mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Icon Plastics Pty Ltd [2007] ADO 2
Outcome: referred to
"informed user" concept has also been considered by the courts in the United Kingdom. In Woodhouse UK plc v Architectural Lighting Systems [2006] RPC 1 at [59], Judge Fysh QC of the Patents County Court defined an informed use r in the following terms: 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] EWCA Civ 381 ; [2004] R.P.C. 46 at [6-12] ( CA). This formulation was considered and approved by Lewison J in Proctor &amp; Gamble Company 73 IPR 605 at [31], [32] and [41] and was also applied in Application by Pauline Ann Walton to invalidate UK Registered Design in the name of Zap Ltd [2007] ECDR 10. To the extent that it matters (and it might not), the Australian Designs Office ("the ADO") has indicated that the informed user concept is an objective test where the user is an ordinary or typical member of a sample of users of the product who is reasonably informed, being neither barely informed nor fully expert: Apple Computer Inc (2007) 74 IPR 164 and Icon Plastics Pty Ltd [2007] ADO 2 as discussed in Review 2 Pty Ltd v Redberry Enterprise Pty Ltd [2008] FCA 1588 at [25] .
Case: J Choo (Jersey) Ltd v Towerstone Ltd [2008] FSR 19
Outcome: referred to
"informed user" concept in the 2003 Designs Act has been the subject of recent judicial consideration in Australia: Review 2 Pty Ltd v Redberry Enterprise Pty Ltd [2008] FCA 1588 at [19] - [27] ; Review Australia Pty Ltd v New Cover Group Pty Ltd [2008] FCA 1589. It is a concept the ALRC borrowed from European Community Design law, now codified in Council Regulation (EC) No. 6/2002 and in the Registered Design Act 1949 (UK): see ALRC Report, para 5.17-5.21 and 6.12-6.13; Proctor &amp; Gamble Company v Reckitt Benckiser (UK) Ltd (2007) 73 IPR 605 at [32] and J Choo (Jersey) Ltd v Towerstone Ltd [2008] FSR 19 at [7]. There is little doubt that first impressions are important when comparing a registered design with an allegedly infringing product in the manner prescribed by the 2003 Designs Act: ALRC Report para 5.15. In the United Kingdom, in applying an "overall impression" test, the approach is to hold a product embodying the registered design (provided that the Court is satisfied that it is a true embodiment of the registered design) and the alleged infringing product in hand and undertake a reasonably careful comparison between the two: Proctor &amp; Gamble Company 73 IPR 605 at [12]. See also J Choo (Jersey) Ltd v Towerstone Ltd [2008] FSR 19 at [6] (citing Proctor &amp; Gamble for the proposition that court may have regard to a physical embodiment of the registered design in making the comparison to the allegedly infringing product); but see Rolawn Lawn Ltd v Turfmech Machinery Ltd [2008] EWHC 989 Pat at [124] (stating that the exercise involves comparing the registered design to a photograph of the allegedly infringing product rather than the product itself).
Case: Jones v Dunkel [1959] HCA 8 ; (1959) 101 CLR 298
Outcome: cited
question is therefore whether, in all the circumstances, it would have been reasonable in this case for the Respondents to have searched the Register? In my view, it would have been. That conclusion is dependent on two findings. First, having regard to the substantial similarity between the Designs and the Condor Products and in the absence of any evidence to the contrary, it would be reasonably open to infer that a representative of Ren and Olsen (and for that matter, AAA and Elecspess) saw the commercial embodiment of the Design: Jones v Dunkel [1959] HCA 8 ; (1959) 101 CLR 298. Secondly and more importantly, the commercial embodiments of the Designs, in both their packaged and unpackaged form, contain a form of notice that would give rise at least to a duty to check the name LED Technologies on the Register. The notice is at the foot of the packaging and comprises the words "Registered Design". The rear of the base of each lamp has embossed on it a further notice, "Design Certificate Registration Number [NUMBER STATED]." There is no suggestion here that the notification on LED Tech's packaging was defective for s 75 purposes in any of the ways described by Kenny J or Jessup J: see Review 2 Pty Ltd v Redberry Enterprise Pty Ltd [2008] FCA 1588 at [80] - [81] (accepting that a design notification affixed to the product, such as a swing tag, could be sufficient to put a potential infringer on notice but finding on the facts that there was not such notice at the relevant time); and Innovative at [48]-[52] (finding that the swing tag did put the infringer on notice, but refusing to take the notification into account in determining damages because the tag was misleading in part).
