Hunter Pacific International Pty Ltd v Martec Pty Ltd  FCA 796 (8 July 2016)
This was a successful registered design infringement action by Hunter Pacific which will be welcomed by users of the design registration system.
The registered design for a ceiling fan hub was registered under the Designs Act 2003 (the Act) from 9 December 2011 as depicted in 9 drawings. One of these drawings showing a front view without blades is shown below:
Significantly, it included a Statement of Newness and Distinctiveness as follows:
Newness and distinctiveness is claimed in the features of shape and/or configuration of the hub of a ceiling fan represented in solid lines in the attached drawings. In assessing newness and distinctiveness, no regard should be had of the shape and configuration of the fan blades as represented in broken lines, nor the number of fan blades.
Martec imported and sold a ceiling fan called the Razor which was found to incorporate a ceiling fan hub that embodied a design that is substantially similar in overall impression to the registered design.
Hunter Pacific relied on expert evidence from Mr Robert Tiller, an experienced industrial design consultant. Martec relied on evidence from Mr William Hunter, a mechanical engineer. Martec did not challenge the validity of the registered design, but contended the Razor ceiling fan hub was not substantially similar in overall appearance.
Annotated drawings prepared by Mr Tiller comparing front views of the registered design with the Razor ceiling fan hub are shown below:
Nicholas J noted that substantial similarity is ultimately a question for the court to decide applying the standard of the ‘informed user’ who is a notional person familiar with the product or similar products to which the design relates and familiar with the registered design and the product that is alleged to infringe based upon a careful and deliberate visual inspection. The informed user should also be a person with an understanding of the manner and extent to which the design of a ceiling fan hub is dictated by function.
His Honour also noted that it is “necessary to focus on the overall impression created by the two designs. This is done not by ignoring matters of detail, but by assessing the impact of particular visual features, including any matters of detail, on the overall impression created by each of the two designs. It is the overall impression that constitutes the critical measure of comparison”. Section 19(1) of the Act requires the Court to give more weight to the similarities between the designs than to the differences between them. Section 19(2)(a) requires the Court to have regard to the state of the development of the prior art base for the design. Section 19(2)(b) requires the Court to have regard to any particular visual features of the design identified in any statement of newness and distinctiveness. Section 19(2)(c) requires that if only part of the design is substantially similar to another design, the Court must have regard to the amount, quality and importance of that part in the context of the design as a whole. Section 19(2)(d) also requires the Court to have regard to the freedom of the creator of the design to innovate.
When making an overall assessment of the similarities and differences between the registered design and the Razor ceiling fan hub, Nicholas J noted:
As to the upper hubs, both designs utilise concentric shapes. The circumference of each of the uppermost cylindrical shapes is generally, but not precisely, located on the same vertical axis as the upper motor cover of each design. In both cases the upper motor cover tapers slightly inwards in the upward direction at what appears to be close to the same angle.
As to the lower hubs, the upper and lower motor covers in the Registered Design (Elements A, B) and in the Razor (Elements J, L) are similarly proportioned and have a generally sleek and flat appearance. I attach particular importance to these similarities because it is the lower hub to which the eye is likely to be drawn when an apparatus made to the design is installed in a ceiling as part of a complete ceiling fan and it is the base of the lower hub that will contribute most to the overall appearance of what will present as a sleek and elegantly configured apparatus. In my view this is a relevant consideration given the terms of s 19(2)(c) of the Act.
The lower canopy in the Razor is a significant point of difference between it and the Registered Design. Another significant point of difference is the configuration of the upper hub of the Razor which consists of one cylindrical shape with a relatively wide diameter (Element F) and two other cylindrical shapes immediately below it (Elements G, H), that are of a much smaller diameter. The third such shape (Element H) is very small and makes only a slight contribution to the overall visual impression conveyed by the Razor.
The two main differences between the designs reside in the absence of any lower canopy in the Registered Design and the differently configured upper hub.
In reviewing the prior art, eight different ceiling fan designs were put into evidence and revealed variations in aspects of ceiling fan designs pointing to a designer having freedom to innovate.
His Honour concluded that “the Razor is substantially similar in overall impression to the Registered Design. 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.”