PositiveG Investments Pty Ltd as trustee for the PositiveG Trust v Li
[2020] FCCA 2548
•18 August 2020
FEDERAL CIRCUIT COURT OF AUSTRALIA
POSITIVEG INVESTMENTS PTY LTD AS TRUSTEE FOR THE POSITIVEG TRUST v LI [2020] FCCA 2548
Catchwords:
INTELLECTUAL PROPERTY – Design – summary judgment – infringement of two design registrations – eBay seller – “display units” for a dual battery volt meter for use in motor vehicles – whether each infringing product is substantially similar in overall impression to registered design – where Respondent has no reasonable prospect of successfully defending the claim – where Respondent has not participated in proceeding – compensatory damages – additional damages – summary judgment application granted.
Legislation:
Designs Act 2003 (Cth), ss.5, 7 10, 15, 19, 71, 75
Federal Circuit Court Rules 2001 (Cth), r.13.07
Federal Circuit Court of Australia Act 1999 (Cth), ss.17A, 77, 88G(1)(a)
Federal Court of Australia Act 1976 (Cth), s.31A
Cases cited:
Ellis v Wadjemup Trading (No.3) [2018] FCCA 3075
Hunter Pacific International Pty Ltd v Martec Pty Ltd [2016] FCA 796; (2016) 121 IPR 1Jefferson Ford Pty Limited v Ford Motor Company of Australia Limited
[2008] FCAFC 60; (2008) 167 FCR 372
Multisteps Pty Limited v Source and Sell Pty Limited [2013] FCA 743; (2013) 214 FCR 323
Review 2 Pty Ltd v Redberry Enterprises Pty Ltd [2008] FCA 1588; (2008) 173 FCR 450
Review Australia Pty Limited v New Cover Group Pty Limited [2008] FCA 1589; (2008) 79 IPR 236.
Ritter & Ritter & Anor [2019] FCCA 782
Applicant: POSITIVEG INVESTMENTS PTY LTD AS TRUSTEE FOR THE POSITIVEG TRUST
Respondent: YIPENG LI
File Number: MLG 4306 of 2019
Judgment of: Judge Baird
Hearing date: 14 August 2020
Date of Last Submission: 10 August 2020
Delivered at: Sydney
Delivered on: 18 August 2020 REPRESENTATION
Counsel for the Applicant: Ms L. Davis
Solicitors for the Applicant: Krigsman Lawyers
No appearance for or on behalf of the Respondent ORDERS
THE COURT:
(1)ORDERS pursuant to r.13.07 of the Federal Circuit Court Rules 2001 (Cth), summary judgment be entered against the Respondent.
(2)DECLARES that the Respondent has infringed each of Australian certified registered designs for a ‘Display Unit’ registration number 364265, and registration number 364266 (together, the Designs) in breach of section 71 of the Designs Act 2003 (Cth).
(3)ORDERS the Respondent, whether by themself, their employees or agents or howsoever otherwise (including without limitation under the pseudonym ‘yipen13’), be restrained permanently from: (a) importing (directly or indirectly) for sale or for using for the purpose of any trade or business; (b) promoting, selling, or otherwise disposing of, (c) promoting, advertising, offering to sell, hire or otherwise dispose of; (d) using for the purposes of any trade or business; or (e) keeping for the purpose of doing any of these things:
(i)volt meters described as “Dual Battery Volt Meter for Toyota Prado 150, Landcruiser 200, 2016 Hilux” alone, and / or together with any of the colour descriptions (Red / Blue) and / or the term “AU”, including those offered for sale under eBay Item ID 163393287598 (Infringing Products);
(ii)volt meters described as “Dual Battery Volt Meter for Toyota Prado 120, FJ, Landcruiser 100, 79, Hilux” alone, and / or together with any of the colour descriptions (Red / Blue) and / or the term “AU”, including those offered for sale under eBay Item ID 163463777275 (Further Infringing Products); or
(iii)any other product embodying a design that is identical to, or substantially similar in overall impression to, either of the Designs.
(4)ORDERS the Respondent deliver up forthwith to the Applicant (at the street address of the Applicant’s solicitors):
(a)all Infringing Products, and Further Infringing Products in their possession, custody, or control; and
(b)all packaging, catalogues, promotional material, and advertisements which include or refer to any of the Infringing Products, or the Further Infringing Products.
(5)ORDERS the Respondent, by themself, their employees and agents remove within 7 days all images of packaging, catalogues, promotional material, advertisements, and other material in any form which include or refer to any of the Infringing Products, or the Further Infringing Products, including, but not limited to, removal from and any related sites.
(6)ORDERS pursuant to s.75(1) of the Designs Act, the Respondent pay the Applicant damages in the amount of $7,175.55.
(7)ORDERS pursuant to s.75(3) of the Designs Act, the Respondent pay the Applicant additional damages in the amount of $25,000.00
(8)ORDERS the Respondent pay the Applicant’s cost of the application, including the applications in a case, fixed in the sum of $12,340.46.
(9)ORDERS the Respondent pay a total amount of pre-judgment interest fixed in the sum of $153.06.
(10)ORDERS the Respondent pay the Applicant interest pursuant to s.77 of the Federal Circuit Court of Australia Act 1999 (Cth) from the date of judgment at such rate as is fixed by the Rules of the Court.
(11)ORDERS pursuant to s.88G(1)(a) of the Federal Circuit Court of Australia Act1999 (Cth), on the ground that it is necessary to prevent prejudice to the proper administration of justice, disclosure (whether by publication or otherwise) of the information in Confidential Annexures PH‑6, PH‑35, and PH‑36 to the affidavit of Peter Anthony Hill dated 27 July 2020, be prohibited except to the Applicant, the external solicitors, and counsel for the Applicant.
FEDERAL CIRCUIT COURT
OF AUSTRALIA
AT SydneyMLG 4306 of 2019
POSITIVEG INVESTMENTS PTY LTD AS TRUSTEE FOR THE POSITIVEG TRUST Applicant
And
YIPENG LI Respondent
REASONS FOR JUDGMENT
(ex tempore, revised from transcript)Introduction
1.The Applicant, PositiveG Investments Pty Limited as Trustee for the PositiveG Trust, by interlocutory application dated 27 July 2020 seeks summary judgment or, alternatively, default judgment against the Respondent, Yipeng Li, in relation to PositiveG’s claim for infringement of two design registrations.
2.PositiveG seeks summary judgment pursuant to s.17A(1) of the Federal Circuit of Australia Act 1999 (Cth), and r.13.07 of the Federal Circuit Court Rules 2001 (Cth). PositiveG submits that there is evidence of facts on which the claim is based, and either, or both, there is evidence given by a party or some responsible person, in the present case, a director of PositiveG, Mr Peter Hill, that the Respondent has no answer to the claim, and the Court should be satisfied that the Respondent has no reasonable prospect of successfully defending the claim.
