Supreme People's Court provides guidance for comparing designs

The Supreme People’s Court has set the rule that, when comparing two designs, attention should be given to their overall visual similarity, rather than to the partial effects generated by their distinguishing features.

Guangdong Midea Electric Appliances Co Ltd was the owner of the design patent No ZL200630067850.X, named 'Wind Turbine', which was granted by the State Intellectual Property Office on August 3 2006. On February 20 2009 Zhuhai GREE Electric Appliances Inc filed a request for invalidation of Midea’s design with the Patent Re-examination Board (PRB). The parties involved in this dispute are two giants in the air conditioner industry in China.

In GREE’s invalidation request, four reference documents were cited to challenge Midea’s design on the grounds that there was no substantial difference with GREE’s prior design. Following an examination and oral hearing, the PRB decided in June 2009 that Midea’s design was invalid. In its decision, the PRB agreed with GREE’s allegations and chose one of the reference documents (CN3265720, a prior design patent) to make a detailed comparison. The PRB concluded that a design shall be deemed to be similar to a prior design if the only differences between them relate to their size and tiny distinctions between partial details.

                           Midea’s design                                                      Prior design

Midea initiated an administrative litigation against the PRB's decision before the Beijing Number 1 Intermediate People’s Court. The court agreed with the PRB’s analysis regarding the identical elements and the four different elements in Midea’s design and the prior design. However, the court disagreed with the final judgment of the PRB and held that the existence of three different elements in the central area of Midea’s design, in addition to the different rotation direction, could create an overall visual effect capable of allowing an average consumer to distinguish between the designs. Thus, the court concluded that Midea’s design was not similar to the prior design and was not invalid.

Both the PRB and GREE appealed to the Beijing High People’s Court. The court upheld the decision made by the intermediate court at first instance.

GREE filed a petition for retrial of the case before the Supreme People’s Court, and the petition was accepted. After the hearing, the Supreme Court revoked the administrative judgments made by the first and second instance courts, and upheld the invalidation decision (No WX13585) of the PRB.

The key points of the Supreme Court’s decision are as follows:

• The method to determine whether two designs are identical or similar, as stipulated by the Guidelines for Patent Examination, is as follows: one must proceed with an overall observation of the designs, based on the knowledge and cognitive ability of an ordinary consumer, and make a comprehensive judgment on whether the differences between the designs have a significant impact on their visual effect.
• In the present case, the PRB and the courts shared the same opinion regarding the differences between Midea’s design and the prior design. After comparing Midea’s design with the prior design, the Supreme Court held that the differences between them could not make the overall visual effect of the later design sufficiently distinct from that of the prior design. Both the first and the second instance courts had failed to consider the visual effects generated by the common features of the design; instead, they had focused only on the partial effects generated by the distinguishing features, which led to the wrong decision.
• The Supreme People’s Court clarified the principles for determining the similarity or identity of designs. The assessment should not focus only on the visual effects created by the differences between the designs - identical or similar features in the designs as a whole should also play an important role in the overall observation of the designs and in reaching a decision.

This decision of the Supreme Court provides guidance to administrative and judicial organs as to future practice in cases relating to design patents in China.

Duan Xiaoling and Wang Rui, Wan Hui Da Intellectual Property Agency, Beijing