Written by: Liu Yingchun, Intellectual Property Group, King & Wood Mallesons
The Chinese Patent Law protects design patents. In the proceedings of invalidation, administrative litigation and civil infringement litigation of a design patent, it is necessary to compare the design patent involved in a case with the evidence for invalidation of the patent or the design of an alleged infringing product. During the comparison, a concept of “normal consumer” always appears. The “normal consumer” will evaluate and give a result of the comparison according to his knowledge level and cognitive ability.
This so-called “normal consumer” is not an actual consumer in daily life. Actual consumers in production and life have very different growth environments and education levels, so they will give different judgments on the comparison of designs, and subjective factors have an excessively strong influence on the results. The “normal consumer” is a hypothetical subject, whose knowledge level and cognitive ability are fixed, so as to reduce the subjective judgment as much as possible and be more objective in the comparison, thereby achieving fairer and more just results. This shows the importance of the “normal consumer” during the comparison.
In practice, especially with reference to many typical cases, there are two points that need to be noted for the determination of normal consumers:
Firstly, it is necessary to determine what type of products the normal consumer belongs to. Different types of products have different normal consumer groups because of their own characteristics. The basis for determining “normal consumer” is first to determine “different types of products”. How to interpret and define “different types of products” is the key. If there is any subdivision of the specific product classification, such specific product classification, rather than the general classification at a higher level, shall prevail. The determination of product classification limits the cognitive object and scope of normal consumers. In many cases of invalidation, administrative litigation and civil infringement of design patents, different determination of product classification led to different determinations of “normal consumers”, which directly led to opposite comparison conclusions and case results.
Secondly, the knowledge level and cognitive ability of the normal consumer are determined based on the product types and design space. As an normal consumer of a certain type of design product, he has common sense understanding of the design and its common design techniques of the same or similar type of product before the filing date of the design patent involved in the case, and has a certain ability in distinguishing the differences in terms of the elements of shape, pattern and color of the design product, but the size of the design space will cause normal consumers to pay different attention to changes in certain elements. When the design space is large, the normal consumer often does not pay attention to some local minor changes of these elements, whereas when the design space is small, the normal consumer will pay more attention to some detailed changes of these elements. The determination of the size of the design space limits the observation level and ability of the normal consumer. The knowledge level and cognitive ability of the normal consumer that are determined by wrongly identifying the product type or ignoring the size of the design space can also lead to different comparison results.
In the course of a case involving civil infringement of a design patent for which the author represented, the alleged infringer filed with the then Patent Reexamination Board (“PRB”, now the Patent Reexamination and Invalidation Department of the China National Intellectual Property Administration) a request for invalidation of the design patent, wherein Exhibit 1 is a prior design patent owned by the patentee. The text of the authorization announcement of the design patent involved in the case shows that the title of the design product is motorcycle, and the purpose of the product is transportation. In its invalidation decision, the PRB regarded the normal consumers as those of motorcycle products, and based on this, determined that the design patent involved in the case is similar to the overall shape and contour of the motorcycle shown in Exhibit 1, and the difference therebetween is insufficient to have a significant impact on the overall visual effect of the product design, so that the patent involved in the case is not significantly different from Exhibit 1. Therefore, the design patent involved in the case was declared invalid.
After receiving the invalidation decision of patent, the author believed that the PRB was erroneous in determining the normal consumer, and thus reached a wrong conclusion based on the wrong determination of the normal consumer. The author brought an administrative lawsuit on behalf of the patentee. After more than two years, the Court of first instance finally issued the judgment of first instance, changing the “normal consumer of motorcycle” to “normal consumer of two-wheeled sports motorcycle”, thus reversing the previous invalidation decision.
The Court of first instance held that, when defining the knowledge level and cognitive ability of normal consumers, the product related to the patent involved in the case is motorcycle, and although the text of the authorization announcement only states that the purpose of the product is transportation, it can be determined as a two-wheeled sports motorcycle based on the pictures of the patent involved in the case, while normal consumers of the two-wheeled sports motorcycle should be familiar with the current status such as the patents applied for before the filing date, the two-wheeled sports motorcycles on the market, the information disclosed in media advertisements and the prior designs published in related books and periodicals, and have certain understanding of common design techniques for two-wheeled sports motorcycles. In particular, the Court of first instance held that, compared with other types of motorcycles, two-wheeled sports motorcycles are relatively expensive, more functional than comfortable, and have a relatively narrow audience, so that the normal consumers of two-wheeled sports motorcycles usually have a more in-depth understanding of the relevant information of this type of motorcycle, such as brand, quality, performance and various technical configurations. Therefore, in combination with the existing design space and other conditions, the normal consumers of two-wheeled sports motorcycles have a higher ability to distinguish the differences of the design details of the disputed type of motorcycles, such as fender and body cover. Changes in these parts will have a more significant impact on the overall visual effect. Therefore, the Court of first instance held that the patent involved in the case is obviously different from Exhibit 1, and thus reversed the invalidation decision of the PRB.
