IPwars.com

Mainly intellectual property (IP) issues Down Under

Who can enforce a release

Global Brands is still suing YD Pty Ltd. The trial on quantum for infringement of registered design was almost due to start when YD applied to amend.

After YD admitted it had infringed Global Brands’ registered design, YD discovered, over 9 months earlier, that Global Brands had entered into a settlement agreement with Pegasus/Coastal relating to Global Brands allegations that Pegasus/Coastal had infringed the same registered design. The settlement agreement was in fairly typical terms:

the parties (and any related body corporate as that term is defined in s 9 of the Corporations Act 2001 (Cth) (Related Bodies Corporate) hereby permanently release and forever discharge each other, their Related Bodies Corporate, directors, customers, servants and agents from and against all and any claim cause of action liability suit or demand which the parties … have or but for this deed may have had against each other…their customers servants or agents prior to the date of this deed for or in respect of or arising out of the subject matter or the conduct of the proceeding and the cross claim.

YD claims that Pegasus/Coastal supplied the infringing products to it and so it was a customer within the terms of the release. Pegasus/Coastal apparently did not want to become embroiled in the litigation. The amendment was to join Pegasus/Coastal as a respondent and to rely on the release.

Dodds-Streeton J has granted leave to amend, finding that YD although not a party to the settlement deed could rely on it as a special exception to the rules on privity, so long as Pegasus/Coastal was joined as a respondent.

Aon Risk Services was distinguished:

In all the unusual circumstances of this case, including:
the existence of the release, its apparent relevance as the basis for an arguable claim; its relatively circumscribed scope; the respondents’ belated knowledge of the deed and their conduct thereafter; the impact of the decision in Airberg only recently appreciated by the respondents’ counsel; the applicants’ preference that the quantum trial should not proceed if the amendments be allowed; the fact that although the proceeding has been long on foot, there has already been one trial and the parties have apparently acquiesced in various stages of non-progression:
in my opinion, weighing all relevant matters, including the nature and importance of the amendment to the respondents, notwithstanding the delay, wasted costs and prejudice to the applicants (which may not be wholly compensable by a costs order) the respondents’ applications to amend and to join Pegasus should be allowed.

Global Brands apparently denies that YD is a “customer” and, in any event, apparently intends seeking rectification to exclude the term as a “mistake”.

All this has led to the vacating of the trial date.

Global Brand Marketing Inc v YD Pty Limited [2010] FCA 323

Coffee plungers, tea pots, designs and passing off

The Federal Court, Middleton J, has rejected Bodum’s allegations that

  1. the sale of the Baccarat Venice coffee plunger and Euroline’s Classic coffee plunger passed off Bodum’s Chambord coffee plunger or was otherwise misleading or deceptive; or
  2. Baccarat’s Devon teapot passed off Bodum’s Assam Tea Press or was otherwise misleading or deceptive.

Playcorp Group of Companies Pty Ltd v Peter Bodum A/S [2010] FCA 23

The judgment includes depictions of the products and their packaging in the appendices.

Designs Law and Practice

Prof. Ann Monotti and I will be teaching Designs Law and Practice in Monash Uni’s postgraduate program from 10 December to  15 December this year.

Details here.

Down the proverbial Technicon

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 [2009] FCAFC 76

and at first instance: Caroma Industries Ltd v Technicon Industries Pty Ltd [2008] FCA 1465

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Review cases handed down

On Friday, Kenny J handed down the 2nd and 3rd substantive design cases under the new Act:

  • in Review v Redberry [2008] FCA 1588, her Honour found the design valid but not infringed;
  • in Review v New Cover [20089] 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:

review-v-redberry-judgment

review-v-new-cover-judgment

Lid dip, Sue Gatford.

Designs Act 1906

The Designs Act 2003 is online for free at Austlii, here. (Updated to fix link.)

Succor is also available for those looking for a downloadable online version of the Designs Act 1906 (as at the date of repeal on 17 June 2004) and the Regs.

Thanks, Thomas and Michael.

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