How close to an Australian registered design does a later design need to be to infringe it?
Designs relate to the visual appearance of a product. According to s71 of the Designs Act 2003(Cth), to infringe, a later design must be ‘substantially similar in overall impression’ to a registered design. Several decisions of the Federal Court of Australia (FCA) and the Full Court of the FCA in recent years provide guidance as to how this test is applied.
Factors to consider
In determining whether an allegedly infringing design is ‘substantially similar in overall impression’ to a registered design, s19 of the Designs Act requires a court to have regard to various factors. More weight is to be given to similarities between the designs than differences; regard is to be had to the state of development of the prior art base, to any design features identified in a statement of newness and distinctiveness filed with the design application and to the freedom of the creator of the design to innovate. If only part of the later design is substantially similar to the registered design, regard must be had to the amount, quality and importance of that part in the context of the design as a whole. These factors are to be assessed at the standard of the informed user.
The informed user
The standard of the informed user is therefore the benchmark at which the similarity of overall impression is assessed. It is therefore important to gauge the informed user correctly. In Review 2 Pty Ltd v Redberry Enterprise Pty Ltd  FCA 1588, which concerned designs for women’s dresses, it was held that the informed user is not a design expert, but nor are they necessarily an ‘ordinary user’ of the product. Thus, the informed user in the field of designs for women’s dresses was likely to have particular familiarity with fashion trends. More recently in Multisteps Pty Limited v Source and Sell Pty Limited  FCA 743, which concerned produce containers, ‘the standard of the informed user is the standard of a person who is familiar with produce or similar containers…no greater elaboration is required.’
Freedom of the designer to innovate
The perspective of the informed user is used to determine the freedom of the designer to innovate. In Multisteps, expert evidence, submitted as being from the viewpoint of the informed user, was used to arrive at a summation of features of the produce containers that could be considered present in containers of the prior art base and which constrained the freedom of the designer for commercial or technical reasons. For example, containers were typically required to be square or rectangular in shape with dimensions to facilitate packing for storage and transport; ventilation and drainage holes were required, feet would assist in achieving ventilation and drainage, pillars were preferably included to give structural integrity to the container and to provide substantially clear panels between the pillars. The court used this information to determine whether the registered design was distinctive over the prior art base.
State of development of the prior art base
In each of the cases mentioned herein, the court compared features of similarity and difference between the registered designs and a prior art design and made an assessment as to which features of the design the informed user would have found similar to the prior art and which distinctive, having regard to any features highlighted in the statement of newness and distinctiveness filed with the design application and the freedom of the designer to innovate. As emphasised in Keller v LED Technologies Pty Ltd  FCAFC 55, it is the registered design as shown in the representations, not the actual product bearing the design, that is to be compared against each single prior art design.
Finally, the court has, bearing all of the above in mind, compared the allegedly infringing product against the registered design representations.
In Keller v LED it was noted that a more developed prior art base will mean that smaller differences in the visual appearance of two products/designs will be sufficient to lead to a finding that there is no substantial similarity. In LED Technologies Pty Ltd v Roadvision Pty Ltd  FCAFC 3, the designs for automotive combination rear lights appeared in a crowded field of prior art and many of the features of similarity between the registered designs and the allegedly infringing lights were features that were common to the prior art, such that an arguably unimportant feature of difference, the underside of the lights, was deemed to nevertheless be a relevant feature contributing to a finding of non-infringement.
Ultimately, the overall impression created by two designs is key. In Multisteps, a number of allegedly infringing produce containers were compared against the registered designs, which included RD3 and RD6. The judge arrived at different conclusions for each assessment. For the first design (RD3) and the first allegedly infringing container, whilst finding that ‘there are undoubtedly a number of similarities’ between RD3 and the allegedly infringing container, the container had a number of distinguishing features considered to be of visual significance such as a different orientation and a more squat appearance and it also lacked a distinctive peanut shaped feature of RD3 on the container base. Those features were sufficient that the judge was ‘satisfied that the notional person would be alert to the differences between the visual features of the container and of RD3’ and that it was not substantially similar in overall impression. ‘The quality and relative importance of the similarities, seen in the context of the prior art base, do not lead to a different conclusion.’
For a 2nd allegedly infringing container, the judge found that the lid of the container differed visually from the RD6 registered design. However, in this case ‘the similarities dominate the differences’, such that ‘he or she would nevertheless regard [the 2nd container] to be substantially similar in overall impression to RD6.’
The test for infringement is therefore a balance of factors in which the standard of the informed user is used to determine the scope of freedom of the designer to innovate in the design field, to assess the distinctiveness of the registered design in light of prior designs, and in comparing the registered design to the allegedly infringing product. Overall visual impression is key to whether infringement will be found.