Technicon has lost its appeal from trial findings that it infringed both Caroma’s registered design for a toilet pan and the copyright in drawings in technical specifications.
This was a case under the old (1906) Act rules. The trial judge found there were sufficient differences to avoid liability for obvious imitation. However, there was a strong finding of fraudulent imitation. The trial judge found that Technicon at least had reason to believe or strongly suspect that Caroma’s product was protected by a registered design:
- Caroma’s brochures for its product range included warnings that the products depicted in the brochure were protected by design registration
- As reported, there seems to have been fairly strong evidence that Technicon based its product on Caroma’s design
- Technicon was familiar with the design registration process and had used it itself
- Technicon’s product development appeared to have skipped the usual detailed design drawing/prototype process.
Technicon did not challenge these findings on appeal. Rather, it sought to persuade the Court that the differences in appearance were sufficiently substantial that the product was not an imitation. The Full Court gave this argument very short shrift.
The details on copyright infringement are a bit sketchy. It seems that section 77A would not have protected Technicon because its drawings were made before 17 June 2004 and so before s 77A took effect (see item 19). I will have to think about that further.
Given the finding of design infringement and the rejection of the claim to additional damages for copyright infringement, the point may well be rather academic.
Technicon Industries Pty Ltd v Caroma Industries Ltd  FCAFC 76
and at first instance: Caroma Industries Ltd v Technicon Industries Pty Ltd  FCA 1465
On Friday, Kenny J handed down the 2nd and 3rd substantive design cases under the new Act:
- in Review v Redberry  FCA 1588, her Honour found the design valid but not infringed;
- in Review v New Cover  FCA 1589; valid and infringed including $85,000 damages (of which $50,000 were for additional damages).
The judgments will no doubt be up on Austlii soon but, until then, students can download pdfs from the links below:
Lid dip, Sue Gatford.