Administrative Litigation Relating to an Industrial Design Invalidation Case

Facts and Procedure:

Honda holds an industrial design patent under Reg. No. 01319523.9 in China, which were requested for invalidation by the third parties before the board due to its lack of novelty by comparing with a prior comparative design. The board ruled that the disputed design was declared invalid on March7,2006.

Dissatisfied with the decision from the board, Honda then brought the case to the court. However, the decision from the board was upheld by the first-trial court and the second-trial court successively.

Honda was dissatisfied and finally requested for retrial before the Supreme People's Court, and after retrial, the case was ruled in favor of Honda, and the invalidation announcement from the board was revoked on November 26, 2010.

The facts of the Honda case, specially, the features of the disputed design are actually being fully observed by the board, the first and second trial court, namely, the disputed design is distinguishable from the cited prior design in respect of the decorative designs for front lamp, fog lamp, front guard board, grille, side window, rear assembling lamp, and rear bumper etc. However, the decisions from the board, first-trial court and the second-trial court are totally opposite ones to that from the retrial court due to the different interpretation for the definition of “normal consumer ”.

In the ruling of retrial of the administrative litigation, the retrial court fully quoted the related rules of the Guidelines for Patent Examination 2010, e.g. Part IV Chapter 5 (4) Subject of Judgment, and further, the retrial court made an interpretation on the definition of “common knowledge” as follows.“This is so called of the term'common knowledge', which is referring to the ability of knowing the design features of the related products but not having ability of creation of that; common knowledge by no means to refer to the knowledge is limited to the basic and simple knowledge ”.

Accordingly, the retrial court concluded the differences between the disputed design and the cited prior design, to the normal consumer of the specific kinds of the automobile (SUV), was obvious, and the differences were sufficient to distinguish the disputed design from the prior comparative design. Whereas, the board, the first-trial court and the second-trial court just recognized the different features of the disputed design from the cited one, but wrongly excluded the differences from the whole observation, presuming only the whole outline of the automobile was of being influences to the normal consumer of the common automobile, not noticing to the normal consumer of SUV, the specific decorative designs on front, side and rear parts of the automobile would draw more attention to the normal consumer of this kind of products. Therefore, the conclusions from the board, the first-trial court and the second-trial court were wrong.

Significance of the Case:

In view of the above, the key issue of the ruling from the retrial court is having comprehensively interpreted the rules related to judgment criteria on designs' similarity, specially, the ruling not only emphasizes the different categories of design patent products have different consumers, I .e. the products of SUVs have its consumers other than the products of general automobiles. The ruling but also set up a unified standard of rule on the concepts of the term “normal consumers”, among two other ones.

Key Law Articles:

The Patent Law (2008)

Article 23.1 “Any design for which patent right may be granted shall not be a prior design, nor has any entity or individual filed before the date of filing with the patent administration department under the State Council an application relating to the identical design disclosed in patent documents announced after the date of filing ”.

Article 23.2 “Any design for which patent right may be granted shall significantly differ from prior design or combination of prior design features ”.

Guideline for Patent Examination 2010

Part IV Chapter 5 (4) Subject of Judgment

“The examination of whether a design patent is in conformity with Article 23.1 and 23.2, shall be made according to the knowledge and cognitive capability of a normal consumer of the product incorporating the patent concerned.

Different categories of design patent products have different consumers. A normal consumer of a certain category of product incorporating a design shall have the following characteristics.

(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.

The types of commonly used design methods include design transformation, mosaic, replacement, etc.

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