Intellectual Property
LPAB Winter Session 2012
Therese Catanzariti
Therese Catanzariti
5/28/12
industrial revolution
 Fabric design
Manchester mills – linen, muslin, cotton, calico
THEN any ornamentation on products
THEN any visual features of products
 1906 Designs Act
 2003 Designs Act
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Therese Catanzariti
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easy to manufacture
easy to use – “out of box readiness”
ergonomically sound
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Good design is obvious. Great design is transparent
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Everything is designed. Few things are designed well.
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The design process, at its best, integrates the
aspirations of art, science, and culture.
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I don't design clothes, I design dreams -
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Ralph Lauren
Therese Catanzariti
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Therese Catanzariti
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Therese Catanzariti
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Appearance of product / visual features
NOT function / performance (patent law)
NOT method of construction
NOT product itself – separate and distinct from product
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In relation to product
Microsoft Type Font – type font design not specify tangible
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thing
Re Comshare Inc –computer screen display not product as
ephemeral separate from computer screen
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Monopoly – does not require copying
Term – maximum 10 years from filing date
(5+ optional 5) – s46
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Therese Catanzariti
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"design" , in relation to a product, means the
overall appearance of the product resulting from
one or more visual features of the product – s5
Re Wolanski (necktie support) –monopoly for on
particular individual and specific appearance
“Visual feature” in relation to a product, includes
the shape, configuration, pattern and
ornamentation of the product –s7
Covers 3D (shape of box) and 2D (patterns)
product – thing that is handmade or manufactured
– s6
Therese Catanzariti
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registrable design if new and distinctive
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Prior art base – s15(2)
compared with prior art base for the design
as it existed before the priority date – s15
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Designs registered
Designs publicly used within Australia
Published anywhere
NOT published without owner’s consent – s17(2)
NOT artistic work not industrially applied – s18
NOT prescribed by regulations – s17(1)
Therese Catanzariti
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new - new unless it is identical to a design
that forms part of the prior art base for the
design – s16(1)
distinctive unless it is substantially similar in
overall impression to a design that forms part
of the prior art base – s16(2)
Therese Catanzariti
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more weight to similarities than differences – s19(1)
“informed user” – standard of person familiar with
product - s19(4)
Review 2 v Redberry – familiarity with fashion trends,
not necessarily fashion designer
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factors – s19(2)
◦ State of development of prior art base
◦ Whether statement of newness and distinctiveness
identifying visual features as new and distinctive
◦ If only part, amount, quality and importance of that part in
the context of the design as a whole; and
◦ regard to freedom of creator to innovate
Therese Catanzariti
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combination dual lens rear lights for motor
vehicles
absence of visible screws
different visual features of the rear or base
views
cut out or recess at end of lamp
the sloping, rounded mounting brackets
surrounding the lenses
Therese Catanzariti
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Designer – person who created design
Employer if created in course of employment
Person who commissioned under contract
Assignee
Legal personal representative
Therese Catanzariti
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owner entitled to register – s13
May file
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File
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◦ Common design for number of products – s22
◦ Multiple designs for one product – s22
◦ 5 copies of each representation of each design – s21
design must be reasonably clear and succinct - appear with
reasonable clarity and without requiring unreasonably
prolonged or complicated series of deductions from
registration – Keller v LED
◦ (optional) statement of newness – s69
 May be taken into account for infringement – s19
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No pre-registration examination
◦ IP Australia only checks formalities – s39, 40
◦ IP Australia only examine post grant, on request – s63
◦ need examine before bring proceedings – s73
Therese Catanzariti
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Applicant may elect publication or
registration – s35
 Publication not stop infringement
BUT stop other registration - part of prior art
base
 Useful if large number of designs
 similar to honest concurrent user
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May withdraw registration and request
publish only – s38
Therese Catanzariti
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to make or offer to make a product which embodies the design;
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to import such a product into Australia for sale, or for use for
the purposes of any trade or business;
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to sell, hire or otherwise dispose of, or offer to sell, hire or
otherwise dispose of, such a product;
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to use such a product in any way for the purposes of any trade or
business;
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to keep such a product for the purpose of such sale, hire or use
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to authorise another person to do such things
Therese Catanzariti
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makes or offers to make a product, in relation to which the
design is registered, which embodies a design that is
identical to, or substantially similar in overall impression
to, the registered design;
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imports such a product into Australia for sale, or for use
for the purposes of any trade or business;
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sells, hires or otherwise disposes of, or offers to sell, hire
or otherwise dispose of, such a product;
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uses such a product in any way for the purposes of any
trade or business;
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keeps such a product for the purpose of sale, hire,
disposal or use
Therese Catanzariti
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Owner can commence proceedings – s73
NOT exclusive licensee
1906 “fraudulent or obvious imitation”
2003 – identical or substantially similar in overall
impression
more weight to similarities than differences
Foggin v Lacey (Orgasmatron) – compare to design
not to product
Therese Catanzariti
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Person use or authorise use of product with
registered design
Product is component part of complex
product
Use for purpose of repair of complex product
to restore its overall appearance in whole or
part
Therese Catanzariti
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Injunction
Damages
Account of profits
Additional damages – s75(3)
Court may not award damages or account of
profits or reduce damages if – s75(2)
◦ not aware design registered
AND taken reasonable steps to ascertain if registered
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Prima facie registered defendant aware if product
or packaging say registered design – s75(4)
Therese Catanzariti
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Copyright term life+70 years
copyright in artistic work include right to
reproduce
=> Copyright rights include creating products
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limit copyright protection for essentially
industrial products
Part III, Division 8, Copyright Act
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Therese Catanzariti
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Therese Catanzariti
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“corresponding design” - visual features of
shape or configuration which, when
embodied in a product, result in a
reproduction of that work – s74
 embodied - woven into, impressed on or
worked into the product
Polo v Ziliano Holdings – Ralph Lauren polo
logo not embody design, as embody needed
to give a material or discernible form to
abstract principle
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Therese Catanzariti
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Not infringe copyright in artistic work to
reproduce work by embodying work or
corresponding design in product
◦ If corresponding design registered– s75
◦ If corresponding design unregistered but
◦ applied industrially to products
Regulations – more than 50 units
Press Form v Henderson –may be less than 50 if
complex articles
AND products sold, let for hire or offered or exposed for
sale or hire – s77
Exception for works of artistic craftsmanship
Sheldon v Metrokane – bottle opener
Burge v Swarbrick – boat plug and mouldings
Therese Catanzariti 5/28/12