Case: Review Australia Pty Ltd v Innovative Lifestyle Investments Pty Ltd (2008) 166 FCR 358
Outcome: discussed
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. In Review Australia Pty Ltd v Innovative Lifestyle Investments Pty Ltd (2008) 166 FCR 358 ( Innovative ), Jessup J concluded that the word make in s 71(1) also includes those who direct, cause, or procure an infringing item to be made as well as those who make such an item themselves: Innovative at [21]. At first glance, therefore, it would seem that Ren and Olsen would be considered primary infringers. Although they did not make the products themselves, they directed, caused, or procured the Condor lights to be made by issuing purchase orders to their Chinese suppliers based on samples, designs, or other specifications. Elecspess and AAA, having only sold the products, would be secondary infringers. 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. For those reasons, Ren and Olsen could not be considered primary infringers, even though they procured the making of the infringing Condor lights, because the actual manufacture occurred outside of Australia. That is not to say that they would therefore escape liability completely. Rather, each of Elecspess, AAA, Ren and Olsen must be considered secondary infringers on the basis of their having imported (in the case of Ren and Olsen) or offered for sale (in the case of all four) in Australia the infringing Condor lights. I would consider the Director Respondents as secondary infringers as well, on a similar basis as that given by Jessup J in Innovative - namely, that importing or selling, as the case may be, should be understood to also include directing, causing, or procuring an infringing item to be imported or sold. The relevant provision of s 75 is therefore s 75(2)(b). That subsection requires the court to consider, in determining whether an affirmative defence is available, whether a secondary infringer was aware or could not reasonably have been expected to have been aware that the design was registered. Assuming that Ren and Olsen in fact had taken no steps to ascertain whether the Designs were registered at the time of the infringing conduct, that fact alone might not have disentitled them to rely upon the affirmative defence. The language of s 75(2)(b) ("could reasonably have been expected to be aware") shows that a Court cannot assume that there is always an affirmative duty to search the Register. Such a possibility was referred to by the ALRC at par 14.16 of its Report in the following terms: The register provides notice to the world that a design is registered. If a defendant has not searched the register, the court may conclude under s 32B that a search was a reasonable step that the defendant had neglected to take . It should not be mandatory for persons who claim innocence in infringement to search the register . However in exercising its discretion, the court may take into account whether it was reasonable in all the circumstances for a search to have been conducted. (Emphasis added.) The ALRC added at par 14.17, "It would be inappropriate for a retailer or importer, who may deal with a variety of products, to be required to check whether the products' designs have all been registered." I accept that it would be inappropriate to impose a per se duty on secondary infringers. However, in my view, there will be circumstances where a secondary infringer should reasonably be expected to check whether the products' designs have been registered. If, having checked, they would have ascertained the limits of the monopoly (which is the case here), then they would not be able to make out the affirmative defence. The 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).