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Design is a form of intellectual property right, concerned with the visual appearance of articles which have commercial or industrial use.^[1] A design infringement is where a person infringes a registered design during the period of registration. The definition of a design infringement differs in each jurisdiction, but typically encompasses the purported use and make of the design, as well as if the design is imported or sold during registration. To understand if a person has infringed the monopoly of the registered designed is assessed under each jurisdiction’s provisions.^[2] The infringement is of the visual appearance of the manufactured product rather than the function of the product, which is covered under patents. Often infringement decisions are more focussed on the similarities between the two designs, rather than the differences.

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Legislation

Australia

In Australia, a person infringes a registered design if a party manufactures and sells, uses or imports the same or similar design to the registered design without permission of the registered owner.^[3] This is held under s71 of the Design Act 2003 (Cth). Following is an extract of s71 of the Designs Act 2003 (Cth).

"(1) A person infringes a registered design if, during the term of registration of the design, and without the licence or authority of the registered owner of the design, the person:

(a) makes or offers to make a product, in relation to which the design is registered, which embodies a design that is identical to, or substantially similar in overall impression to, the registered design; or

(b) imports such a product into Australia for sale, or for use for the purposes of any trade or business’ or

(c) sells, hires or otherwise disposes of, or offers to sell, hire or otherwise dispose of, such a product; or

(d) uses such a product in any way for the purposes of any trade or business; or

(e) keeps such a product for the purpose of doing any of the things mentioned in paragraph (c) or (d)"^[4]

The Designs Act recognises two types of infringement: primary and secondary infringement. A primary infringement relates to s71(1)(a), where a person directs, causes or procures the product to be made by a third party.^[5] Secondary infringement relate to ss 71(1)(b), (c), (d), (e), where a person infringes a registered design if there is no licence or authority given.^[6] A parallel import of a registered design is allowed in Australia.^[7]

The Designs Act 2003 replaced the Designs Act 1906, having a particular change to the way design infringements are identified. Key changes included removing tests of obvious and fraudulent imitations. Also introduced, was that a certificate of examination must be issued prior to infringement proceedings. The test for infringement is significantly broader as it expressly requires an assessment of the similarities and differences between the registered design and the purported infringing design.^[8]

Testing Infringement

Infringement of a registered design is identified through ‘the eyes of an ordinary observer’. This means that the appearance of an accused design is seen to be an infringement, if the design is significantly similar, and one may purchase the accused design product thinking that it is the patented design.^[9] In assessing the overall similarity of designs, for example, s19 of the Designs Act 2003 (Cth) provides a list of factors to consider in testing infringement. This includes understanding the differences between designs rather than emphasising the similarities. More weight must be given to the similarities between two designs. If one aspect of a design is substantially similar, weight must be given to the importance of that aspect of the design. The decision maker must further take the point of view from the standard of a person who is familiar with the products, the informed user.^[10]

Audiences

Within design and patent law, experts are seen to be the primary decision makers in assessing the similarities and differences of designs. As infringement is judged from different audiences of the design, e.g. consumers and experts, the motivations for infringement are distinguished. Consumers note accused designs to be substitutes where they function in similar ways. To consumers the designs would be interchangeable.

The test for infringement of a design patent draws much more from trademark than from patent law. As the test evokes an audience of reasonable purchasers of the design or product, similar to that of the trademark test. As mentioned, infringement is judged “in the eye of an ordinary observer”. From this, the audience for the test of infringement is an ordinary observer who is placed in the position to determine the similarities of the designs. ^[11]

Enforcement

To commence enforcement proceedings, it must be decided if the Court will establish that the product is infringing the registered design, and if the design is a valid registration.The registered design owner can only consider enforcement proceedings once a certificate of examination has been provided. ^[12] To enforce design rights against an infringing designer, the owner of the registered design must initiate the process of examination. This is in line with the certificate of examination. A design Registrar will not grant a certificate of examination of the design is found to be invalid as there is no newness or distinctiveness to the design. The examination will consist of a comparison of the designs that existed prior to the lodgement of the design application.

Courts

Courts are an essential aspect in the enforcement of design infringement. Court appointed experts are beneficial to enforcement proceedings, as a panel of assessors such as patent attorneys, designers and engineers enhance the limited technical knowledge a judge may have in a certain area.^[13] Case management is supported by the Court to enable the most economic and efficient method to bring the infringement proceedings to trial.

Alternative Dispute Resolution

Alternative Dispute Resolution (ADR) can be a more effective way of resolving design infringement, as enforcement mechanisms are often not suited to the common disputes that arise.^[13] Arbitration and mediation are suitable for resolving intellectual property disputes, as most common disputes involve small claims for damages. ADR is more cost effective than litigation, therefore more attractive to smaller companies and individuals without the resources, time and funding to resolve cases in court.

References

^ Fitzgerald, Anne (2015). Introduction to Intellectual Property. Thomson Reuters. p. 83. ISBN 9780455233710.
^ Stephens Lawyers & Consultants. "Changes to Australian Designs Law" (PDF). Stephens Lawyers & Consultants.
^ "Designs Act 2003".
^ "Designs Act 2003".
^ Fitzgerald, Anne (2015). Introduction to Intellectual Property. Thomson Reuters. p. 93. ISBN 9780455233710.
^ "Designs Act 2003".
^ FPA Patent Attorneys. "Enforceability and infringement". FPA Patent Attorneys.
^ Condon, Wayne (2004). "New design laws: after nearly a century, Australia updates its registered design laws". Law Society Journal. 46 (2).
^ Oake, Robert (2011). "DESIGN PATENT PERSPECTIVE: The Ordinary Observer Test" (PDF). Intellectual Property Today.
^ Mccutcheon, Jani. "Designs, Parody and Artistic Expression — A Comparative Perspective of Plesner v Louis Vuitton" (PDF). Monash University Law Review. 41.
^ Fromer, Jeanne. "The Audience in Intellectual Property Infringement". Michigan Law Review. 112.
^ "Protecting your designs". Arts Law Centre Australia.
^ ^a ^b "ALRC 74 Designs" (PDF). Australian Law Reform Commission.

[1] Fitzgerald, Anne (2015). Introduction to Intellectual Property. Thomson Reuters. p. 83. ISBN 9780455233710.

[2] Stephens Lawyers & Consultants. "Changes to Australian Designs Law" (PDF). Stephens Lawyers & Consultants.

[3] "Designs Act 2003".

[4] "Designs Act 2003".

[5] Fitzgerald, Anne (2015). Introduction to Intellectual Property. Thomson Reuters. p. 93. ISBN 9780455233710.

[6] "Designs Act 2003".

[7] FPA Patent Attorneys. "Enforceability and infringement". FPA Patent Attorneys.

[8] Condon, Wayne (2004). "New design laws: after nearly a century, Australia updates its registered design laws". Law Society Journal. 46 (2).

[9] Oake, Robert (2011). "DESIGN PATENT PERSPECTIVE: The Ordinary Observer Test" (PDF). Intellectual Property Today.

[10] Mccutcheon, Jani. "Designs, Parody and Artistic Expression — A Comparative Perspective of Plesner v Louis Vuitton" (PDF). Monash University Law Review. 41.

[11] Fromer, Jeanne. "The Audience in Intellectual Property Infringement". Michigan Law Review. 112.

[12] "Protecting your designs". Arts Law Centre Australia.

[:0-13] "ALRC 74 Designs" (PDF). Australian Law Reform Commission.

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