In Taiwan, a core principle for determining whether two designs are identical or similar in appearance is that the comparison should be made through direct visual observation from the perspective of an ordinary consumer purchasing the article to which the designs are applied. Where the nature of the article is such that naked-eye observation requires the aid of instruments, such as diamonds or light-emitting diodes (LEDs), instrument-assisted observation is nevertheless regarded as equivalent to direct observation with the naked eye.
How is this principle applied in practice? Recently, the Intellectual Property & Commercial Court addressed this issue in two cases. One involved an ordinary consumer product, while the other concerned a miniature article. These decisions suggest that, when dealing with very small articles, the application of this principle entails certain considerations that design patent owners should pay particular attention to.
Summary of the cases
First, in civil litigation involving a design patent for a fortune cookie-shaped pendant, although the patentee alleged a high degree of similarity in the curvature and surface contours of the parties’ pendant products, the court rejected this argument. The court held that measuring the degree of similarity or difference in such features falls outside the scope of direct visual observation with the naked eye.
The court further stated that ordinary consumers, when purchasing pendants, assess the overall appearance of such products through direct visual inspection and would not perform such measurements, much less rely on specialised instruments. In particular, in the present case, these alleged features were not emphasised in the specification of the asserted design patent and could only be regarded as minor modifications of the prior art. The court also held that the fortune cookie shape constitutes a form not uncommon in the prior art.
In another civil lawsuit involving a design patent for an LED, the court observed that LEDs are typically examined and selected based on enlarged photographs or enlarged images in product catalogues. Nevertheless, “the basis for comparison should still be that both images are presented at the same or a similar magnification”.
In this case, the court noted that the drawings of the asserted patent depicted the LED at 20× magnification, whereas the photographs of the defendant’s products submitted by the plaintiff were presented at various magnifications – including 12×, 25×, and 75× – none of which was close to 20×. Accordingly, the court found that a comparison based on images displayed at substantially different magnifications was clearly unreasonable and inappropriate.
In addition, the court stated that, although the plaintiff further submitted measurement and analytical data derived from contour images generated by a 3D profilometer, such evidence should not be considered, as it exceeded what an ordinary consumer could directly observe and comprehend with the naked eye.
Practical implications
These two cases suggest that, when assessing whether appearances are similar, the article, photograph, or image being compared with the patented design must be presented at an equivalent or comparable size or magnification in order to be accepted by the court. Furthermore, instrumental measurement of detailed similarities or differences, or the use of sophisticated equipment requiring specialised knowledge and expertise for interpretation, may likewise be rejected, as courts may regard such evidence as inconsistent with the “ordinary consumer’s naked-eye observation” principle.
These points are particularly important for patentees to bear in mind because, in Taiwanese patent infringement litigation, the plaintiff bears the primary burden of proving infringement.
