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].
