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A design patent (Industrial Design) refers to any new design of the shape, pattern or a combination thereof of the whole or part of a product, as well as the combination of color with shape and/or pattern, which is aesthetic and suitable for industrial application. According to Article 2 of the *Patent Law of China*, the carrier of a design itself is a product. To meet the needs of industrial production and market circulation, it is a prerequisite that the product has certain functions. A product with a design usually has both decorative and functional features, the proportions of which vary across different products and different periods, and the two features present a coordinated and unified relationship. The existence of functional features has certain inevitability and legitimacy. Whether functional features of a design should be excluded has also sparked diverse discussions and opinions in academic circles. However, from the perspective of judicial practice, the determination of functional design features will, to a certain extent, affect the right confirmation and infringement determination of design patents. This paper, in combination with Guiding Case No. 85 *Handheld Shower Head Case*, analyzes the determination of functional design features in disputes over design patent infringement.

I. Classification of Design Features of Industrial Designs

(I) Functional Features

Article 2 of the Patent Law of China stipulates that the carrier of a design per se is a product. Therefore, every product that meets consumer needs inevitably has certain value. Products without production value can hardly win the favor of the market, nor can they be produced on a large scale. A functional feature refers to a design made on the basis of technical requirements for aspects including the function, performance, economic efficiency, convenience and safety of products.

(II) Decorative Features

With the improvement of living standards and consumption levels, consumers not only pay attention to functionality and practicability, but also attach greater importance to aesthetic property when purchasing products. Accordingly, decorative features designed based on the aesthetic visual effect of products have emerged. Different from functional features that are free from the influence of aesthetic orientations and socio-cultural perceptions and can achieve objective effects, the effects realized by decorative features are aesthetic in nature. Different subjects may get different subjective perceptions due to factors such as different aesthetic orientations and social culture.

(III) Design Features with Both Functional and Decorative Attributes

In the "Logic Programming Switch" case, the Supreme People's Court holds that purely functional features and purely decorative features only exist in extreme circumstances. A simplistic binary division will inevitably expand the scope of functional or decorative design features. The classification of design features for industrial designs shall focus on coordination, and there are at least three categories of design features, namely functional design features, decorative design features, and design features with both functional and decorative attributes.

II. Determination of Functional Design Features of Industrial Designs

The author takes Guiding Case No. 85, the "Handheld Shower Nozzle Case", as an example to analyze the determination of functional design features in disputes over design patent right infringement.

(I) Basic Facts of the Case

Grohe filed a lawsuit on the grounds that the Liya series of bathroom and sanitary products manufactured, sold and offered for sale by Jianlong Company infringed its design patent right in respect of the "hand-held shower head", requesting the court to order Jianlong Company to immediately cease the alleged infringing acts, destroy the stock of infringing products and the molds exclusively used for the production of infringing products, and compensate Grohe for economic losses of RMB 200,000 (including reasonable expenses). The court of first instance conducted a comparison between Grohe's involved design patent and Jianlong Company's alleged infringing products, summarized the similarities and differences thereof, and finally held that the alleged infringing products did not constitute similarity to the involved design patent, and rejected Grohe's claims.

Grohe was dissatisfied with the first-instance judgment and lodged an appeal. The second-instance court held that although the differences between the accused infringing design and the design of the patent involved in the case as summarized in the first-instance judgment generally exist, infringement comparison is not a simple listing and accumulation of differences, but shall strictly abide by the comparison principle of "overall observation and comprehensive judgment". The court finally ruled that the accused infringing design is similar to the design of the patent involved in the case, and falls within the protection scope of the involved design patent right.

Jianlong Company refused to accept the second-instance judgment and filed an application for retrial with the Supreme People's Court. In the end, the Supreme People's Court upheld the first-instance judgment and ruled that no infringement was constituted.

II. Focus of Dispute: Whether the push button on the handle of the involved granted appearance design is a functional design feature.

