According to Taiwan’s Patent Act, a design application can be filed for any novel design created with respect to the shape, pattern or color of a portion of, or the entire article, or any combination thereof, thereby creating eye-appealing aesthetic effect. In general, designs that are independent and distinct must be filed in separate applications. If, however, there are two or more articles belonging to the same category and customarily sold as groups of articles, it is allowed to file one design application to protect the group of articles (hereinafter referred to as group design).
Since a design patent protects the way an article looks, it is the overall ornamentation creating distinct appearance, rather than the impression produced by the individual components, that should be given much weight in determining the patentability of a group design. Under this criterion, how a group design can be adequately protected has become important.
A recent Judgment relating to a patent infringement civil lawsuit happened to touch upon this issue.
The disputed design patent is a design of "indoor and outdoor wall decoration materials for buildings", which is a group design relating to tiles, composed of five components, and each is in the shape of an elongate body. The surface of the elongate body is provided with an elongate groove, and viewed from the front view of each component, the overall ornamental feature of each component is as follows:
Component 1: The upper left surface of the groove is provided with irregular stone-like carved embosses of about 3/4 length of the surface, while the upper and lower surfaces of the groove have a flat texture;
Component 2: The upper right surface of the groove is provided with an irregular stone-like carved embosses of about 1/4 length of the surface, and the lower surface of the groove is provided with an irregular stone-like carved emboss of the same length of the surface, while the other surfaces above the groove have a flat texture;
Component 3: The lower surface of the groove is provided with an irregular stone-like carved embosses, while the upper surface of the groove has a flat texture of the same length;
Component 4: The upper right surface of the groove is provided with an irregular stone-like carved embosses of about 1/4 length of the surface, and the lower right surface of the groove is provided with an irregular stone-like carved embosses of about 3/4 length of the surface, and the other surfaces above and below the groove have a flat texture.
Component 5: The lower left surface of the groove is provided with an irregular stone-like carved emboss of about 1/4 length, while the other surfaces above and below the groove have a flat texture.
There are 6 boxes and 3 pieces of tile that were claimed as infringing articles. They are itemized as Nos. 1 to 26 where:--
- Tile Nos. 1, 10, 18, 19, 22 and 25 are the same in appearance;
- Tile Nos. 2, 15 and 21 are the same in appearance;
- Tile Nos. 3, 8 and 14 are the same in appearance;
- Tile Nos. 4, 6 and 11 are the same in appearance;
- Tile Nos. 5, 7, 9, 24 and 26 are the same in appearance;
- Tile Nos. 12, 13 and 17 are the same in appearance
- Tile Nos. 16, 20 and 23 are distinct in appearance from each other and from the other group of tiles. Nos. 1, 2, 3, 4, 5, 12, 16, 20 and 23 are thus selected as the representative of each group of tiles for comparison purpose.
The Intellectual Property and Commercial Court (IPC Court) held that the patented design and the allegedly infringing product are both related to a "tile set" applied to the wall or wall of a building.
- Tiles Nos. 4, 6, 11 are similar in outer appearance to Component 2 of the patented design.
- Tiles Nos. 2, 5, 21 are similar in outer appearance to Component 3 of the patented design.
- Tiles Nos. 5, 7, 9, 24, 26 are similar in outer appearance to Component 4 of the patented design.
- Tiles Nos. 12, 13, 17 are similar in outer appearance to Component 5 of the patented design.
- Tiles Nos. 1, 10, 18, 19, 22, 25 tiles are not similar Component 1 of the patented design.
- Tiles Nos. 6, 20, 23 are dissimilar to one another and do not resemble any component of the patented design.
As shown above, the allegedly infringing product only resembles to several individual components of the patented design. However, the patentability of a group design actually resides in the aesthetic visual effect produced by the overall appearance of the combination of components, the relationship between pattern arrangement, the position distribution and the size ratio. In this respect, As Components including "No. 1, 10, 18, 19, 22, 25", "No. 16", "No. 20" and "No. 23" of the allegedly infringing product are significantly dissimilar to "Component 1" and "Other Components" of the patented design in outer appearance, the overall visual effects produced by each component are obviously distinct from the latter. The allegedly infringing product is composed of 26 tiles with a total of 9 different outer appearances. On the other hand, the patented design is composed of 5 tiles whose overall appearance is different from the combination of the allegedly infringing product. That is, when the two parties’ designs are arranged and combined by numbering, they would produce significantly different visual effects. Moreover, Tile "Nos. 1, 10, 18, 19, 22, 25" included in the allegedly infringing product are many in each box and therefore should be given more weight in the test of similarity. As these tiles are dissimilar to the patented design to a large degree and its co-existence with the patented design would not cause any confusion to consumers, the two parties’ designs should be considered as dissimilar in outer appearance.
The patentee claimed that although the tiles of the wall would only be arranged arbitrarily, the irregular texture similar to ordinary stones are actually the essential aesthetic feature of the patented design. As such, the allegedly infringing product falls within the scope of the patented design.
The IPC opined that, since the overall outer appearance of the allegedly infringing product is obtained by presenting a specific proportion of the emboss pattern of stone-like of each component, the scope of the patented design actually resides in the overall appearance composed of each component, and should not be defined only by the whole or part of the stone-like pattern. Moreover, considering the distinct overall visual effects produced by Component "Nos. 1, 10, 18, 19, 22, 25", "No. 16", "No. 20" and "No. 23" and "Components 1" and "Other Components" of the patented design, respectively, and the fact that and the quantity of components "Nos. 1, 10, 18, 19, 22, 25" in each box is much larger than the other components, the co-existence of the two parties’ designs would not cause confusion since these large-sized components may implant clear-cut overall visual impression on the mind of consumers and serve as an identifier to distinguish between the two parties’ designs. Thus, the IPC Court held that the allegedly infringing product does not fall in the scope of the patented design.
It is clear from the above case that, although there are many different arrangements and combinations of components in a group design patent, such as the patented design, it is not possible to produce the visual effect of the irregular texture characteristics of an ordinary stone pattern with only a combination of 5 components, nor can it be claimed that the irregular texture characteristics similar to ordinary stone is the scope of right of the patented design. The allegedly infringing product is constituted by many types of components and the quantity of a particular component is larger than that of the other components. Therefore, as the overall visual impression presented thereby is different from that presented by the patented design, it is difficult to conclude that an infringement case has established. Moreover, although the tiles sold by the defendant are indeed similar in appearance to some components of the patented design, in the test of similarity, besides the individual corresponding components, the overall appearance of the combination of each component should be taken into serious consideration. At this rate, when it is not possible to present the visual effect of a group design by limited combination of the components, or a part of the components plays a significant role in the production of visual effect, it is advised to, apart from seeking protection for a group design patent, file design applications for all the individual components or several components in special appearance.