mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: D. Sebel &amp; Co. Ltd. v National Art Metal Co. Pty. Ltd. (1965) 10 FLR 224
Outcome: referred to
is no Statement of Novelty in the registered design. However, it has been recognised that certain features of an article may give rise to a distinct character in a design which may be the subject of registration: see D. Sebel &amp; Co. Ltd. v National Art Metal Co. Pty. Ltd. (1965) 10 FLR 224 at 227-228. The principal distinguishing feature relied upon by Caroma is the distinctive curvilinear shape of its registered design. Section 30 of the 1906 Act provides: (1) A person shall be deemed to infringe the monopoly in a registered design if he, without the licence or authority of the owner of the design: (a) applies the design or any fraudulent or obvious imitation of it to any article in respect of which the design is registered; (b) imports into Australia for sale, or for use for the purposes of any trade or business, any article in respect of which the design is registered and to which the design or any fraudulent or obvious imitation of it has been applied outside Australia without the licence or authority of the person who was the owner of the registered design at the time when the design or imitation was so applied; or (c) sells, or offers or keeps for sale, or hires, or offers or keeps for hire, any article: (i) to which the design or any fraudulent or obvious imitation of it has been applied in infringement of the monopoly in the design; or (ii) in respect of which the design is registered and to which the design or any fraudulent or obvious imitation of it has been applied outside Australia without the licence or authority of the person who was the owner of the registered design at the time when the design or imitation was so applied. (2) If any person infringes the monopoly in a registered design, the owner of the design may bring an action or proceeding against him for infringement of the monopoly in the design.
Case: Dalgety Australia Operations Ltd v Seeley (FF) Nominees Pty Ltd (1986) 64 ALR 421
Outcome: cited
chose not to specify any particular features of the representation in respect of which it claimed a monopoly nor did it designate any particular features of the representations which are to be disregarded in considering the extent of the monopoly protection. In Wanem Pty Ltd v John Tekiela and Another [1990] FCA 372 ; (1990) 19 IPR 435 Gummow J, after being referred to Dalgety Australia Operations Ltd v Seeley (FF) Nominees Pty Ltd (1986) 64 ALR 421 and Turbo Tek Enterprises Inc and Another v Sperling Enterprises Pty Ltd and Another (1989) 88 ALR 524 , said at 439-440: The authorities are collected there for the proposition that where the statement of monopoly does not identify particular features of shape or configuration of the design, the design applies to the appearance of the article as a whole and issues of infringement are to be approached with that in mind. See also Fisher &amp; Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd [1991] FCA 434 ; (1991) 103 ALR 239 at 246-247; McCallum &amp; Co Pty Ltd v Allen Manufacturing Co Pty Ltd and Another (2001) 52 IPR 550 at [17]-[18]. Accordingly, no aspect of the shape or configuration of the registered design is to be disregarded.
Case: Elconnex Pty Limited v Gerard Industries Pty Limited [1991] FCA 567 ; (1991) 32 FCR 491
Outcome: referred to
Elconnex Pty Limited v Gerard Industries Pty Limited [1991] FCA 567 ; (1991) 32 FCR 491 , Burchett J said at 503: It seems to me that what makes conduct of the relevant kind fraudulent is the infringer's dishonest concealment of the reality of copying in order to evade being held legally responsible for it. That form of dishonesty can only arise where the copier knows or suspects that his copying will infringe another's legal rights.
Case: Fisher &amp; Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd [1991] FCA 434 ; (1991) 103 ALR 239
Outcome: referred to
chose not to specify any particular features of the representation in respect of which it claimed a monopoly nor did it designate any particular features of the representations which are to be disregarded in considering the extent of the monopoly protection. In Wanem Pty Ltd v John Tekiela and Another [1990] FCA 372 ; (1990) 19 IPR 435 Gummow J, after being referred to Dalgety Australia Operations Ltd v Seeley (FF) Nominees Pty Ltd (1986) 64 ALR 421 and Turbo Tek Enterprises Inc and Another v Sperling Enterprises Pty Ltd and Another (1989) 88 ALR 524 , said at 439-440: The authorities are collected there for the proposition that where the statement of monopoly does not identify particular features of shape or configuration of the design, the design applies to the appearance of the article as a whole and issues of infringement are to be approached with that in mind. See also Fisher &amp; Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd [1991] FCA 434 ; (1991) 103 ALR 239 at 246-247; McCallum &amp; Co Pty Ltd v Allen Manufacturing Co Pty Ltd and Another (2001) 52 IPR 550 at [17]-[18]. Accordingly, no aspect of the shape or configuration of the registered design is to be disregarded. 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].
