BlueScope Steel Limited v Gram Engineering Pty Ltd

BlueScope Steel Limited contested the validity and infringement of a registered design held by Gram Engineering Pty Ltd, before the Federal Court of Australia. The dispute centred on the interpretation and application of the Design Act, particularly regarding the novelty, originality, and infringement of the registered design. The crux of the case was whether Gram Engineering’s design was indeed new or original and whether BlueScope’s product constituted a fraudulent or obvious imitation of that design.

The court had to address several legal issues, including the proper construction of the design, the criteria for determining novelty and originality, and the principles for establishing infringement. The construction of the design required an 'instructed eye' approach, considering both visual and functional aspects. The court also had to determine whether BlueScope’s product was a substantial imitation of Gram Engineering’s design, considering whether the infringing design was an obvious or fraudulent imitation. The court had to assess if evidence of deliberate copying was necessary to establish infringement.

The court found that the primary judge had correctly interpreted the design and applied the principles of novelty and originality as required by the Act. The design in question was found to be novel and original, fulfilling the statutory requirements. The primary judge’s interpretation of the design was supported by expert evidence and aligned with the 'instructed eye' approach. The court rejected BlueScope’s argument that the design could be applied to fencing panels used horizontally, affirming that the design’s context and intended use were integral to its interpretation. Consequently, the court held that BlueScope’s product was an infringement of Gram Engineering’s design.

The final orders required the parties to file minutes of orders and deal with the costs of the appeal within 14 days, or provide short submissions if they could not agree.