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Wednesday, August 24, 2016

Same, same but different – design infringement

By Anna Conigrave, Law Graduate.

Good news for designers


A recent Federal Court decision, in Hunter Pacific International Pty Ltd v Martec Pty Ltd, has provided good news for registered design owners, in that liability for design infringement is not avoided by tweaking a registered design to create minor differences.



Hubs at ten paces

Hunter Pacific International Pty Ltd owns registered design No. 340171 for a ceiling fan hub. Martec Pty Ltd imports and sells a ceiling fan known as the 'Martec Razor' . 

Hunter alleged that Martec infringed the Registered Design on the basis that the Razor is a product that is substantially similar in overall impression to the Registered Design.














Appendix 3 of judgment: Registered Design (left) and photograph of Razor (right)

Statutory guidance on infringement


Section 19 of the Designs Act 2003 sets out the factors that must be considered when assessing substantial similarity in overall impression of designs. These include that more weight should be given to similarities between the designs than to differences between them, and regard should be had to:
  • the state of development of the prior art base for the design;
  • visual features identified in any statement of newness and distinctiveness;
  • the amount, quality and importance of substantially similar parts of the designs; and
  • the freedom to innovate.
Section 19 also provides that the standard to be applied in assessing substantial similarity in overall impression of designs is that of the 'informed user', being a person who is familiar with the product to which the design relates or similar products.

Relevant principles


His Honour, Justice Nicholas, set out some guiding comments regarding the section 19 factors. These included:
  • The comparison of the designs 'cannot be based upon a fleeting or casual inspection of the drawings or object in question or some "imperfect recollection" of either of them'. Rather, there needs to be a careful comparison.
  • The focus of the comparison should be on the overall impression of the designs. This arises from the look of the designs rather than from analyses of measurements or ratios.
  • The fact that regard is to be had to the amount, quality and importance of substantially similar parts of the designs is significant. This is because:
    1. it suggests that designs can be substantially similar in overall impression even though a particular part of the product is not substantially similar to the corresponding part of the registered design; and
    2. it allows a qualitative assessment.
  • An informed user should be taken to be familiar with the designs to be compared based on a careful inspection.


Comparison and assessment


His Honour heard the evidence of two witnesses – an industrial design consultant for Hunter and a mechanical engineer for Martec. Not surprisingly, the witnesses reached different conclusions as to the substantial similarity in overall impression of the Razor and the Registered Design.

His Honour compared the Razor and the Registered Design. Similarities and differences were found in the upper and lower hubs and the cut-out apertures of the designs, for example:
  • The upper hubs consist of concentric pieces. However, the Registered Design's upper hub consists of two pieces and the Razor's upper hub consists of three pieces.
  • The lower hubs are very similar. The only obvious difference is the Razor's lower canopy.
  • The cut-out apertures are in the same position and slant downward. However, they have different shapes. They are curved in the Registered Design and straight in the Razor.
Weight was given to the similarities in the lower hubs of the designs, as the lower hub is what is seen when a ceiling fan is installed.

His Honour also compared the Razor and the Registered Design with the prior art, which comprised eight ceiling fans, and noted a number of differences. His Honour concluded that '[t]he variety of designs that form part of the prior art base show that a designer of a ceiling fan hub has freedom to innovate'; there are many possible hub configurations.

Result


His Honour concluded that the Razor is substantially similar in overall impression to the Registered Design, as the 'significant and eye-catching' similarities outweigh the differences. Hunter was awarded declaratory and injunctive relief and given the opportunity to pursue its claim for monetary relief.

Our spin


The takeaway message from this case is a positive one for designers, especially those who register their designs. If you have a registered design, you can take action in relation to other designs that are 'same, same but different'.

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