(2 lens combination)
Venue: Full Federal Court
Judges: Emmett, Besanko and Jessup JJ
The Main Design Issues
Does the Designs Act 2003 change the manner in which a court is to have regard to the state of the development of the prior art base?
No, there is nothing in the wording of the report of the commission set up to investigate the 1906 Act that would suggest that there was anything wrong with the approach developed under the 1906 Act.
Does the Designs Act 2003 alter the task of the Court to compare Designs individually with each relevant piece of prior art?
No, it is not permitted to mosaic or produce a hypothetical amalgam of a number of prior designs in order to defeat the registration of the design in issue. That is impermissible under the Designs Act 2003.
LED Technologies is the registered owner of designs 302359 and 302360. The first relates to an LED arrangement with two lenses. The second relates to an LED arrangement with three lenses.
Each of the designs contained a "statement of newness and distinctiveness" that related to clip in lenses, a base for taking a variety of lenses and the absence of visible screws.
LED sought injunctions and damages against a number of Corporate Respondents for infringement by the distribution and sale of "Condor" products. The Corporate Respondents denied infringement and cross-claimed for revocation of the designs.
This matter also involved Trade Practices claims. However, I won't discuss those for fear this post will become too complex. Some other principles such as who can qualify as a joint tortfeasor are also discussed in this case, but won't be discussed in this post.
It was necessary for the Court to determine, inter alia:
- whether the register should be rectified under s 120 (1) of the Designs Act 2003 because the designs were invalid as the representations were unclear and the monopoly lacked certainty
- whether the register should be rectified under s 120 (1) of the Designs Act 2003 because the designs were not "new and distinctive", but were "substantially similar in overall impression" to a design that forms part of the prior art base
- whether the Corporate Respondents Condor products infringed the designs and, if so, whether certain parties were joint tortfeasors in relation to the infringing acts
These were printed with pink ink and filed in response to an objection by IPAustralia that five copies of the representations weren't originally filed, as required by the regulations.
In order to be valid, a registered design must be "reasonably clear and succinct". That means that the design must have reasonable clarity without the need for a prolonged or complicated series of deductions.
As set out in LJ Fisher and Company Ltd v Fabtile Industries Pty Ltd (1978) 1A IPR 565, if the design appears unclear, persons familiar with such articles and with methods of applying designs to them can provide evidence. Ultimately, however, it is for the Court to rule on the meaning of a design.
Regarding the dual lens design, the Corporate Respondents and the directors said that it was not clear that the lenses were square or rectangular. But their honours said that representations must be considered as a whole and it was quite clear that the lenses were square.
Her honour, the primary judge, noted that it was possible, within limits, to reproduce the representations at a greater magnification then would first be displayed on the computer screen. This is true. As anyone who has searched the Designs Register will know, if you click on the initial smaller image, you're presented with a larger image. Her honour said that when the representations were so magnified, the details and specifications of each of the designs appeared "with great clarity".
Their honours said that there was no error in the primary judge's conclusion that the representations were reasonably clear and succinct.
The Corporate Respondents asked the primary judge to consider a number of distinctions between the prior art base and the designs. These were the absence of visible screws, the different visual features of the rear or base views of the designs; the "cut-out" or "recess" at the end of a lamp; and the sloping, rounded mounting brackets surrounding the lens. These features were of considerable importance to the primary judge's considerations.
The primary judge said that the question she needed to determine was whether an "informed user" would consider that a design with these distinct features was substantially similar in overall impression to a design that formed part of the prior art base for the design. In her opinion, such a user would not consider either design to be substantially similar in overall impression to a design that formed part of the prior art base for the designs.
The corporate respondents argued that distinctiveness was to be assessed by comparing the design in question to the prior art base as a whole. The primary judge rejected this argument. She held that the design must be compared to each relevant piece of prior art.
