On 8 July 2016 The Hon Justice J V Nicholas handed down an infringement case (Hunter Pacific v Martec [2016] FCA 796) concerning a Registered Design for a ceiling fan hub and an allegedly infringing product (the Razor). The decision explored the contribution of individual features to the overall visual appearance of a design, while assessing the importance of similarities and differences between the Registered Design and the Razor.

The Razor was found to infringe the Registered Design based on placing particular importance on features which are prominent when viewing both articles as installed. Nicholas J found “significant and eye-catching similarities” that were unable to be overcome by the “obvious differences” in shape and configuration.

Statement of Newness and Distinctiveness

The case was significantly affected by the detailed statement filed in the design application which read:

Newness and distinctiveness is claimed in the features of shape and/or configuration of the hub of a ceiling fan represented in solid lines in the attached drawings. In assessing newness and distinctiveness, no regard should be had of the shape and configuration of the fan blades as represented in broken lines, nor the number of fan blades.

The fan-blades of the Razor were straight, as opposed to the Registered Design, which pictured curved blades. The cut-outs in the hubs reflected this difference, but were held to make little contribution to the overall appearance. While no further reasons were given for this assessment, it is apparent that the cut-outs appear only as a very minor feature in the assembled product consisting of hub and blades.

If the statement of newness and distinctiveness had not excluded the fan blades from the assessment, the cut-outs and blades may have been given more importance to the overall visual appearance than the cut-outs alone.

Similarities and Differences

Nicholas J, guided by Section 19 of The Designs Act 2003 (Cth) conducted a studied comparison of the Registered Design with the Razor. More interestingly, leaning on Lockhart J in Dart Industries1, the prior art was examined in comparison to both the Registered Design and the Razor. The guiding principle in this analysis was:

the greater the advance in the registered design over the prior art, generally the more likely that a court will find common features between the design and the alleged infringing article to support a finding of infringement.

As the Registered Design was considered significantly different to the prior art (and the expert witnesses agreed that there was freedom to innovate in the field), the similarities between the Razor and Registered Design were held to be even more important compared to the differences than already required by Designs Act.

Viewpoint and Informed User

Finally, the overall visual appearance was evaluated assuming an installed, complete ceiling fan incorporating a hub embodying the Registered Design as compared to the hub of the Razor.

The question of appropriate viewpoint is unresolved at higher instance,2 as the informed user in other cases approaching this problem has been considered to involve a wide variety of viewpoints, such as that of the purchaser, user and professional. It appears that the product in its intended installed position is the viewpoint favoured by Nicholas J in this case, leading to an attachment of particular importance to those features likely to draw the attention of the eye in that position.

Conclusion

This decision highlights the importance of the statement of newness and distinctiveness for practitioners and clients. In the authors’ view, the exclusion of the blades from consideration has heavily favoured the plaintiff. Nicholas J also highlighted the eye-catching nature of the similarities in the installed configurations of products embodying the Registered Design and the Razor.