Case review by Magda Khalil
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On 5 July 2006 Review 2 Pty Ltd was registered as the owner of Design Registration No. 307708 in relation to ladies garments (“the Review Design”). This case considered whether Redberry Enterprise Pty Ltd (“Redberry”) infringed the Review Design and considered Redberry’s cross-claim that the Review Design was invalid.
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Infringement of the Review Design
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Section 71(1) of the Designs Act 2003 (Cth) provides that a person infringes a registered design if they make, import, sell or offer to sell a product, in relation to which the design is registered, if that product embodies a design that is substantially similar in overall impression to the registered design. Substantial similarity in overall impression is considered by reference to the standard of the informed user. Kenny J considered the meaning of the “informed user” and stated,
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“Plainly, the informed user must be a person who is familiar with the product to which the design in question relates. Moreover, the informed user must be a user of the class of product in question, in this case, ladies’ garments, or perhaps, more narrowly, ladies’ dresses. A designer or manufacturer of such garments is not an informed user merely because he or she designs or manufactures them. Further, this user is not simply an ordinary consumer: the user must be an informed user.”
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The designer of the Review Design, Ms Jayne Ellis, gave evidence oh behalf of Review. However, Kenny J found that as a designer, she was not appropriately described as an informed user. Redberry relied upon evidence from Ms Ella Mudie. Ms Mudie had varied experience as a retail sales assistant and had been employed as a fashion buyer and design assistant. Although Ms Mudie was not in the fashion industry at the time of trial, Kenny J found that she was in the nature of an informed user. Kenny J further found that whilst Ms Mudie said that she was not in the market for a dress of this kind since, it was understood not to be to her taste, she fell within the age range to which the applicants marketed their garments. Ms Mudie concluded that there were two very dramatic visual differences between the Review and Redberry dresses being the skirt sections and the colour and prints.
Kenny J then considered the significance of the similarities and differences between the Review Design and the Redberry dress in light of the prior art. She found that what differentiated the Review Design from the prior art was the shape and configuration of the Review Design skirt. She also pointed out that the prior art made it plain that pattern, including colour, can be an important visual feature, and the fact that the Review Design was registered in colour was relevant to determining the extent of the monopoly sought and granted.
Her Honour decided that the informed user would conclude that the design embodied in the Redberry dress created a different overall impression to the Review Design principally because of the difference in the shape of the skirts, combined with the differences in pattern, including colour. Accordingly, it was held that there was no substantial similarity in overall impression and therefore no infringement.
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Validity of the Review Design
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Redberry argued that the Review Design was not valid because it was not new and distinctive when compared to earlier published designs. This raised the question whether an informed user would consider that the Review Design was substantially similar in overall impression to prior art design.
Kenny J found that differences in the Review Design, including the shape of the skirt, and differences in pattern would lead an informed user to conclude that the design was different in overall impression, concluding that the Review Design was valid, but that the monopoly conferred by registration was closely confined.
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Damages
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Although it was unnecessary for Kenny J to consider the question of damages, she made some interesting comments on the issue of copying in relation to additional damages,
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“The evidence indicates that copying and adapting the designs of other designers is the accepted modus operandi of designers, including reputable designers, within the industry; and that it is through this process that fashion products are created. Whilst evidence of repeated design infringements might well be a relevant consideration on the question of additional damages, evidence of mere copying is not. The applicants did not make out a case for additional damages.”
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Conclusion
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| Kenny J found that the Review Design was valid but that Redberry had not infringed it. This case reminds us that while a design registration may be found valid, the monopoly conferred by registration can be closely confined by what has been disclosed in the prior art. |
