Ipr case study

ABSTRACT
The test for infringement is therefore a balance of factors in which the standard
of the informed user is used to determine the scope of freedom of the designer
to innovate in the design field, to assess the distinctiveness of the registered
design in light of prior designs, and in comparing the registered design to the
allegedly infringing product. Overall visual impression is key to whether
infringement will be found.
Review 2 Pty Ltd v Redberry Enterprise Pty Ltd [2008] FCA 1588 (Redberry).
KENNY J
24 OCTOBER 2008
MELBOURNE
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY VID 286 OF 2007
BETWEEN: REVIEW 2 PTY LTD (IN LIQUIDATION) (ACN 067 634 360)
First Applicant/First Cross-respondent
REVIEW AUSTRALIA PTY LTD (ACN 122 295 836)
Second Applicant/Second Cross-respondent
AND: REDBERRY ENTERPRISE PTY LTD (ACN 093 946 260)
Respondent/Cross-claimant
JUDGE: KENNY J
DATE OF ORDER: 24 OCTOBER 2008
WHERE MADE: MELBOURNE
In the Redberry case, Review 2 and Review claimed that Redberry had infringed a
design registration in respect of a “Review” sleeveless, cross-over (or fixed-wrap)
dress (“Review Design”) by importing and selling a dress (“Redberry Dress”)
alleged to embody a design substantially similar in overall impression to the
Review Design.

Redberry challenged the validity of the Review Design principally on the basis
that it was not distinctive in the sense that it was substantially similar in overall
impression to a design(s) forming part of the prior art published before the
application for the Review Design was filed.
Justice Kenny found that the Review Design was different from the designs in the
prior art and was valid. Nevertheless, due to differences in the shape of the skirt
and the pattern of the respective Review Design and Redberry Dress, Her Honour
found that Redberry had not infringed the Review Design. The Judge took into
account the designer’s limited freedom to innovate a cross-over or wrap ladies’
dress other than by reference to the shape and configuration of the skirt
combined with differences in pattern (including colour).
ANALYSIS
A design will infringe a registered design if it is identical to or substantially similar
in overall impression to the registered design. When assessing substantial
similarity in overall impression, the law requires the Court to place more
importance on the similarities between designs than differences, and to consider
the significance of the design as a whole. This is considered from the point of
view of an informed user of the product – someone who is familiar with the
product. The Court determined that the informed user was a purchaser for
fashion outlets rather than either an average consumer or a fashion designer.
The allegedly infringing dresses were of different colored and patterned fabrics
than the dress shown in the photographs in the design registrations. Redberry’s
dress varied from the registered design in the shape of the skirt as well. The
Court considered that the shape of the skirt in combination with the color and

pattern of the fabric had some significance in creating a different overall
impression of the design. Therefore, the Court found no infringement.
HOW CLOSE TO AN AUSTRALIAN REGISTERED DESIGN DOES A LATER
DESIGN NEED TO BE TO INFRINGE IT?
Designs relate to the visual appearance of a product. According to the Designs
Act 2003, to infringe, a later design must be ‘substantially similar in overall
impression’ to a registered design. Several decisions of the Federal Court of
Australia (FCA) and the Full Court of the FCA in recent years provide guidance as
to how this test is applied. Factors to consider in determining whether an
allegedly infringing design is ‘substantially similar in overall impression’ to a
registered design, s19 of the Designs Act requires a court to have regard to
various factors. More weight is to be given to similarities between the designs
than differences; regard is to be had to the state of development of the prior art
base, to any design features identified in a statement of newness and
distinctiveness filed with the design application and to the freedom of the
creator of the design to innovate. If only part of the later design is substantially
similar to the registered design, regard must be had to the amount, quality and
importance of that part in the context of the design as a whole. These factors are
to be assessed at the standard of the informed user.
FACTORS TO CONSIDER
In determining whether an allegedly infringing design is ‘substantially similar in
overall impression’ to a registered design, s19 of the Designs Act requires a court
to have regard to various factors. More weight is to be given to similarities
between the designs than differences; regard is to be had to the state of