In the appeal, the Corporate Respondents said that the primary judge had made two errors. Firstly, she did not have regard to the state of development of the prior art base as required by the Designs Act 2003. According to them, one of the purposes of the requirement of "newness" and "distinctiveness" was to make it harder to obtain registration, not easier. A design by design comparison would make it easier to qualify for registration. Thus, the Act should be read as requiring an examination of the prior art base as a whole. Secondly, she erred in that she did not place sufficient weight on the Statement of Newness and Distinctiveness in the designs.
Their honours rejected the first submission.
The point was made that the scope of a registered design must be determined with reference to the background of the prior art at the priority date and questions of infringement and novelty or originality are connected (Dart Industries Inc v Decor Corporation Pty Ltd (1989) 15 IPR 403).
Small differences between the registered design and prior art will generally lead to a finding of no infringement if there are equally small differences between the registered design and the alleged infringing article. But the greater the advance in the registered design over the prior art, generally the more likely common features will be found to support infringement (Kevi A/S v Suspa-Verein UK Ltd  RPC 173).
The Australian Law Reform Commission (ALRC) in their report which formed the basis of the Designs Act 2003 made it clear that this principle was to be embodied in that act.
Their honours conceded that there had been a number of changes to the test for the validity of a design. But they did not think that the extent to which the court is to have regard to the state of development of the prior art base was one of those changes. Emmett J pointed out those passages in the ALRC report in which prior art base developments are discussed. Those passages suggest that the commission was not recommending a change in that regard.
Their honours also said that the primary judge was correct in that the task was to compare the designs individually to each relevant piece of prior art. Sections 16 (1) and (2) refer to a comparison between the design in question and "a design ...". Section 19 (1) refers to a comparison between a design and "another design".
They said that the corporate respondents were supporting an approach that involved "mosaicing". That is impermissible under the Designs Act 2003.
Their honours also rejected the second submission.
LED's registered designs contained a Statement of Newness and Distinctiveness. Such a statement is intended to draw attention to those features of the design which the owner believes provides the necessary level of "newness" and "distinctiveness" for registrability. In this case, the statement referred to clipping lenses and the absence of visible screws.
The Corporate Respondents contended that the only visual feature of the designs identified in the statements as "new" and "distinctive" is the absence of visible screws. So they argued that consideration should be confined to this matter and that there are other designs forming part of the prior art base which have no visible screws.
Their honours pointed out that the Statement of Newness and Distinctiveness is just one of the matters which must be considered when assessing distinctiveness. They said that even if one restricts the particular visual feature identified in the statement to the absence of visible screws that is only one matter which must be considered under sections 19(1) and (2). Assuming it is a feature that relates to only part of the designs, it is still necessary to consider the designs as a whole. In doing so, they agreed with the primary judge that each of the designs was new and distinctive.
The test for distinctiveness for validity purposes is the same as the test for infringement. That fact has broadened the scope of protection afforded by the Designs Act 2003.
Some rules set out by their honours were:
- The extent of difference required to make a design distinctive depends on the state of development of the relevant prior art base. A more developed prior art base will mean that smaller differences will be sufficient for a finding that there is no substantial similarity.
- The comparison between the alleged infringing product and the designs is to be made in the context of the whole appearance of the designs.
- Greater weight is to be given to distinctive features than to other parts of the design, although still in the context of the whole appearance of the designs.
- In determining whether a design is infringed, the court must give more weight to similarities between the designs than to differences between them.
- First impressions are important when comparing a registered design with an allegedly infringing product.
The Corporate Respondents said that the primary judge's reasoning was too generalised and had no regard to the prior art base from the perspective of the informed user.
Their honours rejected that and pointed out that the primary judge had referred in detail to the various matters in section 19. In particular, the primary judge had referred to the need to consider the state of development of the relevant prior art base through the eyes of an informed user.
The products embodying the designs being compared were "substantially similar in overall appearance" according to both the primary judge and their honours. Both had one base with rounded corners, an opening for each lens of similar shapes with the shapes in the same configuration and the same number of mounting holes for the screws. The holes were in the same position. A witness had conceded that the infringing products were much closer to the LED designs than they were to LED's single-lens LED lamp that was part of the prior art base.
Thus, the full court agreed with the primary judge that the Condor products infringed LED's designs.