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Design Law Strengthened in Australia

In 2003, the Designs Act in Australia was reworked to remedy some of the problems and issues with previous legislation. The previous legislation often found the design applications were always valid but never infringed. The 2003 legislation sought to fix this issue by rewriting the infringement test. In a recent decision, Multisteps Pty Ltd v Source & Sell Pty Ltd [2013 FCA 743 (Multisteps Case), the Federal Court has sought to interpret the new infringement test and determine its functionality on a real case. Up to this time, there has been little or no caselaw regarding the infringement test for designs under the new act and the Multisteps case now serves as a precedent.

The Multisteps Case was focused three registered designs for the containers used to store and package cherry tomatoes. Justice Yates in his decision commented that s19 of the Design Act provides the basis for infringement test of registered designs in Australia. In summary, the infringement test is whether a design is substantially similar in overall impression to another design and that the person undertaking the test must apply the standard of a person who is familiar with the product to which the design relates.

Justice Yates took a flexible approach to the assessment and determined that the informed user definition is flexible enough to include the views of consumers, experts, specialists and skilled tradespersons. In other words, the informed person doesn’t have to be an expert in the field.

Justice Yates also noted that “what this shows is that, although the test is based on impression, it is not based merely on casual comparison between the designs for a given article. There needs to be a studied comparison based on the prescription of s19 of the Designs Act. Thus, the notion of imperfect recollection – familiar in trade mark law – has no application when determining design similarity.”

The Multisteps Case will be welcomed by Design Applicants, as it provides some significant assistance in interpreting the law in a area with relatively few cases. The Multisteps Case will greatly aid Design owners and provide some certainty regarding both validity and infringement test into the future.

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