Technicon has been unsuccessful in its appeal against the decision of Cowdry J reported in which the trial judge found that Technicon had infringed Caroma’s registered design. The Full Court decision in Technicon Industries Pty Ltd v Caroma Industries Ltd [2009] FCAFC 76 largely affirms the reasoning at first instance and in doing so gives approval to what appears to be a new approach to the question of infringement.
In Dart Industries Inc v Decor Corp Pty Ltd (1989) 15 IPR 403 Lockhart J referred to the principle that:
Small differences between the registered design and the prior art will generally lead to a finding of no infringement if there are equally small differences between the registered design and the alleged infringing article. On the other hand, the greater the advance in the registered design over the prior art, generally the more likely that a court will find common features between the design and the alleged infringing article to support a finding of infringement.
The Full Court in this case noted that the trial judge had found the design in suit to represented a clear advance over the prior art and accordingly:
his Honour held that it was necessary for Technicon to demonstrate a greater degree of difference between the Technicon Pan and the Design in order to establish that there had been no infringement. Contrary to Technicon’s submissions, the primary judge’s approach to the relevance of the prior art (at [30]) was orthodox.
This approach seems to go a step further than the principle enunciated by Lockhart J such that the scope of the monopoly of a design is not merely assessed in light of the prior art but defined by it. The decision suggests that, at least in the context of assessing fraudulent imitation, any impugned design which is closer in appearance to the registered design than the closest prior art must be an infringement.