Designs

A lamp lens too far

The fifth decision under the “new” Designs Act 2004 illustrates the operation of that old principle: in a crowded field, small differences may be enough to confer validity, but equally small differences in the accused products will be sufficient to avoid liability.
You will recall that LED Technologies successfully sued Elecspess (and others) for infringing LED’s registered designs for a dual lens lamp, ARD 302359, and a triple lens lamp, 302360 (links to those decisions via here). Well, LED fell out with its Chinese manufacturer, Valens, and found itself a new supplier. Valens, however, didn’t take things lying down and started supplying another of LED’s competitors, Baxter.
As in the earlier case, Baxter challenged the validity of the earlier design; this time arguing that the Statement of Newness and Distinctiveness was unclear and also relying on some different prior art.
The first objection failed.  The perspective view for the two-lens design looks like this:

 

ARD 302359

The Statement of Newness etc. etc. read:

Separate clip in lenses. Base to take a variety of 2, 3 or 4 combination of lenses for stop, tail, indicator, reverse LED lenses, no visible screws.

At [85], Finkelstein J accepted that the Statement of Newness etc. etc. could have been “better expressed”, but it sufficiently clear and succinct:
…. In my view the statement indicates clearly to the relevantly informed addressee (and probably to anyone familiar with the English language) that the base could be manufactured to take a number of lenses. Reference to “separate clip in lenses”, when read with the phrase “no visible screws”, indicates that the lenses clips in and are not held in place by screws. There is nothing relevantly uncertain contained in the statement. 

There were important visual differences between LED’s designs and the closest prior art. For example, at [104]:
the base of the Rubbolite lamps appeared to provide individual frames for each lens, which is not a feature of the registered designs. … the corners of the Rubbolite lens appeared sharper or squarer than the registered designs but said the difference was minor. … there was a noticeable ledge or lip around the lens (which he referred to as the “lens housing”) which was not shown on the registered designs. The ledge or lip around the lens on the Rubbolite lamps tapered inwards which made it substantially different in appearance when looked at from the side. 

Hence, the registered designs were valid.
Unfortunately (for LED), before Valens started supplying Baxter, it had made some changes to the product. As a result, the products supplied to Baxter were not substantially similar in overall impression to the registered designs. Finkelstein J accepted [105] that there were similarities between the products imported by Baxter and the registered design.  Many of them, however, “were common in the prior art”. Moreover:
[106] There are, to my mind, several important features that lead me to the conclusion that the Baxters lamps are not substantially similar in overall impression to the registered designs. The key features are the prominent cut out pattern on the underside of the designs, which is to be contrasted with the flat closed backs of the Baxters lamps, and the square lenses of the designs having a wide landing between them while the Baxters lights have no landing. Of less significance are the long sides of the frames of the registered designs which have raised edges resulting in a counter-sunk appearance, which is not present on the Baxters lamps. As well, the short sides of the frames of the registered designs are raised at their outer portions and dip down in the central portion, which is not a feature of Baxters’ design. 

[107] Moreover, in my view, it is these features that distinguish the registered designs from the prior art such as to admit of the conclusion that the registered designs are new and distinctive. 

Inducing breach of contract

An interesting twist to this case, was that LED also tried to “get” Baxter for inducing the (ex-) Chinese supplier, Valens, to breach its contract with LED.

Essentially, LED argued it had agreed with Valens that Valens would not supply anyone else in Australia or New Zealand with products made using the moulds for the products supplied to LED. The evidence on this point was less than ideal, with the judge being rather critical of the witnesses. There was also a dispute between LED and Valens over who owned what. Ultimately, his Honour accepted that there was a deal that LED would be supplied exclusively for Australia and New Zealand so the supply of products to Baxter was in breach of the agreement. However, Baxter itself did not procure the breach: Baxter did not know Valens was re-using the moulds: to the contrary, it was paying Valens for new moulds.

It is rather hard to reconcile the story in Elecspess on how the designs came into existence and came to be manufactured with the evidence in this case. Of course, as the parties in the two cases are different, each must be decided on its own evidence. I guess, in terms of ownership of the registered designs, there is commonality in that LED’s principal, Mr Ottobre, was the author of the original conception. Matters get rather murky after that.  At [30], LED apparently started selling the lamps made by Valens in “early 2004”, but the priority date of the designs is 22 June 2004.

LED Technologies Pty Ltd v Roadvision Pty Ltd [2011] FCA 146

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Apple v Samsung

Nilay Patel at Thisismynext.com has embarked on an in depth examination of Apple’s new court action against Samsung.

Unlike the spectacularly unsuccessful war against Windows (based on copyright and ‘look and feel’), this action involves:

* patents;

* design patents; and

* trade dress.

The “thing that distinguishes this case from Apple’s other actions against other Android products is the trade dress component (and the piquancy of Samsung being a supplier of major components for the iPhone and the iPad).

Read Nilay’s take here. Marty’s view

Now, this case is not being brought in Australia but, if it were, one would wonder about the trade dress prospects given the clear Samsung branding in light of Parkdale v Puxu and its progeny such as Playcorp v Bodum. The only case where the trade dress got up in the face of clear branding is really the Jif Lemoncase, in which there was survey evidence showing an overwhelming preponderance of supermarket shoppers declaring they had bought a Jif Lemon, notwithstanding the swing tags and other clear branding.

Those cases did not, of course, involve design registrations as well (or the functional patents). And, even on trade dress, Apple’s complaint is at great pains to point out the level of detail at which resemblances can be drawn.

