A recent decision of the Federal Court has indicated that the Designs Act 2003 (Cth) may create more favourable conditions for the enforcement of registered designs than previously thought.
In Hunter Pacific International Pty Ltd v Martec Pty Ltd  FCA 796 Justice Nicholas found substantial similarity between two designs with obvious differences by placing particular importance on that part of the designs which will contribute most to the overall appearance of the configured apparatus. Prior to the decision in Hunter Pacific the "new" Designs Act had received relatively little judicial consideration.
The decision has reinvigorated calls to register designs in Australia.
The Designs - to view the designs, click here.
Hunter Pacific International Pty Ltd is the owner of the Registered Design for a ceiling fan hub depicted in Figure 1. Martec Pty Ltd markets a ceiling fan in Australia known as the Martec Razor which is shown in Figure 2. Martec did not dispute the validity of the Registered Design but denied that the Martec Razor was infringing.
Infringement of a registered design
The question of infringement in this case was whether Martec had marketed in Australia a product which was substantially similar in overall impression to the Registered Design.
After referring to the test for substantial similarity in s 19 of the Designs Act, Justice Nicholas emphasised that it is the overall impression created by the two designs which is the critical measure of comparison. He cited with approval the finding of Foster J in Vinidex Tubemakers Pty Ltd v Griffen Brook Pty Ltd (1991) AIPC 90-839 in relation to the Designs Act 1906 test for "obvious imitation":
Clearly a balanced consideration is required, one that focuses upon the total impression created by the respective material, but does not ignore matters of detail, particularly where those matters appear readily on inspection.
Justice Nicholas applied a practical analysis in his comparisons of the two designs. He placed particular importance on the similarities in the lower hubs of the fan designs "because it is the lower hub to which the eye is likely to be drawn when an apparatus made to the design is installed in a ceiling as part of a complete ceiling fan and it is the base of the lower hub that will contribute most to the overall appearance of what will present as a sleek and elegantly configured apparatus."
Justice Nicholas acknowledged there were two main differences between the designs:
(i) the absence of any lower canopy in the Registered Design; and
(ii) the differently configured upper hub.
However, because of the angle from which the fans would be viewed, these differences were insufficient to displace the significant and eye-catching similarities that create an overall impression of substantial similarity.
This is despite his acknowledgement that the presence of the lower canopy in the Martec Razor's lower hub meant that the Martec Razor did not exhibit the same degree of simplicity and elegance of appearance as the Registered Design because it made the Martec Razor look "slightly heavier and bulkier than the Registered Design at least when viewed from 'side on'".
Broader Scope for Enforcement of Registered Designs
Justice Nicholas' interpretation of the test for substantial similarity suggests that there may more scope to enforce registered designs against articles which have obvious differences, but which have significant and eye-catching similarities. This will especially be the case where the similarities are in the dominant features of the registered design.
• Obvious differences in designs may not be sufficient to avoid infringement if the dominant features of the designs are substantially similar.
• The scope of registered designs may be broader than first thought.
• Designers should reconsider registration to protect new designs in light of the broader scope for enforcement.
Update – Martec have appealed this decision to the Full Federal Court. The date for the hearing of the appeal is not yet known.