In entertaining design patent invalidation request, the proper standard of appropriate consumer viewers must first be determined before determining similarities, for different standards lead to different conclusions as to similarity.

The Patent Reexamination Board (PRB) issued Decision No. 6335 on August 10, 2004 on petition for invalidation, which relates to Design Patent No. 02306975.9 for STREET LAMPS (“The Space Ship”) (herein, Patent I) issued by the State Intellectual Property Office (SIPO) on August 21, 2002, bearing a filing date of April 4, 2002, in the name of a certain lighting fixture corporation of Ningbo (herein, the Respondent).

A (herein Petitioner), filed a request for invalidation with the Board on July 25, 2003, citing Design Patent No. 01343627.9, issued by SIPO on March 6, 2002 (herein Patent II) on the grounds that both patents cover similar subject matter for street lamps in the same technical field. Patent I has an overall form of a seashell of four strata, lower in front and higher in the rear, each stratum in the shape of a melon seed; and so does Patent II, having the difference in the latter being more round. It can be seen that both have identical inventive concepts, and both have similar shapes. The Petitioner contended that the issuance of the patent did not conform to the Patent Law, Article 23, for which Petitioner submitted the Official Gazette of Publication No. 01343627.9 as evidence.

Upon formal examination, the Board accepted the case on September 1, 2003, and then transmitted the petition to the Respondent.

The Board received a statement from the Respondent on October 14, 2003, in which it is argued that, viewed either side by side or taken as a whole, Patent I, which combines two elements of straight and curved lines in design, is quite different from Patent II which contains mainly curved lines except on the parting stratum. After a comparative study of the various drawings, Respondent believed that Patent II on the whole resembles the back of a seashell which has a rounded point on the upper portion and a broad flat bottom on the lower part; whereas Patent I on the whole presents a diametric mirror image, being broader in the middle while the upper and lower portions are more or less symmetrical. There are conspicuous differences in the directions of the lines and the curves of various portions between the two, and they constitute different designs. Respondent further submitted detailed drawings for comparison.

The Board transmitted the response the Petitioner on May 20, 2004 and then received from the Petitioner on May 24, 2004 the request for an oral hearing. The Board issued the notice of oral hearing on June 3, 2004, and conducted the hearing on July 12, 2004, during which Respondent did not dispute the admissibility of the evidence. The parties argued over whether the two patents were similar to each other. After the oral hearing, the Panel of the Board concluded that the facts were clear, and rendered a decision.

The Panel cited in their decision that five views had been furnished in Patent I: a front view, a left view, a right view, an upward view, and a top view. (The back view was omitted because of the symmetry between the back view and the front view.) By integrating and observing the views, the Panel found that “the overall shape of Patent I is like a seashell with overlapping multistrata and a dome and an approximately round curvature underside. At the top of the lamps is the arc convexity and at the back there are five layers extending downwards, among which the third layer has the most obvious convexity and is intilted, while the fourth one and the fifth one retract inby. The intersection in front of the top assumes arc transition, while the back of the top assumes two slight angles because of the different curvatures. A lampshade stands in the front of the belly, assuming an irregular elliptic transparent cover protruding outwards.”

Petitioner also submitted five views relating to patent two: a front view, an upward view, a top view, a left view, and a right view. (the back view, once again, was omitted because of the symmetry between the back view and the front view.) The panel found that “the overall shape of patent two is like a multilayer conch with a pointed top and an approximately round curvature underside. At the top of the lamps is arc convexity and at the back there are five layers extending downwards, among which the fourth layer has the most obvious convexity and is vertical against the ground, while the fifth one retracts inby. The intersection in the front of the top assumes a sharp angle, while the back of the top assumes arc transition. A lampshade stands in front of the belly, assuming an irregular elliptic transparent cover protruding outwards.”

