Case: Dart Industries Inc and Another v Decor Corporation Pty Ltd (1989) 15 IPR 403
Outcome: followed
relevance of prior art to the determination of design infringement was considered in Dart Industries Inc and Another v Decor Corporation Pty Ltd (1989) 15 IPR 403 at 409 where Lockhart J said: The scope of a registered design must be determined with reference to the background of the prior art at the priority date and questions of infringement and novelty or originality are connected. In Hecla Foundry Co v Walker, Hunter &amp; Co (1889) 14 App Cas 550 Lord Herschell said at 555: "...one may be able to take into account the state of knowledge at the time of registration, and in what respects the design was new or original, when considering whether any variations from the registered design which appear in the alleged infringement are substantial or immaterial." His Honour continued: Where novelty or originality is discovered in slight variations, there cannot be infringement without a very close resemblance between the registered design and the article alleged to be an infringement of the design. Lloyd-Jacob J in Rosedale Associated Manufacturers Ltd v Airfix Products Ltd [1956] RPC 360 at 364 said that the court would have regard to what was "known and old", and: "...if the particular features which provide a novel conception have not been reproduced in the alleged infringement, the similarity of appearance between the article complained of and the registered design if present must necessarily reside in the common possession of characteristics which are free to everyone to employ". See also Macrae Knitting Mills Ltd v Lowes Ltd [1936] HCA 43 ; (1936) 55 CLR 725 per Dixon J at 731 and L J Fisher &amp; Co Ltd v Fabtite [sic] Industries Pty Ltd (1978) 49 AOJP 3611 per Fullagar J at 3620. His Honour further said at 409: 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. On the other hand, the greater the advance in the registered design over the prior art, generally the more likely that a court will find common features between the design and the alleged infringing article to support a finding of infringement... In view of such finding Technicon must demonstrate a greater degree of difference between the Technicon pan and the registered design to establish that there has been no design infringement: see Dart v Decor at 409. Although expert evidence is not to supplant the role of the Court (see Dart v Decor at 408-409), the Court has considered the expert witnesses' evidence regarding their respective visual comparisons of the registered design with the Technicon pan. Mr Granger said in relation to the registered design: In my view the main "design features" of the Registered Design is the overall curvilinear shape of the bowl [A] (on annexure 'C' and 'D') its relationship to the shroud [B] (on annexure 'C' and 'D') and the shape of the shroud itself. Aspects of this design include the concealing by the shroud of the waste pipe (an "S" trap) and the balanced proportions of these two inter-related elements, being the bowl and the shroud. The design conveys a "clean" overall impression which harmonises the separate elements of bowl and shroud in a simple yet elegant way. Mr Granger considered that the absence of the scalloping feature in the Technicon pan did not alter the curvilinear shape of the overall design and in fact emphasised such curvilinear shape. He noted that the scalloping feature incorporated in the registered design was visible from a side view only, and said: [t]he designer has given minimal visual impact to the scalloping feature by ensuring that it is recessed at the rear of the pan where the consumer is unlikely to perceive it, or perceive it as of visual significance having regard to the whole pan/shroud combination. Accordingly, in my view the ribbed voids are not characteristic of the design and are not readily observable or of visual significance from a design perspective. The Court observes that its visual comparison of the registered design with the alleged infringing object is not to be made by reference to the perspective of the consumer: see Dart v Decor at 409. It follows that no particular perspective should be valued above another, in that the appearance of the relevant pans when viewed in situ in a showroom or bathroom should not be prioritised over any other angle of viewing or perspective of such pans. Mr Granger considered other visual differences between the registered design and the Technicon pan. He opined that the rear supporting rib of the Technicon pan was of a slightly different curvature in side profile only when compared to the registered design and that the inlet pipe of the Technicon pan had a smooth transition into the rear of the bowl when compared to the registered design. However, Mr Granger considered that such differences were insufficient to detract from the main design features of the registered design incorporated in the Technicon pan, namely the overall curvilinear shape of the bowl, the bowl's relationship to the shroud and the shape of the shroud itself. Mr Granger compared the Technicon pan with the BNKS Lara pan and concluded that he could not see 'any significant design similarity' between the Technicon pan and the BNKS Lara pan. Mr Granger opined that the Technicon pan was a reproduction of the design of the Trident pan. Lockhart J in Dart v Decor at 413 indicated that the visual comparison undertaken by the Court involves both first impressions and later impressions. The Court accordingly observes that while the similarities between the Technicon pan compared with the registered design are initially striking, closer inspection reveals certain differences. Principally, the Technicon pan does not incorporate the scalloping feature. The Court also observes that the inside rim of the registered design is not as deep as that of the Technicon pan and that the front of the shroud in the Technicon pan appears to be slightly more rounded than that in the registered design. Additionally, the bowl of the Technicon pan appears to be slightly larger and protrude further forward than the bowl depicted in the registered design, and the rear supporting rib of the Technicon pan is slightly wider than the rear supporting rib of the registered design. Also, the inlet pipe or duct of the Technicon pan has a smooth transition into the rear of the bowl when compared to the registered design where the transition of the inlet pipe into the rear of the bowl is more stepped. There is also a slight curve outward at the floor of the front of the Technicon pan which is not present in the registered design. Each difference is almost imperceptible, but can be observed upon careful inspection. While a person who designs and markets what is found to be an obvious imitation of a registered design may not in fact know of the registered design (see Dart v Decor at 411), the test for determining whether a product constitutes a fraudulent imitation of a registered design requires an examination of the alleged infringer's state of knowledge of the relevant registered design: see Dart v Decor at 411; Dunlop Rubber at 279. To establish the requisite state of knowledge it is not necessary that the alleged infringer had actual knowledge of the fact of registration of the registered design, but merely that the alleged infringer had reason to believe or strongly suspect, or had wilfully disregarded the likelihood of such registration: see Polyaire Pty Ltd v K-Aire Pty Ltd and Others [2005] HCA 32 ; (2005) 221 CLR 287 at [17] - [18] . Where the element of fraud is found to exist a greater degree of difference between the registered design and the infringing object will suffice for a finding of fraudulent imitation: see Dunlop Rubber at 280, approved in Dart v Decor at 411. In Fisher &amp; Paykel the Full Court said at 248: The authorities demonstrate (in particular Malleys , supra) that to support a finding of fraudulent imitation there may be greater differences between the registered design and the offending design than between the registered design and what could be held to be an obvious imitation. This is because the person who has deliberately set out to copy the registered design is presumed more readily to have achieved his object than the person who did so innocently. In this respect designs law, though having no common law base, is analogous to passing off...Nevertheless, whether the imitation is obvious or fraudulent, in the final analysis, as the decision in Malleys , supra, illustrates, the offending article must have the same fundamental or basic design as the article embodied in the registered design. Such passage was cited with approval in Polyaire at [21].