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 fandispute

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.