-- JonathanMo - 14 Sep 2015

Infringements and offences

The DA provides that a primary infringement occurs if a person, without authority, makes or offers to make a product that is identical to, or substantially similar in overall impression to, the registered design [DA s.71(1)(a)]. Infringement, being a secondary infringement, also occurs if a person imports into Australia such a product for sale or for trade or business, or otherwise sells, hires, uses or keeps such a product for trade or business [DA s.71(1)(b)-(e)]. Under section 19(4) of the DA, the court must apply the standard of the 'informed user', being a person familiar with the product to which the design relates. This is intended to produce a more objective test for infringement, than that which applied under the old Act, and is also intended to focus more on similarities, rather than differences.

The previous test of 'fraudulent or obvious imitation' [old Act s.30(1)] was interpreted narrowly, so that if there were differences (eg of dimension) between the original and the alleged infringing design, infringement would not be found to exist. See Dart Industries Inc v Decor Corporation Pty Ltd [1989] FCA 49; (1989) 15 IPR 403 concerning 'obvious imitation', in which the court said that there was no 'fraudulent' imitation, because 'the evidence does not (therefore) support a finding that the respondent knowingly, consciously or deliberately based its design upon the registered design'.

In Wanem Pty Ltd v Tekiela [1990] FCA 527; (1990) 19 IPR 435 at 440, the Federal Court accepted six propositions in respect of what might constitute an infringement:

See also Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd [2000] FCA 876; (2000) 100 FCR 90; 48 IPR 257 and Elconnex Pty Ltd v Gerard Industries Pty Ltd [1991] FCA 567; (1992) 32 FCR 491; 22 IPR 551.

Relief available includes an injunction subject to such terms as the court may think fit, and - at the option of the plaintiff - damages or an account of profits [DA s.75(1)]. It may also award such additional damages as it considers appropriate depending on the flagrancy of the infringement [DA s. 75(3)].

A court may also grant relief against unjustified threats of infringement.

The DA includes a 'right of repair' defence in section 72 of the new legislation for spare parts. This provides a defence against infringement of a design where a component part embodying a registered design is to be used for genuine repair purposes, or as a spare part. The onus is placed on the design owner to show that the alleged infringer knew the part sold was not for the purpose of genuine repair. The right of repair defence was due to be reviewed in 2005.

Offences include the following acts:

• causing false entries to be made in the Designs Register [DA s.131]
• false representation that a design is registered [DA s.132]
• false representation concerning any association between a business and the Designs Office [DA s.133]
• failure to comply with a requirement of the Registrar of Designs, including appearing as a witness or producing documentation.

Penalties may include up to 12 months imprisonment or up to 60 penalty points.