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AND:
JUDGE:
DATE OF ORDER:
WHERE MADE:
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ANALYSIS
A design will infringe a registered design if it is identical to or
substantially similar in overall impression to the registered design.
When assessing substantial similarity in overall impression, the
law requires the Court to place more importance on the
similarities between designs than differences, and to consider the
point of view of an informed user of the product someone who is
familiar with the product. The Court determined that the informed
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FACTORS TO CONSIDER
In
determining
whether
an
allegedly
infringing
design
is
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Review 2 Pty Ltd v Redberry Enterprise Pty Ltd [2008] FCA 1588,
ventilation
and
drainage,
pillars
were
preferably
art design
and made an
(ladies dresses) and further that the user must be informed and
not merely an ordinary consumer.
In arguing that their dress was not substantially similar in overall
impression to the Review design, Redberry relied on evidence
from a person who had worked mostly as a retail sales assistant,
but also as a fashion buyer and design assistant. Reviews witness
was a designer, and a director of the company.
Her Honour took into consideration the decision of the Deputy
Registrar of Designs in the Apple case ((2007) 74 IPR 164), which
put forth the view that an informed user could be an ordinary
intended user of the product made from the design, and
ultimately rejected this proposition. Instead, guidance was sought
from several UK authorities, in particular the Architectural
Lighting case ([2006] RPC 1) in which the UK Patents County
Court defined the informed user as a regular user to whom the
design is directed and who would be aware of "'whats about in
the market? and 'what has been around in the recent past?'"
Her Honour concluded that in the context of ladies dresses, an
informed user would be a woman who might subscribe to fashion
magazines and have particular knowledge of, and familiarity with,
fashion trends and that Redberrys witness was "in the nature of
an informed user". She took into account Redberrys evidence
that the overall appearance of a dress was principally determined
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Js determination
of non-infringement.
This decision
particular
color
or
pattern,
then
black
and
white
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INFRINGEMENT
In Review 2 Pty Ltd v Redberry Enterprise Pty Ltd 17, the court
held that Review's design for a cross-over or wrap dress (the
Review Design) was valid but not infringed by a dress it alleged
Redberry had made, imported and sold. In considering whether
the Redberry dress was, for the purposes of infringement,
substantially similar in overall impression to the Review Design,
Justice Kenny considered the appearance of the Review Design as
a whole by reference to the standard of the hypothetical
'informed user'. She canvassed the authorities on this person's
qualities, concluding that:
The assessment must be that of a user of ladies' garments,
which would include a potential purchaser, either in retail sales
(such as a buyer for a fashion store) or at the ultimate
consumer level.
A designer or manufacturer of ladies' garments is not, on
account of design or manufacturing knowledge alone, an
informed user.
The notional user must be informed, in the sense that the user
is familiar with ladies' garments. The informed user is not an
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PROBLEM
In the Redberry case, Review 2 and Review claimed that Red berry
sleeveless, cross-over (or fixed-wrap) dress (Review Design) by
importing and selling a dress (Redberry Dress) alleged to
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the fitted waist and waist tie appear the same on both
garments;
whilst the skirt on the Review Design dress is panelled and the
skirt on the Redberry dress is not, the overall effect is much
the same since both skirts fall from a fitted waist and the skirt
hem is full; and
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QUALITATIVE DATA
The court importantly found that the design registration was
limited to a combination of all the features present in the design
ornamentation.
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DISTINCT DIFFERENCES.
(a) The Review Design skirt is figure-hugging to about half way to
the hem, when it expands suddenly and significantly relative to
the top of the skirt, giving the hem the ruffled look, to which both
Ms. Ellis and Ms. Mudie referred. This is to be contrasted with the
floppy or blousy appearance of the Redberry skirt from the waist
to the hem.
(b) The pattern (including color) of the Review Design and the
Redberry garment are different.
What differentiates the Review Design from the designs embodied
in the prior art (including the Spicy Sugar J3182RB) is the shape
and configuration of the Review Design skirt. Even so, the prior
art discloses at least one skirt that is not dissimilar in shape to the
skirt of the Review Design, although the overall impression
between the design embodied in that garment and the Review
Design is different. The prior art also makes it plain that pattern
(including colour) can be an important visual feature in the
designs embodied in the dresses said to exemplify the prior art.