Regarding this case, the invalidation petitioner and the PRB lodged an appeal at the same time. The PRB submitted Exhibit 3 to Exhibit 37 to prove the determination of design space and normal consumers, wherein Exhibit 3 to Exhibit 36 are prior design to prove the design space, and Exhibit 37 is the administrative judgment of (2019) SPC Zhi Xing Zhong No.159. The PRB held that Exhibit 1 in this case is exactly the prior design patent of the patentee, and the judgment subject “normal consumers” shall be determined with reference to the explanations in the administrative judgment of (2019) SPC Zhi Xing Zhong No.159.
However, the PRB overlooked the fact that the case in the administrative judgment of (2019) SPC Zhi Xing Zhong No.159 does not apply to the motorcycle case mentioned above. The administrative judgment No. 159 relates to a design of a junction box, which is simple in structure itself. As the patentee in that case, Company W claimed that there is continuity of previous and subsequent generations of design of the same brand, so that subtle changes between two generations of design are easy to attract consumers’ attention. Regarding this, in the administrative judgment No.159, the Court held that normal consumers are not experts or professionals, who know about the relevant situations, but would not notice the subtle changes of the designs of previous and subsequent generations of the same brand or the slight changes between different designs, and did not support Company W’s claim.
In that case, Company W’s argument itself was problematic. The normal consumers were aware of the conventional design and changes of a certain type of product, rather than the specific status of a certain brand, unless several generations of design of the brand represented the current status of design developments in the industry, suggesting that the current design space was small and attention to details or subtle changes was needed. In the author’s motorcycle case, the design involved in the case and that in Exhibit 1 do not represent only subtle changes in the design of previous and subsequent generations of the same brand. Among the several pieces of evidence provided by the invalidation petitioner upon filing the invalidation request and the subsequent numerous Exhibits 3 to 36 submitted by the PRB for proving the design space, the design of the patentee accounts for a large proportion! In other words, the design of the patentee shows the trend changes in the design of the entire street running motorcycle industry, represents the current design trend of the industry, and is the content known to normal consumers. Moreover, such evidence also indicates that the knowledge level and cognitive ability of normal consumers determined by such type of products to which they belong and the status of design space thereof make the normal consumers need to pay attention to these subtle changes.
Apart from the above cases, a very representative case in which the judgment results are different due to different determinations of normal consumers is the Supreme People’s Court Intellectual Property Trial Guiding Case – an administrative dispute between a company and the PRB over the invalidation of a design patent. This administrative case went through the proceedings of first instance, second instance and retrial.
In the decision of the PRB and in the original judgments of first instance and second instance, “automobile” was regarded as a type of products, and the judgment subject “normal consumer” was regarded as a person who had common sense knowledge of such type of products of automobile, based on which the knowledge level and cognitive ability of the normal consumer were determined. During the comparison, although the differences between the design patent involved in the case and that of Exhibit 1 are identified, these detailed design features are excluded from the “entirety” of the automobile design on the ground that such differences belong to subtle differences, and the comparison is only focused on the overall shape and contour of the two designs in essence. It is believed that the overall shape and contour of the automobile has the most significant visual impact on the normal consumers of automobile products. Therefore, it is determined that the design patent involved in the case is similar to Exhibit 1, and thus shall be invalid.
The reason for the company’s application for retrial is that the previous determination of normal consumers is problematic, which should not be “normal consumers of the automobile”, but normal consumers who have common sense understanding of sport utility vehicle (“SUV”), so that many detailed features are the features that will cause visual impact and should not be ignored upon comparison of the design patent involved in the case and that of the evidence from the perspective of normal consumers of SUV.
After retrial, the Supreme Court held that the disputed type of automobile should be the type of products rather than the automobile of a higher level, thus reversing the previous judgement. Obviously, if it is for the consumers of automobile products, they have a common sense understanding of automobiles, and thus they have an understanding of the overall visual effect of the appearance of hatchback cars, sedans, etc., while regard other details of automobiles such as each side of the car as “subtle differences”. In this way, when the overall contours of the automobile are similar, it will be assumed that the compared design is similar to or substantially identical to the comparative design. However, if it is for the consumers of a specific type of automobiles or SUV, they have a common sense understanding of the disputed type of automobiles and have more knowledge of more specific designs. The Supreme Court held in this case that, changes in the features of automobiles’ sides would attract more attention of the normal consumers of SUV. Therefore, upon comparison of the design of the patent involved in the case and that of the automobile shown in Exhibit 1, there are differences in decorative parts such as irregular-shaped car lights, side windows and rear bumpers, so that the two designs are not similar. As a result, the administrative judgments of the first and second instances and the invalidation decision of the PRB were reversed. Thus, different determinations of normal consumers led to completely different conclusions.
In summary, it is very important to determine normal consumers during the comparison in the invalidation, administrative litigation and civil infringement litigation of the design patent, and it is necessary to comprehensively consider the type of products and design space to determine the knowledge level and cognitive ability of normal consumers. That is, it is necessary to define the cognitive objects and scope of normal consumers by determining the type of products based on a subdivided specific product classification rather than a higher-level general classification, to define the observation level and ability of normal consumers by determining the size of design space, and to determine the degree of attention of normal consumers to changes in certain elements. Only by determining the normal consumers properly and accurately, and clarifying their knowledge level and cognitive ability, can a fair and just comparison result be obtained.