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Honda Wins Administrative Dispute in Supreme People’s Court

Issued: March 01 2011
Beijing-based CCPIT Patent and Trademark Law Office successfully advised Honda Motor in an administrative dispute case re-tried by the Supreme People’s Court concerning the invalidation of a patent for design.

On February 13, 2002, the State Intellectual Property Office of China (SIPO) granted Hondawith a patent for design No ZL01319523.9 titled as “Automobile.” Shijiazhuang Shuanghuan Automobile and Hebei Xinkai Automobile filed a request for the invalidation of the patent for design with the Patent Reexamination Board under the SIPO in December 2003 and December 2004, respectively. The Patent Reexamination Board declared the patent invalid in 2006.

Unsatisfied with the decision, Honda 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 September 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, through CCPIT, filed a petition for retrial of the case with the Supreme People’s Court. The firm submitted a petition for retrial on July 4, 2008.

After a December 5, 2008, hearing, the Supreme People’s Court concluded that the petition submitted by Honda met the conditions in Article 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.” In accordance with the provisions of Article 63 of the Administrative Procedure Law of the People’s Republic of China, Article 72 (Paragraph 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 Article 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 would be retried in the Supreme People’s Court and the original judgment would be stayed during the retrial proceedings.

The Supreme People’s Court held a courtroom trial on July 15, 2010, and rendered the administrative judgment on November 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 principal 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 overall 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 “overall” in the term “an overall 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 the 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, the design of the present patent has differences in such decorative portions as the headlight, fog light, apron plate, grid, side windows, tail lights, rear bumper, ceiling profile.

In particular, the designs of the headlight, fog light, 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 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, 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 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.

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,” “overall observation” and “comprehensive judgment,” etc. The judgment of the present case therefore is of directive significance in the trial of similar cases.

 

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