development of the prior art base, to any design features identified in a
statement of newness and distinctiveness filed with the design application and to
the freedom of the creator of the design to innovate. If only part of the later
design is substantially similar to the registered design, regard must be had to the
amount, quality and importance of that part in the context of the design as a
whole. These factors are to be assessed at the standard of the informed user.
THE INFORMED USER
The standard of the informed user is therefore the benchmark at which the
similarity of overall impression is assessed. It is therefore important to gauge the
informed user correctly. In Review 2 Pty Ltd v Redberry Enterprise Pty Ltd [2008]
FCA 1588, which concerned designs for women’s dresses, it was held that the
informed user is not a design expert, but nor are they necessarily an ‘ordinary
user’ of the product. Thus, the informed user in the field of designs for women’s
dresses was likely to have particular familiarity with fashion trends. For example,
containers were typically required to be square or rectangular in shape with
dimensions to facilitate packing for storage and transport; ventilation and
drainage holes were required, feet would assist in achieving ventilation and
drainage, pillars were preferably included to give structural integrity to the
container and to provide substantially clear panels between the pillars. The court
used this information to determine whether the registered design was distinctive
over the prior art base. State of development of the prior art base In each of the
cases mentioned herein, the court compared features of similarity and difference
between the registered designs and a prior art design and made an assessment
as to which features of the design the informed user would have found similar to
the prior art and which distinctive, having regard to any features highlighted in

the statement of newness and distinctiveness filed with the design application
and the freedom of the designer to innovate.
Review brought proceedings against Redberry for infringement of their
registered design no. 307708 in respect of a sleeveless cross-over (fixed wrap)
dress. Kenny J, in applying the test for infringement, noted that s 19 of the Act
called for application of the standard of the informed user. Her Honour noted
that the informed user must be a user of the class of product in question (ladies’
dresses) and further that the user must be informed and not merely an ordinary
consumer.
In arguing that their dress was not substantially similar in overall impression to
the Review design, Redberry relied on evidence from a person who had worked
mostly as a retail sales assistant, but also as a fashion buyer and design assistant.
Review’s witness was a designer, and a director of the company.
Her Honour took into consideration the decision of the Deputy Registrar of
Designs in the Apple case ((2007) 74 IPR 164), which put forth the view that an
informed user could be an ordinary intended user of the product made from the
design, and ultimately rejected this proposition. Instead, guidance was sought
from several UK authorities, in particular the Architectural Lighting case ([2006]
RPC 1) in which the UK Patents County Court defined the informed user as “a
regular user… to whom the design is directed” and who would be aware of
"'what’s about in the market?’ and 'what has been around in the recent past?'"
Her Honour concluded that in the context of ladies’ dresses, an informed user
would be a woman who might subscribe to fashion magazines and have
particular knowledge of, and familiarity with, fashion trends and that Redberry’s

witness was "in the nature of an informed user". She took into account
Redberry’s evidence that the overall appearance of a dress was principally
determined by style, cut, fit, colour/print and materials.
Noting that a dress designer is constrained by “well-recognized conventional
limits” of shape and configuration, and having regard to the state of the prior art
base, her Honour went on to conclude that when viewed through the eyes of an
informed user, there were sufficient differences in the skirt and pattern
(including colour) of the Redberry dress for a finding of non-infringement.
SCOPE OF DESIGNS INVOLVING COLOR
An issue that arose at trial was whether the color of the dress the subject of the
Review design should be taken into account in determining the extent of
Review’s monopoly. The representations of the design had been lodged in colour
by the applicant.
Kenny J reasoned that "[the] weight… to be given to pattern and colour will
depend on the nature of the product and the relative importance of the different
visual features of the registered design, as viewed by the informed user, having
regard to the prior art, and the freedom of the designer to innovate."
In this instance, the evidence (and the prior art) had shown that colour would be
flagged by an informed user as an important visual element of the design. This
played a significant role in Kenny J’s determination of non-infringement. This
decision highlights the need to take care when submitting representations with a
Designs application. If the registration is not to be confined to a particular color
or pattern, then black and white representations should be lodged. If color
representations are required, for example for clarity, then it may be prudent to

