While Australia has had a new Designs Act for over four years now, the previous Designs Act 1906 still has a significant role to play in respect of designs registered under that act.
Caroma Industries Ltd v Technicon Industries Pty Ltd  FCA 1465 illustrates the breadth of the infringement provisions of the 1906 Act. As noted by Cowdroy J a design registered under the 1906 Act may be infringed by the application to an article of a design which is (i) the registered design, (ii) an obvious imitation of the registered design or (iii) a fraudulent imitation of the registered design.
In this instance, his Honour found that on first impressions Caroma’s registered design, in respect of a toilet pan, and Technicon’s alleged infringement were very similar, however:
the visual comparison undertaken by the Court involves both first impressions and later impressions. The Court accordingly observes that while the similarities between the Technicon pan compared with the registered design are initially striking, closer inspection reveals certain differences.
Cowdroy J concluded that the differences between the two meant that the alleged infringement did not “possess such a close resemblance to the registered design that it is ‘almost unmistakeable’” and therefore was not an obvious imitation.
On the question of fraudulent imitation, the Court noted that:
whether a product constitutes a fraudulent imitation of a registered design requires an examination of the alleged infringer’s state of knowledge of the relevant registered design … it is not necessary that the alleged infringer had actual knowledge of the fact of registration of the registered design, but merely that the alleged infringer had reason to believe or strongly suspect, or had wilfully disregarded the likelihood of such registration
In this instance, and in part relying on Technicon’s familiarity with the registered design system having sought design registration itself, it was held that Technicon ‘had reason to believe or strongly suspected’ that the design of the Trident toilet pan (the commercial embodiment of the registered design to which it had reference) may have been registered.
The Court further found that the Technicon pan “incorporates significant visual features of the registered design”, which combined with the finding of implied knowledge, led to a finding of fraudulent imitation and hence infringement.
This decision highlights the dangers of seeking to adopt or adapt a competitor’s product design and that lack of actual awareness of the existence of registered rights will not necessarily prevent a finding of infringement. Generally it will be preferable to be fully aware of all relevant design registrations in order to better design around the rights of others.