Case: Frank M Winstone (Merchants) Ltd v Plix Products Ltd [1985] 1 NZLR 377
Outcome: referred to
considering whether Technicon has infringed Caroma's copyright in the Caroma drawing, namely a copy of the original drawing created by Mr Shahidi, the Court observes that indirect copying is sufficient to establish copyright infringement, provided that the alleged infringing work is in fact a reproduction of the copyrighted work or a substantial part thereof: see Frank M Winstone (Merchants) Ltd v Plix Products Ltd [1985] 1 NZLR 377 at 380 where Cooke J said ' [t] here can be no doubt that in principle a reproduction may be the result of indirect copying...The question must always be whether the work alleged to be an infringement can fairly be said to be a reproduction of the copyright work or of a substantial part of that work' . Such decision was applied by this Court in LED Builders Pty Ltd v Eagle Homes Pty Ltd (1996) 35 IPR 215.
Case: Futuretronics.com.au Pty Limited v Graphix Labels Pty Ltd (No 2) [2008] FCA 746
Outcome: referred to
Futuretronics.com.au Pty Limited v Graphix Labels Pty Ltd (No 2) [2008] FCA 746 Besanko J said at [19]: The meaning of "the flagrancy of the infringement" has been described in various ways. In Ravenscroft v Herbert and New English Library Limited [1980] RPC 193 Brightman J referred to it as "scandalous conduct, deceit and such like; it includes deliberate and calculated copyright infringement"; in Prior v Lansdowne Press Pty Ltd [1977] VR 65 at 70, Gowans J (at 70) referred to it as a "calculated disregard of the plaintiff's rights, or cynical pursuit of benefit"; and in Raben Footwear Pty Ltd v Polygram Records Inc (1997) 75 FCR 88 at 103 flagrancy was said to connote conduct which could probably be described as "glaring, notorious, scandalous" or "blatant". In Polygram at 461-462 Lockhart J said that flagrancy did not include mere mistakes or carelessness and that if the infringer mistakenly believed that he or she owned the relevant copyright, or acted in the bona fide belief that no copyright subsisted in the plaintiff's work then the conduct was not flagrant.
Case: Jones v Dunkel and Another (1959) 101 CLR 298
Outcome: referred to
Court cannot accept Technicon's submission that Technicon's experience in registering its own designs did not generate in its directors' minds the likelihood of the Trident pan designs also being registered. The Court finds implausible Mr McCallum's evidence that in January 2003 he was aware of Technicon registering the design of a tap but in the same month did not turn his mind to the possibility that the design of a toilet pan could have been protected by registration. The Court does not accept Mr McCallum's claim that he considered that toilet designs were 'generic' and therefore did not realise that such designs could be registered. Nor does the Court accept that Mr Rouwenhurst could not have provided some evidence of Technicon's state of knowledge of the possibility of registration of Caroma's design in the Trident pan. The Court infers that Mr Rouwenhurst would not have been able to assist Technicon's defence: see Jones v Dunkel and Another (1959) 101 CLR 298.
Case: Koninklijke Philips Electronics NV and Another v Remington Products Australia Pty Ltd [1999] FCA 816 ; (1999) 91 FCR 167
Outcome: referred to
addition to the existence of the requisite mental element in the alleged infringer, it must be established that the allegedly infringing article is based on or derived from the registered design to warrant a finding of fraudulent imitation: see Koninklijke Philips Electronics NV and Another v Remington Products Australia Pty Ltd [1999] FCA 816 ; (1999) 91 FCR 167 at 200. Even if the alleged infringer set out to copy the registered design, and even if the intention in adopting any differences was to disguise such copying, a finding of fraudulent imitation cannot be made unless the impugned article is in fact an imitation or copy: see Polyaire at [33] adopting Besanko J in Polyaire Pty Ltd v K-Aire Pty Ltd &amp; Ors [2003] SASC 41 at [293] .
Case: LED Builders Pty Ltd v Eagle Homes Pty Ltd (1996) 35 IPR 215
Outcome: referred to
considering whether Technicon has infringed Caroma's copyright in the Caroma drawing, namely a copy of the original drawing created by Mr Shahidi, the Court observes that indirect copying is sufficient to establish copyright infringement, provided that the alleged infringing work is in fact a reproduction of the copyrighted work or a substantial part thereof: see Frank M Winstone (Merchants) Ltd v Plix Products Ltd [1985] 1 NZLR 377 at 380 where Cooke J said ' [t] here can be no doubt that in principle a reproduction may be the result of indirect copying...The question must always be whether the work alleged to be an infringement can fairly be said to be a reproduction of the copyright work or of a substantial part of that work' . Such decision was applied by this Court in LED Builders Pty Ltd v Eagle Homes Pty Ltd (1996) 35 IPR 215.