include a Statement of Newness and Distinctiveness disclaiming the color and/or
pattern shown in the representations, to reduce the risk of limiting the
registration
INFRINGEMENT
In Review 2 Pty Ltd v Redberry Enterprise Pty Ltd 17, the court held that Review's
design for a cross-over or wrap dress (the Review Design) was valid but not
infringed by a dress it alleged Redberry had made, imported and sold. In
considering whether the Redberry dress was, for the purposes of infringement,
substantially similar in overall impression to the Review Design, Justice Kenny
considered the appearance of the Review Design as a whole by reference to the
standard of the hypothetical 'informed user'. She canvassed the authorities on
this person's qualities, concluding that:
• The assessment must be that of a user of ladies' garments, which would
include a potential purchaser, either in retail sales (such as a buyer for a
fashion store) or at the ultimate consumer level.
• A designer or manufacturer of ladies' garments is not, on account of design or
manufacturing knowledge alone, an informed user.
• The notional user must be informed, in the sense that the user is familiar with
ladies' garments. The informed user is not an expert, but must be more than
barely informed.
• The focus for consideration is on eye appeal and not on internal or less visible
manufacturing features.

Ultimately, the court decided that, applying an objective test, the Review Design
was not infringed.
The style of dress was found to be one that was fairly common and gave limited
freedom to innovate. The key 'new' features of the Review Design as opposed to
the prior art were the skirt's shape and the dress's pattern, including its color: the
monopoly covered by the design was restricted to these aspects.
Justice Kenny held that whether color makes a material difference will depend on
the 'nature of the product and the relative importance of the different visual
features of the registered design.' She considered the fact that Review had
submitted color photographs of its design to be relevant.
When compared, the Review Design and the Redberry dress had many
similarities (which were to be given more weight than their differences 18) but
the two differences between them related to those aspects of the Review Design
that differentiated it from the prior art.
In this context, an informed user would not perceive the Redberry dress as
substantially similar in overall impression to the Review Design.
PROBLEM
In the Redberry case, Review 2 and Review claimed that Red berry had infringed
a design registration in respect of a “Review” sleeveless, cross-over (or fixed-
wrap) dress (“Review Design”) by importing and selling a dress (“Redberry
Dress”) alleged to embody a design substantially similar in overall impression to
the Review Design.

In substance, the applicants claim that the Redberry garment embodies a design
that is substantially similar in overall impression to the Review Design because,
when regard is had to the Review Dress, as depicted on the Register, and the
Redberry garment, the following similarities are manifest:
• they are both sleeveless, V-necked, cross-over or fixed wrap dresses;
• the gathering on the shoulders and the shoulder widths of both garments
appears much the same;
• across the upper body, both garments are gathered at the same point on the
side seam, having a similar amount of gathering;
• the fitted waist and waist tie appear the same on both garments;
• whilst the skirt on the Review Design dress is panelled and the skirt on the
Redberry dress is not, the overall effect is much the same since both skirts
fall from a fitted waist and the skirt hem is full; and