After a comparative analysis of the two patents, the Panel believed that they had similar designs in shape when viewed as a whole: “the shape is like a multilayer conch with a pointed top and an approximately round curvature underside; at the back there are five layers; the arc convexity is at the top of the lamp; there is an elliptic belly whose outer edge is protruding and in front of which stands a protruding transparent cover.” It also pointed out several differences: “in the patent one, the intersection in the front assumes arc transition and the back is a little flat, while in the patent two, the intersection in the front assumes a sharp angle and the back is elliptic; in the patent one, the fourth layer retracts inby, while in the patent two, the fourth one is vertical against the underside; the radian at the top of the patent one is somewhat less than that of the patent two.”

The Panel further analyzed the differences and held that “the judgment of identity or similarity of such designs as a street lamp shall be carried through the approach of comprehensive observation and judgment, for a street lamp is usually fixed at the top of a wire pole, relatively far from the public. In this particular case, the two patents have such similar shapes. The difference in curvature is not a notable distinction in design when the shape is mainly a curve. Such differences are minor changes in details, not sufficient for rendering obvious distinctions in design.” The panel concluded that there was similarity in both designs. Therefore, the issuance of Patent I is not in compliance with Article 23 of the Patent Law.

Respondent (hereinafter, Plaintiff) did not agree with the decision (No. 6335) by the PRB and sought judicial review. On January 5, 2005, the court accepted and organized a panel. They informed A of the action and listed them as the third party. The case was heard on April 18, 2005.

Plaintiff’s arguments are: First, the Board was erroneous in applying the inappropriate standard for determining identicalness and similarity when comparing the design patents. The Manual of Patent Examining Procedure (MPEP) stipulates that the standard should be “the ordinary consumer” for such determination; and provided that such a consumer may be different for different design patent products. Yet, the Board applied a standard according to “public in general,” rather than the particular group of consumers for the patent products. Patent I relates to civil engineering, and in particular, the lighting fixtures of street lamps which are not purchased or used by public in general. The appropriate consumer group ought to be the technicians who make, sell, buy or install such street lamps, against whose level of knowledge and skills to make a determination of whether the patents are identical or similar. Due to the misunderstanding of the “consumer group” and therefore, erroneous application of the inappropriate standard, the Board reached a wrong decision. Second, the Board applied conflicting standards when making the decision (No. 6335), not in compliance with the MPEP. In its analysis of the patents, it followed the approach of “close observation” or “direct observation,” but when making the decision, the Board relied on the viewing approach that “the patent product is installed at the top of a street post, considerably far away from public view,” according to which, the Board reached a decision that any existing differences would not be obvious on the designs. This is logically self-contradictory.

In addition, Plaintiff argued, the Board’s view that “the difference in curvature is not a notable distinction in design” is also in deviation from MPEP. The change in curvature in effect brings the change of arc in geometric shape, which is regarded as ‘fairly obvious’ difference for designs of mere shape according to the MPEP. Meanwhile, during the determination for identity or similarity of the designs, the usual designs commonly known and the space for changes shall be considered. For products such as street lamps, a cover shall function to protect the lamp, simultaneously reduce wind resistance, and make full use of light. Taking into account, prior cases, and technological development in this industry, the differences are so significant that the two patents are not similar in design.”

Accordingly, Plaintiff requests: (1) vacating of Decision No. 6335; and (2) remand for a directed decision for sustaining validity of the patent in question.

The Board argued that the panel employed the approach of comprehensive observation and judgment, chose an ordinary consumer as the subject of judgment, and then drew a decision that there was similarity between them after comparing and analyzing the similarities and differences of the shape. Consequently, the Board insisted on decision (No. 6335), arguing, “the facts are clear and the application of law is appropriate, so the plaintiff’s claim is untenable and the examination decision shall be affirmed.”

