Beijing Wei Chixue Law Firm--Principles of Similarity Determination in Design Infringement Disputes -- Analysis of the Retrial of Design Infringement Disputes of MTG Corporation v. Shengjiemei Co., Ltd.

Sai CHEN
Chinese Attorney-at-Law

Forewords

On April 23, 2020, the Supreme People’s Court released the Annual Report of Intellectual Property Cases of the Supreme People’s Court (2019). This annual report selected 60 typical cases from the intellectual property cases closed in 2019 and concluded 67 law application problems of guiding significance, illustrating the reviewing concept and the judging method for coping with novel, difficult and complicated cases in intellectual property rights.

The seventh case in the report, which is the retrial of the design infringement disputes between MTG Corporation, the petitioner, and Shengjiemei Co., Ltd, the respondent (Supreme People’s Court No. 142 (2019) MZ), involves the law application of the basic principles for the comparison determining design infringement. In this case, the Supreme People’s Court pointed out that in the comparison determining design infringement, on the one hand, all visual design features including the features and the distinguishing features are included in the comparison; on the other hand, even a partial feature needs to be paid special attention due to its particularity, the other design features, though only has a small influence on the overall visual effect, cannot be neglected.
Wei Chixue Law Firm represented the petitioner in the first instance, the second instance and the retrial of this case. This article intends to analyze the assessment of the Supreme People’s Court of this case to conclude the judgment and point of attention in the comparison for determining design infringement in the current judicial practice to provide some reference for readers.

I. Case Summary

MTG Corporation (hereinafter referred to as MTG) is a famous Japanese company dedicated in beauty and healthcare products. The ReFa beauty roller series products of MTG are popular all around the world as the magic stick for shaping a thin face. Thence, the series of popular products are rapidly imitated. In particular, products imitating the design of ReFa products flooded into the beauty product market. In order to ensure the legal rights of MTG and the interests of the consumers, MTG decided to take actions against the infringing products.

In May 2016, Wei Chixue Law Law Firm represented MTG to file four design infringement lawsuits before Guangzhou Intellectual Property Court against Jieshengmei Beauty Instrument Factory and Shenjiemei Beauty Technology Co., Ltd resident in Baiyun District, Guangzhou. After reviewing, Guangzhou Intellectual Property Court made judgments of the four cases in November, 2016. For three alleged infringing products which barely differentiate from Refa, the court determined that they were similar to Refa and constituted infringement. But for the case involving Refa Carat, based on minor difference between Refa Carat and the alleged infringing product, the court made the civil judgment No. 722 (2016) YUE 73 MC, determining that the alleged infringing product is not similar to the patent involved in the case and thus declining our claims.

We were satisfied with the judgment of the first instance and appealed to Guangzhou People’s High Court in December, 2016. However, Guangzhou People’s High Court made the civil judgment No. 178 (2017) YMZ in May 2017 to dismiss our appeal and remain the original judgment.

In December, 2017, we petitioned to the Supreme People’s Court. The Supreme People’s Court made the civil ruling No. 890 (2018) MS on December 25, 2018 to review this case and to cease the execution of the original judgment.

In December 2019, the Supreme People’s Court made the judgment of retrial, determining that the alleged infringing design fell within the scope of protection of the patent at issue, revoking the judgments of the first and second instance, and judging that infringement was constituted, the defendant shall be reliable to cease the infringement and compensate for the losses of MTG.

II. Opinions of the Court

Main dispute in this case is whether or not the alleged infringing product falls within the scope of protection of the patent at issue. On this matter, the courts of the first and second instances arrived at completely different conclusion from the court of the retrial. This case is typical in illustrating the principles and the method for performing the comparison determining design infringement.

The comparison between the patent at issue and the alleged infringing product are shown below.

