Both rollers were spheres, with hexagon patterns distributed equably on the surface. The hexagon patterns connected with each other and formed a diamond shape pattern. 3. The overall structure and shape of the handles were identical. Both were thick in the two ends and thin in the middle. The center of both handles at the above part had a transparent indent. The two ends of the handle for both of the designs curved downwards. 

 

Therefore, the two designs were identical in the overall shape, the composition, the shape and the number of the handle and the rollers as parts, and the location relationship between the rollers and the handle. Taking the evaluation report of the granted present design patent into consideration, these identical features were the very distinguishing features of the granted design patent from the prior designs, that is, the alleged infringing design mainly applied the distinguishing features of the granted present design patent from the prior design, thus created no substantial difference in the overall visual effect with the granted design patent. 

 

As for the distinguishing features of the two, the local IP Office made the determination in the alleged decision as follows: 1. The left part of the handle of the alleged infringing product looked like a heart, while the left part of the granted design looked like a fan. 2. The center of the left part of the handle of the alleged infringing product had an elliptical groove, with a transparent concave therein. The center of the left part of the handle of the granted design patent had a circular triangle groove, with a transparent circular triangle concave therein.

 

As for the point one, we claimed it was only a very slight dent at the middle of the front part of the alleged infringing product, and taking the overall shape of the handle into consideration, the handle looked like a fan, with a thinner middle part and a wider front part, which was of little difference in overall visual effect from the front part of the handle of the present design patent. As for the point two, both the alleged infringing product and the granted present design patent had an inner ring and transparent concave surface which was distinguishable from the rest part of the product in color. Moreover, the size and place of the grooves on the top of handle were very similar, let alone the elliptical groove of the alleged infringing product was closely similar to the circular triangle groove of the granted present design patent, which was hardly noticeable by average consumers. Thus, the alleged infringing product was only of trivial difference from the granted present design patent. Comparing the six views of the design, even four of the views could not reveal the distinguishing differences. Therefore, such differences were insufficient to have significant influence on the overall visual effect. 

 

Both the first instance court and the second instance court agreed with our opinion and held that the differences of the alleged design from the granted present design patent and its influence on the overall visual effect were limited and subtle. As for beauty roller products, such as the massage rollers and the handle, were all likely to be noticed by the average consumers, because the overall shape and structure, the shape of the roller and handle, especially the place of joint of the roller and the handle, and the patterns on the rollers of the alleged infringing product from the granted present design patent were identical, thus their differences were hardly distinguishable from an average consumer’s perspective, and it was hard to determine if there were significant differences between the alleged infringing product and the granted present design patent. Thus, the court held that the two were similar.        

                   

2. Principles and noteworthy points for similarity determination of design

 

The principle of similarity determination for design patents is still “observing as a whole, determining comprehensively” in China. However, since the invalidation case of SUV design of HONDA, the Supreme Court emphasized in multiple cases that the distinguishing features different from the prior designs was significantly more influential on the visual effect. Finally, this view was clearly stipulated in Article 11 of Interpretations of Supreme Court on Several Issues of Application of Law regarding Trial of Patent Infringement Dispute Cases (Court Interpretation (2009) No. 21). 

 

We may say that, although the concept of “important part” has been abandoned in the Chinese design law system, since the distinguishing features of the granted design patent from the prior designs have more influence on the overall visual effect, the distinguishing features actually became an “important part” of the design. On the conditions of “observing as a whole, determining comprehensively”, making clear the “important part” and having a comparison is the key point in similarity determinations for design patents in judicial practice. 

 

Besides, the determination of common design and functional design will also affect the determination of the “important part.” However, the determination of common design and functional design rarely happened in practice. Thus, the distinguishing design features from the prior design are mostly important in the majority of the cases.

 

3. Determination of distinguishing design features and adducing proof

 

As for how to determine distinguishing design features, the Supreme Court made it clear in the retrial case (2015) Civil Retrial No.633 that to compare respectively among the prior designs, the involved granted design patent and the alleged infringing design and summarized the distinguishing features between the involved granted design patent and the prior designs. The determination steps and logics were: 1. The distinguishing features were the creative features of the involved granted design patent, which made the involved design distinguishable from the prior designs and significantly affected the determination of overall visual effect. Thus, the comparison should firstly be made between the involved granted design patent and the prior designs in order to make clear the distinguishing features. 2. If the alleged infringing product had a number of distinguishing features, which significantly affected the overall visual effect and made the alleged infringing product substantially different from the prior designs, the prior design plea was not valid. On the contrary, if the alleged infringing product did not contain any of the distinguishing features that made the granted design distinguishable from the prior designs, usually it could be presumed that the alleged infringing design was not similar to the granted design. 

