Macrae Knitting Mills Ltd v Lowes Ltd

Macrae Knitting Mills Ltd. (the appellant) appealed to the High Court of Australia from a decision of the Supreme Court of New South Wales, which had dismissed its suit seeking an injunction against Lowes Ltd. (the respondent) for alleged infringement of a registered design for a swimming costume. The appellant claimed copyright in the design, which it described as a new and original design not previously published in Australia. The respondent challenged the validity of the registration, asserting the design lacked novelty and originality.

The High Court was required to determine two primary legal issues. Firstly, whether the validity of a registered design could be challenged in an infringement action, or if such a challenge was exclusively confined to proceedings for rectification of the register. Secondly, if the validity could be challenged, whether the appellant's registered design was indeed new and original within the meaning of the *Designs Act 1906-1934*, and if so, whether the respondent had infringed it.

The High Court, by majority, affirmed the decision of the Supreme Court. The Court held that the validity of a registered design could be challenged in an infringement suit, and that the production of a certificate of registration served only as prima facie evidence, which could be displaced. The Court reasoned that registration does not confer a monopoly on a design that is not registrable under the Act. On the merits, the majority found that the appellant's design was not new or original, constituting merely a trade variation of existing swimming costume designs. Consequently, the registration was invalid, and the suit for infringement failed.

The appeal was dismissed with costs.