Australia: Registering designs for new products can be a fan-tastic way to protect yourself

Last Updated: 22 August 2016
Article by James Neil and Rebecca Lobb

Businesses intending to sell products embodying a new design should consider registering that design with IP Australia, if they want to stop competitors from selling products with a similar appearance.

Your designer comes to you with a new design for a product. The design is like nothing you have seen before, and is sure to give your business an edge over its competitors. Your management decides that the product will be launched into stores in six months' time. The question is: how can you make sure your competitors cannot make products with a similar appearance, which is sure to kill your competitive advantage?

The certainty of a design registration

Except in those rare cases where the design is of such significant artistic merit that it qualifies as a "work of artistic craftsmanship", your business will lose the ability to enforce its copyright in the design once your business has made 50 units of the product. In those circumstances, it is therefore vital to register the design with IP Australia in order to stop competitors from copying it. While a design registration only gives you up to 10 years of protection, this will often be sufficient from a commercial perspective. It will enable you to stop competitors from making products that look like your design, even if (unlike copyright) the competitor did not actually copy your design, but came up with a similar design "by chance" (or so they say).

A recent decision of the Federal Court emphasises the potential value of a design registration to enforce your rights, even where an infringing design is not identical to your design registration (Hunter Pacific International v Martec Pty Ltd [2016] FCA 796).

In particular, even where your design registration and your competitor's product are not identical, and have some obvious differences, it may well still be possible to use your design registration to stop your competitor in their tracks.

The ceiling fan dispute

Hunter Pacific International is the owner of Australian certified design registration no. 340171 for a ceiling fan hub. Images of the design registration are shown. ( click to view)

Martec Pty Ltd imported and sold a ceiling fan under the brand name Martec Razor. Some images of the Razor are shown. ( click to view)

Hunter commenced proceedings in the Federal Court against Martec alleging that the Razor infringed its design registration.

Key considerations in determining design infringement

The key question for the judge, Justice Nicholas, was whether or not the Razor was "substantially similar in overall impression" to the design registration "on the basis of a visual comparison of the shape and configuration" of the design registration and the Razor.

In answering this question, the Court must give more weight to similarities between the registered design and the allegedly infringing product than to the differences between them. In addition, the following factors must be considered:

  • the state of the development of the prior art (ie. how similar is the design registration to other designs which have come before it);
  • any visual features identified in a "statement of newness and distinctiveness";
  • the amount, quality and importance of features that are substantially similar; and
  • the freedom of the creator of the design to innovate (in the sense that, if some aspects of the design are unavoidable in order to achieve a particular practical result, those aspects will take on less importance).

In making this comparison, the Court must apply the standard of the "informed user" - a notional person who is familiar:

  • with the product (or similar products) to which the design relates; and
  • with the design registration and the infringing product based on a "careful and deliberate" visual inspection.

In this case, Justice Nicholas found that the informed user "should also be taken to be a person who has an understanding of the manner and extent to which the design of a ceiling fan hub is dictated by function".

By no means identical, but still an infringement

As can be seen in the images above, the differences between the Razor and the design registration included:

  • the absence of any lower canopy in the design registration and the differently configured upper hub;
  • the shape of the cut-out apertures;
  • the differences in the degree to which the upper surface of the lower motor covers slopes; and
  • the flatness of the bottom surface of the lower motor covers.

However, Justice Nicholas found that the informed user would perceive these differences as "minor, and as not having any significant impact on the overall visual impression conveyed by each of the two designs". He noted that he was required to place greater emphasis on the similarities between the Razor and the design registration, as they would be appreciated by the informed user, which Justice Nicholas found were many.

Interestingly, he also placed emphasis on the fact that the similar aspects of the Razor and the Design Registration were those that would be viewed by a person when each ceiling fan hub was installed in a ceiling as part of a complete ceiling fan. Accordingly, these were the features that would contribute most to the overall impression of the designs.

Justice Nicholas found that the Razor was substantially similar in overall impression to the Design Registration, from the perspective of the informed user, and therefore infringed the Design Registration.

Registering your design - it's worth serious consideration

This case highlights the benefit of having a registered design, in appropriate circumstances, and therefore being able to enforce your rights as the owner of the design, even where an infringing product is not identical to your registration. If you do not have a design registration, and you are not protected by copyright, it would probably be necessary to bring a passing off or misleading conduct style claim in relation to the infringing product. However, that would require you to establish that you have a protectable reputation in your design, which can be difficult to make out in some circumstances. Importantly, it is not necessary to establish such a reputation if you have a registered design.

A design registration, however, will not always be the most appropriate form of protection. For example, if you think that your product has a high artistic value, you should obtain legal advice before applying to register the design of the product, as you may be better off relying on copyright protection.

If you would like advice as to whether you should register a design, our assistance in registering a design or would like to enforce your rights in an existing design registration, please get in touch.

RELATED KNOWLEDGE

Clayton Utz communications are intended to provide commentary and general information. They should not be relied upon as legal advice. Formal legal advice should be sought in particular transactions or on matters of interest arising from this bulletin. Persons listed may not be admitted in all states and territories.

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

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

Authors
Similar Articles
Relevancy Powered by MondaqAI
ClarkeKann Lawyers
 
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”

Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
ClarkeKann Lawyers
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
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
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions