Legal basis of the judgment
Article 11 of the Interpretation of the Supreme People’s Court on Some Issues concerning the Application of Law in the Trial of Disputes over Infringement of Patent Rights gives the basic principle that the determination of identical or similar designs should take into consideration the overall visual effect based on the design features of the granted design and the accused infringing design. When making the determination, the focus should be on the following features that have a greater impact on the overall visual effect: the design features that distinguish the granted design from the prior designs (distinguishing design features), and the design features that can be easily and directly observed when the product is in normal use. It is important to note that the term “overall” here has two meanings: first, all visible design features, including similarities and differences, are within the scope of the comparison; and second, the specificity of some of the features makes them a key concern in the comparison, which, however, does not mean that other design features can be ignored but only implies that the impact of these design features on the overall visual effect is relatively small.
Further, Article 14 of 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 (II) gives another assessment factor that affects the overall visual effect, namely design flexibility. Specifically, where the design flexibility is greater, the ordinary consumer is usually less likely to notice minor differences between different designs; and conversely, the smaller the design flexibility is, the more likely the ordinary consumer will notice the minor differences.
Referring again to the aforementioned judicial interpretations, the following steps usually can be followed when determining whether two designs are identical or similar: (1) making an objective and comprehensive summary of the similarities and differences between the patented design and the accused infringing design from the perspective of an ordinary consumer; (2) identifying design features that are distinct from the prior designs and that can be easily and directly observed in the normal use state with reference to the prior designs; (3) assessing the weight of the impact of each of these design features on the overall visual effect, taking into account the design flexibility; and (4) returning to the principle of “overall observation and comprehensive determination” and reaching a conclusion.
Case information
Case Brief
MTG Corporation is the patent owner of a design patent entitled “Beauty Roller” under the patent number ZL201130162283.7 (hereinafter referred to as “the involved patent”).
MTG found that Shengjiemei Beauty Instrument Factory, Baiyun District, Guangzhou (hereinafter referred to as “Shengjiemei Factory”) and Guangzhou Shengjiemei Beauty Technology Co. Ltd. (hereinafter referred to as “Shengjiemei Company”) produced, sold and offered to sell the accused infringing products similar to the involved patent without its permission. MTG filed a lawsuit with the Guangzhou Intellectual Property Court, requesting the court to order the cessation of infringement and compensation for damages.
The court of first instance ruled that the distinguishing design features of the involved patent are: (1) the handle as a whole is curved in an arc shape with a gentle curvature; (2) the handle part is a rounded oval body with a small oval transparent upper cover on the upper surface of the handle; (3) the massage head of the involved patent is narrowed at the end near the connecting rod, making the massage head similar to a pear shape as a whole; (4) the massage head is surrounded by two parallel circumferential lines at the waist, with triangular facets formed by intersecting lines and five circumferential lines distributed on the surface of the massage head from the waist to each end of the message head, the triangular facets being densely distributed; and (5) the top of the massage head has the pattern of a ring of adjoining facets in the shape of expanding triangles with the same apex.
Comparing the essential features of the accused infringing design with those of the involved patent, it is found that they have the following differences: (1) the handle of the involved patent as a whole is curved in an arc shape and has a gentle curvature, while the handle of the accused infringing product as a whole is curved in an S-shape, with a larger curvature on the side of the handle close to the massage head; (2) the handle of the involved patent is a rounded oval body with a small oval transparent upper cover on the upper surface of the handle, while the handle of the accused infringing product is gradually widened from the top end towards the bottom end and again narrowed at the bottom end and curved upwards, with a small hexagonal transparent upper cover on the upper surface of the handle; (3) the massage head of the involved patent is narrowed at the end near the connecting rod, rendering the overall shape of the massage head similar to that of a pear, while the two massage heads of the accused infringing product are round and spherical; (4) the waist of the massage head of the involved patent is surrounded by two parallel circumferential lines, and the surface of the massage head has five circumferential lines from the waist to each end and densely-distributed small triangular facets formed by the intersecting lines, while the waist of the massage head of the accused infringing product is not designed with parallel circumferential lines, and there are three circumferential lines from the waist to each end of the massage head and large triangular facets formed by the intersecting lines on the surface of the massage head; and (5) the top of the massage head of the involved patent has the pattern of a ring of adjoining facets in the shape of expanding triangles with the same apex, while the top of the accused infringing product is rounded and surrounded by adjoining isosceles trapezoid facets. In summary, the accused infringing design does not contain all the essential features that distinguish the involved patent from the prior designs. Based on a comparison between the non-essential features of the accused infringing design and those of the involved patent, the accused infringing design and the involved patent are similar to each other. The essential features of the patented design that distinguish it from the prior designs have a greater impact on the overall visual effect than other design features, and the Examination Decision on Request for Invalidation issued for the involved patent in this case also holds that since the patented product is a beauty roller and the massage head is an important part , the consumers would pay special attention to the massage head when using such products; and, even if the absolute amount of a change is not great, the change will still have a significant impact on the overall visual effect, and such change would never be a nuance for such products. Therefore, the court of first instance ruled that the accused infringing product was significantly different from the patented design in overall visual effect, and that the accused infringing product did not fall within the scope of protection of the patented design. The court of first instance dismissed MTG’s claim.