● Opinions of the court of first instance

With reference to the figures, the brief description and the above comparison, the following conclusion can be obtained: 1. The identical features of the product of the patent at issue and the prior design include: (1) the same overall structure, consisting of a handle, a connection rod and a massage head; (2) the overall Y shape formed by the handle and the connection rod, two connecting rods each connecting identical massage head; (3) the massage head having an overall shape similar to a spherical shape. Hence, the defendant is reasonable to state that the design feature of the Y-shaped main body of the product of the patent at issue consisting of the Y-shaped body and two spherical bodies is a common design feature in the prior designs. The court accepts the opinion of the defendant. 2. The patent at issue is distinguished from the prior design by the following design features: (1) the handle has an overall arc-shaped curvature, the curvature is relatively mild; (2) the handle portion is a smooth ellipsoid and has a relatively small elliptical, translucent upper cover that covers the upper surface of the handle; (3) the massage head of the patent at issue is narrowed down at the end close to the connection rod such that the massage head has an overall shape similar to a pear shape; (4) there are two parallel circumferential lines surrounding a waist of the massage head; there are five rings of circumferential lines distributing from the waist toward both ends, respectively, and triangular section surfaces formed by traversing lines, the triangular section surfaces densely distributed; (5) the top end of the massage head is formed by adjoining divergent triangular section surfaces having the same vertex.

The alleged infringing design and the design features of the patent at issue distinguishing from the prior art have the following differences therebetween: (1) the handle of the patent at issue has an overall arc-shaped curvature, the curvature is relatively mild; while the alleged infringing product has a handle of an overall shape with a curvature similar to an S shape, the curvature is greater at the side of the handle closer to the massage head; (2) the handle portion of the patent at issue is a smooth ellipsoid and has a relatively small elliptical, translucent upper cover that covers the upper surface of the handle; the handle of the alleged infringing product is broaden gradually from the front to the end, narrowed down and warping upwardly at the tail portion, with a relatively small hexagonal, translucent upper cover that covers the upper surface of the handle; (3) the massage head of the patent at issue is narrowed down at the end close to the connection rod such that the massage head has an overall shape similar to a pear shape; the two massage heads of the alleged infringing product have an overall spherical shape; (4) in the product of the patent at issue, there are two parallel circumferential lines surrounding a waist of the massage head; there are five rings of circumferential lines distributing from the waist toward both ends, respectively, and triangular section surfaces formed by traversing lines, the triangular section surfaces densely distributed; the alleged infringing product does not have the parallel circumferential lines on the waist of the massage heads, and has three rings of circumferential lines and big triangular section surfaces formed by traversing lines distributed from the waist of the massage head to both ends; (5) the top end of the massage head of the patent at issue is formed by adjoining divergent triangular section surfaces having the same vertex; the alleged infringing product has a round top end, with isosceles trapezoids adjoining one another surrounding the round body. As shown above, the alleged infringing design does not have all highlight design features of the patent at issue distinguishing from the prior design. The alleged infringement is similar to the patent at issue in terms of the non-highlight design features. However, the distinguishing design features of the patent at issue have greater influence on the overall visual effect than the other design features. The Invalidation Decision of the patent at issue also pointed out that, the product of the patent at issue is a beauty roller; the massage head is a significant part affecting the experience of the consumer and will be paid special attention to by the consumer; thus, even a small change of the massage head will generate significant influence on the overall visual effect; such a change is not a slight local difference for the product. Therefore, after comprehensive comparison and judgment, the court determines that the alleged infringing product has significant difference from the design of the patent at issue; and the alleged infringing product does not fall within the scope of protection of the patent at issue.

● Opinions of the court of second instance

From the comparison between the alleged infringing product and the patent at issue, it can be seen that they both consist of a massage head, a connection rod and a handle; the handle and the connection rod form a Y shape, with an identical massage head connected to each end of the connection rod; and the massage head has evenly distributed triangular section surfaces. The major differences between the two include: 1. The massage head of the patent at issue is narrowed down at the end close to the connection rod and has an overall pear shape; the massage head has two parallel lines surrounding the waist and a top end formed by adjoining divergent triangular section surfaces having the same vertex. While the massage head of the alleged infringing product has a spherical shape, only one surrounding line on the waist formed by triangular sections and a top end formed by adjoining spherical surfaces and isosceles trapezoidal sections. 2. The handle of the patent at issue has an overall arc-shaped curvature, the curvature being relatively mild, with an elliptical upper cover that covers the upper surface of the handle, while the handle of the alleged infringing product has substantially an S shape, with greater curvature at the end close to the massage head, and has a hexagonal upper cover that covers the upper surface of the handle. Generally, a beauty massage product consists of a massage component and a handle. The massage component is very important for the experience of the consumer and will usually be paid special attention to. Thus, even a slight change will cause significant influence on the overall visual effect. The handle, as an important component of the beauty massage product, has greater freedom for the design of its outer profile. According to the principle of viewing the design as a whole and the principle of comprehensive judgment, the afore-described differences of the alleged infringing product from the design of the patent at issue in the massage head and the handle are sufficient to cause significant influence on the overall visual effect. The decision of the court of first instance that the alleged infringing product does not fall within the protection scope of the patent at issue is appropriate and will be upheld by the court.