3.Whilst PositiveG seeks, in the alternative, default judgment, I am satisfied that it is appropriate to give summary judgment in the circumstances and on the evidence read on PositiveG’s application.
4.Rules 13.07(1) and (2), read together provide, relevantly, that if in a proceeding there is evidence of the facts on which the claim is based and either:
(i)there is evidence given by a party or by some responsible person, that the opposing party has no answer to the claim; or
(ii)the Court is satisfied that the opposing party has no reasonable prospect of successfully defending the claim,
then the Court may give judgment on that claim, and make any orders or directions that the Court considers appropriate.
The proceeding for design infringement
5.This proceeding was commenced by application and statement of claim filed 6 December 2019. I have been satisfied in the course of the procedural steps in this proceeding that the Respondent was made aware of the proceeding, and that by substituted service by email and otherwise attempts have been made to bring the proceeding, the amended pleading (to which I will return), the application for summary judgment, and the evidence relied on in support of this application, to the Respondent’s attention.
6.The Respondent has not at any time filed a notice of appearance in the proceeding, and has not participated in the proceeding.
7.By amended originating application and amended statement of claim in each case dated and filed 1 June 2020, PositiveG has expanded its claims of infringement of designs by the Respondent, and sought relief for a broader range of infringements.
8.In the substantive case brought by PositiveG, it seeks relief in respect of the Respondent’s alleged infringement of two design registrations for what is described as a “display unit” being, so the evidence shows, a display unit for a battery volt meter for use in motor vehicles, and, specifically, four-wheel drive vehicles.
9.PositiveG is the owner of the registered designs, as follows:
Registration No. Filing Date Registration Date Certification Date 364265 27 August 2015 18 September 2015 28 October 2015 364266 27 August 2015 18 September 2015 28 October 2015 (a)Australian Certified Design registration number 364265 for a “display unit”, which I will refer to as the 265 Design. The 265 Design was applied for on 27 August 2015, registered under the Designs Act 2003 (Cth) on 18 September 2015, and certified on 28 October 2015;
(b)Australian Certified Design registration number 364266 for a “display unit”, which I will refer to as the 266 Design. The 266 Design was also applied for on 27 August 2015, and registered on 18 September 2015 under the Designs Act, and as with the 265 Design, it was also certified on 28 October 2015.
10.I attach to these reasons at annexure A the details and representations of the 265 Design as they appear on the Australian Register of Designs, and forming part of the registration. I attach at annexure B the details and representations of the 266 Design as they appear on the Australian Register of Designs, and forming part of the registration.
11.Each of the registered Designs has a statement of newness and distinctiveness, which I will come to in due course below (see at [45]).
12.PositiveG markets two products it says – and I am satisfied – are made substantially in accordance with the respective designs. This is relevant to PositiveG’s claim for lost sales and damage, that is, damages in this application.
13.The Respondent markets certain products under a number of codes. The evidence is that the Respondent markets its products principally on the eBay website at eBay.com.au (eBay site) under the moniker “yipen13”, under various item numbers.
14.The evidence is that Mr Hill first became aware of the Respondent’s marketing from the eBay site on about 25 November 2018. That product marketed was described as a “dual battery volt meter” with a buy it now price of $50, with a reduced price of $47 available through the use of a promotional code.
15.Mr Hill subsequently received emails from the eBay site and identified additional offerings by “yipen13” for the same product under other item numbers, which activities resulted in a letter of demand, and commencement of proceedings.
16.Subsequently, PositiveG identified the sale of a further product which is marketed by “yipen13” also as a “dual battery volt meter”. It is convenient to refer to the two products, although marketed under a number of different item numbers, as follows:
(a)product marketed as “dual battery volt meter for Toyota Prado 150, Landcruiser 200, 2016 Hilux” with either a red display or a blue display, which I will refer to as the Toyota Prado 150 dual battery volt meter or the Infringing Product, which PositiveG alleges incorporates a display unit that embodies a design that is substantially similar in overall impression to the 266 Design; and
(b)product marketed as “dual battery volt meter for Toyota Prado 120, FJ, Landcruiser 100, 79 and Hlux” with either a blue or red digital display, marketed for sale since at least 11 December 2019, which I will refer to, as the Toyota Prado 120 dual battery volt meter or the Further Infringing Product. PositiveG alleges that the Further Infringing Product incorporates a display unit that embodies a design that is substantially similar in overall impression to the 265 Design.
17.In sum, PositiveG alleges that the Respondent by its marketing of the Infringing Product has infringed the 266 Design, and by his marketing of the Further Infringing Product has infringed the 265 Design.
Summary judgment principles
18.The principles guiding the exercise of summary judgment have been set out in a number of cases, including the case relied upon by Ms Davis for PositiveG in the Full Court of the Federal Court of Australia in Jefferson Ford Pty Limited v Ford Motor Company of Australia Limited [2008] FCAFC 60; (2008) 167 FCR 372 at [124] to [132], and, in this Court, conveniently summarised in, inter alia, Ritter & Ritter & Anor [2019] FCCA 782 at [4] to [13] by Judge Obradovic, and also by Judge Lucev in Ellis v Wadjemup Trading (No.3) [2018] FCCA 3075 at [2] to [11].
19.Section 17A of the Act empowers the Court to give judgment for one party against another party, as I have said, in relation to any part of a proceeding if the Court is satisfied that, in this case, the Respondent party has no reasonable prospect of successfully defending the proceeding.
20.Although there is no defence filed in this proceeding, I note that section 17A(3) of the Act provides that a defence need not be hopeless or bound to fail for it to have no reasonable prospect of success.
21.The provisions of the Act are in the same terms as s.31A of the Federal Court of Australia Act 1976 (Cth), and the approach taken in cases concerned with that section are generally seen as apposite to s.17A of the Act.
22.In sum, these principles relevantly provide:
(a)the test is less stringent than applicable under earlier regimes. The power to order summary judgment should, however, be exercised with caution;
(b)the assessment of reasonable prospects involves identifying the pleaded cause of action, including the pleaded facts, and any supporting evidence together with the facts, if any, pleaded;
(c)the moving party bears the onus of persuading the Court that the Respondent has no reasonable prospects of success; and
(d)the exercise of the power requires a practical judgment by the Court as to whether, in this case, the Respondent, has more than a fanciful prospect of success. This may be a judgment of law or of fact or of mixed law and fact.
23.The concept of “no reasonable prospect of success” is a different concept to “no real prospect of success” and encompasses defences that need not be hopeless or bound to fail. The inquiry is directed to whether there is no reasonable prospect of defending the proceeding, not an inquiry directed to whether a certain concluded determination should be made that the defence would necessarily fail.
