Infringing a design: it might not be obvious, but it could be fraudulent

By Clare Doneley.

Key Points:
Designs registered under the old Designs Act 1906 are still subject to the old test for validity and infringement. Where prior art is "prolific", small differences can be enough for a valid design registration under the old Act. At least one important, albeit small, difference between two designs may mean that there has been no obvious imitation, but will not necessarily save you from a finding of fraudulent imitation.

A recent decision of the Federal Court provides a useful summary of the factors that the court considers when determining whether a design registered under the Designs Act 1906 Act has been infringed. While the new Designs Act 2003 has introduced many changes to the designs regime, the test for infringement under the 1906 Act still applies when determining whether a design registered under the 1906 Act has been infringed. Given that designs last for up to 10 years, this test will continue to be relevant until 2014 (the 2003 Act commenced on 17 June 2004).

The facts

Axe Australasia owned a registered design for a vandal-resistant fluorescent luminare, commonly referred to as a batten light, which it marketed as the "Cellite".

Axe Australasia lost out on a tender to supply batten lights to the Kempsey Gaol and discovered that the winning tenderer, Australume, was supplying lights with a similar design to the Cellite.

Axe Australasia sued Australume for design infringement, arguing that Australume's Centurion batten light infringed the Cellite design. Australume countered by saying that the Cellite design was invalid because it was neither new nor original at the date of registration. It also sought to have the design removed from the register.

The two principal questions before the court were (1) was the design of the Cellite new or original; and (2) if it was, did the Centurion infringe the registered design?

Was the design new or original?

A design could be registered under the 1906 Act if it was "a new or original design". It could not be registered if it differed from the prior art "only in immaterial details or in features commonly used in the relevant trade".

The evidence showed that there were many batten lights already in existence when the Cellite design was registered. The court compared the Cellite against another registered design for a batten light called the "ABS Series" which the court considered covered all the prior art. Therefore, if the Cellite was new and original as compared to the ABS Series, it would be new and original as compared to all other batten lights.

In arriving at its decision that the Cellite was sufficiently new or original to distinguish it from the prior art, the court considered the following:

• where prior art is "prolific", it will often be that small differences will be regarded as "substantial", rather than "immaterial" differences.
• the existence of prolific prior art should not rob a design of its value.
• a design will not be new or original where the differences between the design and the prior art results from the introduction of common trade variance.
• the differences in configuration, form and shape between the ABS Series and the Cellite were "sufficient to impart the character of novelty and originality to the whole".

Had the registered design been infringed?

The court then considered whether the Cellite design had been infringed. In this case the elements of the test for infringement under the 1906 Act that remained to be proved were whether the Centurion was either:

• an obvious imitation of the Cellite design; or
• a fraudulent imitation of the Cellite design.

The court held that the principles to be applied when deciding if a particular product is an infringement of a registered design are:

• first impressions are important;
• an obvious imitation is one which is not the same as the registered design but is a copy apparent to the eye, notwithstanding slight differences;
• the question must be looked at as one of substance and by examining the essential features of the design;
• a closer correspondence between the registered design and the alleged infringing design is necessary to satisfy the test of obvious imitation than that of fraudulent imitation;
• precise mathematical comparisons or matters of measurement or ratios are not to be applied as the test of infringement; appearance to the eye is the critical issue; and
• questions of infringement must not be determined by a narrow or overly technical approach in comparison between the design and the alleged infringement.

The court decided that the Centurion was not an "obvious imitation" of the Cellite, because there was at least one important, albeit small, difference between the two designs.

However, the court did find that the Centurion was a "fraudulent imitation" of the Cellite. It was clear that Australume intended to copy the Cellite and that it had made a number of small changes to the Cellite, presumably for the purpose of disguising what had been done. The differences between the Cellite and the Centurion were not sufficient to avoid a finding of fraudulent imitation.

Conclusion

This case serves as a reminder that the old Designs Act 1906 will continue to be relevant for some time yet in determining the validity of designs registered under the old Act and whether they have been infringed.

It tells us that it's possible to have a valid design under the old Act even where there were many other relevant designs around before it, and that case, small differences can be enough.

Likewise, when it comes to infringement of designs under the old Act, small differences can be enough to avoid a finding of obvious imitation. However, where it seems that the imitation is intentional, then larger changes are likely to be required to avoid a finding of fraudulent imitation.

For further information, please contact Simon Newcomb.