● Opinions of the court of retrial

The court of first instance and the court of second instance have substantially the same opinion on the similarity and the differences between the patented design and the alleged infringing design. To facilitate subsequent comparison, the court concluded the features as below according to the corresponding views.

(1) Top View and Bottom View

Similarity: consisting of a Y-shaped handle and two massage heads; a short portion for connecting the branches of the Y shape; the massage head having a substantially spherical shape; spherical surface formed by irregular section surfaces; diameter of the handle changing to increase and then decrease from the end proximal to the rollers to the end distal to the rollers.

Difference: The massage head of the patented design narrows down at the end close to the connection rod, and thus has a shape similar to a pear. The massage head of the patented design has two parallel circumferential lines at the waist and small sections on the surface; and the handle has an elliptical upper cover on the upper surface. The alleged infringing product has a more round massage head, without circumferential lines on the waist, greater section surfaces and a hexagonal upper cover on the upper surface of the handle.

(2) Front View, Perspective View

Similarity: Same as the Top View and the Bottom View

Difference: The handle of the patented design is of an arc-shaped transition with a small curvature. The handle of the alleged infringing design is of an arc-shaped transition with a great curvature and a warping distal end.

(3) Left View

Similarity: Same as the Top View and the Bottom View

Difference: The massage heads have different densities of the section surfaces. The patented design has a handle bending downwardly at the distal end. The distal end of the handle of the alleged infringing design is not shown in the figure.

2. Evaluation of the overall visual effect

According to the prior designs submitted by the involved parties and the judgment of the Invalidation Decision on the patent at issue, main features of the patent at issue distinguishing from the prior designs include the shape and the surface structure of the massage head and the method of attachment of the massage head to the connecting rod, as well as the curvature and the shape of the handle, the length and extension of the connecting rod, etc. Meanwhile, the products of both the patented design and the alleged infringing design are beauty massagers. Such kind of products are mostly hand-held during normal use, with at least part of the handle being blocked. Therefore, the relevant design features of the massage head are more likely to attract people’s attention as compared to the design features of the handle.

In addition, although this type of beauty massager usually has a basic structure consisting of one handle and two massage heads, there are various alternative designs for this structure without affecting the function of the product. For example, the massage head may be designed as a sphere or a cylinder; the surface of the massage head may be designed as a smooth and flat surface or having protruding particles; the handle may be straight, flat, concaved, etc.; the connection rod may be Y-shaped or T-shaped, and the connecting rod may penetrate, support or clamp the massage head. Therefore, the aforementioned design features can be relatively freely designed. The alleged infringing design must have sufficiently significant changes to be distinguished from the patented design.

3. Comparison between the alleged infringing design and the patented design

In terms of the massage head, the alleged infringing design uses the same spherical massage head with the patented design which has multiple section surface on the surface. Although the two designs are differentiated by the slightly protruding end poriton of the massage head of the patented design and the shape and desity of the section surfaces on the spherical surface, these differences only take up a small portion of the volume or the surface area of the massage head and cannot be easily sensed by the consumer, and thus belong to slight local differences.

In terms of the handle, both the handles of the alleged infringing design and the patented design have a smooth and curved handle with a smooth transition from a thick middle portion to thin ends. The alleged infringing design indeed increases the curvature and has an additional warping shape at the end of the handle. However, since the handle of the prior design is mostly designed as a straight rod, and the warping part is only provided at the end portion that is easily blocked during normal use. Hence, the difference in the handle is also local minor difference.

Through the foregoing analysis, it can be determined that the alleged infringing design falls within the scope of protection of the patented design. The courts of first and second instances failed to consider the effect of the similarities between the designs and did not apply the concept of design space correctly in evaluating the distinguishing design features, leading to incorrect conclusion in the comparison of the overall visual effect. The court hereby corrects the incorrect conclusion.

III. Principles and Steps of Comparison for Determining Design Infringement

It is known that the principle for design similarity determination in Chinese local practice is “viewing the design as a whole and making comprehensive judgment”. However, unlike in trademark or unfair competition disputes, confusion is not a criterion for determining similarity. In addition, design patent granting in China applies a non-examination system. Thus, the protection scope of a design patent is, as compared with a patent for invention-creation, not so clear. The standard and the method of “viewing the design as a whole and making comprehensive judgment” is not unified and specified. This also causes design similarity determination to seem random.

