In Hunter Pacific International Pty Ltd v Martec Pty Ltd [2016] FCA 796, the Federal Court considered how far a competing product can depart from a registered design before those differences are enough to avoid infringement.
The dispute concerned a registered design for the hub of a ceiling fan and Martec’s competing “Razor” ceiling fan. The products were not identical. There were visible differences in the configuration of the upper hub, the presence of an additional canopy on the Razor and several smaller details. Yet the Court found that the Razor was substantially similar in overall impression to the registered design and therefore infringed it.
The decision is particularly useful because it shows that design infringement is not determined by listing every difference between two products. What matters is the visual significance of those differences when the designs are considered as a whole.
Background of the dispute
Hunter Pacific International owned Australian certified design registration No. 340171 for a ceiling fan hub. The design had a priority date of 9 December 2011 and was registered on 6 January 2012.
The registration contained nine drawings showing the fan hub from several perspectives. Its statement of newness and distinctiveness claimed the shape and configuration of the hub shown in solid lines. The fan blades, which appeared in broken lines, were expressly excluded from the features to be considered.
Martec marketed and sold a ceiling fan known as the “Razor”. It did not challenge the validity of Hunter Pacific’s registered design. Instead, the dispute centred on whether the Razor embodied a design that was substantially similar in overall impression to Hunter Pacific’s design.
This distinction was important. The Court was not deciding whether Hunter Pacific deserved its registration. It was deciding how far the protection afforded by that registration extended.
The legal test for design infringement
Section 71 of the Designs Act 2003 (Cth) provides that a registered design may be infringed where a person makes, imports, sells or otherwise commercially deals with a product embodying a design that is identical to, or substantially similar in overall impression to, the registered design.
At the time Hunter Pacific was decided, section 19 required the comparison to be made from the perspective of an “informed user”. The legislation now refers to a “familiar person”, but the core section 19 framework remains important. The decision-maker must give more weight to similarities than differences and consider matters including the prior art, any statement of newness and distinctiveness, the importance of the similar parts within the design as a whole, and the designer’s freedom to innovate.
Justice Nicholas emphasised that the exercise involves a careful visual comparison. It is not the kind of imperfect recollection test familiar from trade mark cases. The designs must be studied, their similarities and differences considered, and the effect of those features on the overall visual impression assessed.
This also means that the analysis does not stop merely because several identifiable differences can be found.
The competing designs
Hunter Pacific’s registered design consisted of an upper and lower hub formed from relatively simple circular and concentric shapes.
The Court described the lower hub as having a slender and lightweight appearance, with clean lines and elegant proportions. The upper hub was somewhat bulkier, but retained the same general simplicity of appearance.
Martec’s Razor was not a replica.
Its upper hub contained three concentric pieces rather than two. It also incorporated a lower canopy that was absent from the registered design. That additional canopy made the Razor appear somewhat heavier and bulkier when viewed from the side.
There were further differences in the shape of the apertures for the fan blades and in the treatment of some surfaces. For example, the registered design showed curved blade apertures while those on the Razor were straight.
Viewed feature by feature, there was therefore plenty for Martec to point to.
The question was whether those differences changed the overall impression sufficiently.
Similarities that carried greater visual weight
Hunter Pacific’s expert identified a number of similarities between the products, particularly in the lower portions of the fan hubs.
Both used comparable cylindrical and conical forms. The shallow conical portions of the lower hubs were very similar in size, shape and proportion. Both also incorporated angled openings for the fan blades and an air gap between components of the lower hub.
Martec’s expert took a different approach. He identified numerous differences in proportions, angles and component shapes and carried out detailed measurements of the two designs.
Justice Nicholas was not persuaded that this type of mathematical comparison answered the infringement question.
The Court explained that precise calculations of measurements and ratios had no real role in determining overall visual impression. A design creates its impression by being looked at, rather than by being measured.
That observation is one of the more practical aspects of the decision. Small dimensional or geometric differences may be demonstrable on close technical analysis, but that does not necessarily mean they materially alter how the product appears.
How the product is actually seen can be important
A particularly important part of the Court’s reasoning concerned the lower hub.
The Court considered the lower portions of the registered design and the Razor to be similarly proportioned, with a generally sleek and flat appearance. Justice Nicholas placed particular importance on these similarities because the lower hub was the part to which a person’s eye was likely to be drawn once the fan was installed on a ceiling.
From that position, the base of the lower hub made a significant contribution to the overall appearance of the fan.
This meant that not every feature deserved equal weight.
