Justice Yates has considered the “informed user” test under the Designs Act 2003 (Cth), and the role of experts, in the Federal Court case of Multisteps Pty Limited v Source and Sell Pty Limited  FCA 743. Multisteps commenced proceedings alleging that Source and Sell had infringed its registered designs and certified innovation patents for certain produce containers.
Multisteps' patent and design rights in its produce containers
Multisteps owned several registered designs for produce containers (also known as “clamshell” containers) and was the patentee of two certified innovation patents for produce containers (one for a "produce container assembly" (the "first patent") and the other for an "improved produce container" (the "second patent")). Source and Sell sold three kinds of empty clamshell containers to fruit packers and Multisteps alleged that these containers infringed its registered designs and innovation patents.
Justice Yates held that only one of Source and Sell's clamshell containers infringed Multisteps' registered designs as it was substantially similar in overall impression. Despite each party calling an independent expert to assist the court on the design infringement issues, his Honour held that, for various reasons (see discussion below), the expert evidence was only of limited utility and as a consequence proceeded to evaluate the visual significance of the similarities and differences of the designs himself. In addition, his Honour held that Source and Sell had infringed the first patent (something which Source and Sell had previously admitted). However, it was held that that the second patent was not a patentable invention because it did not involve an innovative step when compared with the prior art base.
Consistent with the above findings, on 20 August 2013:
- the Court declared that Source and Sell had infringed Multisteps’ registered design and the first patent; and
- orders were made that claims one to four of the second patent be revoked.
The standard of the "informed user" under the Australian Designs Act 2003
In undertaking the assessment of the visual similarities and differences between the registered designs and the allegedly infringing designs, Justice Yates considered the standard of the informed user.
Section 19 of the Designs Act 2003 (Cth) sets out the factors to be considered in assessing substantial similarity in overall impression between designs. Section 19(4) states that the person making the assessment as to substantial similarity must "apply the standard of a person who is familiar with the product to which the design relates, or products similar to the product to which the design relates (the standard of the informed user)".
The UK Designs Act also applies the standard of the informed user. Decisions under the UK Act have held that the notional person making the assessment must not only be informed, but must also be a user [of products to which the design relates]. Several UK decisions, which have emphasised this dual character, have been quoted as providing guidance in Australian cases and were referred to in the Multisteps decision.
Australian "informed user" test more flexible than the UK approach
However, Justice Yates considered that the test in section 19(4) of the Designs Act 2003 (Cth) takes a more general approach and distinguished the UK authorities on the basis that in Australia, "the standard does not proceed on the requirement that the notional person be a user of the products in question – although, obviously, familiarity can be gained through use".1 His Honour held that section 19(4) did not provide a standard higher than familiarity.
Given the facts in Multisteps, his Honour held that "the standard of informed user is the standard of a person who is familiar with produce or similar containers".2 The user might be represented by a person who acquires produce containers for the purpose of using them in packing operations; by a producer of the packaged product, or a person engaged in packing operations on behalf of such a producer; or by a sophisticated purchaser at wholesale of the packaged product who has particular requirements in relation to storage, transport and display of the packaged product in such containers.3 According to his Honour, the "necessary and only qualification is that the person be familiar with produce or similar containers… [and] he or she will have an awareness and appreciation of the visual features of the produce container that serve its functional as well as its aesthetic purposes".4 However, the perceptions of the general body of retail consumers who purchase the product were not indicative of the standard of the informed user.5
This interpretation of the standard of the informed user represents a step away from previous Australian authority which considered the UK test provided guidance.
Limited utility of expert evidence
Each party called an independent expert to give evidence regarding the registered designs. His Honour held that the expert evidence suffered from justifiable criticisms and was only helpful in a limited way. His Honour concluded, the utility of the evidence of the witnesses was affected by various matters, including that the witnesses:
- did not undertake design comparisons consistently;
- placed differing weight on the significance of a design feature in different contexts;
- misapplied tests prescribed in the Designs Act; and
- favoured individual differences rather than considering the overall impression created by the registered designs.
As such, his Honour proceeded on the basis of his own evaluation of the visual significance of the similarities and differences between the allegedly infringing products and the registered designs.
Further clarification regarding the Designs Act 2003 (Cth)
There are few Australian cases which consider the relatively new Designs Act 2003 (Cth). The Multisteps case represents a step away from the UK authority's "dual character" test and holds that familiarity is the standard for the informed user test in Australia. This case also highlights the importance of carefully and properly briefing expert witnesses.