The test of ‘substantially similar in overall impression’ in section 19 of the Designs Act 2003 (Cth) is stronger than the test of ‘fraudulent or obvious imitation’ in Designs Act 1906 (Cth).
Despite the increased celebration of product design, the law protecting designs remains amongst the least utilised of all the registered intellectual property regimes. This stems in part from the ineffectual protection offered to designs under the old Designs Act 1906 (Cth) whereby the narrow ‘fraudulent or obvious imitation’ test for infringement rendered design registrations ‘always valid, never infringed’. The design regime was overhauled under the auspices of the Designs Act 2003 (Cth) which introduced a new test of infringement being for products identical or ‘substantially similar in overall appearance’. With reference to the few cases in this area this post will examine to what extent the new test for infringement provides more robust rights for the registered design owner.
Under section 30 of the old Act, a person infringed a design if they imported, sold or hired an article which was a ‘fraudulent or obvious imitation’. The Courts tended to view any feature remotely functional as not protectable, and thereby only ornamental elements were guaranteed protection. Such a restrictive and narrow interpretation to infringement resulted in effectively only exact copies being infringements and there was a growing concern that this view was odds with valued design ethos such as ‘form ever follows function’ and ‘ornamentation is crime’.
The ‘high water mark’ of the narrow approach was the case of Firmagroup Australia Pty Ltd v Byrne and Davidson Doors (Vic) Pty Ltd. The applicant, Firmagroup, had registered a design for a door handle and lock combination for a sliding garage door and the respondent made a ‘substantially similar’ combined handle and lock. Both are shown in Appendix A. In the appeal to the High Court, the joint judgment agreed with the trial judge that despite the respondent consciously adopting the ‘salient features of [the] design, there was nevertheless no infringement as the features copied by the respondent were “general functional features’’’. Accordingly, seemingly negligible differences in the respondent’s article such as it being ‘more squat’ or having a different ‘angularity of the recess’ were enough to render it non-infringing. In a nonsensical result, the Court ultimately considered the respondent’s article itself was capable of design protection.
A similarly meticulous inspection into the differences of the alleged infringing article was undertaken by Lockhart J in the case of Dart Industries Inc v Décor Corporation Pty Ltd involving competing lettuce crisper products. After conceding that on ‘first impression there are obviously similarities’ his Honour then proceeded to expound the differences with the ultimate finding that the ‘respondent’s article plainly involves no application of the design itself’.
A new regime
In response, the Australian Law Reform Commission (‘ALRC’) published a major review of designs law in 1995 recommending among other measures a new test for infringement. Echoing the concerns of designers, the report noted:
Design is an integral part of manufacturing and marketing but designs law tends to treat it as a minor cosmetic aspect of a product. For designers and manufacturers this mismatch [has] been the source of much dissatisfaction over many years.
The resulting amendments have served to offer greater protection to the design owner by codifying a broader test for infringement and removing any element of subjective intention by the infringer. Specifically, in addition to establishing the ‘substantially similar in overall impression’ infringement test, section 71(3) of the Designs Act 2006 directs the Court to consider certain factors specified under section 19 when assessing infringement.
The most central factor is found in section 19(1) which states the Court ‘is to give more weight to similarities between the designs than to differences’. Application of section 19(1) can be seen in the Full Federal Court case of Keller v LED Technologies Pty Ltd which provides a stark contrast to the cases of Firmagroup and Dart Industries.
The registered design was for rear car light products as shown in Appendix B and in coming to a finding of infringement by the respondents’ products (one example is also shown in Appendix B) the Court considered the whole appearance of the designs rather than focussing on the differences between them. Using the ‘substantially similar’ test the Court found that if the overall visual appeal of a product and the design are similar then a list of differences between them will not suffice to avoid infringement. The Court noted:
Section 19(1) is a mandatory direction to the Court. Under s 19(2), the state of development of the prior art base is a mandatory consideration but the direction is different from that in s 19(1), in that the Court is to have regard, or particular regard, to the various matters mentioned
A similar result was handed down in the most recent design case of Multisteps Pty Limited v Source and Sell Pty Limited concerning plastic packing fruit punnets containers. While hardly products lending themselves over to design flair given their high utilitarian purpose, the Court was nevertheless again able to find infringement in one of the three products in question.
After summarising the section 19 factors Yates J stated that:
What this shows is that, although the test is based on impression, it is not based merely on a casual comparison between designs for a given article. There needs to be a studied comparison based on the prescriptions of s 19 of the Designs Act
Yates J then went on to consider the factors in section 19 in some detail, and in particular, on the point of the similarities and the differences, he said:
Notwithstanding that there are differences in visual features between the design of the Kumato container and RD 6, I am persuaded that the two designs are substantially similar in overall impression…
It is not clear precisely how each one of the factors contributed towards the finding, however, the assumption has to be that in the light of cases such as Firmagroup and Dart Industries decided under the old Act that the decision was only possible using the substantial impress test and the factors of the 2003 Act.
After the ‘similarities rather than differences’ factor of section 19(1), the standard of the informed user factor of section 19(4) has proven to be helpful to the Courts. Consider the products car taillights or plastic punnets concerning the cases of Keller and Multisteps, respectively. To a laymen or uninformed user, the infringing taillights in Keller would have appeared very similar indeed, and likewise, the plastic punnets in Multisteps, however, the courts were able to put themselves in the position of the informed user.