• Both garments share much the same proportions, since they appear to have
much the same shoulder to waist and waist to hem lengths.
Redberry challenged the validity of the Review Design principally on the basis
that it was not distinctive in the sense that it was substantially similar in overall
impression to a design(s) forming part of the prior art published before the
application for the Review Design was filed.
QUALITATIVE DATA
The court importantly found that the design registration was limited to a
combination of all the features present in the design representation including the
colors present in the pattern or ornamentation.
DISTINCT DIFFERENCES.
(a) The Review Design skirt is figure-hugging to about half way to the hem, when
it expands suddenly and significantly relative to the top of the skirt, giving the

hem the ruffled look, to which both Ms. Ellis and Ms. Mudie referred. This is to
be contrasted with the floppy or blousy appearance of the Redberry skirt from
the waist to the hem.
(b) The pattern (including color) of the Review Design and the Redberry garment
are different.”
What differentiates the Review Design from the designs embodied in the prior
art (including the Spicy Sugar J3182RB) is the shape and configuration of the
Review Design skirt. Even so, the prior art discloses at least one skirt that is not
dissimilar in shape to the skirt of the Review Design, although the overall
impression between the design embodied in that garment and the Review Design
is different. The prior art also makes it plain that pattern (including colour) can be
an important visual feature in the designs embodied in the dresses said to
exemplify the prior art.
• Having regard to the prior art and to the Review Design, and taking into
account the freedom of the designer to innovate, the informed user would,
so it seems to me, be aware that there is limited freedom to design a cross-
over or wrap ladies’ dress (or similar ladies’ garment) other than by reference
to the shape of the skirt (as opposed to the cross-over itself), combined with
differences in pattern (including colour). In addition, there are significant
constraints on designer innovation arising from the nature of the product in
question. Designs for ladies’ garments are invariably limited by what women
customarily wear. By and large, the "dress" has well-recognized
conventional limits.

Redberry argued that the Court should have regard to every visual feature,
including colour, disclosed in the photographs depicting the Review Design as
registered. According to Redberry:
• The fact that one dress has an orange, blue and brown cross-hatched print
and the other is a brown floral dress is a visual feature (and indeed a striking
visual feature) that must be considered .If the Applicants did not want colour
and print to be considered they could have lodged a black and white
photograph, or a sketch
JUSTICE KENNY STATED:
“Having regard to the prior art and the freedom of the designer to innovate,
what gives the Review Design its different overall impression from the prior art
(discussed further below), from the perspective of the informed user, is the
shape and configuration of the skirt, combined with differences in pattern and
ornamentation”.
QUANTITATIVE DATA
Redberry apparently ceased the conduct of which the applicants complain when
it became aware of their claim and, in any case, before the issue of proceedings.
The amount of profit to Redberry was modest – less than $2000.
In Amended Particulars of Loss and Damage, the applicants sought:
(a) Damages by reason of lost sales in the sum of $18,919.25, calculated on the
assumption that it would have sold 133 units as sold by Redberry and would

have done so at a profit of $142.25 per garment. (Counsel for the applicants
conceded, however, that the applicants had not intended to depart from the
figure of $18,679.41 mentioned in opening and in the original Particulars
(b) Damages for the applicants’ loss of reputation and position in the Australian
market of $200,000, by reason of:
•Redberry’s copying the Review Design;
•Redberry’s selling the Redberry garment at $59 – more than half of the retail
price at which the applicants sold the Review Dress that embodies the Review
Design; and
•diminution of the applicants’ reputation as an exclusive designer of original
garments only available through their retail stores and concession sites.
(c) Additional damages of $400,000 pursuant to s 75(3) of the Designs Act
having regard to:
•the flagrancy of Redberry’s conduct as constituted by the closeness of copying
and the continued denial of any knowledge of the Review Design and/or copying;
and
•having regard to the apparent business practice of Redberry and/or related
entities to engage in copying the garment designs of other designers which have
been the subject of previous proceedings against Redberry for copyright
infringement; the subject of copyright infringement claims; or the subject of
trademark infringement claims.
DESIGN STATISTICS July 2008 – June 2009

