mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Application by Pauline Ann Walton to invalidate UK Registered Design in the name of Zap Ltd (UK IPO, 0-027-07, 22 January 2007)
Outcome: discussed
As also noted in Redberry , in January 2007, the Design Registrar of the UK Intellectual Property Office had cited and applied the Architectural Lighting 'informed user' analysis in ruling on the validity of a clothing design registration: see Application by Pauline Ann Walton to invalidate UK Registered Design in the name of Zap Ltd (UK IPO, 0-027-07, 22 January 2007) (" Walton "). 27 In Walton , the applicant sought to invalidate a poncho design registered by Zap Ltd ("Zap") on the grounds that it lacked novelty, in part because it copied her earlier poncho designs: see Walton at [3], [32]. Zap defended on the grounds that the basic design of the poncho had long been known, and thus there was limited freedom to design: see [15]. Applying his Honour Judge Fysh QC's definition of informed user, as approved by Lewison J in Proctor &amp; Gamble Co v Reckitt Benckiser ( Walton at [36]-[37]), the Registrar accepted Zap's submissions, concluding "I believe that an informed user would be aware that there is limited freedom to design a poncho which is not basically square or rectangular in shape": see Walton at [40]; also at [43]. Based primarily on a difference in neck design, the Registrar found that the Zap design would in fact create a different overall impression on an informed user and thus it was validly registered: see Walton at [39]-[45].
Case: Re Application in the name of Apple Computer Inc (2007) 74 IPR 164
Outcome: considered
As noted in Redberry , the Australian Designs Office ("ADO") considered the informed user standard in Re Application in the name of Apple Computer Inc (2007) 74 IPR 164 (" Apple ") and Icon Plastics Pty Ltd [2007] ADO 2 (5 July 2007) (" Icon "): see Icon at [19], [21] and Apple at [11], [14]. I refer to, but do not repeat, the more detailed discussion of Apple and Icon in Redberry . 30 As noted in Redberry , there may be a difference in the discussion to date as to what is needed to have the requisite product familiarity. On one view, this familiarity is greater than the information possessed by the average user; on another view, this familiarity is that which is possessed by the ordinary user: compare Architectural Lighting at [50] with Apple at [14]. I indicated in Redberry , for the reasons stated there, that I preferred the former approach. I doubt that, generally, the ordinary user will be appropriately regarded as an informed user.
Case: Icon Plastics Pty Ltd [2007] ADO 2
Outcome: cited
As noted in Redberry , the Australian Designs Office ("ADO") considered the informed user standard in Re Application in the name of Apple Computer Inc (2007) 74 IPR 164 (" Apple ") and Icon Plastics Pty Ltd [2007] ADO 2 (5 July 2007) (" Icon "): see Icon at [19], [21] and Apple at [11], [14]. I refer to, but do not repeat, the more detailed discussion of Apple and Icon in Redberry .
Case: Prior v Lansdowne Press Pty Ltd [1977] VR 65
Outcome: referred to
I turn first to Review's claim for general damages. Save for an exercise of discretion under s 75(2) of the Designs Act, Review is entitled to an amount representing general damages for the infringement. The measure of damages here is the diminution in the value of the design as a chose in action, which is reflected in loss of sales and injury to reputation and the like: see Prior v Lansdowne Press Pty Ltd [1977] VR 65 (" Prior v Lansdowne ") at 70 per Gowans J. 44 Review sought damages on an alternative basis, which is made out in the following way. I accept that the infringement resulted in a probable diminution in the value of the design as a chose in action because the infringement resulted in some probable diminution in the commercial value of the design in respect of its future use. Further, the reproduction of the design by New Cover/Maco under the Spicy Sugar label and the wholesale distribution of garments embodying the design to New Cover/Maco's various retail customers is likely to have had some adverse effect on the reputation of the design and its "exclusivity" (or "freshness" as Gowans J said in Prior v Lansdowne at 70; applied by von Doussa J in Milpurrurru v Indofurn Pty Ltd (1994) 30 IPR 209 at 243). See also Review Australia Pty Ltd v Innovative Lifestyle Investments Pty Ltd [2008] FCA 74 (" Innovative Lifestyle ") at [31] per Jessup J. That is, on the evidence before the Court (to which I am about to refer), the reproduction of the Review Design under the cheaper Spicy Sugar label had the distinct potential to diminish customer interest in the Review Design and, in consequence, consumer demand for garments embodying the Review Design.
