Austalian registered designs: “non-essential” features can be significant
LED Technologies Pty Ltd v Roadvision Pty Ltd  FCAFC 3
LED Technologies Pty Ltd has appealed findings adverse to them at trial. This case provides further clarification on the assessment of whether or not a registered design is “substantially similar in overall impression to another design”, which must be considered when determining infringement and validity of an Australian registered design.
Facts of the case
LED Technologies Pty Ltd (“LED Tech”) is the owner of Australian Registered Design Nos. 302359 and 302360 (“the registered designs”) in respect of “Rear Combination Lights”. Lights of this type are typically used on trailers and caravans for providing combinations of stop, park, indicator and reverse lights.
In the trial decision (LED Technologies Pty Ltd v Roadvision Pty Ltd  FCA 146), Justice Finkelstein found that the registered designs were valid in spite of similarities with a prior art light, but that Baxters Pty Ltd and Roadvision Pty Ltd had not infringed the registered designs by the sale of their rear combination lights (“the Baxters lights”). LED Tech appealed the finding of non-infringement.
Infringement of the registered designs
In the trial decision, Justice Finkelstein identified four “key” features that differentiated the registered designs from the Baxters lights. On this basis, Justice Finkelstein concluded that the Baxters lights were not substantially similar in overall impression to the registered designs. One of these key features was described as the “prominent cut-out pattern on the underside of the registered designs”. In contrast, the Baxters lights had a flat, closed back. The remaining three features were visible on the front of the registered designs.
In the appeal, LED Tech argued that the trial judge had erred in placing emphasis on this feature. While it is not explicitly stated in the appeal decision, it appears that LED Tech’s contention is that discounting the under/back side in the comparison of the registered designs and Baxters lights would increase the emphasis to be placed on the features of the front side such that there would be sufficient level of similarity for a finding of infringement.
LED Tech argued that there was substantial similarity between the front of the registered designs and the Baxters lights, and that little weight should be given to the differences between the back sides. There were two limbs to LED Tech’s argument in support of this position:
- that “the informed user would concentrate on the appearance of the lights in situ”, in which the features of the back side of the lights were not visible; and
- section 19(2)(c) of the Designs Act 2004 operates to give less weight to features that are of low quality and importance in the context of the design as a whole.
Justice Besanko noted that this is a “particularly crowded field”, meaning that there are many designs to the same or similar products in the prior art, and further, that many features of similarity between the registered designs and the Baxters lights were common in the prior art. Justice Besanko concluded that the features of the under/back sides cannot be ignored, and that even if less weight were afforded to these features, with the extent of differences in the remaining three features the finding of non-infringement by the trial judge was correct. The other two appellant judges agreed with the findings of Justice Besanko in their entirety.
Australian designs law does not have requirements on the number or nature of the views that are included in a design registration. The findings of the trial and appellant judges serve as a reminder that inclusion of views that show “non-essential features” of a design can have the effect of narrowing the scope of protection. Had the rear views been excluded from the registered designs, the cut-out pattern on the underside of the registered designs would not have been available to distinguish the Baxters lights from LED Tech’s designs of LED lights. The corollary of this is that leaving features of a design out of the registration has the effect of increasing the chance of the registration being invalid.
In this case, the evidence demonstrated that the shape of the back side of the registered designs was important for functional reasons, but was of no significance to the aesthetic elements of the designs when mounted to a vehicle, such as a caravan. Australian designs law does not distinguish explicitly between functional and aesthetic value of features. In some cases, such as this, the underside features are predominantly functional but were given equal weight to the aesthetic features.