• Design Applications Lodged - 5319
• Design Registrations - 6512
Design Registrations Certified1985
• Designs Ceased (1906 Act) - 2124
• Designs Ceased (2003 Act) - 120
DAMAGES
While not required to consider damages in the Redberry case, having not found
any infringement, Justice Kenny nevertheless considered each of the heads of
damage claimed by Review. Her Honor made the following findings on the
damages issue in the two cases:
FINDINGS
Lost sales – Review argued that it would have sold the same number of dresses
as the respective respondents had imported. Justice Kenny thought some
allowance should be made for the chance that Review would not achieve the
same level of sales. In the Redberry case, the chance of a Review customer
buying the Redberry dress was considered 'very low' and the nominal lost sales
would have been reduced by 90 per cent. Diminution in value – Justice Kenny
awarded $3500 in damages against Redberry) for diminution in the value of the
Review Design. The reproduction of the Review Design 'under the cheaper...label
had the distinct potential to diminish customer interest in the Review Design and,
in consequence, consumer demand for garments embodying the Review Design’.
Review positioned itself as an exclusive brand, sold only through Review stores or

concessions in large department stores, and this exclusivity was commercially
valuable.
Additional damages – In claiming additional damages, Review relied, in part, on
the alleged business practice of Redberry in routinely copying others' designs.
Justice Kenny observed that copying per se was not unlawful under designs law
and, while evidence of repeated design infringements might be relevant to
additional damages, a tendency to copy others' designs was not. She made the
interesting comment that:
The nature of the fashion industry and its products as disclosed in the evidence
can also be borne in mind. The evidence indicates that copying and adapting the
designs of other designers is the accepted modus operandi of designers,
including reputable designers, within the industry; and that it is through this
process that fashion products are created.
An interesting point arose when Redberry attempted to show that their
infringement (if any) did not lie in making the garments (primary infringement)
but only in their importation and sale (secondary infringement), because they
had not been made in Australia. A finding of secondary infringement would have
involved a lower threshold than primary infringement for the respondent to
overcome in proving that any damages awarded should be reduced. Justice
Kenny agreed that the garments in each case were made not in Australia, but in
China, finding that an article will be 'made' in Australia for the purposes of the
Act if a direction to make the garment is given in Australia; however, it will not be
made in Australia if an Australian person issues a direction to make a product
while travelling overseas.

Traditionally, most Australian fashion houses have decided against registering
designs, as the process has been relatively costly and hasn't kept up with the fast
pace of the fashion cycle. Australia's relatively new designs legislation, which
came into effect on 17 June 2004, allows designers to apply to register a design
and have it published (preventing others from obtaining certification of the same,
or a substantially similar, design) without proceeding to registration. While no
action can be taken for infringement of the design until it is certified by the
Designs Office as a validly registered design, the new scheme has made design
registration an increasingly workable and realistic way for fashion designers to
protect their work.
By comparison, in the New Cover Group case, Review succeeded in its claim for
infringement of the same Review Design in respect of the manufacture,
importation and sale of garments labelled “Spicy Sugar”. In contrast to the
Redberry case, Justice Kenny found that whilst the pattern (and colour) of the
Spicy Sugar garments differed to the Review Design, they embodied a design
substantially similar to the Review Design. Again, the validity of the Review
Design was challenged but was upheld.
JUDGEMENT
A design will infringe a registered design if it is identical to or substantially
similar in overall impression to the registered design. When assessing substantial
similarity in overall impression, the law requires the Court to place more
importance on the similarities between designs than differences, and to
consider the significance of the design as a whole. This is considered from the
point of view of an informed user of the product – someone who is familiar with

the product. The Court determined that the informed user was a purchaser for
fashion outlets rather than either an average consumer or a fashion designer.
Significantly, the fact that the Review Design was registered in color through the
use of color photographs, without a statement of newness and distinctiveness to
otherwise define the design, was considered by the Judge as relevant to
determining the extent of the monopoly of the registration. In assessing whether
a registered design is infringed, the Court may take into account pattern and
color as visual features which form part of the subject matter protected by
registration, unless disclaimed in some way. When seeking registration of a
fashion design, very careful consideration should be given as to what are the
visual features which are sought to be protected.
The Judge noted in the Redberry case that had infringement been established,
the Court would have been entitled to exercise its discretion to refuse to award
damages or to reduce the damages that would otherwise be awarded as it was
found on the evidence that Redberry was not aware, and could not reasonably
have been expected to have been aware, that the Review Design was registered.
The Designs Act provides that it is prima facie evidence that the defendant was
aware that the design was registered if the product embodying the registered
design to which the infringement proceedings relate, or the packaging of the
product, is marked so as to indicate registration of the design. An example would
be affixing a garment with a swing tag notifying design registration.
In both the Redberry case, the Judge observed that copying and adapting designs
of other designers is common place in the fashion industry. Implementing a

