Design registration proves its importance

LED Technologies Pty Ltd v Elecspess Pty Ltd

Summary

In 2004 the law relating to registered designs was changed.¹ A recent court decision considers the new law and provides practical guidance on the coverage of registered designs.

On 18 December 2008 Justice Gordon handed down a decision holding that a design registration relating to ‘rear combination lights’ (automotive tail lights) was valid and infringed.  The owner of the registered design successfully prevented a competitor selling certain lights.

The decision shows that design registration can provide valuable protection for manufactured products, by granting rights which are both resistant to legal challenge and capable of restraining competitors.

Background

Design registration protects the appearance of a product. Since 2004 designs have been eligible for registration if they were not ‘substantially similar in overall impression’ to any other design existing at the time of the application.

After passing examination a registered design can be used to prevent competitors from making or selling products which are ‘substantially similar in overall impression’ to the registered design.

We now have a court decision considering this new wording and providing practical guidance on the coverage of registered designs.

The decision

Justice Gordon held that LED Technologies’ design registration² relating to ‘rear combination lights’ (automotive tail lights) was infringed by multiple competing products sold by Elecspess Pty Ltd. LED Technologies successfully defended their design registration and restrained Elecspess from selling their “Condor” range of automotive tail light products.

The LED Technologies Design³:
 

The Condor product:

Clarity of the representations

Design registrations include representations showing the protected design. In this case the respresentations were faint pink computer renderings.⁴ Justice Gordon noted that the representations were less than perfect, but held that they were nonetheless sufficient because in combination they conveyed all of the relevant features of the design and the online versions of the representations are easily magnified to show the design with ‘great clarity’.

Validity

To determine whether the registered design was valid, Justice Gordon considered whether the design registration covered any prior published designs.

After separately considering a number of prior published designs, Justice Gordon concluded that the registered design was valid. Justice Gordon discussed that none of the prior published designs were ‘identical or substantially similar in overall impression’ to the registered design because no one product included ‘all or most’ of the following features:

1. the absence of visible screws
2. the distinct visual features of the rear or base views of those designs
3. the ‘cut-out’ or ‘recess’ at the end of each lamp (i.e. the flat strip or landing between each lens), and
4. the sloping, rounded mounting bracket surrounding the lenses.

In this case extra weight was given to features one to four because the registration included this ‘Statement of Newness and Distinctiveness’:

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

A ‘Statement of Newness and Distinctiveness’ may be included when filing an application for design registration. The statement serves to point out features to which ‘particular regard’ should be given when considering the coverage of the design registration. 

Infringement

Justice Gordon noted that infringement is determined by comparing the allegedly infringing product with the registered design, not by comparing product with product. This was relevant because the registered design included no indication of size, but in fact the product made by the LED Technologies was smaller than the Condor product.

It was emphasised that the test is purely visual: ‘the fact that the products have different materials in the lens or have different voltages is […] irrelevant’.

Justice Gordon’s approach to assessing infringement included comparing the top and rear views, and noting that the alleged infringement included features two, three and four. In relation item one, the absence of visible screws, his Honour noted that the alleged infringement had screws but considered they did not sufficiently change to the overall visual impression of the product to avoid infringement:

‘The presence of the screws does not create a different “visual appeal”. The screws are the same colour as the flat strip or landing between each lens and sit low in the socket.’

It is also telling that his honour compared the visual impact to that of the screws of prior published light assemblies:

‘[The screws of the alleged infringement] are not “visual” screws as one would describe the screws of [prior published products] such as the Narva Model 48 94840 or Hella 2400, where the screws are chrome in colour and protruding.’

Hella 2400

What does this mean for you?

This decision shows that design registration can provide valuable protection for manufactured products. It is therefore important to consider whether design registration is appropriate for your new product. 

To pursue design registration it is important to file an application before going public with the design.

Endnotes

1. By the introduction of the Designs Act 2003 (Cth), 17 June 2004.
2. Design registration 302360
3. The official representations are faint pink renderings.  These greyscale images are clearer than the official representations.
4. Design registration 302360

This article was written by Greg Noonan, Partner and Ben Mott, Patent Attorney, Melbourne.

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