In a recent Federal Court decision, Hunter Pacific International v Martec Pty Ltd [2016] 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 user.
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 340171.
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 examiners alike.
If you are interested in current developments in designs law in Australia, you may wish to review our earlier articles on designs numbering and government response to designs review.
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