Case: Milpurrurru v Indofurn Pty Ltd (1994) 30 IPR 209
Outcome: referred to
Review sought damages on an alternative basis, which is made out in the following way. I accept that the infringement resulted in a probable diminution in the value of the design as a chose in action because the infringement resulted in some probable diminution in the commercial value of the design in respect of its future use. Further, the reproduction of the design by New Cover/Maco under the Spicy Sugar label and the wholesale distribution of garments embodying the design to New Cover/Maco's various retail customers is likely to have had some adverse effect on the reputation of the design and its "exclusivity" (or "freshness" as Gowans J said in Prior v Lansdowne at 70; applied by von Doussa J in Milpurrurru v Indofurn Pty Ltd (1994) 30 IPR 209 at 243). See also Review Australia Pty Ltd v Innovative Lifestyle Investments Pty Ltd [2008] FCA 74 (" Innovative Lifestyle ") at [31] per Jessup J. That is, on the evidence before the Court (to which I am about to refer), the reproduction of the Review Design under the cheaper Spicy Sugar label had the distinct potential to diminish customer interest in the Review Design and, in consequence, consumer demand for garments embodying the Review Design.
Case: Review Australia Pty Ltd v Innovative Lifestyle Investments Pty Ltd [2008] FCA 74
Outcome: referred to
Review sought damages on an alternative basis, which is made out in the following way. I accept that the infringement resulted in a probable diminution in the value of the design as a chose in action because the infringement resulted in some probable diminution in the commercial value of the design in respect of its future use. Further, the reproduction of the design by New Cover/Maco under the Spicy Sugar label and the wholesale distribution of garments embodying the design to New Cover/Maco's various retail customers is likely to have had some adverse effect on the reputation of the design and its "exclusivity" (or "freshness" as Gowans J said in Prior v Lansdowne at 70; applied by von Doussa J in Milpurrurru v Indofurn Pty Ltd (1994) 30 IPR 209 at 243). See also Review Australia Pty Ltd v Innovative Lifestyle Investments Pty Ltd [2008] FCA 74 (" Innovative Lifestyle ") at [31] per Jessup J. That is, on the evidence before the Court (to which I am about to refer), the reproduction of the Review Design under the cheaper Spicy Sugar label had the distinct potential to diminish customer interest in the Review Design and, in consequence, consumer demand for garments embodying the Review Design. 47 In this circumstance, a further question arises as to whether New Cover/Maco can successfully rely on s 75(2)(b) of the Designs Act. The evidence of Mr Meng and Ms Dolcel was that New Cover/Maco prepared the companies' clothing range in Australia and carried out sampling, grading and manufacturing in China, after which they imported the garments into Australia. If the garments had been made in Australia, then I would be bound to find that New Cover/Maco had made the garments in contravention of s 71(1)(a) of the Designs Act. They would have been liable for a primary infringement: compare Innovative Lifestyle at [21]. Section 75(2)(b) would not have been available to them.
Case: Jumbunna Coal Mine NL v Victorian Coal Miners' Association [1908] HCA 95 ; (1908) 6 CLR 309
Outcome: cited
The evidence establishes, however, that the infringing garments were made in China and were thereafter imported into Australia and sold here. Section 21(1)(b) of the Acts Interpretation Act 1901 (Cth) provides that, in any Act, unless the contrary intention appears, "references to localities jurisdictions and other matters and things shall be construed as references to such localities jurisdictions and other matters and things in and of the Commonwealth". This provision reflects the common law presumption that statutes are read "as being prima facie restricted in their operation within territorial limits": see Jumbunna Coal Mine NL v Victorian Coal Miners' Association [1908] HCA 95 ; (1908) 6 CLR 309 at 363 per O'Connor J, discussed in DC Pearce and RS Geddes, Statutory Interpretation in Australia (6 th ed, 2006) at [5.5]. The effect of s 21(1)(b) of the Acts Interpretation Act 1901 (Cth) is implicitly acknowledged in s 4 of the Designs Act. Section 21(1)(b) of this Act operates to confine the making or offering to make, with which s 71(1)(a) of the Designs Act is concerned, to a making or an offering to make in Australia (as s 4 of the Designs Act reflects): compare Hella-Australia Pty Ltd v Quinton Hazell (Aust) Pty Ltd (1967) 10 FLR 86 (" Hella-Australia "), which Gummow J cited with approval in Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495 (" Carnival Cruise ") at 509. In Hella-Australia , Street J refused an interlocutory injunction on the basis that an article did not infringe a registered design under s 30(b) of the Designs Act 1906 (Cth) unless the design had been applied to the article in Australia. Following Hella-Australia , Parliament amended s 30, with the result that the importation and sale of articles to which the design had been applied outside Australia were also infringements: see Designs Amendment Act 1967 (Cth) ("the 1967 Amendment") and Polyaire Pty Ltd v K-Aire Pty Ltd [2005] HCA 32 ; (2005) 221 CLR 287 at 293. Although Hella-Australia concerned a provision in the former Act, nonetheless it and the authorities referred to in Carnival Cruise and Carnival Cruise itself, establish that, absent contrary statutory intent, infringements must occur within Australia. Accordingly, on the evidence, the liability of New Cover/Maco could not arise under s 71(1)(a) but only under s 71(1)(b), (c), (d) or (e).