MTG was unsatisfied with the first-instance judgment and appealed to the High People’s Court of Guangdong Province. The High People’s Court of Guangdong Province rejected MTG’s appeal and upheld the original decision.
MTG applied to the Supreme People’s Court for a retrial against the first and second instance judgments, and the Supreme People’s Court ruled that the case should be brought to trial.
The Supreme People’s Court, in its decision on the retrial of this case, elaborated on the approach to determining whether two designs are similar designs, pointing out the two implications of the term “overall” as in “overall observation”: first, all visible design features, including similarities and differences, are within the scope of the comparison; and second, the specificity of some of the features makes them a key concern in the comparison, which, however, does not mean that other design features can be ignored but only indicates that the impact of these design features on the overall visual effect is relatively small. The following steps usually can be followed when determining whether two designs are identical or similar designs: (1) making an objective and comprehensive summary of the similarities and differences between the patented design and the accused infringing design from the perspective of the average consumer; (2) identifying design features that are distinct from the prior designs and that can be easily and directly observed in the normal use state with reference to the prior designs; (3) assessing the weight of the impact of each of these design features on the overall visual effect, taking into account the design flexibility; and (4) returning to the principle of “overall observation and comprehensive determination” and reaching a conclusion.
Following the above steps, the Supreme People’s Court made a specific judgment.
Firstly, the similarities and differences between the patented design and the accused infringing design are summarized as follows.
(1) Top view and bottom view
Similarities: both consist of “a Y-shaped handle + two massage heads”; the connecting portion of the two branches of the “Y” shaped handle is relatively short; the massage head is roughly a sphere, and the surface of the sphere is composed of irregular facets; and the contour of the handle first gradually becomes wider and then narrower again from the end close to the rollers towards the end far away from the rollers.
Differences: the massage head of the patented design as a whole is more pear-shaped due to the narrowing of the end near the connecting rod, with two parallel circumferential lines around the waist of the massage head, smaller facets on the surface, and an oval upper cover on the upper surface of the handle, while the massage head of the accused infringing design is more rounded, with no circumferential lines around the waist, and has larger facets on the surface and a hexagonal upper cover on the upper surface of the handle.
(2) Front view and perspective view
Similarities: same as those in the top and bottom views.
Differences: the patented design has an overall arc-shaped handle with a small curvature, while the accused infringing design has an arc-shaped handle with a larger curvature and an upturned part at the end away from the rollers.
(3) Left view
Similarities: the same as those in the top and bottom views.
Differences: the density of the facets on the surface of the massage head of the patented design is different from that on the surface of the massage head of the accused infringing product; and the bottom end of the handle is bent downwards in the patented design, while the bottom end of the handle is not visible in the accused infringing design.
Therefore, the Supreme People’s Court determined that the distinguishing features of the involved patent from the prior designs mainly focused on the shape of the massage head, the surface construction of the massage head, the way the massage head was mounted to the connecting rod, the curvature of the handle, the shape of the handle, the length of the connecting rod, the extending manner of the handle, etc. The products incorporating the patented design and the accused infringing design are both beauty massagers which are mostly hand-held in normal use, so at least part of the handle will be covered by hand. Consequently, the design features related to the massage head are likely to attract more attention than those related to the handle. In addition, the aforementioned design features have great design flexibility and the accused infringing design must present changes that are prominent enough to be distinguishable from the patented design.
