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A ‘design’ is a product’s overall appearance including its configuration, pattern or ornamentation. For example, a tube-shaped teapot instead of the familiar round, squat design. Or Marimekko’s inspired primary coloured prints on stationary, homewares and clothing.

A designer can apply for ‘design registration’, giving the designer enforceable rights to use, licence or sell their design and potentially become the next Alessi, Marimekko or Dyson. Once the design is ‘certified’, it becomes a registered design. This article will then look at how you can enforce your design, and remedies available to you. 

Enforcement

Has somebody infringed on your registered design? If a person who is not the owner uses a design or copies it without the owner’s express permission, then that person is infringing on a registered design.

A registered owner of a registered design may then bring proceedings under the Designs Act 2003. Usually, proceedings are initiated in the Federal Court.

Remedies

The Designs Act 2003 provides for a number of remedies.

1. Injunction: the Court can grant an injunction. For example, it could stop the infringer selling the infringing product, or stop them manufacturing more.

2. Damages: the Plaintiff also has the option to seek damages or an account of profits under section 75(1)(b) of the Designs Act. Additional damages can be awarded for instances of flagrant infringement under section 75(3).

How do Courts Approach Design Registration and Enforcement?

GM Holden Ltd v Paine [2011] FCA 569

Holden Special Vehicles (HSV) is General Motors (GM) Holden’s official branded performance vehicle division. Premoso Pty. Ltd. operates the HSV division under a license from GM Holden. Premoso sells genuine HSV spare parts, including engine covers, brakes, steering wheels and alloy wheels. 

GM Holden applied to the Federal Court alleging that Paine was selling counterfeit alloy wheels, copies of the VE GTS and Pentagon alloy wheel registered designs. The court found in favour of GM Holden and awarded ‘additional damages’ under section 75(3) of the Designs Act for the flagrancy of the infringement.

Review Australia Pty Ltd v Innovative Lifestyle Investments Pty Ltd [2008] FCA 74

Review Australia, the beloved maker of women’s colourful corporate clothes, took a dim view of a competitor’s manufacture and sale of the “Lili” dress, one that bore a striking resemblance to a dress of their own.

Jayne Ellis designed a new dress for Review in May 2005 and applied to register her design on 24 June 2005. Shortly after, Review began selling the dress in stores.

In September 2005, the respondents (Innovative) began manufacturing their ‘new’ dress, which landed in shops in April 2006. The dress bore a striking similarity to Review’s dress design.

In early June 2006, Review’s design was registered. Review didn’t delay in commencing an action in the Federal Court, alleging Innovative had infringed upon their registered design. Review sought an injunction to stop Innovative making the dress, a declaration that Innovative had infringed upon the design and damages.

The Court, agreeing with Review, held that Innovative’s dress ‘embodied a design that was substantially similar in overall impression’ to Review’s design. The Court granted damages of $17,500 but chose not to award a declaration or injunction.

Conclusion

So, what can we learn from this aside from Innovative being not quite so innovative? If you have a unique design, it is sensible to begin investigating whether it is possible to protect it through registration. Registering a design is invaluable if you believe the design has global potential and gives you rights to stop another person from imitating or copying your design. If you have any questions about registering your design, please get in touch! One of LegalVision’s experienced intellectual property lawyers would be delighted to assist. 

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