The court of first-instance opined in its decision that Article 23 of the Patent Law provides that the design patent shall not be identical with or similar to the designs which have been published in China or abroad or publicly used in China before the filing date thereof, and shall not conflict with the prior right acquired by others.” The MPEP specifies the standard for determining identicalness or similarity on the basis of general consuming public, for the reason that a design is for industrial product, to appeal to consumers by its distinctive and aesthetic appearance. Therefore, only the ordinary consumer who pays attention thereto, and has certain ability of recognizing or capable of recognizing can make the appropriate determination. For this reason, the MPEP definition of ordinary consumers should not be confined to purchasers; rather, it refers to persons of general knowledge and cognizance, who are capable of discerning and comparing the shapes, patterns and colors of the design products, and possess common sense knowledge of the same or similar designs under dispute.
Turning to the street lamps in this case, the ordinary consumer should be the purchasers and the personnel responsible for installation and maintenance, who care about such products and have the knowledge and cognitive capacity. It was erroneous for the Board to adopt the “general public” standard for determining identicalness or similarity in the two patents. In reality, although street lamps have the function to illuminate, plus certain function to decorate, the general public rarely pays attention, if any, to the arrangement of the design of a conventional street lamp made of a shade housing a bulb, for the reason that street lamps are usually installed several meters on top of a lamp post, usually in a distance or of a height not so convenient for close observation. If, in deed, a decision is made from the point of view of the general public, such a decision could hardly be precise or objective, and is meaningless. Therefore, the Board’s decision lacks factual or legal basis, and must be vacated. Since applying erroneous standard which would eventually affect the outcome of the case, the Board should reconsider the case from the ordinary consumers’ point of view for determining identicalness or similarity between the two patents.

In summation, the wrong application of law in decision (No. 6335) by the defendant shall be withdrawn. In line with the Art.54.2 (2) of the Administrative Procedural Law, the decision is as follows:
(1) Decision No. 6335 is vacated; and
(2) The Board must reconsider petition for invalidation.

The third party A appealed the decision on the grounds that the ordinary consumer of the public utility products, such as the street lamps, should be the pedestrians and public in general, who would observe the products when they are in use. The Board correctly applied the standards and the law, and reached a correct decision. Therefore, it requested the court of second instance to overturn the decision below by affirming Decision No. 6335.

Defendant in error cross appealed, by arguing that the court below should have issued an order for directed decision since it by determining that the two patents were neither identical nor similar vacated the Board’s decision, or it should have, based on judicial practice and expert advice, affirmed the progress and inventiveness of Patent I, and ruled on the validity thereof. It requested the court of second instance to remand the case, or simply rule on the validity based on the finding that there was no identicalness or similarity between the two patents.

The Board submitted to the first-instance judgment.

The second-instance court made the final adjudication:
Under the MPEP, the determination of identicalness or similarity of designs shall be made according to the knowledge and cognitive capacity of an ordinary consumer of the product incorporating the design. Different kinds of design patent products are for different consumers. The patent product here is a street lamp, which is a public utility device, and it is in the state of use that a consumer can observe and appreciate. For this reason, attention should be given to the state of use while defining a common consumer of a product like a street lamp. Obviously, the ultimate users of a street lamp are the general passers-by, not only those engaged in its manufacture, distribution, purchase, installation, and service. It is proper for the PRB to have passers-by (namely “the public”) as the subject of judgment in the determination of the identity or similarity of the two patents. It fails to compute with the relevant provisions of the MPEP with respect to the subject of judgment, for the first-instance, court believes that its consumers shall be whoever is engaged in manufacturing, distributing, purchasing and installing a street lamp, because the products like a street lamp are out of the contact and direct consumption of the public. Pertinent to the objects in this case, there is no restriction on their design space. The distinction between the two patents in the overall design of their front views reflected in the state of use is not clear; the minor changes in fine details are not sufficient to have notable influence on the visual effect, which is liable to cause misunderstandings in consumers. The two patents are of similar design.

