Design infringement

At Dundas Lawyers^®, we understand that defending or enforcing of your business’s rights in registered designs can be critical for business success.  Infringement and intellectual property theft is on the rise in the modern digital landscape.  Dundas Lawyers^® has experience identifying, enforcing and defending design infringement matters in the Federal Court of Australia.

The value of registered designs

The registration of a design is an effective way to enforce commercial rights.  On registration, designers and manufacturers will be able to enforce registered design rights, conferred by the Designs Act 2003 (Cth) (Designs Act).  Section 5 of the Designs Act defines a design as “the overall appearance of the product resulting from one or more visual features of the product“.  A “visual feature” includes the designs shape, configuration, pattern and ornamentation.  To register a design with IP Australia, it must be “new and distinctive” when compared to designs that already exist in the prior art base.  Once the design has been examined and certified, the owner of the design with be granted various exclusive rights, including the right to make, import and sell products that utilise the design.

Establishing infringement of a registered design

The test for infringement of a registered design requires the Court to assess whether the alleged infringing product is identical or “substantially similar in overall impression” to the registered design.  Therefore, a person will infringe a registered design if they make, import, or sell products that use a design that is identical or substantially similar in impression to that of the registered design.

To establish infringement, a Court will consider the following factors to assess the substantial similarity in overall impression:

• the state of development of the prior art base;
• the disclosure of particular visual features in a statement of newness and distinctiveness;
• the amount, quality, and importance of parts of the design that are substantially similar in the context of the design as a whole; and
• the freedom of the creator of the design to innovate.

Dundas Lawyers acted for the Respondents, Specialty Packaging Australia Pty Ltd (Specialty Packaging), in the case of Multisteps Pty Ltd v Specialty Packaging Aust Pty Ltd [2018] FCA 587.  In this case, Multisteps Pty Ltd (Multisteps) commenced proceeding against Specialty Packaging and its director, Mr Ainslie, for the infringement of two (2) innovation patents and two (2) designs.  Specialty Packaging cross-claimed against Multisteps, challenging the validity of the designs.

It was alleged that the disputed designs were invalid because they lacked distinctiveness as at their respective priority dates.  In reaching a decision on the validity of the registered designs, the test for infringement was applied.  This test required the Court to assess whether the alleged infringing product is identical or “substantially similar in overall impression” to the registered design.  Jagot J ultimately found that the registered designs did not lack distinctiveness at their respective propriety dates because:

“Through the eyes of an informed user the designs would not appear substantially similar in overall impression“.

The Federal Court of Australia dismissed the crossclaim, stating that the registered designs owned by Multisteps were valid and that Specialty Packaging and Mr Ainslie had infringed the designs.

Disclaimer
This page contains general commentary only about design infringement.  You should not rely on the commentary as legal advice.  Specific legal advice should be obtained to ascertain how the law applies to your particular circumstances.

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Why choose Dundas Lawyers^®?

Having exerted Blood Sweat and Years^® since April 2010 we are the team you want on your side for the long term to act as the ‘bodyguard’ for your business to complete legal forensic investigations and case preparation.  Some of the reasons client’s choose Dundas Lawyers^® include:

• our Uncommon business acumen;
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• our Uncommon expertise forensic case preparation;
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• how we leverage our Uncommon Nous^® to provide client solutions.

Considering getting advice on a design infringement?

For a confidential, no obligation initial telephone call to find out how we can help your business gain an uncommon advantage in initiating or defending allegations of a registered design infringement in an Australian Court please phone our team on either 1300 386 529 or 07 3221 0013.

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