fbpx

The relevant standard of the ‘Informed User’ for Designs in Australia after Multisteps

/ Madderns / Articles

The Australian Designs Act 2003 (Cth) requires the distinctiveness of a design and design infringement assessments to be made through the eyes of an ‘informed user’. For example, a design is distinctive unless it is substantially similar in overall impression to a design that forms part of the prior art base for the design. [1] When comparing a design to the prior art base, a Court (or relevant assessor) must apply the standard of an informed user who is a person who is familiar with the product to which the design relates, or products similar to the product to which the design relates. [2]

The concept of the informed user in Australian designs law was adopted from the Registered Designs Act 1949 (UK) and Australian courts had been relying on decisions under the UK Act and under European law to provide guidance in determining the standard of the informed user. However, the Federal Court of Australia in Multisteps Pty Limited v Source and Sell Pty Limited [3] (“Multisteps”) considered that European and UK case law offered little guidance in Australia as our legislation is framed in a different manner and the informed user is not the touchstone that is specifically provided in European legislation.

In Multisteps [4], Yates J considered the concept of the informed user in some detail and his Honour’s views on the general concept may be summarised as follows:

  • In Australia, there is no express requirement that an ‘informed user’ be an actual user of the product to which the design relates. This follows from the language of section 19(4) of the Act whereby “the standard of the informed user” is used merely as a tag after the definition of the standard.
  • Section 19(4) of the Act does not limit how and in what circumstances familiarity is acquired. Familiarity may be gained through use but the standard does not proceed on the requirement that the notional person be a user of the products in question.
  • Section 19(4) does not impose a standard higher than familiarity. A design expert is not necessarily excluded from being a person having the required familiarity.
  • The class of persons whose attributes might be taken as representing the standard of the informed user is not confined. In other words, the relevant standard may be represented in multiples classes of persons, the only necessary qualification being that the person be familiar with the product to which the design relates.
  • A suitably qualified person representative of the standard will have an awareness and appreciation of the visual features of the product that serve its functional as well as its aesthetic purposes.

His Honour drew particular attention to the Australian Law Reform Commission (ALRC) Report No. 74, Designs, in which it was recommended that:

“The concept of the informed user is flexible enough to incorporate where relevant the views of consumers, experts, specialists and skilled tradespersons. At the same time it does not, and should not, require that the expert or consumer be the test in all cases. The informed user would be defined as a person who is reasonably familiar with the nature, appearance and use of products of the relevant kind…” [5]

In Multisteps, his Honour agreed with this flexible approach in determining the requisite standard of the informed user. However, while Multisteps provides further guidance to practitioners on the relevant standard, it is a step away from other decisions of the Federal Court. For example, Kenny J in Review 2 Pty Ltd v Redberry Enterprise Pty Ltd [6], was guided by European authorities and concluded that the informed user must be a user of the class of product in question. [7] From that starting point, her Honour went on to describe the attributes or degree of familiarity that a relevant user of the product might have. Her Honour stated that:

“In the present context, women as a class are the ordinary users of ladies’ garments, but not all women have the requisite degree of familiarity to be described as informed users. Thus, whilst there will be some women who subscribe to fashion magazines (such as Vogue or Collezioni that illustrated the prior art in this case) and have particular knowledge of, and familiarity with, fashion trends, there will be many other women who lack such knowledge and familiarity. Precedent and the text of s 19(4) indicate that it is from the perspective of someone closer to the former group that the newness and distinctiveness of the Review Design and the similarity of the Redberry garments in terms of overall impression must be judged” [8]

Clearly, the approach of Kenny J is more narrowly confined than that adopted by Yates J as it limits the class of relevant persons to users of the product. Conversely, the approach of Yates J in Multisteps keeps the door open for other classes of persons such as designers, manufacturers and experts to be considered as having the degree of familiarity required be representative of the standard of the informed user.

Practically speaking, correctly framing the informed user remains a challenge for all attorneys and litigators in design infringement cases. The particular type of product in question must be carefully considered before selecting witnesses to provide evidence in support of validity and infringement arguments. At the end of the day, the court must be suitably convinced that the witness is credible and representative of a person having sufficient familiarity with the product to which the design relates. As suggested by Yates J in Multisteps, several classes of person might be suitable as witnesses so long as they are appropriately qualified and have suitable awareness and appreciation of the visual features of the product that serve its functional as well as aesthetic purposes. Whether or not the person must also be a user (as suggested by previous Australian authority in line with European guidance on the subject) is less certain after Multisteps.

 

Article by Nick McLeod and Jeff Holman

 

[1] Designs Act 2003 (Cth), s 16(2).

[2] Ibid, s 19(4).

[3] [2013] FCA 743.

[4] [2013] FCA 743, [57]-[71].

[5] Australian Law Reform Commission Report No. 74, Designs (Sydney, 1995) at [5.17].

[6] [2008] FCA 1588.

[7] Ibid, [19].

[8] Ibid, [27].