In conclusion, the grounds for appeal by the plaintiff in error were unpersuasive and cannot be sustained; the reasons for appeal given by A are tenable and decision (No. 6335) affirmed for its legal procedure, sound evidence, and proper application of law. The first-instance judgment redressed because of its false establishment of facts and application of law. According to the Art.61 (3) of the Administrative Procedural Law, the judgment is as follows:
(1) The decision made by the court of first instance be vacated; and
(2) Decision No. 6335 be restored

Reflections on the case
      The MPEP defines the determination standard for designs of products like street lamps as,
The appreciation based on the level of knowledge and cognitive ability of the ordinary consumer of the products under comparison.
Different design products under comparison are for different members of the consuming public. The ordinary consumer of a design product should have the following characteristics as:
Possessing common sense understanding of the same or similar products under comparison. For example, an ordinary consumer of automobile products should have some knowledge of the cars sold on the market or introduced on in commercial advertising;
Capable of discerning differences in shape, pattern and color between various design products, but will not pay attention to subtleties in variation of the shape, pattern or color of the products.

In this case, “the public” is the end user. However, no clear visual conclusion can be drawn and instead it reaches a conclusion about similarity only on the grounds of the visual impression formed through a general observation within a certain distance. In contrast, the people responsible for purchase and installation have a better visual observation. However, there are no relevant stipulations in the “Criteria of judgment” about whether such people can be regarded as subjects of judgment, so an examiner has to search of the end consumer. From the viewpoint of “confusion”, it relates more to the “Criteria of judgment” to have “the public” as the subject of judgment. In the author’s opinion, as to patent one, it is not creativity rather than similar design. In fact, creativity is the question, core to the case. However, there is no requirement for creativity in granting a design patent, only similarity can be used to exclude low level and counterfeit designs, which results in disputes and consequently fails at trial. In this case, it will be much more objective and convincing to employ common designers to evaluate creativity. Overall, it reflects questions caused by the lack of requirements for creativity in granting designs under China’s Patent Law.

“A common consumer” stipulated in the “Criteria of judgment” refers to a group of consumers of a particular product. Since each consumer has their own visual feeling for a design, it is not easy to articulate the visual standard of a group of consumers, so there is a large possibility that an examiner judges using his own feelings. In the past, designers, patent agents, judges, and examiners were puzzled with the “judgment of similarity”, because of the unreliable evidence and the difficulties in oral and written expression; it is a tough task for examination and trial organs to have a uniform standard of judgment in design. The suggestions are as follows:
First, as for the designs of items in daily use, it is better to rely on the end consumers to judge.
Second, as for the designs of separate but complete parts of certain products, it is more suitable to rely on those in charge of purchasing, installation, and service.
Third, as for the designs of industrial or mechanical products, it is proper to have the visual feeling of a particular consumer group as the subject of judgment.

Since “end consumers”, “people in charge of purchasing, installation and maintenance” and a “particular consumer” can all be defined as “common consumers”, it is necessary to specify “the subject of judgment” to get a more accurate and objective decision.

To amend the Patent Law should take a common consumer as the subject to judge the conditions in the determination of similarity, while a common designer to judge the conditions in the determination of creativity.

The interests of professional technicians, common purchasers and the public shall all be taken into account due to their varying viewpoints. An examiner shall give attention to the position of both professional designers and common purchasers and make an equitable judgment.

The “creativity” in design should be judged from a professional approach instead of only viewing it as a requirement for decoration and beauty. With the development of society, the overall level in design is in need of improvement. Only by quickening the innovation in design, can an enterprise satisfy the needs from China and abroad, change its status from “manufacture” to “creation” and finally advance its capacity of innovation.

About the author:
      Zhao Jiaxiang is the Vice-Director of the Design Committee Attached to the Academic Committee of the National Patent Agent Institution of China, and the former Chief of the Design Petition Division of the Patent Re-examination Board.

                                                                                      (Translated by Wang Fang)