I guess we’ll see.

Apple v Samsung Read More »

Draft Intellectual Property Laws Amendment (Raising the Bar) Bill 2011

A few weeks back now, IP Australia released a draft Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (pdf) and draft Explanatory Memorandum (pdf).

You can probably guess its overall objective from the exposure draft bill’s longer short title. The range of matters covered extends across 6 schedules:

  • Schedule 1- Raising the quality of granted patents
  • Schedule 2– Free access to patented inventions for research and regulatory activities
  • Schedule 3– Reducing delays in resolving patent and trade mark applications
  • Schedule 4- Assisting the operations of the IP profession
  • Schedule 5- Improving mechanisms for trade mark and copyright enforcement
  • Schedule 6 – Simplifying the IP system

Of the many things that struck my eye, the proposals:

  • seek to introduce the diligent searcher standard for testing the obviousness of patents;
  • seek to have patent applications and oppositions (but not, so far, trade mark oppositions) tested on the balance of probabilities instead of being practically certain not to be valid
  • introduce the new statutory experimental use defence;
  • seek to introduce a presumption of registrability for trade mark applications;
  • introduce the patent opposition “pleading” system to trade mark oppositions; and
  • confer original jurisdiction in trade mark and registered design mattters on the Federal Magistrates Court.

As IP Australia’s announcement says:

Bill does not deal with gene specific issues, rather it seeks to raise patentability standards across all technologies. Gene specific issues are being considered separately by the Senate Legal and Constitutional Affairs Legislation Committee, and by the Government in its response to the Senate Community Affairs Committee’s Gene Patents report.

Over at Patentology Dr Mark Summerfield gives very detailed consideration to the pros and shortcomings of the obviousness reform, the changes to the requirement that patents be useful,  the attempt to fix the law of fair basis (at least insofar as provisional specs are concerned), the new enablement requirement. Dr Summerfield seems to be on a roll, so there may well be more to come.

Comments and submissions should be provided by 4 April 2011.

Draft Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 Read More »

Entitlement to a design

The Federal Court, Spender J, has allowed Courier Pete’s appeal from the Registrar’s ruling that, while Courier Pete owned ARD 310528, ARD 312217 and 312218 were owned by Metroll.

Section 13 of the Designs Act 2003 prescribes who is entitled to a design.

Collymore was employed by Metroll as its factory foreman making water tanks and the like. The Registrar found that it was no part of his duties to be creating new designs for rainwater tanks and Collymore had in fact made the first design on his own time at home. Hence, following an assignment to Collymore’s own company, Courier Pete, Courier Pete was the owner. However, the Registrar found that Collymore made the two later designs pursuant to an order from his boss at Metroll, Mr Harland. Thus, the Registrar found that Metroll was the owner.

Spender J upheld the Registrar’s finding in relation to the first design. (A significant factor in this was Metroll’s failure to call the other members of the tank making team to back up Mr Harland’s claim that the team was working on the design before the application to register the first design was lodged.)

Spender J considered that Mr Harland’s direction to Mr Collymore to make up what became the second and third designs had to be considered in all the circumstances. On the evidence, his Honour found that Mr Collymore had made it clear before he agreed to carry out Mr Harland’s direction that he, Collymore, would do so only on condition that he retained ownership in the designs and Mr Harland accepted that a royalty would be payable on use of the design. Thus, he retained ownership.

Courier Pete Pty Ltd v Metroll Queensland Pty Ltd [2010] FCA 735

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2003 Designs Act appeal

The Full Federal Court (Emmett, Besanko and Jessup J) has dismissed Elecspess’ appeal from Gordon J’s ruling that it had infringed LED Technologies’ registered design for combination LED lights used as rear lights for trailers, trucks, buses, caravans and other vehicles. I think this is the first substantive decision by a Full Court on the new regime introduced by the Designs Act 2003.

From a very quick skim, it seems that the approach taken in the Review cases (here and here) by Kenny J and Gordon J below appears to be largely endorsed but the decision runs for 447 paragraphs, with each Judge giving a separate judgment, so rather closer examination will be required. At least in respect of Elecspess and the corporate infringers, Jessup J agreed with Besanko J’s reasons; Emmett J also gave extensive reasons.

The vexed question of the liability for contributory infringement of individual officers or employees also receives extremely extensive consideration. Jessup J agreed with Emmett J’s reasons for finding that a Mr Keller was not individually liable as a joint infringer. Besanko J also found Mr Keller was not liable.  Jessup J agreed with Besanko J that a Mr Armstrong also was not jointly liable, but for different reasons.

Working out the ramifications of the differences between their Honours should prove quite diverting.

The Court also upheld Gordon J’s refusal to award damages, or an inquiry into damages, for infringing conduct between the date of trial and the making of final orders. This should not be a problem where an undertaking or injunction restraining the respondent’s conduct is in place pending trial.  Where no undertaking or injunction is in place, however, it would appear that the Court considers it imperative to establish at trial that the infringer is continuing their infringing conduct, notwithstanding the court action,  to provide a foundation

Keller v LED Technologies Pty Ltd [2010] FCAFC 55 (Emmett, Besanko and Jessup JJ)

2003 Designs Act appeal Read More »

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

Who can enforce a release Read More »

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.

Coffee plungers, tea pots, designs and passing off Read More »

Designs Law and Practice

Designs Law and Practice Read More »

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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