In recent years, multiple design infringement cases have been selected in the annually released Top Ten Cases on Judicial Protection of Intellectual Property Rights, 50 Typical Intellectual Property Cases and the annual report of trials by the Supreme People’s Court, taking up a portion far more than dispute cases over infringement of invention or utility model. This indicates from another perspective that design infringement disputes involve various complicated legal issues. The Supreme People’s Court attempts to clarify and unify the criteria for determining similarity of designs through explanation and analysis of typical cases.

In the present case, the Supreme People’s Court explained in long paragraphs the method for determining similarity between designs and specified the steps of the determination. “in determining identical or similar designs, usually the following steps are followed: (1) concluding the similarity and the difference between the patented design and the alleged infringing design objectively and comprehensively from the view of normal consumers; (2) with reference to the prior design, on the premise of normal use, determining the design features distinguishing from the prior design and the design features easily and directly observed; (3) taking into consideration the design space, evaluating the design features one by one in terms of their significance in affecting the overall visual effect; (4) arriving at a conclusion relying on the principle of ‘viewing the design as a whole and making comprehensive judgment’.”

1. Concluding the similarity and the difference between the patented design and the alleged infringing design objectively and comprehensively from the view of normal consumers

(1) The view of normal consumers

The subject who evaluates the design is the normal consumer. The determination of the normal consumer has undoubted influence on the determination of similarity.

Regarding the normal consumer, the Guidelines for Patent Examination (2010) specifies the characteristic of normal consumer in Section 4 of Chapter 5, Part II as below:

(1) common knowledge of the designs and commonly used design methods incorporated in the same or similar products as that incorporating the patent concerned before its filing date. For example, a normal consumer of cars shall know about the cars on the market and have general information of cars available from the frequently shown advertisement in the media.

(2) certain capability of distinguishing the differences in shape, pattern and color between design patent products, but without notice to the minor differences in shape, pattern or color of products.

The above characteristics of normal consumer actually indicates that the normal consumer have common knowledge of the prior design, in other words, can notice the distinguishing design features, and that the distinguishing points having no influence on the visual effect should be deemed as minor differences, otherwise they will be noticed by the normal consumer.

During the present case, the defendant has stated for several times that the normal consumer of the product incorporating the patented design is female and the consumer of the product pays great attention to details in life and will pay special attention to the distinguishing points affecting the use experience and the esthetic experience, thereby avoiding visual confusion. Regarding this, we believe that the normal consumer is a fictional subject, not the exact user of the product. The characteristics of the normal consumer is possessing the common knowledge of the prior design and being prone to notice that the alleged infringing design adopts the distinguishing design features of the patent at issue.

(2) Concluding the similarity and the difference

The basic method of performing similarity comparison is to compare the respective views of the patent at issue with the alleged infringing design and to conclude the similarity and the differences between the corresponding views.

However, in the cases in recent years, the courts have been tending to neglect the similarity and only take the differences into account. That is, the court would find out the differences between the patent at issue and the alleged infringing design and determine whether the differences affect the overall visual effect according to whether the differences are provided in a part difficult to observe and whether the differences form distinguishing design features. If the differences are in a part easily observed or form distinguishing design features, the court will determine that they affect the overall visual effect, and thus determines that the designs are not similar. Otherwise, the court will determine that the differences do not have significant influence on the overall visual effect and that the designs are similar.

Indeed, such determination is reasonable to some extent and can be easily made. In most circumstances, the conclusion is correct. However, there is still a risk due to neglecting the similarity between the designs, which is that the influence of the similarity on the overall visual effect will be neglected. As a result, an imitator escapes reliability of copying the innovative design of the patent at issue by merely adding a distinguishing feature at an easily observed part using a conventional method, which is clearly against the intention of encouraging innovation.