24.Further, in discerning whether a real issue of fact exists such as to preclude summary judgment, the Court must draw all reasonable inferences in favour of the non-moving party. I note also, in Jefferson Ford, Gordon J’s observation that the word “may” in “the Court may give summary judgment” is used in an empowering sense rather than as denoting the exercise of a discretion, c.f. Kowalski v MMAL Staff Superannuation Fund Pty Ltd [2009] FCAFC 117; (2009) 178 FCR 401 at [28]-[31]; Nichol v Discovery Africa Ltd; Van Den Bergh v Discovery Africa Ltd [2016] FCAFC 182; (2016) ALR 594.
The registered designs
25.Each of the registered designs includes a statement of newness and distinctiveness which is in the same terms as follows:
The newness and distinctiveness of the design resides in the shape and/or configuration of a DISPLAY UNIT as shown in the accompanying representations, and irrespective of the shape and/or configuration of the rear features of the DISPLAY UNIT shown in broken lines, and irrespective of the lettering on the front face.
26.The registered designs are each depicted in 9 drawings lodged in respect of the respective design application. In the case of each design, the drawings are contained in a number of sheets, depicting various views of the unit, and described as follows:
Sheet
Drawing
Front right perspective view – unnumbered duplicate of representation 1/9
1/9
Front right perspective view
2/9
Front left perspective view
3/9
Rear right perspective view
4/9
Rear right perspective view (this is a duplication)
5/9
Front view
6/9
Left side view
7/9
Right side view
8/9
Top view
9/9
Bottom view
The Infringing Product and the Further Infringing Product
27.There is in evidence a trap purchase of an example of the Infringing Product, that is, the Toyota Prado 150 dual battery volt meter, and photographs of different perspective views of that product, as well as images as the product has been advertised on the eBay site. I annex to these reasons at annexure C a reproduction of the images of the Infringing Product, and an instance of its image as it has been marketed.
28.Nothing turns on the fact that the Infringing Product is offered with choice of a digital display in either blue or red.
29.In relation to the Further Infringing Product, there are in evidence images of that product as displayed on the eBay site. The evidence is that whilst an attempt was made to purchase one of these products that offer was withdrawn before the sale was able to be concluded. I annex to these reasons at annexure D a reproduction of the image of the Further Infringing Product as it appears on the eBay listing.
30.By its amended statement of claim dated 1 June 2020, PositiveG claims the Respondent has infringed each of the 265 Design and the 266 Design as set out in s.71 of the Designs Act.
Legislative framework
31.It is relevant first to set out some definitions. Section 5 of the Designs Act includes the following definition of “design”:
“Design”, in relation to a product, means the overall appearance of the product resulting from one or more visual features of the product.
32.Section 7 of the Designs Act includes the following definition of “visual feature” (emphasis as in the original):
(1) In this Act:
“visual feature”, in relation to a product, includes the shape, configuration, pattern and ornamentation of the product.
(2) A visual feature may, but need not, serve a functional purpose.
(3) The following are not visual features of a product:
(a) the feel of the product;
(b)the materials used in the product;
(c)in the case of a product that has one or more indefinite dimensions:
(i) the indefinite dimension; and
(ii) if the product also has a pattern that repeats itself--more than one repeat of the pattern.
33.Section 10 of the Designs Act confers on the registered owner of a registered design various exclusive rights including:
(a)to make or offer to make a product, in relation to which the design is registered, which embodies the design; and
(b)to import such a product into Australia for sale, or for use for the purposes of any trade or business; and
(c)to sell, hire or otherwise dispose of, or offer to sell, hire or otherwise dispose of, such a product; and
(d)to use such a product in any way for the purposes of any trade or business; and
(e)to keep such a product for the purpose of doing any of the things mentioned in paragraph (c) or (d); …
34.Section 71 of the Designs Act provides when an infringement occurs, relevantly, as follows:
(1)A person infringes a registered design if, during the term of registration of the design, and without the licence or authority of the registered owner of the design, the person:
(a)makes or offers to make a product, in relation to which the design is registered, which embodies a design that is identical to, or substantially similar in overall impression to, the registered design; or
(b)imports such a product into Australia for sale, or for use for the purposes of any trade or business; or
(c)sells, hires or otherwise disposes of, or offers to sell, hire or otherwise dispose of, such a product; or
(d)uses such a product in any way for the purposes of any trade or business; or
(e)keeps such a product for the purpose of doing any of the things mentioned in paragraph (c) or (d).
…
(3)In determining whether an allegedly infringing design is substantially similar in overall impression to the registered design, a court is to consider the factors specified in section 19.
35.Section 19 is located in Chapter 2, Part 4, Division 2 of the Designs Act is entitled “Substantial Similarity in Overall Impression”. Section 19 provides:
Factors to be considered in assessing substantial similarity in overall impression
(1)If a person is required by this Act to decide whether a design is substantially similar in overall impression to another design, the person making the decision is to give more weight to similarities between the designs than to differences between them.
(2) The person must also:
(a)have regard to the state of development of the prior art base for the design; and
(b)if the design application in which the design was disclosed included a statement (a statement of newness and distinctiveness) identifying particular visual features of the design as new and distinctive:
(i) have particular regard to those features; and
(ii) if those features relate to only part of the design--have particular regard to that part of the design, but in the context of the design as a whole; and
(c)if only part of the design is substantially similar to another design, have regard to the amount, quality and importance of that part in the context of the design as a whole; and
(d)have regard to the freedom of the creator of the design to innovate.
(3)If the design application in which the design was disclosed did not include a statement of newness and distinctiveness in respect of particular visual features of the design, the person must have regard to the appearance of the design as a whole.
(4)In applying subsections (1), (2) and (3), the person must apply the standard of a person who is familiar with the product to which the design relates, or products similar to the product to which the design relates (the standard of the informed user).
(5)In this section, a reference to a person includes a reference to a court.
36.I note, in the present case, there is no evidence of the prior art base referred to in s.19(2)(a) (which is defined in s.15(2) of the Designs Act).
37.The standard of the informed user has been given content in a number of cases, particularly in the Federal Court to which I have had regard, including the decision of Kenny J in Review 2 Pty Ltd v Redberry Enterprises Pty Ltd [2008] FCA 1588; (2008) 173 FCR 450, and subsequently, Yates J in Multisteps Pty Limited v Source and Sell Pty Limited [2013] FCA 743; (2013) 214 FCR 323, and Nicholas J in Hunter Pacific International Pty Ltd v Martec Pty Ltd [2016] FCA 796; (2016) 121 IPR 1.
38.For convenience, referring to Hunter Pacific at [38] and following the questions for the Court that must be decided under s.71(1) of the Designs Act, are whether the Infringing Product embodies a design that is substantially similar in overall impression to the 266 Design, and whether the Further Infringing Product embodies a design that is substantially similar in overall impression to the 265 Design.
