Clayton Utz succeeds in first Australian court decisions on infringement under the Designs Act 2003

In Review 2 Pty Ltd v Redberry Enterprise Pty Ltd [2008] FCA 1588 (24 October 2008) and Review Australia Pty Ltd v New Cover Group Pty Ltd [2008] FCA 1589 (24 October 2008), the Federal Court has delivered the first judicial decisions on infringement under the Designs Act 2003 (Cth).  Until now, there have been no decisions that found it necessary to apply the test for design infringement under the new Designs Act.

Review is a designer and retailer of women's clothing.  In the first proceedings, it alleged that Redberry made, imported and sold a dress in infringement of a Review registered design.  In the second proceeding, Review made equivalent allegations against New Cover Group.  Both Redberry and New Cover Group denied the allegations.  Kenny J dismissed the infringement claim against Redberry, while her Honour upheld the claim against New Cover Group and indicated that judgment should be given in the sum of $85,000.  Redberry was found not to have infringed the registered design because, taking into account the shape of the skirt and the pattern (including colour), the Redberry garment did not embody a design that was identical to, or substantially similar in overall impression to, the Review design.

The judgments are significant for various reasons.  Kenny J provides guidance on the "standard of the informed user" used in applying the factors to be considered in assessing substantial similarity in overall impression, considers the role of colour in representations of a registered design and, although not strictly necessary in the Redberry proceeding, discusses a range of damages issues.  These decisions are a key development in the law of registered designs, with considerable implications for designers and businesses that deal in designs.  In particular, they confirm that the use of colour photographs (unaccompanied by a statement of newness and distinctiveness) is relevant to determining the extent of the monopoly sought and given.  Accordingly, representations should generally be lodged in black and white if colour is not a component of the design.  The judgments also illustrate the necessity of evidence to support a claim for damages for lost sales.  The court will not assume that every sale of an alleged infringing product should be treated as if it had been a sale of the product in relation to which the design is registered.

Clayton Utz acted for Redberry in these proceedings.