The decision of Gordon J in LED Technologies Pty Ltd v Elecspess Pty Ltd FCA 1941 (handed down in December last year but only recently available) provides food for thought on a number of issues arising under theDesigns Act 2003.
As part of the development of its commercial product, LED produced a series of hand drawn sketches of tail lights, which it provided to a manufacturer, who in turn used those sketched to produce CAD drawings for use in the production of the lights. Those CAD drawings were also used to produce the representations forming part of the design registrations. The respondents contended that in the circumstances, the manufacturer was either the sole person entitled to ownership of the designs or was jointly entitled along with LED. In rejecting this argument, Gordon J held that:
Authorship of a design is in the “person whose mind conceives the relevant shape, configuration, pattern or ornamentation applicable to the article in question and reduces it to visible form” … it is clear that Mr Ottobre [of LED] is the person who conceived the relevant shape, configuration and pattern of the Designs and reduced it to a visible form; “M” [the manufacturer] simply converted that design to an electronic form in order to facilitate the production process.
Her Honour also noted that even if the manufacturer was a co-author of the designs, as the design was produced for LED under contract, section 13(1)(b) of the Act would operate to give LED sole entitlement to the designs.
Clarity of Representations
The representations of the designs available from the electronic register of designs, which were also the representations attached to the certificates of registration, were faint and pink in colour. In addition to the pink drawings, a set of greyscale drawings which did not suffer from the same deficiencies, were held in the physical files relating to the designs as maintained by the Designs Office.
Ultimately, Gordon J found it unnecessary to decide whether the Register in respect of the designs was constituted by the electronically available representations, those available on file or some combination of the two. Her honour found that while not perfect, the pink drawings were sufficient for the designs to be reasonably clear and succinct, further noting that the electronic representations of the designs were capable of being magnified to an extent such that the designs appeared “not just with reasonable clarity, but with great clarity”.
Newness and Distinctiveness
Gordon J firstly rejected the submission of the respondents that the distinctiveness of a design is to be assessed by comparing it to the prior art base as a whole. Rather, the comparison to be made is between the design in question and any one design forming part of the prior art base. This assessment, involving consideration of whether the two designs are substantially similar in overall impression, is made from the perspective of the “informed user”, Her Honour stated that:
it is apparent that an informed user:
- is reasonably informed; not an expert but more informed than an average consumer;
- is an objective standard. However, expert evidence may still be adduced in court to assist the Court in applying the informed user concept;
- focuses on visual features and is not concerned with internal features or features that are not visible to the naked eye.
Gordon J concluded that none of the designs alleged to form part of the prior art base, when considered individually, included each of the visual features described in the statement of newness and distinctiveness accompanying the designs. Accordingly, the designs were sufficiently new and distinctive.
Having found that the products sold by the respondents were an infringement of the registered designs, Gordon J then considered the defence to an award of damages or an account of profits raised under section 75(2), on the basis of innocent infringement. While her Honour accepted that it would be inappropriate to impose a per se duty to check whether products are the subject of a registered design, “there will be circumstances where a secondary infringer should reasonably be expected to check”. In this case, the products and the packaging of the products sold by LED, included markings indicating the existence of design registrations, providing prima facie evidence that the respondents were aware of the registrations pursuant to section 75(4). This clearly illustrates the significance of appropriate product marking.
Interestingly, the respondents do not appear to have raised the right of repair defence made available under section 72 of the Act. This provision was introduced into the Designs Act 2003 for the very purpose of allowing aftermarket sales of motor vehicle components.
As her Honour held that the designs were both valid and infringed, any threat of infringement could not be said to be unjustified. Nevertheless, Gordon J considered the statements said to constitute such threats, including the statement made by LED that:
Since the lamps are similar in appearance to LED Technologies’ lamps, we are currently consulting our legal advisers regarding litigation against vendors of these lamps in order to protect our reputation and to protect consumers.
Perhaps surprisingly, her Honour stated that “(t)aken at its highest, it states that LED Tech was seeking legal advice. It makes no threat of proceedings for design infringement”, but did note that in Occupational and Medical Innovations Limited v Retractable Technologies Inc (2007) 73 IPR 312 a similar letter was held to constitute a threat under s 128 of the Patent Act 1990 (Cth).