Therefore, as for the massage head, the accused infringing design adopts the same spherical massage head as the patented design, and the surface of the massage head has a number of facets. Although the bottom end of the massage head of the patented design is slightly protruding, and there are differences in the shape and density of the facets on the surface of the massage head between the patented design and the accused infringing design, the above differences account for a relatively small portion in the volume or surface area of the massage head, which are not easily noticed by the general consumers and are local minor differences. As for the handle, the handle of the accused infringing design and the handle of the patented design are both smoothly curved , and show a smooth transition from the thick middle portion to both thin ends. Although the handle of the accused infringing design has a greater curvature and the bottom end of the handle is upturned, the handles of the prior designs are mostly straight, and only the bottom portion of the handle which is easily covered by hand during normal use is designed to be upturned. Therefore, the differences in the handle are also minor differences. The accused infringing design was therefore found to fall within the scope of protection of the patented design.
Accordingly, the Supreme People’s Court handed down a retrial judgment, revoking the judgments of the first and second instance, and ruling that Shengjiemei Beauty Instrument Factory and Shengjiemei Beauty Technology Co., Ltd. shall stop manufacturing, selling and offering to sell products that infringed the involved design patent, and shall jointly compensate MTG for its economic losses and reasonable expenses incurred in the litigation for a total of CNY 200,000.
Attorney’s Interpretation
This case was selected as the seventh model case in the Annual Report of the Supreme People’s Court on Intellectual Property Cases (2019), which deals with the legal application of the basic principles to comparison in determination of design patent infringement.
In this case, the overall visual effect of the accused infringing product is similar to that of the involved design patent despite of some differences, yet the court of first instance ruled that they were not similar. As is clear from the first instance judgment, the court of first instance was obviously influenced by the case concerning the “shower head” design patent heard by the Supreme People’s Court, which was a model case in 2015, in which the Supreme People’s Court affirmed that the accused infringing design should be deemed not similar if it did not contain all of the essential features that distinguish the involved patent from the prior designs. With this view adopted, it is crucial to correctly identify the essential design features of the involved patent that distinguish it from the prior designs. The court of first instance, however, was apparently oversubtle in its determination of the essential distinguishing design features of the involved patent.
Our firm represented the patentee throughout the first instance, second instanceand retrial. After receiving the judgment of the first instance, we, on the one hand, pointed out that not all differences from the prior designs constituted essential features that distinguished a design from the prior designs, and that the court of first instance was too subtle in its determination of the essential features that distinguish the design from the prior designs, and on the other hand we emphasized that the first instance judgment had overly stressed the impact of the differences between the accused infringing product and the involved patent on the overall visual effect of the two, while ignoring the impact of the similarities on the overall visual effect, and was also incorrect in interpreting the design flexibility. However, the court of second instance still upheld the first instance judgment. In order to safeguard the legitimate rights and interests of the patentee and to seek the correct approach to determining whether two designs are similar in future cases concerning design patent infringement, we proactively filed an application for retrial, emphasizing once again the aforementioned arguments and pointing out some of the differences between the accused infringing product and the involved patent, such as the fact that the upturned part at the bottom end of the handle is actually a hand-held part of the product when it is in use, which is not visible at all in the hand-held state and which is a part less likely to be noticed when the product is in normal use, and thus will not have a significant impact on the overall visual effect.
The Supreme People’s Court supported our claim and heard the case, and elaborated in great detail in its retrial judgement on the approach to determining whether two designs are similar, emphasizing that the term “overall observation” has two implications, namely both the similarities and differences should be taken into account, and that the impact of other design features on the overall visual effect should not be ignored while being aware that some of the design features have a more significant impact on the overall visual effect. It can be said that the above interpretation of the Supreme People’s Court has to some extent corrected the misinterpretation of some local courts of the “shower head” case. And the Supreme People’s Court also clearly stated in its judgement the steps in the determination as to whether two designs are similar, which further clarifies and unifies the standards for determination and can also serve as a reference for the future cases of this kind.
Link to the judgment
Retrial:
https://wenshu.court.gov.cn/website/wenshu/181107ANFZ0BXSK4/index.html?docId=TEBb1cfvywyS3fxIIKqtm7fwHRQ+wowCCGj3cz7UweXrZbdyz3OO/p/dgBYosE2gvjuUm1r4zeFFmI882Qz9PfTXTyWfi7q21XjDwDE+XhapnzgXeV50z6lpJPm1x4rk
