Determining infringement
However, there are principles to guide the determination of a substantial difference between designs. The test for infringement is whether the design of the defendant’s article is substantially different from the registered design. Here is the first clue: the assessment is a search for substantial differences, not just any differences. The word ‘substance’ has its origin in the Latin word substant, meaning ‘standing firm’; so something of substance is not flimsy or whimsical. Therefore, to avoid infringement, the defendant’s design must have differences that are more than merely trivial. They must be differences of substance. Because designs are about what things look like, these differences must be judged by the eye.
Clipsal Australia had this design for plug box covers registered in Class 13 for electricity distribution articles.
Trust Electrical Wholesaler’s covers were the same, but the edges were stepped, not curved, and the switch was in a slightly different position — directly above the earth (top) socket hole in the case of the double plugs and just a bit closer to the earth socket hole in the case of the single plug. These differences are not substantial, and an interdict against Trust was granted.
There are a few qualifications, or limitations in this regard. Firstly, if the design is in Part A of the Register (an aesthetic design), there are no rights in any of its features that are necessitated solely by the function the article is intended to perform. Also, an aesthetic design does not give rights to a method or principle of construction.
Read section 14(5) of the Designs Act.
Secondly, if the design is in part F of the Register (a functional design), the rights cannot be enforced in respect of spare parts for a machine, vehicle or equipment.
Read section 14(6) of the Designs Act.
Thirdly, although a design right will, generally, exclude others from using and/or disposing of any article (in the particular class), if you purchase an article embodying the design made by the proprietor (or his licensee) it is not an infringement if you use or dispose of that article.
This is the so-called exhaustion principle.
Read section 20(2) of the Designs Act.
Lastly, if your design is an integrated circuit chip (hence a functional design), your rights will not be infringed by an article embodying the design if it is made for private purposes or for analysis, research or teaching. It is also not an infringement if the circuit chip is imported or sold by someone who proves that he was not aware (and had no reason for being aware) that it was a registered design which had been reproduced.
Read section 20(3) of the Designs Act.
The remedies available to you are almost identical to those for other intellectual property infringements. In short, the High Court can:
- grant an interdict forbidding someone else from using your design;
- order that all infringing products be surrendered to the registered proprietor;
- award damages to compensate the registered owner for any loss caused by the infringing products;
- instead of damages, award an amount representing what a licensee would have paid for the exploitation of the design.
Read section 35(3) of the Designs Act.