In a recent Federal Court decision, Hunter Pacific
International v Martec Pty Ltd  FCA 796, the Hon.
Nicholas J found that importation and sale of Martec's Razor
ceiling fan (Razor) infringed Australian Registered design No.
340171 (AU 340171).
For comparison, corresponding images of AU 340171 and the Razor
are shown below.
Given that the two designs were not identical, the question of
infringement fell on whether the two designs were substantially
similar in overall impression. Consequently, the
considerations outlined in Section 19 of the Designs Act 2003 are
to be applied. These considerations include: giving more weight to
similarities than to differences, having regard of the state of
development of the prior art, having regard to any features
identified in the statement of the newness and distinctiveness,
having regard to the importance of the features that are
substantially similar, and having consideration for the freedom for
the creator to innovate. The person applying these factors must
also have regard to the standard of the informed user. In the
present case, that standard is to be applied by the Court.
The Court heard from two expert witnesses, each giving reasons
why they did, or did not, believe the Razor product was
substantially similar in overall impression to AU 340171. The
expert witness for the Applicant had a background in Industrial
design whilst the expert witness for the Respondent had an
engineering background. Not surprisingly, the Applicant's
witness considered the designs to be substantially similar in
overall impression and the Respondent's witness considered the
differences between the two designs to create a different overall
impression. It was not mentioned whether the Court believed either
witness to be representative of the standard of the informed
The Court then made an assessment of the state of the
development of the prior art by reviewing eight different ceiling
fan designs which were provided by the Applicant's solicitors.
This review revealed that substantial variations in most aspects of
ceiling fans designs were possible and that the creator of ceiling
fans designs had significant freedom to innovate.
Nicholas J then made his assessment by comparing similar images
of the Razor product to AU 340171 taking into consideration the
Section 19 factors. The Court advised that when making a
comparative assessment, it is the overall impression that is
important and that there is no place for precise mathematical
measurements, therefore somewhat dismissing the opinion of the
Respondent's witness. Furthermore, assessing substantial
similarity is not done by ignoring matters of detail, but rather by
assessing the impact of particular visual features, including
matters of detail.
With this in mind, the Court found that the generally sleek and
flat lower hub and the general shape and scale of the upper
concentric hubs (A) of the Razor fan were substantially similar in
overall impression to the corresponding features in AU 340171. The
lower hub is especially important because the eye is likely to be
drawn to this feature when the ceiling fan is installed and will
therefore make most contribution to the overall impression of the
design. The lower canopy (B) atop the lower portion of the razor
design is the main visual difference between the designs. In the
Court's opinion, however, the informed user would perceive the
inclusion of the lower canopy and other minor differences to be
only minor and not make any significant difference in overall
impression conveyed. Accordingly, Nicholas J found that the Razor
product to be substantially similar in overall impression to AU
It is encouraging for present and future Australian design
Registration holders to see an actual finding for design
infringement under the 2003 Act, especially for designs that are
not identical. It is unfortunate, however, that the Court did not
take this opportunity to specifically discuss the application of
the dashed lines features present in AU 340171 in the context of
infringement, as uncertainty surrounding the scope of dashed lines
features under the 2003 Act continues to vex both applicants and
The Ugg boots case revolves around who holds the trade mark rights to the word 'Ugg' in relation to sheepskin boots.
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