Review Australia Pty Ltd v New Cover Group Pty Ltd

• Jurisdiction: Australia Federal only
• Judgment Date: 24 October 2008
• Neutral Citation: [2008] FCA 1589
• Court: Federal Court

FEDERAL COURT OF AUSTRALIA

Review Australia Pty Ltd v New Cover Group Pty Ltd [2008] FCA 1589

REGISTERED DESIGN – the registered owner of a design registered under the Designs Act 2003 (Cth) of a ladies’ garment (Applicants’ Design) – respondent allegedly designed ladies’ garment in Australia and had them made in China for importation and wholesale in Australia – whether the respondent infringed Applicants’ Design – meaning of “the informed user” – relevance of colour in claimed design rights – substantial similarity in overall impression between respondent’s garments and the Applicants’ Design – claim of design infringement upheld

VALIDITY OF REGISTERED DESIGN – whether registration of Applicants’ Design valid as being new and distinctive when compared with the prior art base before priority date – informed user would not consider Applicants’ Design to be substantially similar in overall impression to designs published prior to registration priority date – Applicants’ Design valid

DAMAGES – whether damages for actual sales loss or diminution in value of design should be awarded – whether defence under s 75(2) is available – whether additional damages under s 75(3) should be awarded

Designs Act 2003 (Cth) ss 4, 5, 7, 8, 10, 15, 16, 19, 21, 71(1), 71(3), 75(2), 75(3), 75(4), 75(5), 93(3)(a)
Acts Interpretation Act 1901 (Cth) s 21(1)(b)
Evidence Act 1995 (Cth) s 97


Review 2 Pty Ltd v Redberry Enterprise Pty Ltd [2008] FCA 1588 referred to
Woodhouse UK Plc v Architectural Lighting Systems [2006] RPC 1 followed
Proctor & Gamble Co v Reckitt Benckiser (UK) Ltd [2006] EWHC 3154; [2007] FSR 13 followed
Proctor & Gamble Company v Reckitt Benckiser (UK) Ltd [2007] EWCACIV 936; (2007) 73 IPR 605 followed
Application by Pauline Ann Walton to invalidate UK Registered Design in the name of Zap Ltd (UK IPO, 0-027-07, 22 January 2007) discussed
Re Application in the name ofApple Computer Inc (2007) 74 IPR 164 considered
Icon Plastics Pty Ltd [2007] ADO 2 cited
Prior v Lansdowne Press Pty Ltd [1977] VR 65 referred to
Milpurrurru v Indofurn Pty Ltd (1994) 30 IPR 209 referred to
Review Australia Pty Ltd v Innovative Lifestyle Investments Pty Ltd [2008] FCA 74 referred to
Jumbunna Coal Mine NL v Victorian Coal Miners’ Association (1908) 6 CLR 309 cited
Hella-Australia Pty Ltd v Quinton Hazell (Aust) Pty Ltd (1967) 10 FLR 86 discussed
Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495 cited
Polyaire Pty Ltd v K-Aire Pty Ltd (2005) 221 CLR 287 cited
Aristocrat Technologies Australia Pty Ltd v DAP Services (Kempsey) Pty Ltd (2007) 157 FCR 564 referred to
Venus Adult Shops Pty Ltd v Fraserside Holdings Ltd (2006) 70 IPR 517 cited
Microsoft Corporation v Goodview Electronics Pty Ltd (2000) 49 IPR 587 referred to
Jones v Dunkel (1959) 101 CLR 298 cited
Microsoft Corporation v Ezy Loans Pty Ltd (2004) 63 IPR 54 referred to

REVIEW AUSTRALIA PTY LTD (ACN 122 295 836) v NEW COVER GROUP PTY LTD (ACN 111 991 596) and MACO COLLECTION PTY LTD (ACN 087 502 878) AND BIGUANG PAN

VID 287 OF 2007

KENNY J

24 OCTOBER 2008

MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VID 287 OF 2007

BETWEEN:	REVIEW AUSTRALIA PTY LTD (ACN 122 295 836) Applicant/Cross-Respondent
AND:	NEW COVER GROUP PTY LTD (ACN 111 991 596) First Respondent/First Cross-Claimant MACO COLLECTION PTY LTD (ACN 087 502 878) Second Respondent/Second Cross-Claimant BIGUANG PAN Third Respondent/Third Cross-Claimant

JUDGE:	KENNY J
DATE OF ORDER:	24 OCTOBER 2008
WHERE MADE:	MELBOURNE

THE COURT ORDERS THAT:

1. On or before 31 October 2008, the applicant file and serve short submissions as to the further conduct of the proceeding.

2. On or before 6 November 2008, the first and second respondents file and serve any submissions in reply to the applicant.