Case: Karen Millen Ltd v Dunnes Stores Ltd [2008] ECDR 11
Outcome: cited
contrary to the Respondents' submissions, distinctiveness is to be assessed not by comparing the design in question to the prior art base as a whole but by comparing it individually to each relevant piece of prior art: s 15(1) read with ss 16(1) and (2). Part 4 of Chapter 2 of the 2003 Designs Act must be read as a whole. The Respondents cannot, as they do, simply selectively choose ss 15(1) and 19(2) to support their contention that a comparison is made of the design with the totality of the entire relevant prior art base for that design whilst ignoring the express words of the rest of Pt 4 including ss 16 and 19(1). It is those sections which expressly provide that a design is distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base for the design. As a result, a design that combines various features, each of which can be found in the prior art base when considered as a whole but not in any one particular piece of prior art, is capable of being distinctive: Review 2 Pty Ltd v Redberry Enterprise Pty Ltd [2008] FCA 1588 at [60] ; Karen Millen Ltd v Dunnes Stores Ltd [2008] ECDR 11 at [82]-[84] (stating that the registered design must be assessed with regard to particular prior designs rather than a hypothetical amalgam of a number of prior designs). See also Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2007] HCA 21 ; (2007) 235 ALR 202 (upholding the validity in the patent context of a combination of features known collectively in the prior art).
Case: Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2007] HCA 21 ; (2007) 235 ALR 202
Outcome: cited
contrary to the Respondents' submissions, distinctiveness is to be assessed not by comparing the design in question to the prior art base as a whole but by comparing it individually to each relevant piece of prior art: s 15(1) read with ss 16(1) and (2). Part 4 of Chapter 2 of the 2003 Designs Act must be read as a whole. The Respondents cannot, as they do, simply selectively choose ss 15(1) and 19(2) to support their contention that a comparison is made of the design with the totality of the entire relevant prior art base for that design whilst ignoring the express words of the rest of Pt 4 including ss 16 and 19(1). It is those sections which expressly provide that a design is distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base for the design. As a result, a design that combines various features, each of which can be found in the prior art base when considered as a whole but not in any one particular piece of prior art, is capable of being distinctive: Review 2 Pty Ltd v Redberry Enterprise Pty Ltd [2008] FCA 1588 at [60] ; Karen Millen Ltd v Dunnes Stores Ltd [2008] ECDR 11 at [82]-[84] (stating that the registered design must be assessed with regard to particular prior designs rather than a hypothetical amalgam of a number of prior designs). See also Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2007] HCA 21 ; (2007) 235 ALR 202 (upholding the validity in the patent context of a combination of features known collectively in the prior art).
Case: Medical Benefits Fund of Australia Ltd v Cassidy [2003] FCAFC 289 ; (2003) 135 FCR 1
Outcome: applied
if LED Tech had established damage, I do not consider that each of Messrs Keller and Armstrong knew of the "essential matters" that enabled the representations to be characterised in the manner contended: ACCC v Kaye [2004] FCA 1363 at [182] - [186] . To adopt the language of the majority of the Full Court in Medical Benefits Fund of Australia Ltd v Cassidy [2003] FCAFC 289 ; (2003) 135 FCR 1 at [12-16] , although I accept that each of Messrs Keller and Armstrong knew (1) that the Condor Products were manufactured, sold and packaged and (2) the content of the manner in which they were sold which might lead members of at least one class of consumer to believe that the products complied with "prescribed consumer product safety standards", I do not conclude that either Messrs Keller or Armstrong knew the facts that meant that the Representations were not correct. As to the "ADR Approved" representation, they gave evidence as to their subjective understanding of the representation conveyed, which, while possibly negligent or even reckless, was not such as to suggest wilful blindness or actual knowledge of how a relevant purchaser might understand it. As to the "Complies with ADR" representation, their evidence (which I accept) was that they relied upon oral and written assurances from their Chinese manufacturer and testing laboratories which turned out to be belatedly or never substantiated. Was that conduct less than wise? - Yes. Was it negligent and possibly even reckless? - Again, yes. But on the current state of the authorities that is not sufficient to establish the actual knowledge necessary to establish accessorial liability under the TPA. Significantly, it was never put to either Mr Keller or Mr Armstrong during the course of cross-examination that they knew these "essential matters". Accordingly, even if LED Tech had established that the TPA contraventions had caused it damage, they could not establish the secondary liability of the Directors for those contraventions.
