Glaxo Group Limited v Chia Tai Tianqing Pharmaceutical Group Co., Ltd
[2022] HKCFI 1350; HCIP 60/2019
The Interested Customer Test, Not Individual Character
Lok J’s judgment confirms that Hong Kong’s registered design law remains anchored in old UK law, not the harmonized EU/new-UK regime. The RDO’s novelty test in s.5(2) — a design is not “new” if identical to, or differing only in “immaterial details” or “variants commonly used in the trade” from, a prior design — was largely transplanted from UK law as it stood before the EU Designs Directive reforms. Since Hong Kong’s ordinance was never amended to follow those reforms, the judge held that the older UK case law and its “interested customer” test remain the correct framework, and the newer EU test of “individual character” does not form part of Hong Kong’s registered designs regime.
The two tests differ in a subtle but important way. Under EU harmonized law, the additional requirement of “individual character” asks whether a design produces a different overall impression on an informed user — a notionally more attentive, product-literate observer, though still short of an expert. Under the old UK approach applied in Hong Kong, the enquiry focuses on whether the differences are merely immaterial details or common trade variants, judged through the eyes of the interested customer. If all differences fall into either category, novelty fails; if not, novelty is made out — there is no free-standing requirement that the design create an “individual” impression beyond simply not being anticipated.
Lok J acknowledged that commentators (Russell-Clarke) regard the “informed user” as not so different from the traditional “interested customer” whose eye was always the touchstone for validity and infringement under old UK law. He also observed that where a design’s overall concept lacks distinctiveness from a prior design — even without formally invoking “individual character” — an interested customer may be more inclined to overlook minor differences, because the underlying logic (a design too similar to its neighbours forfeits protection over minor tweaks) still operates within the “immaterial details” language of s.5(2). In other words, Lok J observed that where a design lacks a clearly distinct design concept from the prior art, an interested customer may be more likely to regard differences as immaterial, a consideration that to an extent echoes (without adopting) the EU notion of individual character. The judge also confirmed, consistently with old UK authority, that colour is prima facie immaterial to novelty, that mosaicking of prior art is impermissible, and that foreign invalidity/infringement decisions (Mainland, German) are irrelevant absent evidence of the relevant foreign law.
Leaf vs Shield and Basket
The substantive comparison exercise focused on whether the visual differences identified by an interested customer were more than immaterial details or common trade variants, with considerable attention paid to the overall design concept of the competing designs. Although not cited by Lok J, practitioners familiar with the UK case law would find this reasoning bears some resemblance to Jacob LJ’s observations in Procter & Gamble, where Jacob LJ held that the key question is what the registered design, the accused/comparator design, and the prior art actually look like, and that a design markedly different from anything preceding it — “not surrounded by kindred prior art” — enjoys a wider ambit of protection, whereas a design sitting in a crowded field of similar concepts is more vulnerable to being distinguished only by trivial differences. Lok J’s treatment of RD1 versus RD2/RD3 bears similarity to this logic, though he was analysing through the “interested customer”/”immaterial details” framework rather than the EU “overall impression” test.
RD1 — the “leaf design” was compared chiefly against the Plaintiff’s own DISKUS Inhaler (PA1) and two related prior arts (PA7, PA8). The judge found RD1 occupied genuinely novel visual territory: an organic, asymmetrical leaf-and-vein motif, a distinctive recessed U-shaped window exposing internal mechanics even when closed, and an irregular angular casing evoking a “helmet” or “head-guard” — all sharply different from PA1’s smooth, symmetrical, “spaceship-like” appearance. Much like the Febreze canister in P&G, whose innovative design was found valid because it was not closely crowded by similar prior designs, RD1’s design concept likewise had no sufficiently similar counterpart among the prior arts relied upon. Each individual difference was visually significant, non-functional, and unsupported by any evidence of being a common trade variant — so novelty was upheld.
RD2 and RD3 — the “shield/basket design”, by contrast, were simple, generic designs whose most prominent visual feature was a circular disc set into a basket-shaped housing. The judge found that PA2 embodied substantially the same basket-like design concept and that the differences between RD2 and PA2 were merely immaterial details (a Celon design relied on by the Plaintiff), and equally in PA3, PA4 and PA10. The judge held that an interested customer drawn to the “basket” idea in RD2 would inevitably have noticed the same idea already present in the prior art, making the differences immaterial. RD3, differing only by a colour claim, failed for the same reason, since colour alone could not rescue novelty. Both registrations were revoked.
Leave a Reply