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From Who's Perspective Is Design Patent Infringement to Be Determined?

Hsiu-Ru Chien/Yu-June Tseng

Paragraph 1, Article 136 of Taiwan’s Patent Act states that a patentee of a design patent has the exclusive right to prevent others from exploiting “the design” or “similar design(s)” without the patentee’s consent.  Thus, the infringement of a design patent is determined according to whether the accused design is “identical” or “similar” to the design patent.  Regarding how to determine whether the accused design and the concerned design patent are identical or similar, the Taiwan Intellectual Property Office published “Guidelines for Determination of Patent Infringement” (hereafter referred to as “Guidelines”) in 2016, which state that the perspective of such a comparison should be that of an “ordinary consumer” in purchasing relevant products.  By comparing the entire patent scope and the corresponding features of the accused design, "whether the accused design and the patent are used on identical or similar products," as well as "whether they are identical or similar in appearance," shall thus be determined.  In other words, said Guidelines request the infringement be judged based on the following two issues: “identity and similarity of the products to which the accused design and the design patent are applied,” and “identity and similarity in appearance of the accused design and the design patent” from the perspective of an “ordinary consumer.”  


However, Civil Judgment 2016-Min-Chuan-Su-No.62, rendered by the Intellectual Property Court (IPC) on July 14, 2017, departed from said Guidelines by instead employing a different perspective in determining whether the accused design and the design patent are applied to “identical or similar products” and whether they have “identity and similarity in appearance”:


1.    Determination on the identity and similarity of products: from the perspective of “designer of product appearance”


The above judgment stated that the design patent system attempts to protect creations of product appearance.  In order to prevent someone from adapting the design to another product without any original creativity, thereby exempting oneself from liability for patent infringement, the issue of whether the accused design and the patent are used on identical or similar products should be decided based on whether a designer of product appearance can easily adapt the design patent to the accused infringing product.


The judgment explained that unlike the perspective of an “ordinary consumer,” the perspective of a “designer of product appearance” can broaden the design patent’s scope.  Even though an ordinary consumer can easily differentiate between the two products, if the appearance design can be easily adapted (such as adapting a car design to a model car), then the products are still considered identical or similar.


2.    Determination on identity and similarity of appearance: from the perspective of “ordinary consumer”


The judgment stated that “product design is a practical industry targeting purchase by an ordinary consumer,” so the issue of identity and similarity of appearance should be determined from the perspective of an ordinary consumer.


Since the judgment mentioned above established new review standards different from the Guidelines and other judgments rendered by the IPC, it is worth following up to see how such unprecedented interpretation may affect future developments in legal practice.