INFRINGEMENT
16 The Designs Act, which came into effect on 17 June 2004, replaced the Designs Act 1906 (Cth). The Designs Act provides for a system of registration for products whose appearance is new and distinctive.
17 The registered owner of a registered design has a number of exclusive rights during the term of the registration of the design, including to make a product, in relation to which the design is registered, which embodies the design; to import such a product into Australia for sale; and to sell such a product: see the Designs Act, s 10. Design, in relation to a product, is defined in the Designs Act as "the overall appearance of the product resulting from one or more visual features of the product": see s 5. In the Designs Act, visual feature, in relation to a product, includes shape, configuration, pattern and ornamentation of the product: see ss 7 and 8. These are the features to be borne in mind in forming a view about the overall appearance of the product (in this case, a garment) as it appears on the design register. The Designs Act (in s 7(3)) specifically provides that neither the feel of the product nor the materials used in the product are visual features of the product.
18 Under the Designs Act, a design is a registrable design if the design is new and distinctive when compared with the prior art base for the design as it existed before the priority date of the design: see s 15(1). The prior art base, which is defined in s 15(2), includes designs published within and outside Australia. A design is new unless it is identical to a design that forms part of the prior art base for the design, and distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base for the design: see s 16(1) and (2).
19 Under the Designs Act, a design is a registrable design if the design is new and distinctive when compared with the prior art base for the design as it existed before the priority date of the design: see s 15(1). The prior art base, which is defined in s 15(2), includes designs published within and outside Australia. A design is new unless it is identical to a design that forms part of the prior art base for the design, and distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base for the design: see s 16(1) and (2).
20 Review alleges, and New Cover/Maco denies, that New Cover/Maco made, imported and sold the Spicy Sugar garments. The respondents' position was that New Cover/Maco imported and sold women's clothing. As noted in Redberry, the question whether New Cover/Maco made Spicy Sugar garments, as opposed to importing and selling them, does not affect the outcome of Review's principal allegation that New Cover/Maco has infringed the Review Design. It affects the discussion of s 75(2) of the Designs Act, below.
21 The Spicy Sugar garments will infringe the Review Design if they embody a design that is substantially similar in overall impression to the Review Design: compare the Designs Act, s 71(1)(a). In determining whether a design is substantially similar in overall impression to a registered design, the factors in s 19 fall for consideration: see s 71(3). Section 19 provides:
(1) If a person is required by this Act to decide whether a design is substantially similar in overall impression to another design, the person making the decision is to give more weight to similarities between the designs than to differences between them.
(2) The person must also:
(a) have regard to the state of development of the prior art base for the design; and
(b) if the design application in which the design was disclosed included a statement (a statement of newness and distinctiveness) identifying particular visual features of the design as new and distinctive:
(i) have particular regard to those features; and
(ii) if those features relate to only part of the design - have particular regard to that part of the design, but in the context of the design as a whole; and
(c) if only part of the design is substantially similar to another design, have regard to the amount, quality and importance of that part in the context of the design as a whole; and
(d) have regard to the freedom of the creator of the design to innovate.
(3) If the design application in which the design was disclosed did not include a statement of newness and distinctiveness in respect of particular visual features of the design, the person must have regard to the appearance of the design as a whole.
(4) In applying subsections (1), (2) and (3), the person must apply the standard of a person who is familiar with the product to which the design relates, or products similar to the product to which the design relates (the standard of the informed user).
(5) In this section, a reference to a person includes a reference to a court.
Since there was no statement of newness and distinctiveness in the Review Design application, s 19(3) of the Designs Act applies. In considering whether a design embodied in the Spicy Sugar garments is substantially similar in overall impression to the Review Design, the Court is therefore obliged to consider the appearance of the Review Design as a whole, considered by reference to the standard of the informed user.
