Similarity of designs: Honda Motor v. PRB et al. (SPC (2010) XingTiZi No. 3)


Because of the infringement dispute with Honda Motor over a Chinese design patent No. 01319523.9 titled "Vehicle" ("present patent"), Shijiazhuang Shuanghuan Automobile and Hebei Xinkai Automobile each filed a request for invalidation of the present patent at Patent Reexamination Board ("PRB"). The PRB heard the two cases jointly and made a decision No. 8105 on Mar. 07, 2006 declaring the present patent invalid over Japanese design gazette JP1004783 (“Exhibit 1"). Honda appealed to the Beijing First Intermediate People's Court, which affirmed the PRB decision No.8105. Honda then appealed to the Beijing High People's Court, which dismissed the appeal and affirmed the first instance judgment and the PRB decision. Upon Honda's petition for retrial, the Supreme People's Court (SPC) decided to hear the case with the writ of Certiorari. On Nov. 26, 2010, the SPC made its judgement vacating the first and second instance judgements and the PRB decision and held that the present patent and the design shown in Exhibit 1 are not similar designs. 


The so-called "whole observation" covers all the design features of the visible parts of an article, rather than some specific parts thereof. The so-called "comprehensive judgment" indicates a judgment based on all the factors that may affect the overall visual effect of an article design. In the present case, the "whole” of the design of the vehicle in the disputed category of vehicles not only includes the general profile and proportional relationship among various parts of the vehicle, but also includes other factors such as the front, side, rear parts of the vehicle; all of them shall be observed and considered. When making a comprehensive judgment, one should weigh the influence of each of the parts on overall visual effect of the vehicle design according to the characteristics of the disputed category of vehicles. Regarding the disputed category of vehicles in the present case, the vehicles share similar profiles, which features have limited effect on the visual effect to an ordinary consumer; while the changes in the design features in the portions such as the front, the side and the rear parts of the vehicle will draw more attention from an ordinary consumer. The differences (i.e. the changes) between the present patent and Exhibit 1 are obvious to the ordinary consumer of the category of vehicles at issue and are sufficient to distinguish the overall visual effect of the vehicle design shown in the present patent from that in Exhibit 1.