Case: Hella-Australia Pty Ltd v Quinton Hazell (Aust) Pty Ltd (1967) 10 FLR 86
Outcome: discussed
The evidence establishes, however, that the infringing garments were made in China and were thereafter imported into Australia and sold here. Section 21(1)(b) of the Acts Interpretation Act 1901 (Cth) provides that, in any Act, unless the contrary intention appears, "references to localities jurisdictions and other matters and things shall be construed as references to such localities jurisdictions and other matters and things in and of the Commonwealth". This provision reflects the common law presumption that statutes are read "as being prima facie restricted in their operation within territorial limits": see Jumbunna Coal Mine NL v Victorian Coal Miners' Association [1908] HCA 95 ; (1908) 6 CLR 309 at 363 per O'Connor J, discussed in DC Pearce and RS Geddes, Statutory Interpretation in Australia (6 th ed, 2006) at [5.5]. The effect of s 21(1)(b) of the Acts Interpretation Act 1901 (Cth) is implicitly acknowledged in s 4 of the Designs Act. Section 21(1)(b) of this Act operates to confine the making or offering to make, with which s 71(1)(a) of the Designs Act is concerned, to a making or an offering to make in Australia (as s 4 of the Designs Act reflects): compare Hella-Australia Pty Ltd v Quinton Hazell (Aust) Pty Ltd (1967) 10 FLR 86 (" Hella-Australia "), which Gummow J cited with approval in Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495 (" Carnival Cruise ") at 509. In Hella-Australia , Street J refused an interlocutory injunction on the basis that an article did not infringe a registered design under s 30(b) of the Designs Act 1906 (Cth) unless the design had been applied to the article in Australia. Following Hella-Australia , Parliament amended s 30, with the result that the importation and sale of articles to which the design had been applied outside Australia were also infringements: see Designs Amendment Act 1967 (Cth) ("the 1967 Amendment") and Polyaire Pty Ltd v K-Aire Pty Ltd [2005] HCA 32 ; (2005) 221 CLR 287 at 293. Although Hella-Australia concerned a provision in the former Act, nonetheless it and the authorities referred to in Carnival Cruise and Carnival Cruise itself, establish that, absent contrary statutory intent, infringements must occur within Australia. Accordingly, on the evidence, the liability of New Cover/Maco could not arise under s 71(1)(a) but only under s 71(1)(b), (c), (d) or (e).
