Australia: Fraudulent Imitation Need not be Disguised: Polyaire Pty Ltd v K-Aire Pty Ltd

Last Updated: 19 July 2005
Article by Genevieve Wilkinson

If you hold a registered design under the old design registration system, a recent Australian High Court decision indicates that you may be entitled to greater protection than previously thought. The Australian High Court’s decision in Polyaire Pty Ltd v K-Aire Pty Ltd [2005] HCA 32 on 16 June 2005 clarifies that an infringement action for fraudulent imitation of a registered design need not establish that changes made to that design are for the purposes of dishonest disguise of the design. The decision reversed the Full Federal Court finding on this point.

This means that in considering a fraudulent imitation infringement claim the court must focus on whether or not a designer knew or is likely to have knowledge of a registered design and whether or not the second design is an imitation. The court does not need to consider whether or not differences between designs are intended to disguise the infringement. This more relaxed approach appears to be closer to the new broader infringement test in the Designs Act 2003.

Changes to the Designs Act

The appeal focused on the infringement provision of the Designs Act 1906 which deemed a person to infringe the monopoly in a registered design if, without the licence or authority of the owner, that person applies the design or any fraudulent or obvious imitation of it to any article in respect of which the design is registered. This provision no longer exists in the Designs Act 2003, which replaces ‘fraudulent or obvious imitation’ with a broader infringement test of 'substantially similar in overall impression'. However, designs already registered under the Designs Act 1906 will continue to be assessed under the infringement provisions of that Act.1

The design and the alleged infringement

The registered design (Polyaire Design) was for a grille for an air conditioner (Polyaire Grille). A designer was asked by one of the defendants to create a new design for an air conditioner outlet, that looked like other products in the market. He was instructed to include certain features that were part of the Polyaire Design. The new design (KA1 Design) included (despite small differences) a snap fit mechanism, control bars and blade ends including spigots. Unlike the Polyaire Design, the KA1 Design omitted a chamfered lip and vertical ribs on the outside of the frame. The KA1 Design was applied and released for sale. Polyaire complained about the KA1 Grille and a different grille (KA2 Grille) was released on the market by the defendants.

What is a fraudulent imitation?

In this case, the High Court applied the finding in Dunlop Rubber2 that a fraudulent imitation is an imitation which is deliberately based on a registered design. It may be less apparent than an obvious imitation, and yet when the two designs are closely scanned an imitation may be perceptible and an infringement found. However, even if the defendant set out to copy the plaintiff’s design and even if the defendant’s intention in adopting the differences between the plaintiff’s registered design and the accused article was to disguise the copying, there will be no fraudulent imitation unless the accused article is in fact an imitation or copy.

The High Court noted that this type of statutory fraud is somewhat removed from fraud at common law and the degree of moral turpitude or recklessness generally required for its establishment. This type of fraud is closer to equitable fraud which does not require that an actual intention to cheat must always be proved.

In Dunlop Rubber it was found that it was not necessary to find deliberate intention to steal the property of the owner of the registered design. A person may believe that they have altered the design perfectly honestly so as to make two different designs, but the design is still held to be a fraudulent imitation.

Earlier decisions

The trial judge Besanko J held, among other things, that the KA1 and KA2 designer had reason to be aware of the Polyaire Grille and to suspect that it was based on a registered design.3 He compared the products and determined that the KA1 and KA2 Grilles were a fraudulent imitation of the Polyaire Grille.

The defendant successfully appealed to the Full Federal Court, who found that the trial judge had erred in not considering whether the changes to the Polyaire Design were a dishonest disguise and consequently infringement had not been established.4 The full court found that a fraudulent imitation was a copy with differences which are both apparent and not so slight as to be insubstantial, but which have been made merely to disguise the copying.

The High Court’s decision

The High Court found that the full court decision was based on an extract of the High Court’s previous decision in Malleys v Tomlin5 which did not reflect the whole of the reasons in the case. Consequently, the full court erred by limiting the meaning of fraudulent imitation to instances of dishonest disguise.

The High Court approved the approach taken in Philips v Remington6 (Lehane J) to fraudulent imitation, which found that although changes often result from a conscious desire to come as close as possible to the registered design while avoiding infringement, particular changes may be introduced for other compelling reasons and there is no obvious reason why that should defeat an infringement claim. The court upheld the trial judge’s decision that the similar features between the designs created, the shape and the configuration which gave the Polyaire Grille its distinctive appearance.

Practical impact

If you think that your registered design has been imitated by a party who is likely to have knowledge of this registration, it is not necessary to show that changes to the design are merely to disguise the copying.

Conversely, even if you believe that you have altered another person’s design perfectly honestly so as to make two different designs, if you have based your design on a design registered under the Designs Act 1906 and the design is found to be an imitation or a copy, your ‘honest alterations’ will not protect you in an infringement action.


1. Section 156 Designs Act 2003.

2. (1931) 48 RPC 268.

3. Polyaire Pty Ltd v K-Aire Pty Ltd (2003) 226 LSJS 109.

4. K-Aire Pty Ltd v Polyaire Pty Ltd (2003) 60 IPR 512.

5. (1961) 180 CLR 120.

6. (1999) 91 FCR 167. Freehills acted for Remington in this case.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.