22 I refer to my discussion of the standard of the informed user in Redberry. As stated in Redberry, the informed user must be a person who is familiar with the product to which the design in question relates. The informed user must also be a user of the class of product in question, in this case, ladies' garments, or perhaps, more narrowly, ladies' dresses. A designer or manufacturer of such garments is not an informed user merely because he or she designs or manufactures them. Further, this user is not simply an ordinary consumer: the user must be an informed user.
23 As also noted in Redberry, the Australian Law Reform Commission's Report No 74, Designs (Sydney, 1995) ("ALRC Report No 74") and the Designs Act which implemented it (see Explanatory Memorandum to the Designs Bill 2002 at 1) borrowed the concept of the informed user from the European Community design law: see ALRC Report No 74, at 5.17 - 5.21, 6.12 and 6.13. ALRC Report No 74, at 5.17, described the informed user as "a person who is reasonably familiar with the nature, appearance and use of products of the relevant kind". I refer to but do not repeat the other parts of the Report's discussion of the informed user standard, which are set out in Redberry: see ALRC Report No 74, at 5.18, 5.19, 5.21 and 6.13.
24 Since the informed user standard has been adopted by the Registered Designs Act 1949 (UK), the explanation of the standard by courts in the UK provides some guidance. In Redberry, I referred to the exposition of the informed user standard in Woodhouse UK Plc v Architectural Lighting Systems [2006] RPC 1 ("Architectural Lighting"). In this case, his Honour Judge Fysh QC (at [50]) defined the concept of an informed user as follows:
First, this notional person must obviously be a user of articles of the sort which is subject of the registered design - and I would think, a regular user at that. He could thus be a consumer or buyer or be otherwise familiar with the subject matter say, through use at work. The quality smacks of practical considerations. In my view the informed user is first, a person to whom the design is directed. Evidently he is not a manufacturer of the articles and both counsel roundly rejected the candidature of 'the man in the street'. 'Informed' to my mind adds a notion of familiarity with the relevant rather more than what one might expect of the average consumer; it imports the notion of 'what's about in the market?' and 'what has been about in the recent past?'. I do not think it requires an archival mind (or eye) or more than an average memory but it does I think demand some awareness of product trend and availability and some knowledge of basic technical considerations (if any). In connection with the latter, one must not forget that we are in the territory of designs and thus what matters most is the appearance of things; as Mr Davis reminded me, these are not petty patents. Therefore, focus on eye appeal seems more pertinent than familiarity with the underlying operational or manufacturing technology (if any). I feel uncomfortable with analogy to the 'man skilled in the art' whose 'nerd-like' (and other) attributes seem too technical: Technip France SA's Patent [2004] R.P.C. 46 at [6-12] (CA). (Emphasis original)
The properly informed eye of the court must make its decision as a matter of degree - as a matter of overall impression: see Architectural Lighting at [52].
25 As noted in Redberry,in Proctor & Gamble Co v Reckitt Benckiser (UK) Ltd [2006] EWHC 3154; [2007] FSR 13 ("Proctor & Gamble Co v Reckitt Benckiser") at [31] et seq, where Lewison J (Chancery Division - Patents Court) considered and approved the Architectural Lighting observations, as did the Court of Appeal: see Proctor & Gamble Company v Reckitt Benckiser (UK) Ltd [2007] EWCACIV 936; (2007) 73 IPR 605 ("Proctor & Gamble") at [24], [25], [32] per Jacob LJ, with whom May and Dyson LJJ agreed. Jacob LJ noted (at [28]) "the informed user is alert to design issues and is better informed than the average consumer in trade mark law".
26 As also noted in Redberry, in January 2007, the Design Registrar of the UK Intellectual Property Office had cited and applied the Architectural Lighting 'informed user' analysis in ruling on the validity of a clothing design registration: see Application by Pauline Ann Walton to invalidate UK Registered Design in the name of Zap Ltd (UK IPO, 0-027-07, 22 January 2007) ("Walton").
