According to the “Directions for Patent Infringement Determination” (“Directions”) revised in 2016, the general procedure for design patent infringement determination involves a two-part test: (1) determining the scope of a design right, and (2) comparing the determined scope with the allegedly infringing object. The comparison between the design at issue and the allegedly infringing object can be further divided into two steps, which are (1) deciding whether the articles to which the two designs apply are identical or similar, and (2) determining whether the appearances of the two are identical or similar. In particular, the determination of similarity in appearance is a matter of subjective judgment. In a recent design infringement case—which was found to be non-infringing in the first instance court and was reversed as infringement in the appellate court—the Supreme Court remanded the case to the Intellectual Property and Commercial Court (“IPC Court”) with a different opinion.

  Regarding the determination of similarity in appearance, the Directions state that, rather than focusing on the differences in detail, the comparison shall be conducted in a manner of “overall observation and comprehensive determination” and from the viewpoint of “an ordinary consumer” when purchasing products. To be more specific, the first step is to perform an observation of the overall content presented by each view in the drawings of the design at issue and the corresponding features of the allegedly infringing object. Next, an ordinary observer should focus on the “parts or features that are likely to attract ordinary consumers’ attention” and should combine said features with other features to form an “integrated visual impression” of the allegedly infringing object. If the features that are different from those of the design at issue do not sufficiently affect the overall visual impression of the allegedly infringing object, it should be determined that their appearances are similar to each other. In the determination procedure, “parts or features that are likely to attract attention” is an uncertain legal concept. The Directions further define the concept as “features of the design at issue that are clearly different from the prior art” or “parts that can easily be seen when in use.” The following case shows how the concept is applied to infringement determination in practice.

  Giant, a leading Taiwan-based bicycle manufacturer, accused Laike Co., Ltd. of infringing its design right (“Electric Bicycle”, patent no. TW D133389). As shown in the figure below, the first instance court found that the main feature of the design at issue was the “a” shape consisting of the rear end and the top of the seat tube, which gave a strong visual impression that the seat and the storage space under the seat were “floating”; in contrast, the product at issue gave an impression of stability, which arose from the “D” shape consisting of the seat tube and the shock absorber and from the feature comprising the connection from the top of the tube to the rear wheel through the shock absorber. Therefore, the two appearances were found not to be similar to each other.

  However, Giant turned the tables in the second instance. The appellate court held that the main feature was the “frame” of the electric bicycle. From the perspective of cost and practice in the art, the appellate court suggested that the frame of a two-wheeler such as a bicycle or motorcycle is the key component in determining a model and is also the main criterion for consumers to identify the model. The features comprising the frame were most likely to attract ordinary consumers’ attention. They were clearly different from the prior art and were also found to be similar to the product at issue in the first instance. The appellate court ruled that other features were relatively insignificant in the visible area and were located mainly at the front and the rear ends; thus, it was decided that they were negligible in the overall visual impression of the bicycle. As a result, the appellate court found that the product at issue was similar to the design at issue and was infringing.

  The issue was brought to the Supreme Court. The Supreme Court firstly compared the design at issue with the cited prior art, and found that the differences in terms of design features are obvious and were not disclosed in the cited prior art. The features of the design, rather than being restricted to the frame only, have given the design at issue an overall smooth, coordinated and balanced visual impression. Furthermore, the differences between the design at issue and the product at issue were located in places where an ordinary consumer could easily identify them when purchasing and using the product. Based on the principle of “overall observation and comprehensive determination”, the Supreme Court questioned the appellate court’s holding that the product at issue was similar to the design at issue on the grounds that the differences only occupied a small portion of the overall visual area and were mainly located at the front and rear ends. The case was remanded to the IPC Court.

Comments

  In this case, the Supreme Court asserted that the appellate court not only failed to consider the “features of the design at issue that are clearly different from the prior art” but also improperly excluded the features contained in the design at issue when determining the “parts that are visible when used,” and thus made an incomplete analysis in determining the “parts or features that are likely to attract attention.”

  In fact, the Supreme Court’s opinion on the determination of “parts or features that are likely to attract attention” was based on the definition given in the Directions. However, the Directions, published by Taiwan Intellectual Property Office (TIPO), are an administrative ruling that is not subject to legislative procedures and thus has no effect in terms of influencing the court’s discretion. In the past, the courts did not have a clear standard regarding the determination of design patent infringement. This case concurred with the rules set out in the Directions that, in the determination of similarity, design features that are different from the prior art shall be given more weight. In other words, when interpreting the scope of a design right, the court shall firstly consider the features that are clearly different from the prior art. Then, instead of focusing on every detail of the accused product, the court should compare the design at issue with the accused product as a whole.

  In summary, unlike the infringement comparison for trademarks or copyrights, the novelty and creativeness of a design at issue should be given more weight in order to properly interpret the design right, and any features that constitute the design should not be excluded. This tripartite method of comparison also echoes the spirit of the Patent Act, namely to encourage, protect and utilize the creation of designs so as to promote industrial development.

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