3. The matter be listed for further directions at 9:30 am on 7 November 2008.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VID 287 OF 2007

BETWEEN:	REVIEW AUSTRALIA PTY LTD (ACN 122 295 836) Applicant/Cross-Respondent
AND:	NEW COVER GROUP PTY LTD (ACN 111 991 596) First Respondent/Frist Cross-Claimant MACO COLLECTION PTY LTD (ACN 087 502 878) Second Respondent/Second Cross-Claimant BIGUANG PAN Third Respondent/Third Cross-Claimant

JUDGE:	KENNY J
DATE:	24 OCTOBER 2008
PLACE:	MELBOURNE

REASONS FOR JUDGMENT

1 Review Australia Pty Ltd (“Review”) is the owner of Design Registration No 307708 (“the Review Design”) under the Designs Act 2003 (Cth) (“the Designs Act”). As explained in Review 2 Pty Ltd v Redberry Enterprise Pty Ltd [2008] FCA 1588 (“Redberry”), Review acquired the Review Design from Review 2 Pty Ltd (in liquidation) (“Review 2”) on 28 February 2007 as part of a corporate restructure.

2 This is an action for design infringement and a cross-claim for design invalidity. For the reasons stated below, I would uphold the claim for design infringement and dismiss the cross-claim for invalidity.

3 In its statement of claim, Review alleges that the respondents – New Cover Group Pty Ltd (“New Cover”), Maco Collection Pty Ltd (“Maco”) and/or Biguang Pan – have made, imported and sold garments in infringement of the Review Design. Since Mr Pan has never been served with the initiating process (or any other document in the proceeding), Review now seeks no relief against him. Various forms of relief are sought against New Cover and Maco, including declaratory and injunctive relief, and damages. As in Redberry, there are three principal questions: (1) have the respondents infringed the Review Design? (2) Is the Review Design valid? (3) If yes to these two questions, how should damages be assessed?

4 In accordance with orders made on 13 December 2007, the evidence in proceeding VID 286 of 2007 (Redberry) in so far as it relates to the Review Design is also evidence in this proceeding. The trials in Redberry and that part of the present proceeding that concerns the Review Design took place together. This leaves for the future the trial in this proceeding with respect to the alleged infringement of registered design No 306802.

5 New Cover and Maco were unrepresented at trial. The Court gave Ms Yasemin Dolcel leave to tender on their behalf the affidavits, with exhibits, that had already been filed (subject to Review’s objections as to admissibility). These affidavits were the affidavit of Ms Dolcel sworn on 5 November 2007, and the affidavits of Wei Hong Meng (also known as Jim Meng) sworn on 5 November 2007, 24 September 2007 and 4 February 2008. The following were not relevant in this part of the proceeding: paragraphs 18 and 19 and parts of paragraphs 24 to 26 of Mr Meng’s 24 September 2007 affidavit; paragraphs 15 to 20 of Mr Meng’s 5 November 2007 affidavit; and paragraphs 8 and 9 of Mr Meng’s 4 February 2008 affidavit. The following paragraphs were inadmissible: paragraphs 21, 23 (parts), 27 and 28 of Mr Meng’s 24 September 2007 affidavit; paragraphs 24 to 38 of Mr Meng’s 5 November 2007 affidavit; and paragraphs 4, 5, 7 and 10 of Mr Meng’s 4 February 2008. Notwithstanding that Review gave notice that Mr Meng was required for cross-examination, Mr Meng did not attend Court. I bear this in mind in determining the weight to be given to his affidavit evidence.

6 As depicted on the Register and in the Certificate of Registration, the Review Design is for a sleeveless, cross-over (or fixed-wrap) dress, having:

· a V-Neck made by a cross-over from left to right over a right to left cross-over;

· a left to right cross-over from shoulder to the left side of the waist with gathering on the left side of the waist;

· some gathering on both shoulders;

· figure hugging effect to the waist with a brown ribbon sash tying around a fixed waist;

· a square high back;

· a panelled skirt (3 panels in the front and panels in the back);

· a hem knee-length or below the knee;

· a figure hugging skirt for over half the way to the hem, when it sharply expands, so that the dress at the hem has a ruffled effect; and

· a patterned fabric in natural tones with orange, brown and blue fine ‘fronds leaf’ pattern, with an African or tropical look.

7 Review is a designer and retailer of women’s clothing, especially for what it describes as fashion conscious women in their 20s and 30s. In January 2005, Review 2 operated 12 retail stores where it sold its clothing and accessories under the “Review” name. It also sold its clothing under the “Review” name at about 10 sites within the Myer Grace Bros stores. At trial in February 2008, Review operated 17 Review retail stores and 23 Myer concessions. Review clothing was sold exclusively in these stores and sites, and was not available elsewhere. Review designed 95% to 97% of the goods that it sold.

8 In July 2005, Ms Jayne Ellis, then a director and designer for Review 2, designed a dress with style number R7811 for retail distribution by Review 2. The design for the dress (“the Review Dress”) was included in a number of representations that were the subject of a design application made by Review 2. The application, which was made on 11 August 2005 pursuant to s 21 of the Designs Act, resulted in the grant of registration for the Review Design. The Registrar recorded the product to which the Review Design related as “ladies garments”. There was no statement of newness and distinctiveness provided. The Review Design was certified as examined on 25 October 2006. A dress made to the Review Design retailed for $169.95.

9 On 14 September 2006, at a warehouse at 140 Langridge Street, Collingwood in...