Read More ›

Great Ideas, Great Clients, Great Attorneys – MIP IP Stars

/ Madderns / News

2014 has been another great year working with innovative clients and their great ideas. Our work with you, our clients, has recently been recognised by the Managing Intellectual Property (MIP) Journal.

“We are made of starstuff.” Carl Sagan, Cosmos

More than half of Madderns partners have been named in MIP’s global “IP Stars” handbook for 2014.

Senior Partner, Craig Vinall, along with Martin Pannall, Mark O’Donnell and Anthony Lee have been recognised for their outstanding patent work, particularly in the areas of patent prosecution, strategy and patent opinion. Mark O’Donnell picked up a coveted ✓✓✓ (3 tick) ranking for patent prosecution; one of only five individuals to receive this nationally. From our trade marks team, Louise Emmett has been recognised as an IP Star for her outstanding trade mark prosecution, strategy and counselling skills.

 

Louise Emmett, Anthony Lee and Mark O'Donnell

Louise Emmett, Anthony Lee and Mark O’Donnell

 

IP Stars are named after a comprehensive process involving electronic surveys and face-to-face interviews, taking in feedback from peers and users of the intellectual property system. Managing Intellectual Property is a leading source of news and analysis on all intellectual property developments worldwide.

We are very proud of our IP Stars. The recognition of their achievements and standing in the profession is a further sign that Madderns is amongst Australia’s leading IP firms.

 

Tom Melville

Managing Partner

Read More ›

Madderns Seminar: “Incentivising IP: Grants and offsets – what’s on offer?”

/ Madderns / News

Madderns recently hosted a successful seminar on the above topic. Guest speakers, Ian Tucker and Peter Doecke from Inventure Partners and Stuart Mitchell from Mitchell & Co, helped to explain the R&D Tax Incentive and Export Market Development Grant (EMDG) schemes, what qualifies and what is to be gained.  Their slides from the presentations are available below. We encourage you to contact the speakers directly if you have any queries.

Inventure Partners Presentation – RD Tax Incentive

 

Mitchell & Co Presentation – Trademarks, Patents and EMDG

 

Event Photos

IncentivisingIP Seminar_1609 IncentivisingIP Seminar_1603 IncentivisingIP Seminar_1579 IncentivisingIP Seminar_1578 IncentivisingIP Seminar_1554 IncentivisingIP Seminar_1558 IncentivisingIP Seminar_1561 IncentivisingIP Seminar_1577 IncentivisingIP Seminar_1551

Read More ›

Australia’s top PCT filers

/ Madderns / Important Updates

In the results of an annual global survey released on 2 October 2014, Madderns was named in the Top 10 filers of International (PCT) patent applications among Australian IP services firms. This is the first time that Madderns has been named in the list.

Commenting on this distinction, Senior Partner Craig Vinall said that “Madderns has edged out a number of significantly larger firms in being named among Australia’s largest filers of PCT applications. It’s a great result reflecting the firm’s continual drive to attract the best people and hone our services and expertise to match the best in the world. That’s being recognised by Australian patent applicants and inventors.”

PCT patent applications are a very popular way to simultaneously seek patent protection for an invention in over 140 countries. More information on the system can be found at www.wipo.int/pct/en/.

The PCT applications filed by Madderns during the survey period relate to a broad spectrum of technologies including biotechnology, computing, irrigation, medical diagnostics, electronic and electrical engineering, materials science, medical devices, mining and fossicking technologies, and pharmaceuticals.

The full results of the survey, conducted by respected International journal Managing Intellectual Property, may be viewed at www.managingip.com.

Read More ›

Intellectual Property Laws Amendment (Raising the Bar) Act 2012: changes to the Trade Marks Act

/ Madderns / Important Updates

The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 was passed into law by the Australian Parliament on 15 April 2012. The provisions of the new laws will come into force on 15 April 2013. Changes to the Trade Marks Act primarily involve the opposition and customs seizure provisions of the Act, as outlined below.

Opposition Period

The opposition period is to be shortened from 3 months to 2 months.

Notice of Opposition

The Notice of Opposition will merely need to be filed with the Trade Marks Office and it is likely to be a simple form stating that a party opposes registration of a trade mark.

Statement of Grounds and Particulars

One month after filing the Notice of Opposition, the Opponent must lodge a statement of grounds and particulars detailing each ground of opposition and the particulars on which the Opponent intends to rely.

Notice of Intention to Defend

Within one month of the statement of grounds and particulars, an Applicant will need to file a Notice of Intention to Defend the opposition. Failure to file the Notice will result in the trade mark application lapsing in opposition proceedings.

Periods for lodging evidence

The time frames for the parties to prepare and serve their evidence are expected to be reduced.

Customs seizure provisions

A trade mark owner will have the ability to access multiple samples of seized goods, to remove such goods for inspection and the importer must make a claim for return in order to have the seized goods returned.

Damages

The Trade Marks Act will include provisions for additional damages in infringement proceedings, bringing the Trade Marks Act into line with the Copyright Act.

Presumption of registrability

Section 41 will be repealed and replaced to clarify that the presumption of registrability, as provided for under Section 33, does apply to section 41.

Read More ›