A difference located in a visually prominent part of the product may have considerable influence on the overall impression. Conversely, differences that are technically apparent but visually minor may do little to distinguish the products.
The case therefore demonstrates why section 19 refers to the “amount, quality and importance” of the similar part in the context of the design as a whole. IP Australia continues to use Hunter Pacific as an example of this principle in its current Designs Manual.
The prior art
The Court also examined eight earlier ceiling fan designs.
Some featured hemispherical or bell-shaped hubs. Others used bulky motor covers, bowl-shaped components or quite distinctive profiles. One prior art fan, the Sycamore, was described as having a particularly distinctive bullet-shaped appearance.
The prior art showed that ceiling fan designers were not confined to one narrow visual solution. There was considerable scope to create different configurations even though certain aspects of a fan hub were necessarily influenced by function.
This mattered because section 19 requires consideration of the creator’s freedom to innovate.
Martec could not rely on an argument that the similarities were simply inevitable consequences of designing a ceiling fan hub. The evidence demonstrated that many substantially different visual configurations were possible.
The Court accepted that function imposed some constraints, but found that designers still had considerable freedom in deciding how the hub would look.
Why did the visible differences not avoid infringement?
The Court regarded two differences as particularly noticeable.
First, the Razor had a lower canopy that did not appear in the registered design. Second, its upper hub was configured differently, with three cylindrical elements rather than the combination appearing in Hunter Pacific’s design.
Those were genuine differences.
However, the other distinctions relied upon by Martec, including the precise shape of the blade openings, differences in the slope of particular surfaces and whether the bottom surfaces were completely flat, made relatively little contribution to the overall appearance.
Justice Nicholas considered that the informed user would regard those matters as minor.
The significant similarities remained, particularly the sleek, flat and similarly proportioned lower hubs.
The existence of obvious differences was therefore not enough. The question was whether those differences displaced the visual effect created by the similarities that mattered most.
The Court found that they did not.
The Court’s decision
Justice Nicholas concluded that the Razor was substantially similar in overall impression to Hunter Pacific’s registered design.
Although there were a number of obvious differences in shape and configuration, the Court considered them insufficient to overcome the significant and visually striking similarities between the products. Hunter Pacific was therefore entitled to declaratory and injunctive relief. Questions concerning any pecuniary relief were left to be dealt with separately.
The result shows why infringement cannot be assessed by simply counting differences.
A competing product may contain additional components, altered proportions or modified details and still fall within the scope of a registered design if the features carrying the greatest visual significance remain substantially similar.
Commercial significance
The decision has several practical implications for designers, manufacturers and businesses developing competing products.
First, minor modifications are not necessarily enough to design around a registration. Adding a component or altering smaller details will not automatically avoid infringement if the resulting product still produces substantially the same overall visual impression.
Secondly, the visually important parts of a product can carry disproportionate weight. In Hunter Pacific, the lower hub was particularly significant because of how a ceiling fan is normally installed and viewed. Businesses assessing infringement risk should therefore consider not only what features differ, but where those features appear and how noticeable they are during ordinary use.
Thirdly, technical measurements are not a substitute for visual comparison. Detailed dimensional analysis may assist in identifying differences, but design rights protect visual appearance. A difference of angle, height or proportion matters principally because of the effect it has on the overall impression.
Fourthly, prior art can affect the breadth of practical protection. Where a designer has considerable freedom to create different appearances and the registered design is visually removed from what came before, similarities with a later product may assume greater significance. Conversely, in a crowded design field, relatively small differences may sometimes become more important. IP Australia’s current guidance likewise treats the state of development of the prior art as an important part of the section 19 analysis.
Finally, the representations and statement of newness and distinctiveness filed with the design application can have consequences well beyond registration. The Hunter Pacific registration deliberately identified the hub in solid lines while excluding the fan blades shown in broken lines. Those choices helped define the visual features on which the infringement analysis was focused.
A visual test, not a search for differences
Hunter Pacific v Martec illustrates the breadth that Australian registered design protection can have where the important visual characteristics of a design have been reproduced.
Martec was able to identify clear differences between the Razor and Hunter Pacific’s design. Those differences were real, and some were immediately visible. They were simply not important enough to alter the overall impression.
For businesses launching products in fields where registered designs already exist, the safer question is therefore not whether enough individual changes have been made. The more useful question is whether, after those changes, the product still conveys substantially the same visual impression in the features that matter.
For design owners, the case also highlights the value of carefully prepared representations and a considered statement of newness and distinctiveness. Those documents do not merely secure the registration. They can ultimately shape the scope of protection that the registration is capable of delivering.
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