Case: Dart Industries Inc v Decor Corp Pty Ltd (1989) 15 IPR 403
Outcome: cited
As to the first question, s 17(1) of the 1906 Act provides a design may be registered if "it is a new or original design". When deciding whether a design is new or original the issue is one of fact, to be determined through the eye of the judge. For that purpose the judge may be instructed by expert evidence. In Dart Industries Inc v Decor Corp Pty Ltd (1989) 15 IPR 403 Lockhart J (with whom Jenkinson and Gummow JJ agreed) said (at 408-409): "[I]t is for the court to determine the meaning of a design in proceedings under the Act, whether the central question be the meaning of the design, novelty or infringement... [W]hile some designs are simple so that the court needs no expert evidence to interpret them, other designs are complex and judges require technical assistance in order to understand them. Such evidence is plainly admissible, but ultimately it is for the court to rule on the meaning of a design." He went on (at 409) to make a similar observation in relation to the prior art: "[P]rior art may be a fairly simple matter in a particular case, requiring little or no technical evidence. On the other hand, the understanding and interpretation of prior art may call for expert assistance to be provided to the court... I see no objection in an appropriate case to evidence being received from persons in the relevant trade or industry or members of the public directed to the question of infringement..." 17 Here the prior art consists of several lighting catalogues and brochures as well as several batten lights. These were examined by Peter Bayly, who has extensive experience, spanning almost 50 years, in industrial design. In the end, of course, it is my own impression that will determine whether the registered design is new or original. But I have been assisted by Mr Bayly's evidence in performing my task. 18 The evidence indicates that there was a prolific product range of batten lights around 1989. Of the many products then in existence the product most visually similar to the registered design is the "AVS Series" vandal resistant luminare (the AVS Light) sold by Macwil Lighting &amp; Electrical Co Pty Ltd. During the course of the hearing, it became apparent that if the registered design is new or original when compared with the AVS Light, its newness or originality will not be brought down by the other products I have seen. 27 It is also important to bear in mind what was said by Lockhart J in Dart Industries at 409: "Where novelty or originality is discovered in slight variations [from the prior art base], there cannot be infringement without a very close resemblance between the registered design and the article alleged to be an infringement of the design... 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." 28 I make the following observations as regards the Centurion: the luminare is a longitudinal light fitting that houses fluorescent tubes; it is of continuous cross-section and appears to have a greater overall length than the registered design being approximately 11 times its width and having a height approximately two-thirds its width; the shape of the end cap is (as Mr Bayly described it) "basically rectangular, also trapezoidal" and they have no step; the finish of the end caps is not smooth like the finish on the registered design; it has a single centrally aligned screw with a recessed head in the top surface of each end cap; and the diffuser is prismatic rather than the longitudinal lines of the registered design. 29 On the question whether the Centurion is an obvious imitation of the registered design, there is at least one important difference; the registered design has a step in the end caps, the Centurion does not. I consider the presence of the step in the end caps to be a significant feature of the form and shape of the registered design which, together with other configuration features, distinguishes it from the prior art. The absence of the step in the Centurion may be described as a small difference from the registered design but in my opinion it is a sufficient difference to defeat the allegation that the Centurion is an obvious imitation of the registered design.