Case: MHG Plastic Industries v ACCC (2000) ATPR (Digest) 46-206
Outcome: applied
the question remains, what then is the Australian standard? One thing that does not inform the answer to this question is industry practice. A deal of evidence was led as to what automotive industry experts thought the ADRs required and how the industry tested for compliance in practice. The general thrust of this evidence was that the industry treated much of the removed sections as still being applicable. However, as the Court stated in MHG Plastic Industries v ACCC (2000) ATPR (Digest) 46-206 at [49], any industry practice adopted as to the testing of products against a safety standard cannot affect the proper construction of the requirements under the safety standard. As Emmett J said at first instance in that decision ( ACCC v MHG Plastic Industries Pty Ltd [1999] ATPR 41-712 at [22]), " The Standard means what it says" .
Case: National Exchange Pty Ltd v Australian Securities and Investments Commission [2004] ATPR 42-000
Outcome: cited
relevant legal principles are well known. A two-step analysis is required. First, it is necessary to ask whether each or any of the pleaded representations is conveyed by the particular events complained of: Campomar Sociedad, Limitada v Nike International Ltd [2000] HCA 12 ; (2000) 202 CLR 45 at [105] ; National Exchange Pty Ltd v Australian Securities and Investments Commission [2004] ATPR 42-000 at [18] per Dowsett J (with whom Jacobson and Bennett JJ agreed) and Astrazeneca Pty Ltd v GlaxoSmithKline Australia Pty Ltd [2006] FCAFC 22 ; [2006] ATPR 42-106 at [37] .
Case: Nine Network Australia Pty Ltd v IceTV Pty Ltd (2007) 73 IPR 99
Outcome: cited
of these documents supports such an allegation. First and foremost, I found that the Designs were properly registered and the claim of infringement is made out, so it could not be said that allegations of infringement were unjustified even if they were deemed threats: Nine Network Australia Pty Ltd v IceTV Pty Ltd (2007) 73 IPR 99 at [232] (suggesting that where there is actual infringement a threat will not be unjustified). Secondly, the 5 February 2007 document did not, in its terms, contain any threat of proceedings for design infringement. The document contained 6 paragraphs. The first five related to the ADRs. The last paragraph stated: Since the lamps are similar in appearance to LED Technologies' lamps, we are currently consulting our legal advisers regarding litigation against vendors of these lamps in order to protect our reputation and to protect consumers. Taken at its highest, it states that LED Tech was seeking legal advice. It makes no threat of proceedings for design infringement: but cf Occupational and Medical Innovations Limited v Retractable Technologies Inc (2007) 73 IPR 312 (concluding that a similar letter constituted a threat under s 128 of the Patent Act 1990 (Cth)).