In order to correct this trend, there have been several typical cases where the court criticized the above determination method. For example, in this case, the Supreme People’s Court strengthened that all visible design features, including both similarity and difference, are included in the comparison. The court further pointed out that the courts of the first and second instances did not take the non-ignorable influence of the similarity between the two designs in to account. For another example, in the administrative dispute over design invalidation of Landwind SUV (hereinafter referred to as the Land Rover case) which has been selected in the Top Ten Cases on Judicial Protection of Intellectual Property Rights 2018, Beijing High Court, the court of second instance, pointed out in the civil judgment No. 4169 (2018) JXZ that: the court of first instance did not specifically analyze the significance of influence the respective similarity on the overall visual effect; after generalization and evaluation of merely the differences, the court of first instance determined that the combination of the differences causes significant influence on the overall design, and such influence was sufficient for the normal consumer to differentiate the overall visual effect of the patent at issue from that of the design in comparison; the determination of the court of first instance that the two designs have significant difference is inappropriate application of the method of “viewing the design as a whole and making comprehensive judgment”.

2. With reference to the prior design, on the premise of normal use, determining the design features distinguishing from the prior design and the design features easily and directly observed

(1) Design features easily and directly observed

On the premise of normal use of the product, it is relatively objective and easy to determine whether a design feature can be easily and directed observed. For example, in a tire product, the lateral face and the tire shoulder portion are usually not considered as the part easily and directed visible; the main tread is the main portion used for comparison. On the other hand, in a product to be placed on the table, the bottom of the base seat is certainly not a design feature easily and directed visible.

As for the present case, we strengthened that the beauty roller product involved in this case is held by the hand in normal use, where the end portion of the handle will definitely be covered by the palm of the user. The alleged infringing product is the same in the state in use. Therefore, the end portion of the handle will not have significant influence on the overall visual effect.

The Supreme People’s Court agreed with our opinion in the retrial decision and stated that: the products of both the patented design and the alleged infringing design are beauty massagers. Such kind of products are mostly hand-held during normal use, with at least part of the handle being blocked. Therefore, the relevant design features of the massage head are more likely to attract people’s attention as compared to the design features of the handle.

(2) Determining distinguishing design features

Compared with the features easily visible, the determination of distinguishing design features is a difficult and key point of this step.

Since the design invalidation case of Honda SUV which was selected in the Top Ten Cases on Judicial Protection of Intellectual Property Rights 2010, the Supreme People’s Court has repeatedly strengthened the significant influence of the features distinguishing from the prior design on the visual effect in several cases. Thence, this opinion of the Supreme People’s Court is specified in Article 11 of the judicial interpretation No. 21 (2009) The Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Disputes over Infringement of Patent Rights. This means that, although the concept of key element is canceled in the design system of China, the design feature of the patent at issue distinguishing from the prior design indeed forms a key element of the design due to its significant influence on the overall visual effect.

Further in the patent infringement dispute of Zhejiang Jianlong Sanitary Co. Ltd v. Grohe AG (hereinafter referred to as the shower head case) which was selected in the Top Ten Cases on Judicial Protection of Intellectual Property Rights 2015, the Supreme People’s Court conclusively specified in the retrial judgment No. 23 (2015) MT that comparison was performed between the prior art and the patent at issue and the alleged infringing design, respectively, and the design features of the patent at issue distinguishing from the prior design were concluded. The steps of determination include in a logical order: 1. The distinguishing design feature is the inventive point of the design of the patent at issue, which makes the design of the patent at issue different from the prior design and can effectively affect the judgment of the overall visual effect. Therefore, the patent at issue should first be compared with the prior design to clarify the distinguishing design feature. 2. The alleged infringing product has a number of distinguishing design features which have a significant influence on the overall visual effect. Therefore, the alleged infringing product is substantially different from the prior design, which makes the prior design defense invalid. On the contrary, if the alleged infringing product does not include all the design features of the patented design distinguishing from the prior design, generally, it can be determined that the alleged infringing design is not similar to the patented design.

According to the shower head case, the distinguishing design feature has considerable influence on the result of the comparison for determining similarity between designs. It is even necessary that the alleged infringing design has all the distinguishing design features to determine similar designs.

The judgment of the first instance of the present case was clearly affected by the judgment of the Supreme People’s Court on the shower head case. As seen from the opinions of the court of first instance, the judgment was made by first comparing the patent at issue with the prior design cited in the prior design defense of the defendant to conclude the distinguishing design features, and then comparing the alleged infringing design with the concluded distinguishing design features, and at last concluding that the designs are not similar because “the alleged infringing design does not have all the highlight design features of the patent at issue distinguishing from the prior design”.

