Case: Dunlop Rubber Co. Ld. v Golf Ball Developments Ld. (1931) 48 RPC 268
Outcome: followed
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. The Court concludes that the Technicon pan does not possess such a close resemblance to the registered design that it is 'almost unmistakeable' : see Dunlop Rubber at 279. The Court accordingly finds that the Technicon pan is not an obvious imitation of the registered design. 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] . In Polyaire at [19] the High Court quoted from the decision of Farwell J in Dunlop Rubber at 279 in relation to the distinction drawn between obvious and fraudulent imitation: His Lordship said (41): "... With regard to the word 'fraudulent', fraudulent I think does pre-suppose a knowledge of the registered design. I think it would be difficult for a Court to come to the conclusion that an imitation was fraudulent unless the Court was satisfied that the registered design had been known to the author of the alleged infringing design, and further, it seems to me that 'fraudulent' imports something in the nature of making use of the registered design." Farwell J went on to say of the term "fraudulent" in this context (42): " It does not necessarily import deliberate intention to steal the property of the owner of the registered design ...[A] person may be the author of a fraudulent imitation believing perfectly honestly that he has so altered the registered design as to make them two different designs, and so far as his own mind and his own intention are concerned, he may be honest in that sense." (Emphasis added.) 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]. Although the evidence before the Court supports the inference of a deliberate intention on the part of Technicon to copy Caroma's design (for example, Mr McCallum was explicit in his intention to 'manufacture or plagiarise' the Caroma range), the Court observes that no such deliberate intention is required to satisfy the requisite mental element: see Dunlop Rubber at 279. Further, the satisfaction of the mental element does not require the alleged infringer to have an actual knowledge of the registration of the design in question: see Polyaire at [18]. A finding of fraud may be made if the Court is satisfied that Technicon had reason to believe, strongly suspected or wilfully shut its eyes to the possibility of the design of the Trident pan being registered: see Polyaire at [17]-[18]. In the present circumstances the Court is satisfied that Technicon 'had reason to believe or strongly suspected' that the design of the Trident pan may have been registered: see Polyaire at [18]. The Court observes that 'there will be no fraudulent imitation unless the accused article is in fact an imitation or a copy' : see Polyaire at [33]. The Court also observes that a fraudulent imitation may be 'less apparent' than an obvious imitation: see Dunlop Rubber at 280. The Technicon pan incorporates significant visual features of the registered design, namely the overall curvilinear design, the outline of the shroud and throat, and the same configuration for the bolt holes. The principal visual detail which distinguishes the Technicon pan from the registered design is the absence of the scalloping feature. However, the absence of the scalloping feature does not sufficiently distinguish the Technicon pan from the registered design. Nor does the adoption of a box rim sufficiently distinguish the Technicon pan from the registered design. The Court is satisfied that the Technicon pan is an imitation or copy of the registered design for the purposes of a finding of fraudulent imitation under s 30 of the 1906 Act.