Case: Occupational and Medical Innovations Limited v Retractable Technologies Inc (2007) 73 IPR 312
Outcome: referred to
of these documents supports such an allegation. First and foremost, I found that the Designs were properly registered and the claim of infringement is made out, so it could not be said that allegations of infringement were unjustified even if they were deemed threats: Nine Network Australia Pty Ltd v IceTV Pty Ltd (2007) 73 IPR 99 at [232] (suggesting that where there is actual infringement a threat will not be unjustified). Secondly, the 5 February 2007 document did not, in its terms, contain any threat of proceedings for design infringement. The document contained 6 paragraphs. The first five related to the ADRs. The last paragraph stated: Since the lamps are similar in appearance to LED Technologies' lamps, we are currently consulting our legal advisers regarding litigation against vendors of these lamps in order to protect our reputation and to protect consumers. Taken at its highest, it states that LED Tech was seeking legal advice. It makes no threat of proceedings for design infringement: but cf Occupational and Medical Innovations Limited v Retractable Technologies Inc (2007) 73 IPR 312 (concluding that a similar letter constituted a threat under s 128 of the Patent Act 1990 (Cth)).
Case: Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44 ; (1982) 149 CLR 191
Outcome: cited
the conduct complained of in the present matter was not directed at a specific individual, both questions that have been identified must be considered by reference to the class or classes of consumers likely to be affected by the conduct: Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44 ; (1982) 149 CLR 191 , 199 per Gibbs CJ; Nike at [102], [103], [105] and [106]; Butcher v Lachlan Elder Realty Pty Ltd [2004] HCA 60 ; (2004) 218 CLR 592 at [36] per Gleeson CJ, Hayne and Heydon JJ.
Case: Performing Right Society Ltd v Ciryl Theatrical Syndicate Ltd [1924] 1 KB 1
Outcome: discussed
submitted by counsel for the Directors, the test to be applied is far from certain. One line of cases adopts what is known as the "direct or procure" test ( Performing Right Society Ltd v Ciryl Theatrical Syndicate Ltd [1924] 1 KB 1 , 14-15, while the other line of cases adopts the test in Mentmore Manufacturing v National Merchandising Manufacturing (1978) 89 DLR (3d) 195 that a director is only personally liable if it is reasonable to conclude that the purpose of the director was not the direction of the manufacturing and selling activity of the company in the course of his relationship to it but the "deliberate, wilful and knowing pursuit of a course of conduct that was likely to constitute infringement or reflected an indifference to the risk of it": at 204-205. In Allen Manufacturing Co Pty Ltd v McCallum &amp; Co Pty Ltd [2001] FCA 1838 ; (2001) 53 IPR 400 at [39] , a design infringement case, the Full Court of the Federal Court considered the two tests in the following terms: The authorities were collected and analysed by Beazley J in King v Milpurrurru (1996) 66 FCR 474 at 494-500..... Her Honour noted the existence of two lines of authority. One line supported what she called the "Performing Right Society test " : whether the director had "directed or procured" the company's infringement. The other line supported "the Mentmore test": whether the director had engaged in "the deliberate, wilful and knowing pursuit of a course of conduct that was likely to constitute infringement or reflected an indifference to the risk of it". Beazley J expressed a preference for the Mentmore test, on the basis that the Performing Right Society test did not "pay sufficient regard, either to the separate legal existence of the company, or to the fact that the company acts through its directors": see [66 FCR at 500]. However, this preference had no immediate consequence; her Honour held (again at [500]) that the appellants were not liable under either test.
Case: Placer (Granny Smith) Pty Ltd v Thiess Contractors Pty Ltd [2003] HCA 10 ; (2003) 196 ALR 257
Outcome: cited
the circumstances, the better approach is to assess damages doing the best I can, even if such quantification necessarily involves a degree of speculation and guesswork: eg Placer (Granny Smith) Pty Ltd v Thiess Contractors Pty Ltd [2003] HCA 10 ; (2003) 196 ALR 257 at [37] - [38] ; Adidas-Solomon AG v Turner (2003) 58 IPR 66 at [4]-[5]; Enzed Holdings Ltd v Wynthea Pty Ltd (1984) 57 ALR 167 , 183; Sony Computer Entertainment Australia Pty Ltd v Stirling [2001] FCA 1852 at [7] .