39.The question whether the two designs - being the registered design and the alleged infringing design - are substantially similar is to be decided on the basis of a visual comparison of the shape and configuration of the two designs. In deciding this question, the Court must have regard to the requirements of s.19 of the Designs Act (see above at [35]). As Nicholas J said in Hunter Pacific at [39]:
[39]The question whether the two designs, in each case, are substantially similar is ultimately a question for the Court to decide, applying the standard of the “informed user.” The informed user is a notional person who is taken to be familiar with the product to which the design relates or products similar to the product to which the design relates. The informed user will also be taken to have a familiarity with the relevant registered design and the product that is alleged to infringe based upon a careful and deliberate visual inspection. Section 19 of the Act contemplates that the Court will have regard to all the similarities and the differences between the visual features of the two designs in coming to its ultimate conclusion. Hence the relevant comparison cannot be based upon a fleeting or casual inspection of the drawings or object in question or some “imperfect recollection” of either of them. That is not to deny that the comparison to be undertaken is essentially impression-based. (His Honour then with approval refers to the statement of Yates J in Multisteps at [55].)
40.I accept that in the present case, as was the case before Nicholas J in Hunter Pacific, the informed user should also be taken to be a person who has an understanding of the manner and extent to which the design of a display unit is dictated by function: see at [40]. I respectfully adopt what was said by Nicholas J in Hunter Pacific at [41] and [42] as to the necessity “to focus on the overall impression created by the two designs. This is done not by ignoring matters of detail, but by assessing the impact of particular visual features, including any matters of detail, on the overall impression created by each of the two designs. It is the overall impression that constitutes the critical measure of comparison” (at [41]).
41.I note that s.19(1) of the Designs Act requires the Court to give more weight to the similarities between the designs than to the differences between them. While s.19(2)(a) requires the Court to have regard to the state of development of the prior art base for the registered designs, I am not in a position in the present case to make any observations or conclusions in relation to each of the registered designs by reference to the prior art base. This, however, is a matter in which the Respondent, had they participated, could have assisted the Court. However, given the particular evidence before me, I am satisfied that the evidence enables me to come to a concluded view on the question of substantial similarity in overall impression.
42.In this regard, I refer to and adopt [45]-[47] of Hunter Pacific:
[45]Section 19(2)(b) requires the Court to have regard to any particular visual features of the design identified in any statement of newness and distinctiveness included in the design application. If the design application includes such a statement identifying any such visual features, then the Court is required to have “particular regard” to those features. Again, this is the approach that was usually taken under the 1906 Act but the 2003 Act now includes an explicit requirement to this effect: cf. Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 103 ALR 239 at 246-247.
[46]Section 19(2)(c) requires that if only part of the design is substantially similar to another design, the Court must have regard to the amount, quality and importance of that part in the context of the design as a whole. This is significant in two respects. First, it assumes that a product may be substantially similar in overall impression to a registered design even though a particular part of the product is not substantially similar to the corresponding part of the registered design. Secondly, it requires the Court to make a qualitative rather than a purely quantitative assessment of the visual similarities and differences between the two designs when deciding upon the question of infringement in much the same way as it must when applying the test of substantiality in the field of copyright law.
[47]Section 19(2)(d) also requires the Court to have regard to the freedom of the creator of the design to innovate. This reflects what has been a long standing concern that registered designs not impede the natural and ordinary growth of industry by preventing others from making products that have features of shape and configuration that are common to a trade: see Le May v Welch (1884) 28 Ch D 24 at 34, Phillips v Harbro Rubber Co (1918) 35 RPC 276 at 282-3 and other authorities referred to by Lockhart J in Conrol Pty Ltd v Meco McCallum Pty Ltd (1996) 34 IPR 517 at 527-530.
43.In the present case, the evidence is overwhelming that the Respondent has offered for the purposes of sale, trade or business, sold or otherwise disposed of, and offered to sell or dispose of in Australia each of the Infringing Products and the Further Infringing Products. Whilst each product is referred to as “AU STOCK” the evidence establishes that the products are imported, not locally manufactured.
44.As I have said above, each of the registered designs includes a statement of newness and distinctiveness. Particular regard must be had to those features. If those features relate to only part of the design, then particular regard must be had to that part of the design, but in the context of the design as a whole: see section 19(2)(b).
Statement of newness and distinctiveness
45.Whilst in each design registration the statement of newness and distinctiveness is said to reside “in the shape and/or configuration of a display unit as shown in the accompanying representations”, the subsequent words of the statement qualify that claim by stating that newness and distinctiveness is “irrespective of the shape and/or configuration of the rear features shown in broken lines and irrespective of the lettering on the front face”.
46.I apprehend that the feature depicted within the broken lines encases electronic circuitry and components, and that there are electronic leads from the pack, which it is reasonable to infer are connected to the components of the vehicle, specifically the vehicle’s batteries. Thus what is excluded from consideration of the design’s particular shape or configuration is the length, width, and depth of that component, but not that there is such a component forming part of the overall display unit.
47.In relation to the lettering on the front face of each display unit, I understand the particular shape and/or configuration of the lettering on the front face is not claimed as new and distinctive, but that does not exclude a consideration of lettering being on the front face of each display unit, and its location. So too, having regard to the function and purpose of the display unit, which is, on the evidence, as I am ably assisted by Ms Davis, to display the state of charge or discharge of two batteries in the vehicle at any point in time, I do not consider that the digital display design is limited to, or only claims any particular numbers, but I do accept that each of the displays in each of the registered designs comprises three digits.
48.Before I turn to the evidence before me, it is appropriate to refer to the concept of the standard of the informed user. In Multisteps, Yates J discussed that standard, and referred to the decision of Kenny J in Review 2 at [19] to [27]. I note that her Honour referred to her consideration in Review 2 in her subsequent decision of Review Australia Pty Limited v New Cover Group Pty Limited [2008] FCA 1589; (2008) 79 IPR 236 to which Ms Davis has drawn my attention specifically in relation to additional damages.
49.I respectfully adopt the discussion set out by Yates J in Multisteps at [57] through to [71], which, I will not repeat here. I will, however, note, importantly, his Honour’s conclusion at [70] of the breadth of the class of persons whose attributes might be taken as representing the standard of the informed user. That person may be a person who acquires the relevant products for the purpose of using them, and might also be a sophisticated purchaser at wholesale, and it may also be a reseller. It may, but need not be, a design expert. I note at [66], his Honour’s observation that the standard under s.19(4) of the Designs Act does not proceed on the requirement that the notional person be a user of the products in question although, obviously, familiarity can be gained through use. His Honour concludes, at [70], “However, in all cases, the necessary and only qualification is that the person be familiar with [in that case] produce or similar containers”. His Honour continues, “No matter how such a person might come to be appropriately qualified, he or she will have an awareness and appreciation of the visual features of [in that case] a produce container that serve its functional as well as aesthetic purposes”. His Honour then observed that he did not regard the perceptions of the general body of consumers who purchase particular products in which they might place the produce containers the subject of the designs as indicative of the standard of the informed user in that case.
