World of Technologies (Aust) Pty Ltd v Temp (Aust) [2007] FCA 114 (14 February 2007)
A recent decision by the Federal Court has served as a timely reminder to stakeholders to be wary when making any threat of infringement, awarding the respondent in World of Technologies Pty Ltd v Tempo damages to the value $213,059.96 for lost profits due to an unjustified threat of design infringement.
The Case included a rather involved supply contract review and ultimately revoked World of Technologies’ Australian Design Registration No. 304082
(see Figure 1) for a new bagless vacuum cleaner (later sold under the "Genius" brand – see Figure 2). But perhaps most significant was Jessup J’s finding that a solicitor’s letter to Tempo was an unjustified threat because the design was registered but not certified at the time the letter was sent.
In his judgement, Jessup J said:
"By the operation of s 77(3) of the Designs Act, since a certificate of examination had not been issued in respect of the applicant’s registered design at the time of its solicitors’ letter of 23 January 2006, the threats contained in that letter, to which I have referred in the previous paragraph, must be treated as unjustified."
The design in question was applied for on 16 June 2005 and later registered on 11 November 2005, receiving a registration number 304082. On 3 January 2006, the applicant applied for expedited examination and on 21 March 2006, Australian Design registration No. 304082 was certified.
However, almost two months prior to the certification, on 23 January 2006, solicitors representing World of Technologies sent a letter to Tempo alleging infringement, under Section 77 of the Designs Act 2003, of their Registered Design No. 304082, by the appearance on Tempo’s website of their "Onix" bagless vacuum cleaner. The letter also alleged misleading conduct contrary to Section 52 of the Trade Practices Act.
During the proceedings, Tempo did not deny that their Onix vacuum cleaner was similar to World of Technologies’ registered design; in fact, it was revealed during the proceedings that it was sourced from the same Chinese manufacturer. Rather, Tempo submitted that the Australian Design registration No. 304082 should be revoked because it was prior published and therefore not a registrable design within the meaning of the Designs Act 2003. Due to the amount of evidence supplied in support on this point, Jessup J agreed with the respondent and revoked the design.
"However, there are several respects in which I have held that the registered design was not distinctive when compared with the prior art base as it existed before the priority date. For that reason, I find that the design was not a registrable design within the meaning of Division 1 of Part 4 of the Designs Act. The respondent has applied for revocation on that ground, and the applicant, while not consenting to revocation, has not resisted it. I can think of no reason why I should not exercise the court’s jurisdiction under s 93(3)(a) of the Designs Act and order that the registration of the design be revoked."
The revocation of the design registration was, however, a separate issue to the claim of unjustified threat. Jessop J’s comments with reference to S77(3) tell us that even if the design was found to be valid, there would still be a case for an unjustified threat of design infringement because the threat was made before certification.
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