27 In Walton, the applicant sought to invalidate a poncho design registered by Zap Ltd ("Zap") on the grounds that it lacked novelty, in part because it copied her earlier poncho designs: see Walton at [3], [32]. Zap defended on the grounds that the basic design of the poncho had long been known, and thus there was limited freedom to design: see [15]. Applying his Honour Judge Fysh QC's definition of informed user, as approved by Lewison J in Proctor & Gamble Co v Reckitt Benckiser (Walton at [36]-[37]), the Registrar accepted Zap's submissions, concluding "I believe that an informed user would be aware that there is limited freedom to design a poncho which is not basically square or rectangular in shape": see Walton at [40]; also at [43]. Based primarily on a difference in neck design, the Registrar found that the Zap design would in fact create a different overall impression on an informed user and thus it was validly registered: see Walton at [39]-[45].
28 As noted in Redberry, the Australian Designs Office ("ADO") considered the informed user standard in Re Application in the name of Apple Computer Inc (2007) 74 IPR 164 ("Apple") and Icon Plastics Pty Ltd [2007] ADO 2 (5 July 2007) ("Icon"): see Icon at [19], [21] and Apple at [11], [14]. I refer to, but do not repeat, the more detailed discussion of Apple and Icon in Redberry.
29 In summary, the standard of the informed user is an objective one. In this case, the assessment must be that of a user of ladies' garments, which would include a potential purchaser, either in retail sales (such as a buyer for a fashion store) or at the ultimate consumer level. A designer or manufacturer of ladies' garments is not, on account of design or manufacturing knowledge alone, an informed user. The notional user must be informed, in the sense that the user is familiar with ladies' garments. The informed user is not an expert, but must be more than barely informed. The focus for consideration is on eye appeal and not on internal or less visible manufacturing features.
30 As noted in Redberry, there may be a difference in the discussion to date as to what is needed to have the requisite product familiarity. On one view, this familiarity is greater than the information possessed by the average user; on another view, this familiarity is that which is possessed by the ordinary user: compare Architectural Lightingat [50] with Apple at [14]. I indicated in Redberry, for the reasons stated there, that I preferred the former approach. I doubt that, generally, the ordinary user will be appropriately regarded as an informed user.
31 Review's claim that the Spicy Sugar garments (see PS 10 and PS 11 to the affidavit of Peter Strain of 20 September 2007) are substantially similar in overall impression to the Review Design should be upheld. In reaching this conclusion, I have had regard to the evidence of Ms Ellis, particularly that referred to in Redberry at [29]-[30]. As noted in Redberry, as a designer rather than an informed user, Ms Ellis's evidence assists in identifying the basis of Review's claim on infringement and, to a limited extent, the similarities and differences between the Review Design and the design embodied in each of the Spicy Sugar garments - although, in this case especially, a great deal is self-evident. For present purposes, however, I disregard her evidence about points of construction and interior similarities and differences as not relevant to the issue of infringement.
32 In this connection too, I have also had regard to the evidence of Ms Ella Mudie, since this was, pursuant to order, also to be treated as evidence in this proceeding: see Redberry at [31]-[34]. As stated in Redberry, Ms Mudie was in the nature of an informed user and was a careful and truthful witness. As explained in Redberry, I found her evidence helpful, notwithstanding the criticisms leveled at it by the applicants in that case. Although some of Ms Mudie's evidence was specifically directed to an analysis of the Redberry garment as compared with the Review Design (and this is plainly not relevant here) other parts of her evidence assist in placing the Court in the shoes of the informed user. Thus, Ms Mudie's evidence was that, from her perspective, the overall appearance of a dress was principally determined by style, cut, fit, colour/print, and materials. This led Ms Mudie to identify two distinct differences between the Review Dress (and indirectly the design that it embodied) and Redberry dress, being their skirts, and the patterns and colours. Of course, as I stated in Redberry, the Court does not simply adopt Ms Mudie's assessment as its own, but makes its own objective determination. The Court must, of course, make the same sort of assessment in this case.