50.In the present case, Mr Hill has been put forward by PositiveG as a relevant informed user. Indeed, his is the only evidence on this aspect of PositiveG’s case. Mr Hill is a founding director of PositiveG, which was incorporated on 7 November 2003, and has also been the secretary of the PositiveG since that date. He is also one of two shareholders. Mr Hill gives evidence that PositiveG trades as “Solid Kit” and that, trading as Solid Kit, it is a designer, manufacturer, importer, and retailer of products for camping, boating, and four-wheel driving. This includes products such as battery volt meters, USB chargers, fuses, and fuse blocks. PositiveG promotes and sells its products in Australia through its website solidkit.com.au and also through other electronic marketplaces, such as the eBay site, and its related sites, and attests that in or around 2015, he developed four unique designs for volt meters, two of these to fit in particular Toyota vehicles, with the necessary dimensions to fit in the original equipment manufacturer socket, that is, the socket that is present in the vehicle when it is first put on the market. He is the designer of the designs the subject of the 265 Design and the 266 Design. The evidence is that since approximately September 2015 and up to June 2020, PositiveG has sold a total of approximately 5,500 display units embodying, in almost equal amounts, the 265 Design and the 266 Design.
52.In these circumstances, I accept that Mr Hill is a relevant person to assist the Court as to the standard of the informed user. I also take guidance from Yates J’s statement in Multisteps at [47], that in the context of the design infringement case, in that case, each expert – in the present case, Mr Hill – was able to direct my attention to similarities between the designs, and I have had regard to the apparent differences. This process has assisted consideration of the comparison that the Court is required to undertake under s.19 of the Designs Act. Having been so assisted, I have proceeded on the basis of my own evaluation of the visual significance of similarities and differences.
53.I am also guided by his Honour’s statement of his process of consideration at [48]. I have had regard to all the material placed by PositiveG and to which Ms Davis has drawn my attention on this application, and although I have had regard to all of the material, I do not consider it necessary to recite all of the detail of what has been placed before me in these reasons. I have used this material to focus my attention on the various visual features of the designs being compared, and with the benefit of Mr Hill’s evidence and my own perception. I use my own, and Mr Hill’s descriptions of the visual features of the designs. In so doing, I focus on what I regard to be the main visual features of the designs, whilst there may be other matters of detail which nonetheless contribute in some way, although not in a significant way, to the similarities and differences between them.
54.I here record and rely on Yates J’s repetition in Multisteps at [49] of Jacobs LJ in Procter & Gamble Co v Reckitt Benckiser (UK) Ltd [2008] FSR 8:
The most important things in a case about registered designs are:
1. the registered design;
2. the accused object; and
3. the prior art.
And the most important thing about each of these is what they look like. Of course parties and judges have to try to put into words why they say a design has “individual character” or what the “overall impression produced on an informed user” is. But “it takes longer to say than to see” as I observed in Philips Electronics NV v Remington Consumer Products Ltd (No. 1) [1998] RPC 283 at 318. And words themselves are often insufficiently precise on their own.
The features of the Designs
265 Design
55.Based on the design representations of the 265 Design, I note the following features of appearance of the display unit design, noting that the focus is on eye appeal, and using terminology used by Mr Hill in his description:
(a)a unit head with a rectangular front face or fascia, the front face or fascia proportionately being longer than wider, and having a slightly elongated appearance, the 4 edges of the rectangular face each meeting at corners that are softly curved or rounded at right angles;
(b)the rectangular front face includes two rectangular meter display frames, each of which frames a display window in which a row of 3 digits is presented, which display frames / windows are visually stacked one above the other with a small space between them when the unit is viewed front on and in the vertical position, that is, in an elongated portrait mode;
(c)each of the display frames has sharp right angled corners, and the size, spacing and layout of each of the display frames / windows and each of the digits within the frame / window is the same in the upper / top and lower / bottom frame;
(d)the top display frame has a typed word immediately above it, and the bottom display frame has a typed word immediately below it, and from the front view of the design representations (noting that the lettering is excepted from the claim to shape or configuration that is new and distinctive), I observe that the top word is “MAIN” and the bottom word is “AUX”, which I apprehend to be an abbreviation of “auxiliary”;
(e)the unit head comprising the front face / fascia and the volume depth behind it form a shallow box or rectangular prism, with the front face of the prism extending slightly beyond the rear portion at the top and bottom, so that the rear of the unit head appears slightly shorter (less elongated) face than the front face in perspective, side and rear views, with a small “step” or edging along the top and bottom of the unit, which then slopes slightly rearward to the back surface of the unit head;
(f)extending from the rear of the shallow rectangular prism component of the unit head, are two wedge shaped projections or “clips”, each located within and extending rearwards from between two short walls on the unit head, each clip being evenly spaced inwards from the top and bottom (shorter horizontal) edges of the prism respectively, and centred in from each vertical (longer) side, each wedge shape clip having an indent or step on its outer facing surface where the clip connects to the prism making a wedge shelf and groove surface, each clip having a flat planar inner surface, which clips appear to be retaining or positioning clips;
(g)each of the clips extends horizontally rearwards from the unit head reaching a short way along a brick-shaped component (indicated in broken lines on the design representations);
(h)this brick-shaped component is a rectangular prism with a substantially greater depth or length than height, and a proportionally narrower width, which features of shape and configuration are excepted from the statement of newness and distinctiveness of the design; and
(i)the newness and distinctiveness of the claimed design is thus in the front face, and abutting rectangular prism, of the unit head having a shallow box like appearance, and in two wedge shaped upper and lower clips which extend beyond the prism of the unit head, and having a rear component extending between the two clips.
56.If I turn to the overall appearance, it presents a clean and simple design for a volt meter display unit, comprising a simple, elongated rectangular face with rounded corners, in which two rectangular displays frames are prominently and clearly presented in the overall front face of the design one above the other slightly spaced apart, and two broad, wedge shaped clips extending rearwards from a shallow substantially box shaped unit head, the clips slightly inwards from the top and bottom edges.
57.As I apprehend from Mr Hill’s evidence, the display unit is designed for insertion within a void or space on the driver’s front console or dashboard in the motor vehicle cabin. I conclude from Mr Hill’s evidence, and having regard to the statement of newness and distinctiveness, that in terms of appearance, it is that front face to which more regard is to be had in use. I should say that viewing the front face what strikes the eye is a slightly elongated, rounded cornered rectangular face, with relatively unfussy, clean lines, and elegant proportions and configuration in a simple blocky or substantially blocky shape.
The 266 Design
58.Turning to the second design, the 266 Design, the design has the same components as the 265 Design, namely, a front face or fascia, with two display frames vertically aligned, providing the front surface of a rectangular unit head, which is vertically aligned, from which extends rearwards an upper clip and a lower clip, and between which clips extends rearwards a rectangular prism which, in dimensions, is longer than the unit head by at least four times and which is slightly less than the overall proportions of the outlines of the front face. In general terms the 266 Design has each of the visual features of the 265 Design. However, the front face of the 266 Design is a more square-like shaped rectangle than elongated, and the corners of that front face present at almost sharp right angles with the sharp corners just softened into very slight curves on each of the four corners of the unit head.
