Nicholas J has ruled that by selling its Razor fan Martec has infringed Hunter Pacific’s registered design for a ceiling fan hub, ADR No. 340171.
On the right below are two of the representations in the design:
and on the left above are corresponding views of Martec’s infringement.
On the s 19 analysis mandated by s 71, Nicholas J recognised a number of obvious differences between the registered design and the Razor. However, the overall impression conveyed was one of similarity. In particular, the lower “hubs” were similarly proportioned and conveyed a generally sleek and flat appearance. This was particularly important as this was the feature which contributed most to the informed user’s assessment of the design. As Hunter Pacific’s expert pointed out, that was significant as a ceiling fan hub would be viewed from underneath, looking up. Thus, his Honour concluded:
Although they exhibit a number of obvious differences in shape and configuration, these differences are in my view insufficient to displace what I consider to be significant and eye-catching similarities that create an overall impression of substantial similarity.
It is a bit difficult to tell as images of the prior art are not included. That said, the verbal descriptions suggest that the Razor was much closer to the registered design than any of the prior art. The number of prior art advanced by Martec served to emphasise that there were many different ways to achieve the same functional outcome. Accordingly, while the designs were to some extent dictated by function, there was no significant restriction on the designer’s freedom to innovate.
Nicholas J did not explicitly take sides on the debate about who was the informed user, simply restating the statutory test. His Honour did follow Yates’ J lead, however, in emphasising that the impression that the informed user would form was not based on a fleeting or casual inspection. Rather, it required a careful and deliberate visual inspection.
Hunter Pacific International Pty Ltd v Martec Pty Ltd  FCA 796