China: The Influence Of Functional Features On The Overall Visual Appearance Of A Design General Protecht Group Co., Ltd. V. Leviton Electronics (Dongguan) Co., Ltd. (Article No. 25 From "China Patent Case Review 2015" By Beijing East IP Ltd.)

General Protecht Group Co., Ltd. v. Leviton Electronics (Dongguan) Co., Ltd.– The Influence of Functional Features on the Overall Visual Appearance of a Design (Administrative Judgment (2011) Xing Ti Zi No.2 by the Supreme People's Court on October 25, 2012)

Functional features play important role in the determination of identity or similarity between two designs. When judging whether a design is similar to a prior design, functional features should be considered as "having no influence on the overall visual appearance of a design's product," so as to avoid the possible situation of "monopolizing a product's function on the pretext of protecting a product's design."

Patentee, General Protecht Group Co., Ltd. (hereinafter "GP Group") owns a design patent No. ZL 02351583.X titled "Socket (Ground-Fault Current Interrupters GFCI)" (hereinafter referred as "the patent concerned") filed on October 30, 2002 and granted on May 14, 2003.

Leviton Electronics (Dongguan) Co., Ltd. (hereinafter "Leviton") submitted a request to the Patent Reexamination Board for the invalidation of the patent concerned based on the reason that this patent is a similar design to a prior one and thus does not comply with Article 23 of the Chinese Patent Law (2009).

As seen from the above, the patent concerned differs from the prior design in two aspects. First, the socket in the present design comprises a T-shaped plughole, an I-shaped plughole, and an arched plughole; while the socket in the prior design comprises two I-shaped plugholes and an arched plughole. Second, the three-headed piece provided at both ends of the mounting plate is made of three connected pieces in the present design, i.e., one triangular piece and two polygonal pieces; while in the prior design, the three-headed piece is made of three separated polygonal pieces.

The Patent Reexamination Board issued Decision No. 9268 regarding the invalidation request (hereinafter "No. 9268 decision") on December 20, 2006, in which it is held that: the panel and the mounting plate of a socket will be easily noticed by a user. Therefore, the above distinguishing features significantly influence the overall visual appearance of the socket. It is thus concluded that the patent concerned is valid.

Leviton appealed against the No.9268 Decision and filed an administrative litigation before the Beijing First Intermediate People's Court (hereinafter "court of first instance"). Upon hearing, the court of first instance held that the patent concerned only substitutes I-shaped plughole with T-shaped plughole by adding a further I-shaped hole perpendicular to the original I-shaped plughole and this substitution is only made to one of the three plugholes. Further, as to the mounting plate, the triangular piece and the polygonal piece only differ in the number of sides. These differences normally will not be noticed by an ordinary user. The patent concerned and the prior design are similar designs. Accordingly, No. 9268 Decision is annulled.

GP Group was dissatisfied with the first instance's judgment and appealed before the Beijing High People's Court (hereinafter referred as "court of second instance"). The court of second instance affirmed the ruling of the court of first instance. The appeal of the GP Group is rejected and the original judgment is sustained.

GP Group was again dissatisfied with the second instance's judgment and filed a retrial request before the Supreme People's Court. The Supreme People's Court held that, both the I-shaped plughole in the prior design and the T-shaped plughole in the patent concerned are designed to comply with current regulations for socket, so as to fulfill the standardization and compatibility requirements of the product. The ornamental characteristics of the socket cannot be improved by changing the shape of the plughole. Therefore, the T-shaped plughole in the present design is a functional feature, which does not affect the overall visual appearance. In addition, the shape and the arrangement of the mounting plates in both designs are very similar, and the minor difference between also does not have influence on the overall visual appearance. Accordingly, the retrial request of the GP Group is rejected and the second instance judgment is sustained.

Remarks:

When judging whether a design is identical or similar to a prior design, the influence on the overall visual appearance brought by each design feature shall be considered. Since a design is a combination of practical utility and aesthetics, design features will correspondingly have functional and/or ornamental characteristics. However, in the current practice, the Patent Reexamination Board and the people's court rarely make clear distinction between the functional features and the ornamental features. Although it is stipulated in the Guidelines for Patent Examination that "a specific shape exclusively determined by the function of a product generally does not notably influence the overall visual appearance", this stipulation only applies when "a specific shape exclusively determined by the function of a product" is in question, and thus is not applicable in most of the circumstances.

In this case, the Supreme People's Court gives directions as to the role of functional features in the determination of identity or similarity between two designs. First, the Supreme People's Court specifies the meaning of "functional design," i.e. "a design feature completely intended for implementing a specific function rather than improving the overall visual appearance of a product of the design and objectively cannot be used to improve the visual appearance of the design." Second, the legislative intent should be considered when judging the influence of a functional feature on the overall visual appearance. Different from the purpose of legislation for inventions (for encouraging technical innovation), the purpose of legislation for designs is for "encouraging entities to improve the visual appearance of a product." Therefore, when judging whether a design is a similar design to a prior design, functional features should be considered as "having no influence on the overall visual appearance of a product of a design", so as to avoid the possible situation of "monopolizing a function of a product on the pretext of protecting a design of the product."

This case only provides some basic principles for determining whether a feature is a functional feature. Specific judgment standards are still awaited to be discussed.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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