LED Technologies Pty Ltd v Elecspess Pty Ltd [2008] FCA 1941 (18 December 2008)

[2008] FCA 1941

INTELLECTUAL PROPERTY – Designs – whether Designs Act 2003 (Cth) applies to extraterritorial conduct – whether alleged infringer’s subsequent registration of designs in respect of her own products is relevant to the questions of infringement or validity of the allegedly infringed design –whether a design that combines various features, each of which can be found in the prior art base when considered individually but not collectively in any one particular piece of prior art, is capable of being distinctive – whether infringement analysis is undertaken by comparing allegedly infringing product with registered design or with a product embodying the registered design – authorship – who is an author of a design – whether an independent contractor can be a co-author of a design – design register – what constitutes the design register – whether a design will be invalid for lack of clarity if the relevant features appear from the registered representations without necessity for unreasonably prolonged or complicated series of deductions – substantial similarity as judged objectively by hypothetical “informed user” – whether “informed user” is more informed than an average user but less informed than a expert – whether party has duty to check the design register where the product embodying the design carries a registration notice and the substantial similarity of the allegedly infringing, later-designed product permits the inference that the party had access to the product embodying the registered design and did or should have seen the registration notice – damages – lost sales – whether infringer’s sales may be claimed by design owner on a one-to-one basis in calculating damages

EVIDENCE – judicial notice – whether court may take judicial notice of design representations displayed on IP Australia website – whether circulars published by the Administrator of Vehicle Standards constitute legislative instruments of which the court may take judicial notice – whether substantial similarity of two products permits an inference that designer of later created product had reference to earlier-created work – whether court may take judicial notice of matter requiring basic computer literacy

TRADE PRACTICES – accessorial liability – actual knowledge – whether representation of compliance with law may be misleading where it is based upon a commonly shared mistake of law – damages – lost sales – whether sales lost by virtue of defendant’s misleading conduct greater than sales lost by virtue of defendant’s infringement

WORDS AND PHRASES – “Design Register,” “informed user,” “primary infringer,” “secondary infringer”