Most attempts to rely on actions under the misleading and deceptive conduct provisions of the Trade Practices Act or Australian Consumer Law or the tort of passing off to prevent copying of product designs have been unsuccessful, at least where the knockoff products bore differentiating brands from the original. The recent Full Federal Court case of Bodum v DKSH Australia Pty Limited (Bodum), which found that copying a plunger design was misleading and deceptive conduct, has been hailed by many as indicating that the tide is turning in favour of designers.
However, the Bodum decision involves a relatively unique set of facts, in particular a product knockoff which was not clearly branded on the product when displayed for sale. Given the history of such actions in Australia it is unlikely to have any impact on design knockoffs which are properly branded, which are likely to continue to be permitted.
The "general rule" of unfair competition and knockoff designs
Early passing off cases had protected product designs from copying, including a "blue dolly" laundry product1 and a lemon-shaped bottle for lemon juice, regardless of branding.2 Subsequently, a long line of cases have refused protection in Australia under the tort of passing off or the misleading and deceptive conduct provisions of the Trade Practices Act (TPA, now replaced by the Australian Consumer Law) for a variety of product designs, including rustic furniture3, Doc Martens boots4, and triple-headed rotary shavers5, and other products, provided the knockoff product bore a different brand to the original, even where the brand was virtually invisible,6 as Courts have generally found branding differences alone sufficient to avoid confusion between knockoff products and originals.
It was against this background that Bodum commenced proceedings against a knockoff plunger design.
Bodum v DKSH
Bodum has since the 1980s sold a "Chambord" plunger in the following design.
click here to view image.
A rash of similar products were released by competitors. Bodum took action against some of those competitors, including commencing proceedings against DKSH, who offered a similar plunger under the brand "EUROLINE":
click here to view image.
Bodum's plunger was branded with the BODUM mark. The packaging of Bodum's plunger bore the BODUM mark, and the packaging of DKSH's plunger bore the EUROLINE mark. However, DKSH's plunger itself was unbranded, and the evidence showed that coffee plungers were typically displayed outside their packaging for sale.
Bodum was unsuccessful in the first instance against DKSH. It appealed to the Full Federal Court. The majority of the Full Federal Court found that DKSH's product was likely to mislead or deceive consumers in breach of the TPA on the basis that:
- branding on the packaging was not sufficient to differentiate the plungers, which were often offered for sale without packaging (so consumers did not see the EUROLINE mark), particularly where customers sought out the product, not the packaging;
- EUROLINE mark was not sufficiently well known to displace the likelihood of confusion with the Bodum plunger;
- Bodum had on the evidence demonstrated that Bodum had developed a reputation in the plunger design separately from the BODUM mark, including because Bodum had heavily promoted that design apart from the BODUM mark, or by minimal reference to that mark. The Court also noted that the individual features of the Bodum plunger were distinctive.
However, in view of the previous cases regarding knockoffs, the Bodum decision is unlikely to extend protection against knockoffs beyond those which are either not properly branded with differentiating branding or which are typically displayed apart from that branding (for example, unbranded goods sold outside the pack).
Alternative protection options
Designers are often forced to rely on "unfair competition" type protection for designs in Australia because the designer did not obtain statutory protection under a design registration to start with, or because the designer has already enjoyed a statutory monopoly, which has since expired. Because designs can only be registered in Australia if they are "new" (that is, not available in Australia or published anywhere in the world), design registrations are not available once a product is on the market. There is no unregistered design right protecting designs from copying under Australian law.7 Furthermore copyright protection is not available under Australian law once a design has been industrially applied, other than for works of artistic craftsmanship.8 As a result, many designers have turned to unfair competition law as their only hope of redress. However, despite Bodum, it would not be wise for designers to rely on unfair competition as a catch-all solution to knockoff designs, as knockoffs which are cleary branded on the product will almost certainly continue to escape liability. The safest approach continues to be registration of designs where possible. Extension of a registered design monopoly by the back door through actions for misleading or deceptive conduct or passing off are unlikely to be a reliable means of protection once a design registration has expired.