EnforcementGrounds for a claim
What are the key causes of action?
During the term of a design registration, the registered owner has the exclusive right to:
- make or offer to make a product, in relation to which the design is registered, which embodies the design;
- import such a product into Australia for sale, or for use for the purposes of any trade or business;
- sell, hire or otherwise dispose of, or offer to sell, hire or otherwise dispose of, such a product;
- use such a product in any way for the purposes of any trade or business;
- keep such a product for the purpose of doing any of the things mentioned in points (3) or (4); and
- authorise another person to do any of the things mentioned in points (1) to (5).
Infringement proceedings can be based on a violation of any of the above rights, with the exception being where the product is a component part (spare part) of a complex product and the use is for the purposes of the repair of the complex product to restore its overall appearance in whole or part.Procedures
What enforcement procedures are available?
Enforcement of design rights in Australia is via an infringement action before the Federal Court of Australia.Remedies
What remedies are available?
In Australia, remedies for infringement of a registered design include injunctions, damages or an account of profits.
Additional damages may be awarded having regard to the flagrancy of the infringement.
Unjustified threat provisions also exist that allow a threatened party to obtain a declaration that the threats are unjustified, an injunction against the continuation of the threats, and recovery of damages.Enforcement time frame
What are the time frames for the resolution of enforcement actions for registered and unregistered rights?
An enforcement action for infringement of a design registration is done with the Federal Court of Australia. Timing can vary, particularly at present due to the covid-19 situation. Two recent examples are as follows:
- PositiveG Investments Pty Ltd as Trustee for the PositiveG Trust v Li ( FCCA 2548 (18 August 2020)): proceedings commenced on 6 December 2019. The case was undefended and heard on 14 August 2020, with the judgment delivered on 18 August 2020; and
- GM Global Technology Operations LLC v SSS Auto Parts Pty Ltd ( FCA 97): the case was initiated in July 2015 and properly defended. It was heard over multiple days on 16 to 25 October 2017 and 19 to 21 December 2017. The main judgment was issued on 11 February 2019 and final costs orders were issued in December 2019.
What key cases from the past 18 months should rights holders be aware of?
Design cases are not common in Australia.
Key Logic Pty Ltd v Sun-Wizard Holding Pty Ltd  FCA 208 is notable in being the first Federal Court decision as an appeal from a decision of the Registrar of Designs.
This case turned on an email containing images of the design sent to a Certified Installer Network before the filing date of the application. The email was ultimately considered confidential and therefore did not form part of the prior art base.
In the hearing office decision Aristocrat Technologies Australia Pty Limited  ADO 1, a formalities objection on the grounds of disclosure of multiple products was upheld based on the application in question disclosing four individual gaming machines when the title of the application was ‘a bank of gaming machines’. The objection arose as the machines were not shown to be connected in any way. This case shows the importance of the title of an application and it being an accurate reflection of the representations.