Contributing Lawyers

Canada

Cyndee Todgham Cherniak

United States

Susan Kohn Ross

Australia

Andrew Hudson



Registered design allows action against imports infringing that design

The decision of the Australian Federal Court in LED Technologies Pty Ltd v Elecspress Pty Ltd allowed an action brought by a local of holder of registered designs against the importers of goods produced overseas in breach of the design.  In the case the Australian company had registered designs relating to 2 designs of rear combination LED lights for automobiles.  The Court held that the products manufactured for the respondents were in fact in breach of the designs of the applicants.  However, the Court held that the manufacture did not breach the Designs Act as "primary infringers" because the goods were manufactured overseas for the respondents and the Designs Act did not extend that far.  Instead, the Court  found that the respondents were "secondary infringers" in having imported and offered for sale in Australia the infringing products, as they "directed, caused or procured and infringing item to be imported or sold".

 

The Court then went on to consider whether it would be inappropriate for a retailer or importer to check whether all the products designs sold or imported were registered.  The Judge concluded that it would be inappropriate to always require a retailer or importer to check whether all the products designs sold or imported were registered.  However, in this case the items were sold in packaging labelled with reference to the registered design and its number which created a duty on the importer and retailer to check.

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