Clearing the road: car designs in China

The judgment, which clarifies the method of determining the similarity of designs, will contribute to standardising the criteria for applying the law.

The China Supreme People’s Court published, in late April of 2011, Ten Prominent Intellectual Property Judicial Protection Cases Tried in Chinese Courts in Year 2010.

The only design patent case was a retrial for a patent invalidation dispute between Honda Motor Co. Ltd, the Patent Reexamination Board (PRB) of the Chinese State Intellectual Property Office (SIPO), Shijiazhuang Shuanghuan Automobile Co. Ltd and Hebei Xinkai Automobile Co. Ltd. (which later became the bankruptcy liquidation group of the same company).

In recent years, the determination of identity or similarity of designs has drawn more and more attention, and has caused more and more disputes in China. This is the first time that the China Supreme People’s Court has made a judgment of directive significance over the similarity of designs since China established the patent system in 1985.

The retrial judgment made by the Supreme People’s Court will definitely play an extremely important precedential role in the trial of related cases by the PRB, local intellectual property offices and courts in China for determining the identity or similarity of designs.

On February 13, 2002, Honda was granted a patent for design no. ZL01319523.9 for an automobile by SIPO. Shuanghuan and Xinkai in China, as the invalidation petitioners, filed in December 2003 and December 2004 respectively a request for the invalidation of the design patent.

After an examination, the PRB decided, in March 2006, on the basis of a reference design submitted by the invalidation petitioners, that Honda’s design patent was invalid. Unsatisfied with the decision made by the PRB, Honda instituted administrative legal proceedings with the Beijing First Intermediate People’s Court.

The court decided in December 2006 to maintain the decision of the PRB. Then, Honda appealed to the Beijing High People’s Court. The Beijing High People’s Court made a final administrative judgment of second instance in September 2007, upholding the administrative first instance judgment.

Later, Honda entrusted CCPIT Patent & Trademark Law Office to file on its behalf a petition for retrial of the present case with the Supreme People’s Court. The Supreme People’s Court held a hearing with the parties concerned in December 2008. Then it ruled, in February 2010, that it would bring the present case to trial itself and that the implementation of the initial judgment would be suspended during the retrial.

The Supreme People’s Court held a court-room trial in July 2010, and issued its administrative judgment of retrial on November 2010, revoking the previous judgments of the Beijing High People’s Court and the Beijing First Intermediate People’s Court, and the invalidation decision made by the PRB. The Supreme People’s Court made the following determinations via retrial.