EnforcementGrounds for a claim
What are the key causes of action?
During the term of registration of a design, 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 c or d; and
- authorise another person to do any of the things mentioned in points a) to e).
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 so as 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.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 in Australian design laws. These provisions allow for a person 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 covid-19. 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.
- 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 with only one in 2020 at the time of writing, this case being undefended, and another in 2019. Five hearing office decisions issued in 2018, zero in 2019 and two so far in 2020.
In the 2019 court case, GM Global Technology Operations LLC v SSS Auto Parts Pty Ltd, the designs related to automotive parts and allegations of infringement were met with a defence under Section 72 of the Designs Act 2003 that the allegedly infringing products were for the purposes of repair.
Under Section 72, use of a product that would otherwise infringe can be considered not to be an infringement if the product is a component part of a complex product and the use is for the purpose of the repair of the complex product so as to restore its overall appearance in whole or in part.
In this case, a vehicle manufacturer took action against an aftermarket supplier providing parts that, in addition to being used for repair, could also be used to ‘up-spec’ a vehicle to improve its appearance. The significance of this is that the parts used for genuine repair would be entitled to the Section 72 defence, while those used to ‘up-spec’ a vehicle would not.
This case shows that a heavy burden is placed on registered design owners to establish on the balance of probabilities that an infringer knew, or ought reasonably to have known, that the parts were not intended to be used for the purposes of repairs. Ultimately, the registered design owner was only partially successful as they could not establish that for most of the alleged infringements, the respondents knew, or ought reasonably to have known, that the end users were not using the products in question for the purposes of repair.