Case: LJ Fisher &amp; Company Ltd v Fabtile Industries Pty Ltd (1978) 1A IPR 565
Outcome: referred to
Court observes that an infringing article can be both an obvious imitation and a fraudulent imitation: see Rose v J. W. Pickavant and Co Ltd (1923) 40 RPC 320 at 332, approved in LJ Fisher &amp; Company Ltd v Fabtile Industries Pty Ltd (1978) 1A IPR 565 at 581-582. The Court is accordingly required to determine whether the Technicon pan is an obvious imitation and/or a fraudulent imitation of the registered design. The 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...
Case: Malleys Limited v J. W. Tomlin Pty. Limited [1961] HCA 77 ; (1961) 180 CLR 120
Outcome: followed
seminal explanation of s 30 of the 1906 Act is found in Malleys Limited v J. W. Tomlin Pty. Limited [1961] HCA 77 ; (1961) 180 CLR 120 where the High Court of Australia said at 127: Turning to s. 30 it is apparent that there is infringement in any one of three cases that is, where the design which has been applied is: (i) the registered design (ii) an obvious imitation of the registered design (i.e., not the same but a copy apparent to the eye notwithstanding slight differences) and (iii) a fraudulent imitation (i.e., a copy with differences which are both apparent and not so slight as to be insubstantial but which have been made merely to disguise the copying). Visual comparison will establish (i) or (ii) but a finding of fraudulent imitation must require something more because in such a case visual comparison is not of itself sufficient to establish imitation; otherwise it would be an obvious imitation. Caroma's Further Amended Statement of Claim alleges that the Technicon pan applies the registered design. However, Caroma made no submissions in support of such allegation. The Court is accordingly not required to determine whether design infringement of that kind has occurred. For an article to constitute an obvious imitation it must appear to the eye to be a copy notwithstanding slight differences: see Malleys at 127. In Dunlop Rubber Co. Ld. v Golf Ball Developments Ld. (1931) 48 RPC 268 at 279 Farwell J said that 'obvious' means: ...something which, as soon as you look at it, strikes one at once as being so like the original design, the registered design, as to be almost unmistakable. I think an obvious imitation is something which is very close to the original design, the resemblance to the original design being immediately apparent to the eye looking at the two. 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].
Case: Microsoft Corporation and Others v Goodview Electronics Pty Ltd and Others (2000) 49 IPR 578
Outcome: referred to
Court observes that no particular factor within s 115(4)(b) of the Copyright Act should be prioritised in the Court's consideration of whether additional damages should be awarded: see Raben Footwear Pty Ltd v Polygram Records Inc and Another (1997) 75 FCR 88 at 93, 103. The discretion conferred on the Court in s 115(4) is broad (see Raben at 103; Microsoft Corporation and Others v Goodview Electronics Pty Ltd and Others (2000) 49 IPR 578 at [64]), and if the Court is satisfied that 'any one or more of the circumstances' listed in s 115(4)(b) are present, the Court has a discretion to award additional damages as it considers appropriate: see Raben at 103.
Case: Polyaire Pty Ltd v K-Aire Pty Ltd &amp; Ors [2003] SASC 41
Outcome: referred to
addition to the existence of the requisite mental element in the alleged infringer, it must be established that the allegedly infringing article is based on or derived from the registered design to warrant a finding of fraudulent imitation: see Koninklijke Philips Electronics NV and Another v Remington Products Australia Pty Ltd [1999] FCA 816 ; (1999) 91 FCR 167 at 200. Even if the alleged infringer set out to copy the registered design, and even if the intention in adopting any differences was to disguise such copying, a finding of fraudulent imitation cannot be made unless the impugned article is in fact an imitation or copy: see Polyaire at [33] adopting Besanko J in Polyaire Pty Ltd v K-Aire Pty Ltd &amp; Ors [2003] SASC 41 at [293] .
Case: Polyaire Pty Ltd v K-Aire Pty Ltd and Others [2005] HCA 32 ; (2005) 221 CLR 287
Outcome: followed
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] .