The alleged Infringing and Further Infringing Products
59.When I turn to the alleged Infringing and Further Infringing Products, I first compare the Further Infringing Product and the 265 Design.
Further Infringing Products and 265 Design
60.The Further Infringing Products is a display unit, and more specifically, a display unit for a dual battery volt meter for particular types of vehicle, including the Toyota Prado 120. Based on the appearance of each of the instances of the Further Infringing Products in the advertisements in evidence, I see that each of those products incorporate the following usual features:
(a)a rectangular face of near identical shape and proportions as are depicted in the front view representation of the 265 Design;
(b)the rectangular face includes two meter display frames, each of which is sharply rectangular in shape and stacked one above the other with a spacing of near identical proportions to the front view of the 265 Design;
(c)each meter display frame/window provides for 3 digits, having approximately the same or nearly the same height and width as provided for in the 265 Design;
(d)the size, spacing and layout of the LED digits are substantially similar in appearance to those depicted in the meter display frames in the front view of the 265 Design, and as are also able to be seen in the front perspective views of the design;
(e)the top display frame has a typed word immediately above it, which is the word “MAIN”, and the bottom display frame has a typed word immediately below it, which is “AUX”;
(f)the unit head is a rectangular prism of substantially the same proportions, and this being the substantially same shape and configuration as is apparent in the front perspective views of the 265 Design;
(g)rear ward from each unit head, at the top and the bottom, vertically extend a pair of clips at each of the top and bottom, the pair of clips being on the same horizontal plane and aligning with the same orientation as the upper and lower edges of the front face of the product, which is the same orientation and placement as that appearing in the design; and
(h)the Further Infringing Product has a further component composing a rectangular prism, being substantially the same depth or length as that depicted in the 265 Design, similarly extending rearwards from the front unit head, and overall, the impression is of two substantially rectangular prisms, the unit head being one rectangular prism, and a rectangular prism extending rear ward approximately four times in depth, but smaller in height and width than the front unit head component, and proportionately the same as depicted in the 265 Design.
61.I am mindful that I must give more weight to the similarities between the designs than their differences, and I am also cognisant that it is necessary to focus on the overall impression created by the two designs, on the one hand, the registered design and, on the other hand, the alleged infringing design. Precise mathematical comparisons or analyses of measurements or ratios have no role to play in determining whether or not the two designs create an overall impression that is substantially similar.
62.That said, in the present case, what strikes the eye is the overall ratios of length to height to depth that strike the eye on the 265 Design are the same as those that strike the eye in the Further Infringing Product. Both designs use rectangular prisms with two sharp edged rectangular display frames, spaced vertically and slightly apart. Both have a substantially flat front face with slightly rounded corners. The front face is striking in its substantial similarity as between the Further Infringing Product and the registered design.
63.Having regard to what would be visible when the product is in use, I attach particular importance to the similarities of the front face of each design, the proportions of the unit heads, and in use the similar aspect of the proportions of the rear rectangular prisms. Whilst that may not be something to which the eye is drawn when it is installed, I apprehend the overall shape and configuration it would be a relevant consideration when determining whether to acquire or purchase a product embodying the registered design or, indeed, the alleged Infringing Product.
64.The main differences I identify are the number of clips extending from the unit head, there being one clip at each top and bottom in the case of the 265 Design and a pair of clips at each top and bottom in the case of the Further Infringing Product, however, I consider that these differences make little contribution to the overall visual impression created by the two designs, appearing in the Further Infringing Product to be one clip split into a pair. Also, there may be some differences in the manner in which the pair of clips attaches to the unit head, however I cannot be certain.
65.In my opinion, the Further Infringing Product is substantially similar, in the overall impression, to the 265 Design. Although they exhibit the difference in shape and configuration that I have identified, and there may be – it is not possible to tell – a further difference in the orientation of the rear electrical leads, these differences are, in my view, insufficient to displace what I consider to be significant and eye-catching similarities of the front faces that create an overall impression of substantial similarity.
Infringing Product and 266 Design
66.I turn next to the comparison between the Infringing Product and the 266 Design. I have the benefit of coloured photographs of a purchased Infringing Product, being a Toyota Prado 150 dual-battery volt meter for a, as well as images on the eBay listings. By reference to those images and to Mr Hill’s identification of the visual features the features of appearance, I observe that the Infringing Product incorporates the following visual elements or features of appearance:
(a)a rectangular front face of the same shape and proportions to the 266 Design and, specifically, being a rather squat appearance with very slightly rounded corners;
(b)a rectangular prism head of the same proportions as the 266 Design;
(c)the rectangular front face including two meter display frames, each of which is sharply rectangular in shape and placed one above the other, and with the same size, spacing and layout of the frames in the proportions as they appear in the front face of the 266 Design;
(d)each meter display provides for 3 digits, and the size, spacing and the layout of the LED digits - which is more apparent, I should say, in the advertisements than in the photographs – is substantially similar to those depicted in the 266 Design front view and front perspective views;
(e)the top display frame of the Infringing Product has a typed word immediately above it, which is prominently depicted as “MAIN”. The bottom display frame has a typed word immediately below it “AUX”, the placement of each of the words is in a substantially similar location as in the 266 Design representation on the front view and the perspective front views;
(f)the unit head is a rectangular prism, and apparent on the side view, the rectangular prism has a further extending rectangular prism attached to the back of it, which is, in each case, of substantially similar proportions, and in each case being smaller in overall end dimensions to the outline of the dimensions of the front face and extending in similar proportions approximately five times the depth of the front rectangular prism; and
(g)the Infringing Product has two clips (an upper and a lower clip) extending rearwards from the rear of the front rectangular prism, along the line of the top and bottom of the rear component, each of which clip is broad and has a spaced apart angled or wedge farthest edge, which can be readily visualised as would assist in fit and securing within the space on the console or dashboard, which it is made to fit.
67.There are a number of differences on the product compared to the registered design. There is a small vertical rectangular indentation in the longer side of the unit head rectangular prism, which does not appear in the 266 Design, and the location of the two rear plugs or leads going to the plugs of the Infringing Product are oriented at 180 degrees from the orientation on the 266 Design, although I note that the statement of newness and distinctiveness disclaims these plugs or these leads or their location.
68.As with my comparison of the Further Infringing Product and the 265 Design, what strikes me is the overall similarity between the designs, and, in particular, the overwhelming similarities of the front faces. As I have said in relation to the first comparison, this front face is where the eye is likely to be drawn when an apparatus made to the design is installed and used, and the overall proportions being substantially similar is also a relevant consideration to give the overall impression of the product.
69.I have identified the two differences in terms of the statement of newness and distinctiveness. The principal difference is the small, vertical indentation in the long sides of the unit head, however, in my view, the informed user would perceive these differences as minor, and not having any significant impact on the overall visual impression conveyed by each of the two designs (the registered design and the design of the Infringing Product).