 

From this case, the distinguishing features had such a significant influence on the similarity comparison of designs, even requiring the alleged infringing design to have all the distinguishing features so as to be considered similar to the granted design. This point is worrying in the respect that it is very easy for the alleged infringer to stay away from the protection scope of the design by only avoiding one of the distinguishing features when to plagiarize others’ designs. This would offer an easy way for the alleged infringer to plagiarize others’ design and to avoid infringement at the same time, which is disadvantageous to the protection of the right holders and encouraging innovation. 

 

In order to better protect legal right, a right holder may consider applying one design application covering a number of similar designs, or applying a number of designs covering all the various distinguishing features, when a creative design contains a number of distinguishing features from prior designs.

 

As for proof of distinguishing features, usually the design owner may have it included in the abstract, or make a statement in the procedures of affirming design right or infringement procedure. In practice, both circumstances are common. The Supreme Court made this point clear in the above-mentioned judgment, that is, a design patent owner should adduce proof for the claimed design features. Meanwhile, in light of the design features usually reflect the difference from the prior designs, which is not a fixed concept, it is possible to be overruled. Under the circumstance that a third party raises objections and provides sufficient contrary evidence, there is certain possibility that the determination of design features can be changed. 

 

4. Determination of average consumers

 

The subject who determines similarity of designs is average consumers. There is no question that the determination of average consumers affects the similarity determination. 

 

As for definition of average consumers, it was a big controversy before the amendment of the Examination Guidelines. In the Examination Guidelines published in 2006, Section 4, Chapter 5, Part IV provided a clear explanation to the characteristics of average consumers.

 

(1) An average consumer has the basic knowledge of designs of identical or similar product to and their common design methods prior to the application date of the granted design patent. For example, for automobiles, an average consumer would know something about the automobiles sold in the market and reported by mass media.

 

(2) An average consumer has certain ability to recognize the difference of the product designs in shape, pattern and color. However, they are not likely to notice the subtle change in shape, pattern, or color. 

 

The above two characteristics of average consumers actually give two signals: First, the average consumers have common sense over prior designs, which means they may notice the distinguishing features and this is also an emphasis on the influence of the distinguishing features on the overall visual effect. Second, the other one is that the different points which have no influence on the visual effect belong to subtle change. Otherwise, it would be noticed by the average consumers.

 

During the second instance litigation of this case, the local IP Office and the alleged infringer tried to claim that the average consumers of product with granted design in this case were women, who were more likely to find the distinguishing features. As for this claim, we refuted that on the one hand, the average consumers did not only refer to the users of the product; in another aspect, there was no evidence and reasonable grounds showing women were more likely to notice the distinguishing features. On the contrary, the average consumers were those who had common sense to the prior designs and they should have been more likely to notice that the similarity between the alleged infringing design and the granted present design patent belonged to distinguishing features. 

 

In practice, when adducing proof for opinions of average consumers, it is worthy of noticing whether the opinions are from average consumers. For example, in the retrial case (2014) Civil 3 Final No.8, the Supreme Court held that “average consumers” was a concept of legal fiction, and their “common sense” was not the same as car enthusiasts. Thus, the Supreme Court did not adopt the media reports submitted by Honda Corporation. 

 

Afterword

 

Design dispute seems easy to handle, but actually not. In the annual publication by the Supreme Court on the Top 10 Cases for Intellectual Property Protection, the 50 Typical Cases, and the Intellectual Property Trial Annual Report, the percentage of design disputes were always higher than that of inventions and utility models. It was because, on the one hand, that the number of design disputes was more than that of inventions and utility models, and on the other hand, suggested that the handling of design disputes reflected adequate and complex legal issues. 

 

When enforcing design patent rights, a patent owner should pay attention not to treat it carelessly, and should entrust attorneys experienced in design disputes in order to obtain the best result in protection.