Case: Polygram Pty Ltd and Others v Golden Editions Pty Ltd and Another (1997) 148 ALR 4
Outcome: referred to
in the context of copyright infringement was considered in Polygram Pty Ltd and Others v Golden Editions Pty Ltd and Another (1997) 148 ALR 4 at 14 where Lockhart J said: The term "flagrancy" has been variously defined in the reported cases. It was described in Prior v Lansdowne Press Pty Ltd (1975) 12 ALR 685 at 690; 29 FLR 59 at 65 as a "calculated disregard of the plaintiff's rights, or cynical pursuit of benefit". In Ravenscroft v Herbert &amp; New English Library Ltd [1980] RPC 193 it was described at 208 as "the existence of scandalous conduct, deceit and such like; it includes deliberate and calculated copyright infringements"; not mere mistake or carelessness. If the infringer mistakenly believed that he or she owned the relevant copyright ( Prior v Lansdowne Press ) or acted in the bona fide belief that no copyright subsisted in the plaintiff's work ( International Credit Control Ltd v Axelsen [1974] 1 NZLR 695) the conduct is not flagrant. See also Tyco Industries Inc v Interlogo [sic] AG (1987) 9 IPR 133 and on appeal to the Privy Council Interlego AG v Tyco Industries Inc [1988] 3 WLR 678; (1989) 12 IPR 97.
Case: Rose v J. W. Pickavant and Co Ltd (1923) 40 RPC 320
Outcome: referred to
Court observes that an infringing article can be both an obvious imitation and a fraudulent imitation: see Rose v J. W. Pickavant and Co Ltd (1923) 40 RPC 320 at 332, approved in LJ Fisher &amp; Company Ltd v Fabtile Industries Pty Ltd (1978) 1A IPR 565 at 581-582. The Court is accordingly required to determine whether the Technicon pan is an obvious imitation and/or a fraudulent imitation of the registered design.
Case: The English and Scottish Mercantile Investment Company, Limited v Brunton [1892] 2 QB 700
Outcome: referred to
submits that 'wilfully closing its eyes' to the possibility of Caroma's design being registered is not the appropriate test to determine whether the element of fraud exists for the purpose of a finding of fraudulent imitation. However, in Polyaire at [17] the High Court referred to the decision of Lord Esher MR in The English and Scottish Mercantile Investment Company, Limited v Brunton [1892] 2 QB 700 at 707-708 and noted the inference of fraud that may be drawn when a person 'wilfully shuts his eyes' (see note (35) in [17]). The Court accordingly rejects Technicon's submission that wilful blindness is not an appropriate test for fraud in the present context.
Case: Tu and Another v Pakway Australia Pty Ltd (t/as Pakway Plastics) and Others (2004) 62 IPR 637
Outcome: referred to
Court notes that Mr Wynne provided his evidence in chief based upon answers he gave to specific questions from Technicon's solicitors that sought his opinion relating to the differences and similarities between the Technicon pan and the registered design. However, it is not of assistance to catalogue the precise differences and similarities, as this is not the test to be applied. Rather, it is 'the overall appearance of the registered design and the alleged infringing article that must be compared' : see Autocaps (Aust) Pty Ltd and Others v Pro-Kit Pty Ltd and Another 46 IPR 339 per Finkelstein J at [83]; see also Tu and Another v Pakway Australia Pty Ltd (t/as Pakway Plastics) and Others (2004) 62 IPR 637 at [106]-[107].
Case: Turbo Tek Enterprises Inc and Another v Sperling Enterprises Pty Ltd and Another (1989) 88 ALR 524
Outcome: cited
chose not to specify any particular features of the representation in respect of which it claimed a monopoly nor did it designate any particular features of the representations which are to be disregarded in considering the extent of the monopoly protection. In Wanem Pty Ltd v John Tekiela and Another [1990] FCA 372 ; (1990) 19 IPR 435 Gummow J, after being referred to Dalgety Australia Operations Ltd v Seeley (FF) Nominees Pty Ltd (1986) 64 ALR 421 and Turbo Tek Enterprises Inc and Another v Sperling Enterprises Pty Ltd and Another (1989) 88 ALR 524 , said at 439-440: The authorities are collected there for the proposition that where the statement of monopoly does not identify particular features of shape or configuration of the design, the design applies to the appearance of the article as a whole and issues of infringement are to be approached with that in mind. See also Fisher &amp; Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd [1991] FCA 434 ; (1991) 103 ALR 239 at 246-247; McCallum &amp; Co Pty Ltd v Allen Manufacturing Co Pty Ltd and Another (2001) 52 IPR 550 at [17]-[18]. Accordingly, no aspect of the shape or configuration of the registered design is to be disregarded.