70.So, too, given the different orientation in the rear leads being excluded or being a matter which is not claimed as novel or distinctive, I consider it is a minor difference.
71.In my opinion, the Infringing Product, or as I have also described it, the Toyota Prado 150 dual battery volt meter, is substantially similar in overall impression to the 266 Design. Although they exhibit a few differences in shape and configuration to which I have adverted, these differences, in my view, are insufficient to displace what I consider to be the significant and eye-catching similarities that create the overall impression of the substantial similarity.
72.For these reasons I conclude that PositiveG is entitled to injunctive relief in respect of each of the products and the corresponding designs I have found they infringe.
Evidence of sales and infringing conduct
73.I turn to the evidence of sales and conduct in the infringement. As I have said, Mr Hill and, thus, PositiveG, became aware in November 2018 that the Respondent was advertising for sale dual volt meters, in the form of the Infringing Product, through its eBay store at “yipen13”. The evidence is that through Mr Hill, PositiveG engaged an investigator to place orders with the Respondent, which orders were fulfilled. I have described the product that was subsequently purchased (see above at [66]).
74.The report of the investigator from Trademark Investigation Services (TMIS report) revealed two purchases under two item numbers, being 163515422765 and 163515422480. The evidence of the investigator’s report was that each of the volt meters were purchased from “yipen13” for $39.99 each, with a delivery fee of $4, for a total of $83.96.
75.The evidence also shows from the eBay site records the purchase history for the item number. The purchase and offer history for the products advertised on an eBay site shows the sales of the product under the item number, based on the user ID - which is currently redacted - of the buyer, sale price, quantity, and date of purchase. The evidence is, and I accept, that the purchase history is automatically generated, created, and updated by the eBay site each time an item is sold through the site. Mr Hill has given evidence that as a seller, he does not have any ability to alter these details in respect of PositiveG’s sales through the eBay site, and I take that evidence as also meaning that a respondent would not be able to alter the details of their own sales. I note, however, that once an item is removed from offer for sale, it is no longer possible to access the purchase history.
76.The TMIS report contains evidence of a purchase history and offer history. That purchase history identifies a volume of sales and, from those sales, one is able to identify the sale price. There is also a section described as “accepted offer” which identifies that further sales were made, but does not disclose the price at which the offer was accepted. The history also indicates a number of offers that were declined.
77.On 11 December 2019, that is, after the issuing of proceedings, Mr Hill conducted a search on the eBay site for the term “Toyota volt meters” and results returned, among other items, an item for sale on the eBay site described as what I have called the Further Infringing Product, which item was being offered for sale by “yipen13” through an eBay site store called “Sydney eStreet”.
78.Since that time, there were a number of further items of a similar description listed by “yipen13”. In evidence are screenshots of each of these advertisements. From these advertisements, Mr Hill has been able to calculate the volume of sales, and the average sale price sold, and the total sales to the date until the products were no longer listed.
79.In total, the evidence shows that, at a minimum, the Respondent has sold at least 159 units of the Further Infringing Product which I have found embodies the 265 Design, and at least 157 units of the Infringing Product which I have found embodies the 266 Design.
80.PositiveG, states that it has a standard sale price of $54.95 for products embodying each of the 265 Design and the 266 Design, which sales price includes the manufacture, import, logistics, and selling fees. Mr Hill has put in evidence a confidential annexure of a spreadsheet of what he says would be the lost profit, before tax and indirect overheads, were those sales all to have been sales made by PositiveG rather than by the Respondent. I note that, excluding GST, the amounts, so calculated, are the following sums:
Design 265
Further Infringing Product
159 units
$3,583.35
Design 266
Infringing Product
157 units
$3,592.20
81.The total sought by way of compensatory damages is $7,175.55.
82.I observe the following in relation to this claim. This calculation assumes that all sales made by the Respondent would be a sale that, but for the Respondent’s conduct, would have been made by PositiveG, and that all sales by PositiveG would have been made at what is described as the standard sale price – that is, there are no discounts or variations in that price.
83.I am not able to test these assumptions, however, I note the following additional evidence. Prior to December 2018, PositiveG was selling approximately 30 units per day of products which embodied either the 265 Design or the 266 Design, and now, as at 27 July 2020, PositiveG is selling approximately 3 units per day.
84.I am cognizant that there may be a number of reasons for this significant reduction in sales units, including the consequences on the economy of the responses to the COVID-19 pandemic. However, in further support, Mr Hill has put on evidence of his investigations using the eBay research tool, which provides details of total sales related to a particular item across all sellers. On 20 July 2020, Mr Hill used that tool to search for sales related to “dual battery volt meter for Toyota”, which report identified 1,260 units sold in the last 12 months, of which approximately 935 units were sold by third parties, including the Respondent. Whilst I am unable to conclude from those numbers that all sales were by the Respondent, what it does show is a proportion of sales of over three times the number of units that have been captured in the purchase history and accepted offer history of the Respondent’s activities.
85.I am cognizant that this evidence of the Respondent’s sales is limited to particular item numbers through which the Respondent offered for sale and sold either the Infringing Product or the Further Infringing Product, and that these item numbers may not capture all item numbers by which the Respondent identified an Infringing Product or a Further Infringing Product.
86.In these circumstances, I am satisfied that, doing the best I can, PositiveG has suffered a loss and that it is appropriate to award it compensatory damages in the sum of $7,175.55 pursuant to s.75(1)(b) of the Designs Act.
Additional damages
87.PositiveG also seeks an award of additional damages, pursuant to s.75(3) of the Designs Act, which provision provides that the Court may award such additional damages as it considers appropriate, having regard to the flagrancy of the infringement and all other relevant matters. In this regard, it is relevant to make the following observations of the Respondent’s conduct.
88.First, from the material in evidence before me, I am satisfied that the Respondent trades as “yipen13”, who is the vendor on the eBay site. I am also satisfied that Yipeng Li (the Respondent) also describes himself as “John”, and that has a street address and eBay account details which correlate with the Respondent.
89.The Respondent was first notified of PositiveG’s rights and its concerns that the Infringing Product was an infringement of PositiveG’s registered design for the 266 Design on about 7 December 2018. Indeed, the email message sent by PositiveG, by Mr Hill, through to “yipen13” referred to both the 265 Design and the 266 Design and provided details that could be accessed from the records of IP Australia, and so brought the designs to the Respondent’s attention. At that stage, PositiveG sought the removal of the eBay listing on the understanding that the Respondent would not offer for sale or list any further infringing items on eBay, through any account controlled by the seller, or on any other website. Neither Mr Hill nor PositiveG received any response to that message, and the listing was not removed in the requested period.
90.Further communications were made, including on 11 July 2019, after PositiveG’s then solicitors had obtained contact details for the seller “yipen13” from the eBay site. Notwithstanding the letter of demand sent on 11 July 2019, no response was received, and the listing was not removed within the requested period.