Case: Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495
Outcome: cited
The evidence establishes, however, that the infringing garments were made in China and were thereafter imported into Australia and sold here. Section 21(1)(b) of the Acts Interpretation Act 1901 (Cth) provides that, in any Act, unless the contrary intention appears, "references to localities jurisdictions and other matters and things shall be construed as references to such localities jurisdictions and other matters and things in and of the Commonwealth". This provision reflects the common law presumption that statutes are read "as being prima facie restricted in their operation within territorial limits": see Jumbunna Coal Mine NL v Victorian Coal Miners' Association [1908] HCA 95 ; (1908) 6 CLR 309 at 363 per O'Connor J, discussed in DC Pearce and RS Geddes, Statutory Interpretation in Australia (6 th ed, 2006) at [5.5]. The effect of s 21(1)(b) of the Acts Interpretation Act 1901 (Cth) is implicitly acknowledged in s 4 of the Designs Act. Section 21(1)(b) of this Act operates to confine the making or offering to make, with which s 71(1)(a) of the Designs Act is concerned, to a making or an offering to make in Australia (as s 4 of the Designs Act reflects): compare Hella-Australia Pty Ltd v Quinton Hazell (Aust) Pty Ltd (1967) 10 FLR 86 (" Hella-Australia "), which Gummow J cited with approval in Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495 (" Carnival Cruise ") at 509. In Hella-Australia , Street J refused an interlocutory injunction on the basis that an article did not infringe a registered design under s 30(b) of the Designs Act 1906 (Cth) unless the design had been applied to the article in Australia. Following Hella-Australia , Parliament amended s 30, with the result that the importation and sale of articles to which the design had been applied outside Australia were also infringements: see Designs Amendment Act 1967 (Cth) ("the 1967 Amendment") and Polyaire Pty Ltd v K-Aire Pty Ltd [2005] HCA 32 ; (2005) 221 CLR 287 at 293. Although Hella-Australia concerned a provision in the former Act, nonetheless it and the authorities referred to in Carnival Cruise and Carnival Cruise itself, establish that, absent contrary statutory intent, infringements must occur within Australia. Accordingly, on the evidence, the liability of New Cover/Maco could not arise under s 71(1)(a) but only under s 71(1)(b), (c), (d) or (e).
Case: Polyaire Pty Ltd v K-Aire Pty Ltd [2005] HCA 32 ; (2005) 221 CLR 287
Outcome: cited
The evidence establishes, however, that the infringing garments were made in China and were thereafter imported into Australia and sold here. Section 21(1)(b) of the Acts Interpretation Act 1901 (Cth) provides that, in any Act, unless the contrary intention appears, "references to localities jurisdictions and other matters and things shall be construed as references to such localities jurisdictions and other matters and things in and of the Commonwealth". This provision reflects the common law presumption that statutes are read "as being prima facie restricted in their operation within territorial limits": see Jumbunna Coal Mine NL v Victorian Coal Miners' Association [1908] HCA 95 ; (1908) 6 CLR 309 at 363 per O'Connor J, discussed in DC Pearce and RS Geddes, Statutory Interpretation in Australia (6 th ed, 2006) at [5.5]. The effect of s 21(1)(b) of the Acts Interpretation Act 1901 (Cth) is implicitly acknowledged in s 4 of the Designs Act. Section 21(1)(b) of this Act operates to confine the making or offering to make, with which s 71(1)(a) of the Designs Act is concerned, to a making or an offering to make in Australia (as s 4 of the Designs Act reflects): compare Hella-Australia Pty Ltd v Quinton Hazell (Aust) Pty Ltd (1967) 10 FLR 86 (" Hella-Australia "), which Gummow J cited with approval in Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495 (" Carnival Cruise ") at 509. In Hella-Australia , Street J refused an interlocutory injunction on the basis that an article did not infringe a registered design under s 30(b) of the Designs Act 1906 (Cth) unless the design had been applied to the article in Australia. Following Hella-Australia , Parliament amended s 30, with the result that the importation and sale of articles to which the design had been applied outside Australia were also infringements: see Designs Amendment Act 1967 (Cth) ("the 1967 Amendment") and Polyaire Pty Ltd v K-Aire Pty Ltd [2005] HCA 32 ; (2005) 221 CLR 287 at 293. Although Hella-Australia concerned a provision in the former Act, nonetheless it and the authorities referred to in Carnival Cruise and Carnival Cruise itself, establish that, absent contrary statutory intent, infringements must occur within Australia. Accordingly, on the evidence, the liability of New Cover/Maco could not arise under s 71(1)(a) but only under s 71(1)(b), (c), (d) or (e).
