Technicon's appeal gets flushed in design infringement case

In Technicon Industries Pty Ltd v Caroma Industries Ltd ([2009] FCAFC 76, June 26 2009), the Full Court of the Federal Court of Australia has dismissed an appeal against a single judge’s decision in which the latter had found that Technicon Industries Pty Ltd had infringed Caroma Industries Ltd’s monopoly in its registered design for a lavatory pan.

Caroma manufactures and distributes bathroom products, including toilet suites which consist of a cistern and a lavatory pan. Caroma is the owner of a design (Registration 116692) which is registered in respect of a lavatory pan and sold as part of a toilet suite known as the 'Trident Sovereign 2000'.

Caroma alleged that a lavatory pan which was imported into and distributed and sold in Australia by Technicon infringed Caroma’s monopoly in its design.

Caroma’s design is registered under the Designs Act 1906 (Cth). The 1906 act was repealed by the Designs Act 2003 (Cth) and all designs registered under the 1906 act are now taken to be registered under the 2003 act. However, such designs are still subject to the 1906 act for the purposes of determining the validity of the registration and determining whether the monopoly in the design has been infringed. Infringement of a registered design under the 1906 act occurs in the following cases when an article is imported into Australia:

• where the registered design has been applied to the article;
• where a copy of the registered design has been applied to the article and, notwithstanding that, there are slight differences which are apparent to the eye (referred to as “obvious imitation” of the registered design); and
• where a copy of the registered design has been applied to the article with differences that have been made merely to disguise the copying (referred to as “fraudulent imitation” of the registered design).

A visual comparison will establish the first case or the second case. However, a finding of fraudulent imitation requires something more because, in such a case, a visual comparison is not in itself sufficient to establish imitation - otherwise, it would be a case of obvious imitation (see Malleys Ltd v JW Tomlin Pty Ltd ([1961] HCA 77) and Polyaire Pty Ltd v K-Aire Pty Ltd ([2005] HCA 32). The trial judge held that Technicon's pan was a “fraudulent imitation” of Caroma’s design.

"Fraudulent imitation" includes cases where the differences between the article and the design are obvious, but the extrinsic evidence establishes the fact of deliberate copying. In such a case, the existence of comparatively unimportant differences, which are sufficient to prevent the imitation from being obvious, is not a fact which the imitator can rely on in its defence. The existence of such differences may be one of the elements of the imitator’s fraud (see Rose v JW Pickavant & Co Ltd ((1923) 40 RPC 320).

Importantly, at the trial, the judge drew two inferences from the evidence presented to him:

• Technicon had reason to believe that a registered design had been applied in the production of the Trident pan - in this regard, the judge noted Technicon’s own experience of registering its own designs and concluded that its directors must have been aware of the likelihood of a design being registered in respect of the Trident pan; and
• Technicon was aware that products in Caroma’s brochures were the subject of registered designs and patents - in this regard, the judge noted that Technicon had obtained and relied on brochures produced by Caroma in connection with the development of its pan.

Technicon did not challenge these findings on appeal. Instead, Technicon relied on a distinctive 'scalloping' feature in the shape of Caroma’s design which was absent from Technicon's pan. Technicon argued that:

• the 'scalloping' feature was a “striking feature” of Caroma’s design;
• it was an advance over the prior art; and
• when taken with other (albeit more subtle) differences, the differences as a whole were such that Technicon's pan could not fairly be described as an imitation of Caroma’s design.

Having regard to the evidence at the trial and the inferences drawn by the trial judge, it is not surprising that the Full Court dismissed the appeal. Technicon’s strategy of relying on the absence of the 'scalloping' feature could not help its cause in light of the evidence which allowed the trial judge to make a finding of fraudulent imitation. In essence, the absence of the scalloping was, in part, evidence of the fraud and wholly consistent with the unchallenged finding that Technicon decided consciously to base its product on the Trident pan. In such circumstances, the inference was clearly open that the differences between Technicon's pan and Caroma's design (including the absence of the 'scalloping') were intended to disguise the copying.

Julian Gyngell, Julian Gyngell, Wahroonga