On Feb. 13, 2002, the Japanese Honda Motor Co. Ltd. was granted by the State Intellectual Property Office of China (hereinafter referred to as SIPO) with a patent for design No. ZL01319523.9 titled as "Automobile". Shijiazhuang Shuanghuan Automobile Co. Ltd. and Hebei Xinkai Automobile Co. Ltd. filed respectively in Dec. 2003 and Dec. 2004 a request for the invalidation of the patent for design with the Patent Reexamination Board under the SIPO. Having made examination, the Patent Reexamination Board made a decision in 2006 declaring that the patent for design be invalid.

Unsatisfied with the above-mentioned decision made by the Patent Reexamination Board, Honda Motor Co. Ltd. instituted administrative proceedings with the Beijing First Intermediate People’s Court and appealed to the Beijing High People’s Court. The Beijing High People’s Court made the final administrative judgment on Sept. 28, 2007 to uphold the decision made by the Patent Reexamination Board.

Still unsatisfied with the above-mentioned final judgment made by the Beijing High People’s Court, Honda Motor Co. Ltd. entrusted CCPIT Patent & Trademark Law Office to make a further study of the case, and authorized CCPIT Patent & Trademark Law Office to file with the Supreme People’s Court a petition for retrial of the case. After being entrusted and authorized by Honda, the CCPIT Patent & Trademark Law Office formed up a special team of patent attorneys, which, by making in-depth studies of the case and the applicable law and regulations and getting at the core of the complicated facts and legal issues, formulated a well planned and considered strategy and submitted a petition for retrial to the Supreme People’s Court on July 04, 2008.

After holding a hearing attended by the parties concerned on Dec. 05, 2008, the Supreme People’s Court concluded that the petition submitted by Honda Motor Co. Ltd. did meet the conditions as provided for by Art. 72 of the Interpretations of the Supreme People’s Court on Some Issues concerning the Application of the Administrative Procedure Law of the People’s Republic of China, i.e. “the law and regulations are incorrectly applied in the original judgment”, and in accordance with the provisions of Art. 63 of the Administrative Procedure Law of the People’s Republic of China, Art. 72 (Parag. 2) of the Interpretations of the Supreme People’s Court on Some Issues concerning the Application of the Administrative Procedure Law of the People’s Republic of China, and by reference to Art. 185 of the Civil Procedure Law of the People’s Republic of China, the Supreme People’s Court made an administrative ruling deciding that the present case shall be retried in the Supreme People’s Court and the effectiveness of the original judgment shall be stayed during the retrial proceedings.

The Supreme People’s Court held a court-room trial on Jul. 15, 2010, and then, rendered the administrative judgment on Nov. 26, 2010, revoking the administrative judgment made by the Beijing High People’s Court, the administrative judgment made by the Beijing First Intermediate People’s Court and the invalidation decision made by the Patent Reexamination Board.

The Supreme People’s Court considered, via retrial, that the principle method, as stipulated by the Guidelines for Patent Examination, to determine whether or not two designs are identical or similar, is to proceed with an over-all observation of the design as compared and the prior design based on the knowledge level and cognitive ability of an ordinary consumer and make a comprehensive judgment on whether or not the difference therebetween is significant on the visual effect of the design of the product. An ordinary consumer has such features as having some common knowledge of designs of the products similar to or identical with the design as compared, and having some ability to distinguish the differences between the products of the designs as compared in their shapes, patterns and colors, but will not notice the minor change in the shape, pattern and color of the products. So-called “common knowledge” means the understanding of the designs of the related product, not limited to elementary and simple knowledge, but with no designing capability. The so-called “over-all” in the term “an over-all observation” covers all the design features of the visible part of a product, rather than a specific part thereof. The so-called “comprehensive judgment” refers to a judgment made on the basis of a comprehension of all the factors that will affect the overall visual effect of a product design.

In the present case, as this type of cars in dispute have similar contours, those common design features have limited visual effect on the ordinary consumer of this type of cars, however the variations of designing features in such portions as the front, the sides and the rear thereof may draw more attention of ordinary consumer of these cars. Thus, as compared to the evidence 1, the design of the present patent has differences in such decorative portions as the headlight, foglight, apron plate, grid, side windows, tail lights, rear bumper, ceiling profile. In particular, the designs of the headlight, foglight, apron plate, grid, side windows, tail lights, rear bumper, the connection between the side and rear window glass and the tail lights and the transition from the upper portion to the lower portion of the car body are all prominent, eye-catching and of stronger visual impact. Such differences are obvious to the ordinary consumer of this type of cars in dispute and sufficiently capable of distinguishing the design of the present patent from that of the evidence 1 in overall visual effect.

Although the invalidation decision, the first administrative judgment and the final administrative judgment in respect of the present case all affirm that differences exist between the present patent and the evidence 1, the design features of said portions are excluded from the “overall” design of the cars as these differences were regarded as pertaining to “minor differences”, and the overall contour of a car was regarded as having the most significant visual effect on the ordinary consumer of cars instead of this particular type of cars in dispute, which erroneously leads to the conclusion that the designs of the present patent and the evidence 1 are similar and the present patent be invalidated. To sum up, as the invalidation decision, the first administrative judgment and the final administrative judgment in respect of the present case have erroneously applied the laws and regulations, a correction has to be made.

Since the attorney team of the CCPIT Patent & Trademark Law Office made a thorough analysis on the applicable law and the facts of the present case, and made an elaboration on the crucial issue of application of the law in the petition for retrial, the present case successfully drew from the Supreme People’s Court an attention to the mistakes in the prior invalidation decision and administrative judgments, and a justifiable judgment was finally obtained from the Supreme People’s Court on the present case. The judgment rendered by the Supreme People’s Court on the present case not only corrects the mistake made in the prior decision and judgments and effectively protects the legitimate rights of the party concerned, but also made clarifications on substantial issues in respect of determination of similarity and identity of designs, such as the features of an ordinary consumer, “common knowledge”, “over-all observation” and “comprehensive judgment” etc.. The judgment of the present case therefore is of directive significance in the trial of similar cases.

December 2010



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