Having regard to the prior art and to the Review Design, and
taking into account the freedom of the designer to innovate,
the informed user would, so it seems to me, be aware that
there is limited freedom to design a cross-over or wrap ladies
dress (or similar ladies garment) other than by reference to
the shape of the skirt (as opposed to the cross-over itself),
combined with differences in pattern (including colour). In
addition,
there
are
significant
constraints
on
designer
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The fact that one dress has an orange, blue and brown
cross-hatched print and the other is a brown floral dress is a
visual feature (and indeed a striking visual feature) that must
be considered .If the Applicants did not want colour and print
to be considered they could have lodged a black and white
photograph, or a sketch
the
skirt,
combined
with
differences
in
pattern
and
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ornamentation.
QUANTITATIVE DATA
Redberry apparently ceased the conduct of which the applicants
complain when it became aware of their claim and, in any case,
before the issue of proceedings. The amount of profit to Redberry
was modest less than $2000.
In
Amended
Particulars
of
Loss
and
Damage,
the
applicants sought:
(a)
Damages by reason
of
lost
sales
in
the
sum
of
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DAMAGES
While not required to consider damages in the Redberry case,
having not found any infringement, Justice Kenny nevertheless
considered each of the heads of damage claimed by Review. Her
Honor made the following findings on the damages issue in the
two cases:
Lost sales Review argued that it would have sold the same
number of dresses as the respective respondents had imported.
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FINDINGS
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comparison,
in
the
New
Cover
Group
case,
Review
JUDGEMENT
A design will infringe a registered design if it is identical to or
substantially similar in overall impression to the registered design.
When assessing substantial similarity in overall impression, the
law requires the Court to place more importance on the
similarities between designs than differences, and to
consider the significance of the design as a whole. This is
considered from the point of view of an informed user of the
product someone who is familiar with the product. The Court
determined that the informed user was a purchaser for fashion
outlets rather than either an average consumer or a fashion
designer.
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Justice Kenny found that the Review Design was different from the
designs in the prior art and was valid. Nevertheless, due to
differences in the shape of the skirt and the pattern of the
respective Review Design and Redberry Dress, Her Honor found
that Redberry had not infringed the Review Design. The Judge
took into account the designers limited freedom to innovate a
cross-over or wrap ladies dress other than by reference to the
shape and configuration of the skirt combined with differences in
pattern (including color). Kenny J found that the Review Design
was valid but that Redberry had not infringed it.
In the Redberry case, the Court found no infringement of
the registered design and stated:
There are also two distinct differences. These are:
(a) The Review Design skirt is figure-hugging to about half way to
the hem, when it expands suddenly and significantly relative to
the top of the skirt, giving the hem the ruffled look, to which both
Ms. Ellis and Ms. Mudie referred. This is to be contrasted with the
floppy or blousy appearance of the Redberry skirt from the waist
to the hem.
(b) The pattern (including color) of the Review Design and the
Redberry garment are different.
This case reminds us that while a design registration may be
confined by what has been disclosed in the prior art.
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REFERENCES
Retrieved
from
http://www.davies.com.au/ip-
news/designers-under-review: http://www.davies.com.au/
CLAYTON, G. &. (2008, OCTOBER 27). Federal Court of
Australia.
Retrieved
from
http://www.austlii.edu.au/au/cases/cth/federal_ct/2008/1588.
html:
http://www.austlii.edu.au/au/cases/cth/FCA/2008/1588.html
Jones, M. L. (2008, OCTOBER 3). INTELLECTUAL PROPERTY.
Retrieved
from
http://www.allens.com.au/pubs/ip/ipbulldec08.htm:
http://www.allens.com.au
(Clothing cases reveal the limits to design protection,
n.d.)Clothing cases reveal the limits to design protection.
(n.d.).
Retrieved
from
ipwhiteboard:
http://www.ipwhiteboard.com.au/clothing-cases-reveal-thelimits-to-design-protection/
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CONTENTS
ABSTRACT................................................................................... 1
ANALYSIS..................................................................................... 2
FACTORS TO CONSIDER.............................................................3
INFRINGEMENT........................................................................... 7
PROBLEM..................................................................................... 8
QUALITATIVE DATA...................................................................10
QUANTITATIVE DATA................................................................12
DAMAGES..................................................................................13
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JUDGEMENT............................................................................... 15