A recent Australian Federal Court case has confirmed the approach to assessing infringement of Australian registered designs.
In Hunter Pacific International Pty Ltd v Martec Pty Ltd  FCA 796, the Court considered an allegation that Martec was infringing Hunter’s registered design No. 340171 for a ceiling fan hub.
The Australian Designs Act states that infringement occurs in products which embody a design that is identical to, or substantially similarin overall impression to, the registered design (section 71). The Act requires the person assessing infringement to adopt the mantle of a person who is familiar with the product, or similar products, to which the design relates (the standard of the informed user). Section 19 of the Act specifies that when deciding whether a design is substantially similar in overall impression to another design, more weight is to be given to similarities between the designs than to differences between them. The person making the decision should have regard to the state of development of the prior art base for the design; any particular features which the registration claimed to be new and distinctive in the context of the design as a whole; the amount, quality and importance of the substantially similar parts of the design in the context of the design as a whole; and the freedom of the creator of the design to innovate.
Registered design No. 340171 claimed newness and distinctiveness in the features of shape and/or configuration of the hub of a ceiling fan represented in solid lines in the attached drawings, and directed that the shape, configuration and number of fan blades should be disregarded. Because the statement of newness and distinctiveness related to only the hub of the fan, the Court gave particular consideration to the amount, quality and importance of the hub in the context of the design as a whole.
Infringement – overall impression
The Judge commented that the Act requires consideration of all of the similarities and the differences between the registered design and the alleged infringing product, and that the comparison is not a casual inspection or question of “imperfect recollection”. Rather, after considering all of the similarities and differences, it is the overall impression that constitutes the critical measure of comparison.
After considering each of the relevant requirements set out in section 19, the Judge acknowledged that the assessment of “substantial similarity in overall impression” is qualitative, and is similar to the test of substantiality in copyright law. There is a relationship between the degree of novelty or originality of a registered design (with regard to the “state of development of the prior art base”) and the degree of similarity of the alleged infringement to the registered design. In other words, if the alleged infringing product is closer in appearance to the registered design than to the Prior Art Designs, a finding of infringement is likely.
Hunter’s witness was an industrial design consultant with experience in the design of domestic appliances, who identified eight Prior Art Designs of ceiling fans, for comparison with the registered design and the alleged infringing product. Martec’s witness was a mechanical engineer whose expert report focused on measurements of the products, and the extent to which features were dictated by function.
The Judge was mindful of the requirement to compare similarities and differences, and to place more importance on similarities than on differences. When applying the standard of the informed user, he attached particular importance to similarities which were apparent when the design was installed in a ceiling. This approach is consistent with the “informed user” being someone who does not just inspect the product at close quarters, but who has in their mind’s eye the visual impact of the product in situ.
The Judge indicated that as it was the overall impression which must be considered, he did not find the comparison of measurements by Martec helpful. The approach adopted by Hunter was successful in establishing that the registered design had been infringed.
Contrast with New Zealand
In New Zealand, the principles for assessing whether a registered design has been infringed are generally similar, but some differences can be noted.
The principal difference is that in New Zealand, there is no requirement to consider the viewpoint of the “informed user”. Instead, the eye is that of a customer, with the implication that the assessment of similarity takes place at the point of purchase. This may mean that the similarity of features which are relatively prominent when the article is in use, is not given greater weight than the similarity of other design features. In fact, where possible the comparison must be made between the alleged infringing article, and the representations of the registered design (see UPL v Dux  3 NZLR 135).
The law in New Zealand does not stipulate that more weight is to be given to similarities between the designs than to differences between them. New Zealand case law has established that the test is whether the article alleged to be an infringement has substantially the same appearance as the registered design.
While New Zealand law does not have an explicit requirement to have regard to the state of the development of the prior art base for the design, this requirement has been confirmed by case law. In Brand Developers v Ezibuy, Action Sports & Fitness and others NZHC 50, it was stated that the registered design has to be assessed looking both backward at the prior art and forward to the alleged infringement.
July 2016 - Penny Walsh