This case involves four key contentious issues, and the author hereby conducts a discussion on "whether the push button on the handle of the involved authorized design constitutes a functional design feature".

The Court of Second Instance holds that the main difference between the accused infringing design and the patented design in question lies in that the former lacks a type of racetrack-shaped push button design at the handle position which the latter possesses. Although push buttons can be designed in different shapes, their arrangement on the handle is primarily a functional design, which does not exert a significant impact on the overall visual effect of the product.

The Supreme People's Court (SPC) elaborated on this issue in its judgment, holding that: "A functional design feature of an industrial design refers to a feature that, from the perspective of the general consumer of the industrial design product, is solely determined by the specific function to be realized by the product without consideration of aesthetic factors. Normally, a designer will take into account both functional and aesthetic factors when carrying out the industrial design of a product. On the premise of realizing the product's functions, the designer shall improve the product's appearance in compliance with cultural rules and principles, that is, a product must first realize its functions, and secondly shall have visual aesthetic appeal. As for a specific feature of an industrial design, it has both functionality and decorativeness in most cases. The designer will select the design he or she deems the most aesthetically pleasing from a variety of designs that can realize the specific function, while designs solely determined by a specific function only exist in a few special circumstances. Therefore, functional design features of industrial designs fall into two categories: first, the sole design that realizes a specific function; second, one of multiple designs that realize a specific function, but such design is solely determined by the specific function to be realized and is irrelevant to the consideration of aesthetic factors. The determination of a functional design feature does not lie in whether the design has no selectable alternatives due to limitations of functions or technical conditions, but in whether, from the perspective of the general consumer of the industrial design product, the design is solely determined by the specific function without the need to consider whether the design has aesthetic appeal. Generally speaking, functional design features have no significant impact on the overall visual effect of an industrial design; as for design features with both functionality and decorativeness, the strength of their decorativeness shall be taken into account when determining their impact on the overall visual effect: the stronger the decorativeness, the relatively greater the impact on the overall visual effect, and vice versa." [Civil Judgment (2015) Min Ti Zi No. 23] The SPC emphasized that, in the present case, the designer of the involved authorized industrial design chose to design the push button at the handle position into a track-like shape, which also aims to coordinate with its track-shaped water outlet surface to enhance the overall aesthetic appeal of the product. Therefore, the second-instance judgment committed an error in the application of law by determining that the push button in the involved authorized industrial design is a functional design feature.

Accordingly, the determination criteria for functional design features in disputes over design patent right infringement applied by the Supreme People's Court in the present case can be summarized as the following two points:

1. Ordinary consumers shall be taken as the subject of determination.

The determination of functional design features depends on whether, from the perspective of the ordinary consumer of the design product, the design is solely determined by specific functions, without regard to whether the design is aesthetically pleasing.

2. It shall be noted that a distinction shall be drawn between "functional design features" and "design features that are both functional and decorative".

Functional design features shall have no significant impact on the overall visual effect of a design. For design features with both functional and decorative attributes, the degree of their decorativeness shall be taken into account when determining their impact on the overall visual effect: the stronger the decorativeness, the relatively greater their impact on the overall visual effect, and vice versa.

III. Summary

In real life, most products integrate both functionality and decorative properties. For a specific design feature of a given industrial design product, the dual demands of functionality and aesthetic appeal shall also be taken into account, as such feature is the product of compromise and balance between technical attributes and decorative attributes. Therefore, the functionality or decorativeness of a product's design features is generally relative, and it is unrealistic in most cases to draw an absolute distinction between functional design features and decorative design features. In the trial of cases involving disputes over design patent infringement, the infringement comparison principle of "overall observation and comprehensive judgment" shall be strictly upheld. The significance of taking the innovative design features and functional design features of the industrial design into account in infringement determination lies in ascertaining the weight of the influence of such features on the overall visual effect of the industrial design product.