However, the shower head case has raised concerns when it was released as the Top Ten Cases of the year. For one thing, there was concern that the protection scope of a design patent would shrink when it has more innovation design, i.e., more distinguishing design features. When the alleged infringer copies some else’s design, the alleged infringer can go around the scope of protection by avoiding one single distinguishing design feature. Thus, it provides a shortcut for the alleged infringer to imitating others yet not constituting infringement, which is counter-productive to protecting the legal rights of the patentee and encouraging innovation. For another thing, there was also the concern of the uncertainty in determining distinguishing design features. According to the judicial practice, in most cases, the prior design proposed by the alleged infringer as grounds for prior design defense or invalidation is used in the comparison and for determining the distinguishing design features. If the prior design proposed by the alleged infringer in the invalidation or infringement procedure is greatly different from the patent at issue, the determined distinguishing design feature will increase, yet not all of them are truly the inventive design point. Even with one feature different from the “distinguishing design features” determined in such a manner, the alleged infringing design will have the chance of going around the scope of protection of the patent at issue.

The above concerns became realistic in the present case, which is the very result of misunderstanding of the shower head case of the Supreme People’s Court.

Just as stated by the Supreme People’s Court in the retrial judgment of the shower head case, a design patent should have an identifiable innovative design that is distinguished from the prior design to be granted a patent. The innovative design is the design feature of the patented design.” Therefore, obviously not all the differences from the prior design constitute the design feature of a design patent; and only the identifiable innovative design that can be distinguished from the prior design constitutes the design feature of the design patent.

As for the present case, the differences of the patent at issue from the prior design as concluded by the court of first instance are not all identifiable as compared from the prior design. For example, the specific curvature in feature 1, the specific shape of the translucent upper cover on the upper surface of the handle in feature 2, the number of circumferential lines on the surface of the massage head in feature 4, the specific shape of the section surfaces on the top portion of the massage head in feature 5, and so on, cannot produce identifiable visual effect under the condition that the patent at issue and the alleged infringing product have substantially the same shape and patterns of the handle and the massage head. Therefore, the determination of the design feature of the patent at issue in the judgment of first instance was excessively detailed and included a great number of design details insufficient to produce identifiable effect as design features. Thus, the scope of protection of the patent at issue was inappropriately and dramatically reduced, causing biased results.

In fact, the retrial judgment of the shower head case also mentioned how to determine distinguishing design features. The design features should be set forth by the patentee, including the brief description of the patent and the corresponding statements made with regard to the design features in the patent granting and affirmation procedure or infringement procedure. The patentee should bear the burden of proof for the assumed design features. “Patent granting and affirmation procedure aims to examine whether a design is patentable. Therefore, relative description in the examination documents during the procedure is of great referential significance for determining design features.”

In this case, on behalf of the patentee, we stated the following design features of the patent at issue: consisting of a handle and massage rollers, the handle having a Y shape with short extending portions and a curvature bending towards the side of the roller, end portions of the handle connecting massage rollers having a substantially spherical shape; a gripping portion with a thickness gradually increasing from the front to the rear to have a spindle shape; the handle having a small and substantially elliptical-shaped structure on the end thereof close to the extending portions; the massage rollers having on their surface evenly distributed triangular patterns and a circumferential line in the middle. These alleged design features are clearly disclosed in the brief description of the patent at issue and consistent with our opinions put forth in both the invalidation procedure and the infringement proceedings. We also have filed the patent evaluation report and the invalidation decision as proof of the design features.

The Supreme People’s Court basically accepted our opinions and held that, according to the prior designs submitted by the involved parties and the judgment of the Invalidation Decision on the patent at issue, main features of the patent at issue distinguishing from the prior designs include the shape and the surface structure of the massage head and the method of attachment of the massage head to the connecting rod, as well as the curvature and the shape of the handle, the length and extension of the connecting rod, etc.
3. Taking into consideration the design space, evaluating the design features one by one in terms of their significance in affecting the overall visual effect

(1) Design space

Design space means the freedom of a designer when creating a design of a particular product. It is commonly recognized to be closely associated with the influence of the distinguishing design feature on the overall visual effect.

Regarding the influence of design space on the distinguishing feature, the Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Disputes over Infringement of Patent Rights enacted in April, 2016 specified in Article 14 that “When determining the knowledge level and cognitive ability of the general consumer about a design, the courts generally shall take into consideration the design space of the products with the identical or similar category to patented designs incorporating products upon occurrence of the accused infringing act. Where there is a relatively large design space, the courts may find that it is generally not easy for the general consumer to notice a relatively minor difference between different designs; wherein there is a relatively small design space, the courts may find that it is generally easy for the general consumer to notice a relatively minor difference between different designs.”

