Valuable protection afforded by 2003 Act design registrations
LED Technologies Pty Ltd v Elecspess Pty Ltd  FCA 1941
The tests for infringement and novelty/distinctiveness introduced in the Designs Act 2003 intended to provide broader protection than was available under the previous 1906 Act.
In this recent Federal Court case, two Australian design registrations in respect of vehicle tail-lights were held to be valid and infringed, despite some differences between the infringer's tail-lights and the tail-lights sold by the design registration owner. Accordingly, the design registrations were able to be used by the owner, LED Technologies Pty Ltd, to restrain the infringer from selling the infringing tail-light products. In making the decision, Gordon J, provided useful guidance on the suitability of design drawings, and on the test for infringement.
Facts of the case
LED Technologies Pty Ltd conducts research and development for LED products, and produces a wide range of LED lamps for vehicles.
The case involved Australian design registration no. 302359 in respect of a dual lens LED tail-light unit, and no. 302360 in respect of a triple lens LED tail-light unit. LED Technologies issued proceedings against Elecspess Pty Ltd for infringement of these design registrations by sale of their “Condor” range of automotive tail-light products. The respondent cross-claimed for revocation of the design registrations for lack of distinctiveness over previous designs, and for lack of clarity in the drawings resulting in failure to define the scope of monopoly.
To determine infringement, Gordon J identified the relevant question as being whether the Condor designs were “substantially similar in overall impression” to the registered designs, even though it was noted they were not identical. This is the same test used in determining distinctiveness for the purpose of validity, and the codification of this commonality between the tests is a feature of the Designs Act 2003.
This commonality between the infringement and validity tests may contribute to a more guided approach to assessing whether infringement is present, and Gordon J provided a useful approach to this:
“…one measure by which infringement can be assessed is whether the difference in distinctiveness between the registered design and any previously known design is greater than the difference between the registered design and the allegedly infringing design.”
A design drawing from LED's Design Registration No. 302359:
An illustration of the dual lens Condor product:
In view of the prior art presented, Gordon J considered the Condor products to be “substantially similar in overall impression” to the registered designs. This was despite the Condor Products having visible screws, which was in contrast to the feature of "no visible screws" specifically listed in the Statements of Newness and Distinctiveness of the design registrations:
“…although the Condor product contains two screws in each flat strip or landing between each lens, it is not a feature which in my view substantially distinguishes the Condor product from the registered Design. The presence of the screws does not create a different “visual appeal”. The screws are the same colour as the flat strip or landing between each lens and sit low in the socket.”
Clarity of the design drawings
The respondents alleged that the design registrations were invalid owing to the design drawings being unclear and lacking certainty. They submitted that the faint and pink drawings published on the Designs Office database resulted in difficulty in understanding the features of the designs such as the side profile of the base and the degree of rounding of the lens.
However, Gordon J considered the drawings to be reasonably "clear and succinct", stating that although the drawings could be clearer each design appears with reasonable clarity and “without necessity for unreasonably prolonged or complicated series of deductions”.
Her Honour also held that because the drawings are provided in electronic format on the Designs Office database, it was possible to magnify the drawings on a computer screen, and that, when magnified, the drawings show the features of the designs “with great clarity“. Although the respondents contended that magnified versions of the drawings were not admissible, Her Honour rejected that argument stating that the ability to magnify PDF images has been general common knowledge to any user of computers and the internet during the relevant period of 2004 to the present.
This case highlights that design registration can provide useful protection for products having a visually distinctive appearance. It also demonstrates that the Courts are willing to be progressive in their assessment of the issues of validity and infringement of design registrations. The judgement shows adaptation to modern media in admitting magnified versions of the design representations available in electronic format on the Designs Office database, and uses the similarities between the validity and infringement tests of the 2003 Act to provide more guidance on the difficult issue of assessing whether infringement is present.