Landwind Off-road Vehicle Design Patent Invalidation Case

Administrative Case

Design patent  

–Difference Between Design Patent and Comparison Design

[Headnotes]

Whether a design patent is distinctive from the comparison design, should be determined on the basis of the knowledge and perception of general consumers. The determination should start from the whole of the design patent by viewing all the design features under the backdrop of the entire picture. The influence of each design feature to the overall visual effect of the design should be examined and on that basis, all elements that contribute to the overall visual effect should be comprehensively taken into account.

[Synopsis]

First instance: (2016) Jing 73 XingChu No. 4497

Second instance: (2018) JingXingZhong No. 4169

Appellant (defendant in original instance): The Patent Reexamination Board of CNIPA (The Patent Reexamination Board)

Appellant (third party in original instance): Jaguar Land Rover Automotive PLC (Land Rove); Gerard Gabriel MeGovern

Appellee (defendant in original instance):  Jiangxi Jiangling Holdings Co., Ltd. (Jiangling)

The patent (Patent) involved in the case was a design patent named "off-road vehicle (Landwind E32)" and numbered 201330528226.5, which was owned by Jiangling. Land Rover and MeGovern respectively applied to the Patent Reexamination Board to invalidate the Patent on the grounds that the Patent did not comply with Paragraphs 1 and 2 of Article 23 of the Patent Law of the People's Republic of China 2008. The Patent Reexamination Board made a decision (which was sued in the case) that there was no difference between the Patent the comparison design in terms of the overall visual effect. The Patent did not comply with Paragraph 2 of Article 23 of the Patent Law. For the above, it declared the whole patent rights to be invalid. Jiangling brought an administrative action with the first instance court.

The first instance court held that the Patent was different from the comparison design in the aspects of the headlight, grill, slender air intake, fog light, through groove, auxiliary air intake, inverted U-shaped fender, tail light, veneer, plate number zone and the edge. These features were combined to create a visual difference, which greatly influenced the entire view of the off-road vehicle, therefore, it was sufficient for general consumers to differentiate between the Patent and the comparison design in terms of the overall visual effect. For the above, the first instance court decided to reverse the sued decision of the Patent Reexamination Board. Disagreeing with that decision, the Patent Reexamination Board, Land Rover and MeGovern appealed.

The second instance court held that as there remained much space for design with respect to the 3D-shape body and the main decoration layout of the off-road vehicle, the similar features between the Patent and the comparison design in these two aspects and in particular, the same or similar features on the front and lateral sides of the car body carried a higher weight in the overall visual effect. In contrast, other smaller differences that were not easily perceivable to general consumers carried an obviously lower weight. Despite the main differences existing in the front and rear sides of the body, and despite the different visual effects created by these differences, their influences on the overall visual effect were significantly reduced, because most of the differentiating features that led to different overall visual effects had already been in the public domain or prior art. As long as the entire picture is concerned, the different visual effects created by the Patent and the comparison design in the front and rear sides of the body weighed much less than the homogeneous visual effects that were created from the similarities between the two. The Patent was not distinctively different from the comparison design, and did not comply with the granting conditions under Paragraph 2 of Article 23 of the Patent Law. Therefore, the Patent should be declared invalid. For the above, the second instance court decided to repeal the first instance judgment and dismiss the claims of Jiangling.

[Typical Significance]

In the case, the second instance court expounded on how to view the whole and judge on a comprehensive basis, to determine whether the design patent was distinctively different from the comparison design. In determining how much weight a specific feature carries in the overall visual effect, conclusion should not be reached hastily solely on the basis of one's visual perception or the proportion of the feature in the entire picture. Instead, the determination should be made on the basis of the perception of general consumers to the design space, with a view to the position of the feature in the entire picture and whether it is easy to be observed. Moreover, consideration should be given to the frequency of the features in prior arts and whether it is restricted or limited in function, aesthetics or technique. In this way, the weight of each feature in the overall visual effect can be evaluated.

(Translated by Ren Qingtao)