For determining the design space, in the Land Rover case, the civil decision of the second instance No. 4169 (2018) JXZ pointed out that: design space is a relative concept and is generally restricted by factors including the technical function of the product, necessity of using common features of the product type, degree of crowdedness of prior designs, etc. In particular, the prior design should be investigated. For one design feature, with more corresponding prior designs, the design space of the design feature is more taken up, leaving less alternative design solutions. Thus, minor differences will have relatively great influence on the overall visual effect. On the contrary, with less prior designs, the design space of the feature is less taken up. With greater design space for the design feature, there will be more alternative design solutions; and the minor differences will not product significant influence on the overall visual effect.

The above opinion is reasonable to some extent. However, viewing from another perspective, if a design feature has more corresponding prior design, it means that there are more alternative design solutions and greater design space. Design element is different from a complete design. A design element that has been used in a prior design can still be used in a subsequent design. The overall visual effect is formed by a combination of different design elements. In judicial practice, the involved parties often allege that there is great design space by listing various prior designs corresponding to a design feature.

In this case, we also alleged that there are various alternative designs based on the evaluation report of the patent at issue and there is relatively large design space. The Supreme People’s Court also determined in the retrial judgment that: “although this type of beauty massager usually has a basic structure consisting of one handle and two massage heads, there are various alternative designs for this structure without affecting the function of the product. For example, the massage head may be designed as a sphere or a cylinder; the surface of the massage head may be designed as a smooth and flat surface or having protruding particles; the handle may be straight, flat, concaved, etc.; the connection rod may be Y-shaped or T-shaped, and the connecting rod may penetrate, support or clamp the massage head. Therefore, the aforementioned design features can be relatively freely designed. The alleged infringing design must have sufficiently significant changes to be distinguished from the patented design.”

(2) Significance of design features in affecting the overall visual effect

As mentioned above, in the shower head case, the opinion that “if the alleged infringing product does not contain all design features of the patented design distinguishing from the prior design, generally it can be assumed that alleged infringing design is not similar to the patented design” seems to endow the distinguishing design feature a veto power, exaggerating the influence of the distinguishing design feature on the overall visual effect.

In this case, the Supreme People’s Court started to strengthen that “even a partial feature needs to be paid special attention due to its particularity, the other design features, though only has a small influence on the overall visual effect, cannot be neglected.”

As mentioned in the judgment of second instance of the Land Rover case, the significance of each design feature in the visual effect should be determined according to the position of the design feature in the design as a whole, whether it is easily visible by the normal consumer, with reference to the frequency of appearance of the design feature in the prior design and whether the design feature is restricted by factors including function, aesthetic feeling, technical factors, etc., based on the knowledge of the normal consumer about the design space.

4. Viewing the design as a whole and making comprehensive judgment

According to the principle of viewing the design as a whole and making comprehensive judgment, the judgment should be made based on the overal visual effect according to the design features of the patented design and the alleged infringing design.

As strengthened by the Supreme People’s Court in this, case, “viewing the design as a whole” indicates that, on the one hand, all visual design features including the features and the distinguishing features are included in the comparison; on the other hand, even a partial feature needs to be paid special attention due to its particularity, the other design features, though only has a small influence on the overall visual effect, cannot be neglected.

Finally, the Supreme People’s Court concluded in this case that: “the alleged infringing design falls within the scope of protection of the patented design. The courts of first and second instances failed to consider the effect of the similarities between the designs and did not apply the concept of design space correctly in evaluating the distinguishing design features, leading to incorrect conclusion in the comparison of the overall visual effect.” We won the case through three instances spanning several years. Moreover, the teachings of this case and the correction of the misunderstanding caused by the shower head case will bring positive effect for the subsequent proceedings of design infringement disputes.

Postscript

Developing from cancelling “key element” to over-emphasizing “distinguishing design feature”, and then returning to the principle of “viewing the design as a whole and making comprehensive judgment” in determining similarity and differences between designs, the similarity comparison seems simple but is actually the opposite. Various aspects should be taken in consideration. In the enforcement of a design patent right, special attention should be paid to avoid simple, intuitive and arbitrary handling of the case. It is better to entrust a lawyer with rich experience in design patent disputes in order to achieve the best possible enforcement of the patent right.