Case: Review 2 Pty Ltd v Redberry Enterprise Pty Ltd [2008] FCA 1588
Outcome: discussed
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). Thirdly, the judgment is an objective one. In assessing substantial similarity in overall impression, the standard to be applied is that of the informed user - namely, the court standing in the shoes of a notional person who is familiar with the product to which the design relates, or products similar to the product to which the design relates: s 19(4); Review 2 Pty Ltd v Redberry Enterprise Pty Ltd [2008] FCA 1588 ; see also Dart Industries Inc v Decor Corporation Pty Ltd (1989) 15 IPR 403 , 408-409. That informed user , in assessing substantial similarity in overall impression: gives more weight to similarities between the designs than to differences between them: s 19(1); considers the state of development of the prior art base for the design: s 19(2)(a); considers the particular visual features of the design described in the statement of newness and distinctiveness in the context in which they appear: s 19(2)(b) and (c); if only part of the design is substantially similar to another design, considers the amount, quality and importance of that part in the context of the design as a whole: s 19(2)(c); and considers the freedom of the creator of the design to innovate: s 19(2)(d). The "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]. The "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] . 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. With respect, I disagree with the proposition that as a general matter a court should start out by comparing product with product rather than registered design with product. First and most importantly, such an approach is inconsistent with the statutory language. Section 71(1)(a) directs the court to perform the substantial similarity analysis by comparing a product (the allegedly infringing item) to the registered design. Secondly, Jacob LJ's approach is inconsistent with that taken by Kenny J in Review 2 Pty Ltd v Redberry Enterprise Pty Ltd [2008] FCA 1588 at [28] , [35]. Significantly, the expert evidence in Review was challenged on the basis that the witness had improperly compared product with product (and had even tried the products on): see [33]. Although Kenny J ultimately allowed the evidence, her Honour nevertheless proceeded on the basis that the comparison for the court was between registered design and product and the expert evidence in question had to be taken subject to the complaints made by the other side: see [34]-[36]. I am of a similar view. While there may be circumstances in which it is appropriate (or at least not wholly inappropriate) for an expert witness giving evidence as an informed user to have regard to a product embodying the registered design in providing an opinion on the substantial similarity question, the task for the court itself as laid down by the statute remains to compare the registered design to the allegedly infringing product. Moreover, even if I were not inclined to the view of Kenny J, I could not, in light of the statutory language, consider her Honour's approach plainly wrong, and thus I would follow it in preference to Jacob LJ's approach in any event. I therefore conclude that infringement is determined by comparing the allegedly infringing product against the registered design, not by comparing a product embodying the registered design against the infringing product: s 71. Thus the fact that the actual LED light is similar to the Condor TL light is not relevant. Moreover, infringement is determined by comparing only the visible features of the design to the infringing product: ss 7 and 19. Thus the fact that the products have different materials in the lens or have different voltages is also irrelevant. If a visual comparison is made of the top view of a Condor product (such as the TL80ARW) against the registered design (eg figures 1, 2, 3 and 4 of 6 in Annexure A), the Condor product is "substantially similar in overall impression" to the Designs: s 71(1)(a) of the 2003 Designs Act. There is a continuous base. There is a flat strip or landing between each lens. The sides of the base of both the Designs and the Condor product comprise a sloping, rounded mounting bracket surrounding the lenses. 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. 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).