33 Considered by reference to the standard of the informed user, in deciding whether the design embodied in each of the Spicy Sugar garments is substantially similar in overall impression to the Review Design, the Court must: (1) give more weight to similarities between the designs in question than to differences (s 19(1)); (2) have regard to the state of development of the prior art base for the Review Design (s 19(2(a)); and (3) have regard to the freedom of the designer to innovate (s 19(2)(d)). There are, plainly enough, differences between the patterns as depicted in the design as compared with the two styles of the Spicy Sugar garments. Hence, only part of the design embodied in each style of the Spicy Sugar garments is substantially similar to the Review Design, with the consequence that the Court must have regard to the amount, quality and importance of that part in the context of the design considered as a whole (s 19(2)(c)). Furthermore, since the design application for the Review Design did not include a statement of newness and distinctiveness, the Court must have regard to the appearance of the Review Design as a whole (s 19(3)).
34 The similarities between the Review Design and the design embodied in each of the two styles of the Spicy Sugar garments are self-evident. The cross-over bodice and V-neck is identical, or virtually identical. All have a fixed waist, with a satin ribbon tie. All have the same high back. In this case too, the Review Design skirt and the skirts in the designs embodied in the Spicy Sugar garments are identical, or virtually so. The Review Design and the designs embodied in the Spicy Sugar garments differ only as to pattern (including colour).
35 Similarities between the designs are to be given greater weight than the differences (s 19(1)). As noted in Redberry, however, in deciding whether the design embodied in each style of the Spicy Sugar garments is substantially similar in overall impression to the Review Design, the Court must also have regard to the prior art base, considered by reference to the standard of the informed user. That is, the significance of the similarities and differences between designs falls to be considered in light of the prior art, as discussed in Redberry. In that case, I concluded that, having regard to the prior art and the freedom of the designer to innovate, what gave the Review Design its different overall impression from the prior art, from the perspective of the informed user, was the shape and configuration of the skirt, combined with differences in pattern and ornamentation.
36 Redberry stated that this conclusion was significant for the question of infringement, more particularly as the Court, by reference to the informed user standard, reaches its conclusion on infringement having regard to the amount, quality and importance of that part of the challenged design that is substantially similar to the Review Design in the context of the Review Design as a whole. As noted above, in this case in contrast to Redberry, save for the pattern (and colour), each of the styles of the Spicy Sugar garments embodies a design that is substantially similar (if not identical) to the Review Design. In this case, having regard to the directions in ss 19(1), (2)(a), (c) and (d), 19(3) and 19(4), the informed user would conclude that the design embodied in each style of the Spicy Sugar garments is substantially similar in overall impression to the Review Design considered as a whole, principally because of the identity in the shape, configuration and ornamentation. Whilst, for the reasons explained in Redberry, differences in pattern (including colour) cannot be ignored, having regard to the statutory directions, these differences are insufficient in this case to create a different overall impression. Review's case on infringement therefore succeeds.
37 As I said in Redberry, the fact that a design is registered in colour through the use of colour photographs (unaccompanied by a statement of newness and distinctiveness) is relevant to determining the extent of the monopoly sought and given. Everything that is shown in the registered design (unless disclaimed in some way) forms part of the subject matter protected by registration. The pattern (including colour) that is shown on the Review Design as registered is thus part of what is protected, and is to be accorded some weight. In this regard, I refer to my discussion in Redberry at [47]-[52]. How much weight is to be given to pattern (and colour) will depend on the nature of the product and the relative importance of the different visual features of the registered design, as viewed by the informed user standard, having regard to the prior art, and the freedom of the designer to innovate. If colour is important, it will be so because the factors relevant to the registered design lead to this conclusion. As indicated in Redberry, pattern, including colour, is a feature that an informed user would consider important in creating the overall impression of the Review Design, a conclusion borne out by the use of colour photographs to depict the design in the registration application. In the case of the two styles of the Spicy Sugar garments, however, the differences as regards this feature are overborne by the identity of other visual features, with the result that the design embodied in each style is substantially similar in overall impression to the Review Design.