In a another factor under section 17(2)(b), the Courts are now also to have ‘particular regard’ for the statement of newness. Under the old regime, the courts were not obligated to consider particular aspects of the design, and this may have been a reason why few design registrations claimed properly worded ‘statements of monopoly’, as they were then called. In the case of Rosebank Plastics Pty Ltd v Duncan & Wigley Pty Ltd while the ‘stackhat’ design for bike helmet had an innovative shape and ventilation system it did not specifically claim these in its bland statement on monopoly and this contributed to a finding of non-infringement despite the competing helmet containing the salient features. This case can be contrasted with Keller where the statement of newness greatly assisted the trial judge (with whom the Federal Court agreed) in assessing particular features, such as no visible screws.
The other factors contained under section 19 will also no doubt show to assist in strengthening the rights of design owners, however, at this stage there remains little judicial interpretation. On this point, it is worth mentioning that another factor the Court must now have regard to is the freedom of the creator of the design to innovate. And section 19(2)(a) mandates the Court have ‘regard to the state of development of the prior art base’ when assessing infringement, however, this is said to merely codify the position under the old Acts.
Removing subjective intention
A welcomed change under the new Act is the removal of the subjective intention on the part of the infringer. While this element did not require the level of moral turpitude or recklessness of fraud at common law, to prove ‘fraudulent imitation’ under the old Act still required showing the alleged infringer’s design had ‘knowingly, consciously or deliberately been based on…the registered design’. A recent case evidencing how the subjective intention can potentially allow would be infringers to escape is Gram Engineering Pty Ltd v Bluescope Steel Ltd. In that case, decided under the old provisions, the product shown in Appendix C was not a fraudulent imitation according to Jacobson J as it was not ‘deliberately’ copied. While many have criticised this decision, it is now a moot point as cases of infringement concerning pre-2003 registrations seem unlikely.
Taken together, the case law to date concerning the new ‘substantially similar in overall impression’ test for infringement and the factors that the Courts must consider in applying the test have proven that the broadened scope of infringement offers greater protection to design owners.
 Between 1993 and 2000 only 36% of infringement proceedings were successful, see: Naomi Pearce, ‘Toward a better test for infringement of a registered design – the Designs (Exposure Draft) Bill’, (2002) 15 Australian Intellectual Property Law Bulletin 29, at page 30
 A Stewart, P Griffith and J Bannister Intellectual Property in Australia (LexisNexis 4th ed, 2010), at para 10.19
 Designs Act 1906 (Cth), section 30(1)(b)
 Ibid, section 30(1)(c)
 Louis Sullivan, American architect, ‘The Tall Office Building Artistically Considered’, 1896
 Alfred Loos, Austrian Architect
 Australian Law Reform Commission, ‘Designs’, (Report No 74, 1995), para [6.5]
 Firmagroup Australia Pty Ltd v Byrne and Davidson Doors (Vic) Pty Ltd (1987) 180 CLR 483 (‘Firmgroup’)
 Firmagroup (Wilson, Brennan, Deane, Dawson, Gaudron JJ)
 Above n8, 
 Ibid . The Court painstakingly outlined the minor differences by saying that the two articles are:
dissimilar in proportion (the design being rather squat, the article much slimmer); in the comparative size of the plate and handgrip sections (the handgrip section being larger than the plate section in the design, the two sections being of the same size in the respondents’ article); in the vertical line which, on the respondents’ article but not in the design, visually divides the plate section from the handgrip section; in the width of the front surface surrounding the recess of the handgrip (the design showing a rather thick edging, the respondents’ article being slender around the recess); in the angularity of the recess (in the design the recess is sloped, in the article the recess is virtually right-angled) and in the shape of the ends (the design showing a deep and irregular base designed to fit the corrugation of the panels in the metal screen of the door, the  ends of the article being thin and abutting flat onto the metal screen)
 Lockhart J was also the original trial judge in Firmagroup
 Dart Industries Inc v Décor Corporation Pty Ltd (1989) 15 IPR 403 (‘Dart Industries’)
 Ibid, at 
 Ibid, at 
 Above n7
 Above n7, para [2.1]
 Designs Act 2003 (Cth), section 19(1). It is a stronger obligation than the other factors of section 19 which the Court need only give ‘regard’ or ‘particular regard’.
 Keller v LED Technologies Pty Ltd  FCAFC 55 (‘Keller’)
 Ibid, para 
 Multisteps Pty Limited v Source and Sell Pty Limited  FCA 743 (‘Multisteps’)
 Ibid, para 
 Ibid, para 
 Design Act 1906 (Cth), section 20(4)
 Rosebank Plastics Pty Ltd v Duncan & Wigley Pty Ltd (1988) 11 IPR 413
 The statement of monopoly read: ‘[t]he design applicable to the shape or configuration of a helmet as illustrated in the accompanying representations’
 The statement of newness read: ‘Seperate (sic) clip in lenses. Base to take a variety of 2, 3 or 4 combination lenses for stop, tail, indicator, reverse LED lenses, no visible screws.’
 Designs Act 2003 (Cth), section 19(2)(d)
 Under the old Act, Lockhart J in Dart Industries Inc v Décor Corporation Pty Ltd (1989) 15 IPR 403 held 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’. The adoption of this principle in the 2003 Act was affirmed in Keller v LED Technologies Pty Ltd  FCAFC 55 where the Court said at :
The principle referred to by Lockhart J in the last paragraph of the above passage was well established under the Designs Act 1906. It is clear enough that Parliament intended to embody the principle in the Designs Act 2003 (see paragraph 6.30 of the ALRC Report).
 See the case of Dunlop Rubber Co Ltd v Golf Ball Developments Ltd (1931) 48 RPC 268
 Polyaire Pty Ltd v K-Aire Pty Ltd  HCA 32 and Dart Industries
 Dart Industries, para 
 Gram Engineering Pty Ltd v Bluescope Steel Ltd  FCA 508