Registered Designs

The Commonwealth of Australia's Designs Act 2003 replaced the Designs Act 1906. The legislation assists in the protection of the overall appearance of a product resulting from one or more visual features of the product. Although there are some overlaps, the Designs Act is not applicable when defending the functional innovations of a product. In common law, Firmagroup Australia Pty Ltd v Byrne & Davidson Doors (1987) 180 CLR 483, supports this. Firmagroup Australia Pty registered a design for a ‘combination handle and lock for shutter doors’. The innovative product was copied by Byrne & Davidson, and Firmagroup sued for infringement on design. The High Court held that the ‘combination handle and lock for shutter doors’ was ‘an idea of shape or configuration’, which is ‘conveyed by those features’, was ‘too general to attract statutory protection’. The Court then restricted the monopoly to the specific, individual appearance. Further, it added that ‘No design should be so construed as to give to its proprietor a monopoly in a method or principle of construction.’ The defendant proved to distinguish his product adequately, and thus did not infringe on Firmagroup’s design.

Under the legislation, a design, in relation to a product, means the overall appearance of the product resulting from one or more visual features of the product. Further, the design is only a design, for the purposes of the Designs Act, when it is used in relation to the registered product. This illustrates that the registration of the design does not protect the business against the same design being used on other products; the pattern itself cannot be registered. In addition, the act covers both, two-dimensional designs (such as a logo on a cup), and three-dimensional designs (such as the shape of the cup). Furthermore, Dixon J, in Macrae Knitting Mills Ltd v Lowes Ltd (1936) 55 CLR 725, confirms that ‘The Act is concerned with shape and configuration, not function’. Interestingly, the Act, stipulates that a visual feature may, but need not, serve a functional purpose. However, if the design’s every visual feature serves a functional purpose, then common law states that the design is not registrable.

Furthermore, the Designs Act states that should an innovation be both, a visual feature, and serve a functional purpose, there is nothing to stop the design being registered.

In common law, British Franco Electric Pty Ltd v Dowling Plastics Pty Ltd [1981] NSWLR 448, reinforces the view the courts take on the distinction between a function and a design. In the case, both companies entered into a business selling and manufacturing furniture castors. Dowling Plastics developed the castor, and British Franco registered the design. Soon after the joint venture broke up, Dowling Plastics continued the production of the castors. However, British Franco claimed that Dowling Plastics were infringing on British Franco’s registered design. Dowling put forth an argument questioning the validity of the registration of the design, as the only novel feature of the castor served a functional purpose, and when the castor is assembled, the design would not be seen. The court held in favour of Dowling, however, they were not persuaded by the business’s argument, ruling that the functional purpose of the article is irrelevant, when the design does not satisfy other requirements for registration.

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