Case: Aristocrat Technologies Australia Pty Ltd v DAP Services (Kempsey) Pty Ltd (2007) 157 FCR 564
Outcome: referred to
Additional damages may be awarded on principles similar to those that govern aggravated and exemplary damages at common law: compare Aristocrat Technologies Australia Pty Ltd v DAP Services (Kempsey) Pty Ltd (2007) 157 FCR 564 (" Aristocrat ") at 570 per Black CJ and Jacobson J. There are elements of penalty and deterrence in making an award of additional damages: Aristocrat at 570; also Venus Adult Shops Pty Ltd v Fraserside Holdings Ltd (2006) 70 IPR 517 at 557 per Finkelstein J. A purpose of additional damages is to "strip the infringer of all pecuniary benefits received from the infringement" and the sufficiency of the compensatory damages may be a relevant matter: see Aristocrat at 571-72.
Case: Venus Adult Shops Pty Ltd v Fraserside Holdings Ltd (2006) 70 IPR 517
Outcome: cited
Additional damages may be awarded on principles similar to those that govern aggravated and exemplary damages at common law: compare Aristocrat Technologies Australia Pty Ltd v DAP Services (Kempsey) Pty Ltd (2007) 157 FCR 564 (" Aristocrat ") at 570 per Black CJ and Jacobson J. There are elements of penalty and deterrence in making an award of additional damages: Aristocrat at 570; also Venus Adult Shops Pty Ltd v Fraserside Holdings Ltd (2006) 70 IPR 517 at 557 per Finkelstein J. A purpose of additional damages is to "strip the infringer of all pecuniary benefits received from the infringement" and the sufficiency of the compensatory damages may be a relevant matter: see Aristocrat at 571-72.
Case: Microsoft Corporation v Goodview Electronics Pty Ltd (2000) 49 IPR 587
Outcome: referred to
I am not satisfied that the infringement was flagrant. In the circumstances discussed above, I am inclined to accept that, at the time of the infringement, no-one at New Cover/Maco knew that the Review Design was a registered design. Further, for the reasons stated in Redberry at [80], I reject the applicants' submission that a swing tag on the Review Dress provided notice to persons such as New Cover/Maco that the Review Dress embodied a registered design and attracted s 75(4) of the Designs Act. New Cover/Maco did not, therefore, deliberately infringe Review's design rights: see Microsoft Corporation v Goodview Electronics Pty Ltd (2000) 49 IPR 587 at 591 per Branson J. Further, Review did not contest the claim made by New Cover/Maco that they ceased their infringing conduct in October/November 2006, after becoming aware of Review's claim.
Case: Jones v Dunkel (1959) 101 CLR 298
Outcome: cited
New Cover/Maco might also readily have given evidence as to the commercial benefit that they obtained in selling the infringing garments, but they did not choose to do so. In its absence, I assume that this evidence would not have advanced their case: see Jones v Dunkel (1959) 101 CLR 298. In the circumstances, I assume, therefore, that New Cover/Maco ran a profitable operation and that the sales of the infringing garments contributed to this operation.
Case: Microsoft Corporation v Ezy Loans Pty Ltd (2004) 63 IPR 54
Outcome: referred to
Considered together, the foregoing considerations illustrates that a case of design infringement in the fashion industry can be expensive and difficult to prosecute if a defendant chooses to make it so. To adapt what Stone J said in Microsoft Corporation v Ezy Loans Pty Ltd (2004) 63 IPR 54 at 78, "[i]t is important to more than the applicants that [design] infringers are not encouraged to think that by ignoring court proceedings they can escape the consequences of ... infringements of the rights of others in the pursuit of profits". 62 In these circumstances, I would award an amount of additional damages. Any assessment is necessarily unscientific, but the figure of $50,000 reflects the relevant matters. 63 In summary, for the reasons stated, I would uphold Review's infringement claim regarding the Review Design and dismiss the cross-claim. Judgment in favour of Review should be given in the sum of $85,000. In the circumstances of this case, including the respondents' attitude and conduct in these proceedings, I would grant the injunctive and declaratory relief sought. 64 The trial of this proceeding is, however, not yet concluded. There remain the claims regarding registered design No 306802 to be determined. Accordingly, at this stage I would order merely that the parties file and serve submissions as to the future conduct of the proceeding. I certify that the preceding sixty-four (64) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Kenny. Associate: Dated: 24 October 2008 Counsel for the Applicant: Mr C Golvan SC with Mr Wise Solicitor for the Applicant: Middletons The Respondents: Unrepresented Dates of Hearing: 5 - 14 February 2008 Date of Final Submissions (with leave) 22 October 2008 Date of Judgment: 24 October 2008 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2008/1589.html