The Australian Broadcasting Commission reported on Friday that KeepCup – manufacturer of reusable coffee cups – is suing Gloria Jeans over alleged infringement of KeepCup’s registered design rights. In the report, Professor Andrew Christie from the University of Melbourne Law School contends that the lawsuit may have the potential to provide a pivotal test case for registered designs in Australia. Below, we explore the reasoning behind this opinion, and what registered design infringement actually means.

A search of the Australian Designs Data Searching (ADDS) database reveals that KeepCup are the current owners of five registered Australian designs – 363697, 349256, 349255, 334106, and 324241. Importantly, the question of whether a design right is infringed is independent of the appearance of the registered design owner’s own commercial product. In this case, therefore, it is irrelevant what KeepCup’s actual commercial cups look like.

Rather, the question of infringement is posed in relation to the registered design/s as it/they exist/s on the designs Register – and asks whether the allegedly infringing product embodies a design which is “identical to, or substantially similar in overall impression to, the registered design” (s 71 Designs Act 2003).

Whilst “identical to” is rather self-explanatory, the test of “substantially similar in overall impression” replaces the previous test recited in the Designs Act 1906 of ‘fraudulent or obvious imitation’. This was primarily due to dissatisfaction with the old infringement test – as courts would typically only find in favour of a registered designs owner in the event of almost exact replication. Indeed, of the 17 cases relating to infringement of registered designs which were before the courts in the seven years prior to 1993, infringement was only found in only two cases, one of which was overturned on appeal.

The new test of “substantially similar in overall impression” states that the courts must have regard for giving more weight to similarities, the prior art base, any ‘statement of newness and distinctiveness’ or in its absence the whole design, the qualities of any component part which is ‘substantially similar’, and the scope for potential innovation. Additionally, in applying each of these factors the courts must use the ‘standard of the informed user’.

Accordingly, should KeepCup v Gloria Jeans proceed to court, it will be interesting to what extent each of these factors plays in weighing any infringement decision.

And ultimately, this will be an interesting case for other registered design owners to follow – in order to make an appropriate assessment of the commercial value of registered designs, and to ensure their applications are as robust as possible.