Intellectual property lawyers will be very familiar with the usual form of order for the injunctive relief awarded in trade mark infringement cases. It extends to any name, word, mark, sign or device ‘substantially identical with or deceptively similar to’ the registered mark in suit. In registered design cases, on the other hand, the appropriate form of order is not so clear.
In NSW, a decision by the Federal Court in Multisteps v Source and Sell  FCA 743 has been influential in suggesting that injunctive relief in registered design cases should be limited to the specific products alleged to infringe.
However, a more recent decision in Hunter Pacific International Pty Ltd v Martec Pty Ltd (No 2)  FCA 1041 saw Justice Nicholas grant an injunction in broad terms, consistent with the usual form of order in trade mark and copyright infringement cases.
In July 2016, Justice Nicholas found that Martec’s Razor ceiling fan infringed Hunter Pacific’s Australian Registered Design 340171 for a ceiling fan hub, that is, a ceiling fan excluding the blades (Hunter Pacific Pty Limited v Martec Pty Limited  FCA 796).
The Federal Court found that the “sleek, thin and flat aesthetic” of the registered design was replicated in Martec’s Razor ceiling fan. The alleged infringing item was defined in the pleadings by reference to images of the Razor ceiling fan that included model numbers in the bottom corner of the image.
The parties disagreed on the appropriate form of orders to give effect to his Honour’s finding of infringement.
Hunter Pacific argued that it was entitled to an injunction restraining Martec from importing into, offering for sale and selling, keeping for the purpose of offering for sale and selling and otherwise disposing of in Australia the Razor Ceiling Fan and any ceiling fan identical or substantially similar in overall impression to the infringed Registered Design. The words “identical or substantially similar in overall impression” come from section 19 of the Designs Act.
On the other hand, Martec argued that the appropriate injunction should be similar to the form of order made in the Multisteps case, a decision of Justice Yates who is an experienced intellectual property judge. That is, an injunction confined to products identified by model number.
Martec submitted that, as the Razor ceiling fan was defined in Hunter Pacific’s pleadings by reference to pictures that included the model numbers, Hunter Pacific’s injunction should be confined by an express reference to the model numbers. Further, Martec considered that it would be too difficult for it to make an assessment as to whether a ceiling fan, either new or existing, was “identical, or substantially similar in overall impression” to the Registered Design.
Justice Nicholas rejected Martec’s arguments, reasoning that similar orders are often made in:
On this basis, Justice Nicholas considered that the broader form of injunction would be appropriate and he ordered accordingly. Interestingly, Justice Nicholas was also not prepared to grant the respondent a stay of the injunction pending its foreshadowed appeal (which has now been lodged).
Given the rarity of registered design cases, we expect that the appeal will be watched with keen interest, including any challenge to the broad form of injunction ordered by Justice Nicholas at first instance.
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