Case: Review Australia Pty Ltd v New Cover Group Pty Ltd [2008] FCA 1589
Outcome: cited
"informed user" concept in the 2003 Designs Act has been the subject of recent judicial consideration in Australia: Review 2 Pty Ltd v Redberry Enterprise Pty Ltd [2008] FCA 1588 at [19] - [27] ; Review Australia Pty Ltd v New Cover Group Pty Ltd [2008] FCA 1589. It is a concept the ALRC borrowed from European Community Design law, now codified in Council Regulation (EC) No. 6/2002 and in the Registered Design Act 1949 (UK): see ALRC Report, para 5.17-5.21 and 6.12-6.13; Proctor &amp; Gamble Company v Reckitt Benckiser (UK) Ltd (2007) 73 IPR 605 at [32] and J Choo (Jersey) Ltd v Towerstone Ltd [2008] FSR 19 at [7]. How then does one assess the overall impression of a design in infringement proceedings? As noted earlier, until recently there has been little Australian judicial consideration of the 2003 Designs Act. The principal cases to date include Review 2 Pty Ltd v Redberry Enterprise Pty Ltd [2008] FCA 1588 ; Review Australia Pty Ltd v Innovative Lifestyle Investments Pty Ltd (2008) 166 FCR 358 ; Review Australia Pty Ltd v New Cover Group Pty Ltd [2008] FCA 1589 and World of Technologies (Aust) Pty Ltd v Tempo (Aust) Pty Ltd (2007) 71 IPR 307. I say "at first glance," however, because in the Review cases, Kenny J added an important qualification to Jessup J's holding in Innovative . Her Honour noted the long-standing common law presumption, codified in s 21(1)(b) of the Acts Interpretation Act 1901 (Cth), that statutes are to be read as being confined to their operation within territorial limits: Review 2 Pty Ltd v Redberry Enterprise Pty Ltd [2008] FCA 1588 at [77] ; Review Australia Pty Ltd v New Cover Group Pty Ltd [2008] FCA 1589 at [48] . Although the Respondents in this case did not raise any extraterritoriality issue, I consider it appropriate to do so because the parties did not have the benefit of Kenny J's judgment at the time of trial and because the issue relates to the Court's jurisdiction - that is, it goes to a matter in respect of which the Court is required to satisfy itself regardless of the parties' submissions or lack thereof.
Case: Rolawn Lawn Ltd v Turfmech Machinery Ltd [2008] EWHC 989 Pat
Outcome: cited
is little doubt that first impressions are important when comparing a registered design with an allegedly infringing product in the manner prescribed by the 2003 Designs Act: ALRC Report para 5.15. In the United Kingdom, in applying an "overall impression" test, the approach is to hold a product embodying the registered design (provided that the Court is satisfied that it is a true embodiment of the registered design) and the alleged infringing product in hand and undertake a reasonably careful comparison between the two: Proctor &amp; Gamble Company 73 IPR 605 at [12]. See also J Choo (Jersey) Ltd v Towerstone Ltd [2008] FSR 19 at [6] (citing Proctor &amp; Gamble for the proposition that court may have regard to a physical embodiment of the registered design in making the comparison to the allegedly infringing product); but see Rolawn Lawn Ltd v Turfmech Machinery Ltd [2008] EWHC 989 Pat at [124] (stating that the exercise involves comparing the registered design to a photograph of the allegedly infringing product rather than the product itself).
Case: Rural Press Ltd v ACCC [2002] FCAFC 213 ; (2002) 118 FCR 236
Outcome: cited
next matter to be considered is the claim of secondary liability of the Directors under the TPA. The principles are well established. Natural persons will be liable in damages for a contravention by a corporation if they had a "close, rather than a remote involvement in the contravention": Fencott v Muller [1983] HCA 12 ; (1983) 152 CLR 570 , 584. Moreover, the participation in the contravention requires actual, rather than constructive, knowledge of the essential matters that make up the contravention: Yorke v Lucas [1985] HCA 65 ; (1985) 158 CLR 661 , 666-670 and 677, Rural Press Ltd v ACCC [2002] FCAFC 213 ; (2002) 118 FCR 236 at [67] and Quinlivan v ACCC (2004) 160 FCR 1 at [8]-[9].