design registration filing strategy can be a particularly useful way for designers to
protect their seasonal fashion wares.
Justice Kenny found that the Review Design was different from the designs in the
prior art and was valid. Nevertheless, due to differences in the shape of the skirt
and the pattern of the respective Review Design and Redberry Dress, Her Honor
found that Redberry had not infringed the Review Design. The Judge took into
account the designer’s limited freedom to innovate a cross-over or wrap ladies’
dress other than by reference to the shape and configuration of the skirt
combined with differences in pattern (including color). Kenny J found that the
Review Design was valid but that Redberry had not infringed it.
In the Redberry case, the Court found no infringement of the registered design
and stated:
“There are also two distinct differences. These are:
(a) The Review Design skirt is figure-hugging to about half way to the hem, when
it expands suddenly and significantly relative to the top of the skirt, giving the
hem the ruffled look, to which both Ms. Ellis and Ms. Mudie referred. This is to
be contrasted with the floppy or blousy appearance of the Redberry skirt from
the waist to the hem.
(b) The pattern (including color) of the Review Design and the Redberry garment
are different.”
This case reminds us that while a design registration may be found valid, the
monopoly conferred by registration can be closely confined by what has been
disclosed in the prior art.

The allegedly infringing dresses were of different coloured and patterned fabrics
than the dress shown in the photographs in the design registrations. Redberry’s
dress varied from the registered design in the shape of the skirt as well. The
Court considered that the shape of the skirt in combination with the colour and
pattern of the fabric had some significance in creating a different overall
impression of the design. Therefore, the Court found no infringement.
Finally judge concluded that Redberry acknowledged that, if differences
between the Review Design and the design in the Redberry garment as regards
the shape of the skirt and the pattern (including color) avoided a finding of
infringement, then the likely outcome was that the Review Design was valid
but not infringed.
REFERENCES
• ATACADOR, J. (2008, DECEMBER 3). DESIGNERS UNDER REVIW. Retrieved
from http://www.davies.com.au/ip-news/designers-under-review:
http://www.davies.com.au/

• CLAYTON, G. &. (2008, OCTOBER 27). Federal Court of Australia. Retrieved
from http://www.austlii.edu.au/au/cases/cth/federal_ct/2008/1588.html:
http://www.austlii.edu.au/au/cases/cth/FCA/2008/1588.html
• Jones, M. L. (2008, OCTOBER 3). INTELLECTUAL PROPERTY. Retrieved from
http://www.allens.com.au/pubs/ip/ipbulldec08.htm:
http://www.allens.com.au
• (Clothing cases reveal the limits to design protection, n.d.)Clothing cases
reveal the limits to design protection. (n.d.). Retrieved from ipwhiteboard:
http://www.ipwhiteboard.com.au/clothing-cases-reveal-the-limits-to-
design-protection/
CONTENTS
ABSTRACT...................................................................................................................................................1
ANALYSIS....................................................................................................................................................2
FACTORS TO CONSIDER..............................................................................................................................3

INFRINGEMENT .........................................................................................................................................7
PROBLEM....................................................................................................................................................8
QUALITATIVE DATA..................................................................................................................................10
QUANTITATIVE DATA................................................................................................................................12
DAMAGES.................................................................................................................................................14
JUDGEMENT.............................................................................................................................................16
CONTENTS................................................................................................................................................20

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