91.In December 2019, PositiveG commenced these proceedings in relation to the Infringing Products. After attempts at service, pursuant to my order allowing substituted service, on about 14 February 2020 the Respondent was messaged through the eBay site and was informed of the proceeding and the orders sought.
92.In response, on about 12 March 2020, the Respondent sent a message to PositiveG through the Solid Kit eBay email account, which was as follows:
We have fall off our listing, which is for dual battery volt meter for Toyota Prado 150, Landcruiser 200, 2016 HiLux, and we will not sell this item again. Please don’t harass us again!!!
93.On about 21 May 2020, PositiveG filed an application to amend its claim to include the Further Infringing Products, and on about 27 May 2020, “yipen13”, through the eBay message system, sent a message to Mr Hill about the Toyota Prado 120 dual battery volt meter/ Further Infringing Product, which was to the following effect:
I have stopped selling dual battery volt meter for Toyota Prado 150, Landcruiser 200, 2016 HiLux. What are we going to do? Then you will withdraw the sue?
94.The evidence is, however, that the Respondent has offered for sale, variously, the Infringing Product and the Further Infringing Product under a number of identification numbers, being at least six in relation to the Infringing Products and four in relation to the Further Infringing Products.
95.The principles relating to the award of additional damages have been set out in many cases in the Federal Court and relied on in this Court in intellectual property proceedings. Whilst these have particularly been in relation to copyright and trade mark infringement, the same principles are relevant to design infringement. I have found useful the discussion of such damages in the decision of Bromwich J in the trade mark and copyright matter of Geneva Laboratories Limited v Prestige Premium Deals Pty Ltd (No 5) [2017] FCA 63; [2017] 122 IPR 279 at [74] and following.
96.I referred to his Honour’s discussion and the cases to which he refers, in my decision in this Court in Henley Arch Pty Ltd v Del Monaco [2019] FCCA 3848. For convenience, I will adopt what I there said at [102]‑[105], noting that in Henley Arch I was concerned with infringement of copyright, and circumstances where the respondent in that case ultimately did appear, and it was not established that he was a serial offender, or a competitor, or, indeed, conducting an infringing business in infringing products in the course of his ordinary business. In the present case the Respondent is trading in competing products. As I said in Henley Arch:
[102]His Honour in Geneva referred to the decision of the Full Court in Facton Ltd v Rifai Fashion Pty Ltd [2012] FCAFC 9; (2012) 199 FCR 569 and in the trade mark matter before Wigney J in Truong Giang Corporation v Quach [2016] FCA 50. Henley Arch has relied on, as I have said, the decision of Beach J in Lucky Homes, in which his Honour discussed the relevant principles at [241] to [252].
[103]The following principles may be summarised from these authorities. First, it is not necessary that any amount of additional damages be proportionate to any award of compensatory damages. Secondly, an award of additional damages involves an element of penalty. Thirdly, part of the functions of an award of additional damages is to mark the court’s disapproval or opprobrium of the infringing conduct. Fourthly, the matters set out in sub-s.115(4)(b) are not preconditions to an award of additional damages. Fifthly, conduct that may properly be seen as flagrant includes conduct which involves a deliberate and calculated infringement, a calculated disregard of an applicant’s rights, or a cynical pursuit of benefit. Sixthly, post‑infringement conduct (as the authorities observed at least in the context of trade marks), is unlikely to include the respondent’s conduct in the infringement proceedings. Such conduct is more relevant to an appropriate order as to costs. That said, Wigney J in Truong at [138] commented it may be that conduct of proceedings, which involved high-handedness, dishonesty, recalcitrance or flagrant disregard of, or deficiencies in compliance with, discovery orders or notices to produce, might at least suggest a greater need for an award of additional damages that would deter future infringing conduct by the respondent.
[104]Perram J in Halal Certification Authority v Scadilone Pty Limited [2014] FCA 614; (2014) 107 IPR 23, observed that if additional damages are appropriate, the amount of damages to be awarded must operate as a sufficient deterrent to ensure that the conduct will not occur again. It should also be noted that, whilst additional damages encompass, they are not the same as aggravated or exemplary damages at common law. Further, as Bromwich J in Geneva observed, at [80] (referring to Truong), specific deterrence has a role to play, including general deterrence.
[105]It is not always the case, however, that additional damages must be given, nor that they be such as to be given in an award and an amount as claimed by an applicant. I adopt what Bromwich J said in Geneva at [82]:
Additional damages may be seen as encompassing broad concepts not always readily amenable to precise measurement or quantification. This includes having regard to capturing aspects of loss that have not been able to be ascertained because of the imperfect nature of litigation and evidence gathering in reflecting all aspects of wrongdoing and the total damaging effect of infringing or contravening conduct. It also entails giving a dollar figure to otherwise intangible considerations of punishment, giving effect to judicial disapproval and sanction and future-looking considerations of specific and general deterrence.
97.In the present case, as I have already adverted, on behalf of PositiveG Ms Davis has drawn my attention to the conduct of the Respondent, in part as I have already adverted, but also the following: that the Respondent has not participated in the proceeding; that the present case is not a case of a single default, but one where the Respondent has signalled, by its inaction, that it will not participate in the proceeding; and where the evidence is that the Respondent has ignored the notification of PositiveG’s rights and PositiveG’s attempts to engage with the Respondent in December 2018, July 2019, and more recently during the proceeding. It is also clear from the evidence that only some of the Respondent’s sales have been identified, as there were a number of items which were withdrawn from sale prior to PositiveG being able to obtain details of the number of sales.
98.In these circumstances, and having regard to the matters to which I have drawn attention in Henley Arch, I am persuaded that it is appropriate to award additional damages in the amount of $25,000. I note that PositiveG sought an amount of $30,000, and that it is not a question of some relationship between compensatory damages or additional damages, however, having regard to the totality of the evidence before me, I am satisfied that the amount of $25,000 is appropriate.
99.Additionally, I have stated above the amount of damages and additional damages I consider it is appropriate to order. I wish to say in relation to the amount of additional damages, whilst the Respondent might consider that that amount is substantial, it is important to note that additional damages plays a part in expressing the Court’s disapproval and a certain level of opprobrium in relation to conduct of persons who are found to have infringed a species of intellectual property.
100.The history of non‑response and then inadequate response after PositiveG had to go to the considerable effort of commencing proceedings, and service, and further following up the non-participating Respondent, and also the Respondent’s behaviour in advertising the products, which I have found are infringing under different item numbers, is not to be emulated. The signal that the Court gives by an award of additional damages is also a signal to others in the marketplace that infringement of design registrations is conduct of which the Court expresses its disapproval.
Summary of relief
101.I am satisfied it is appropriate to order in the permanent injunction restraining the Respondent, whether by themselves, their employees or agents or howsoever otherwise from:
(a)importing (directly or indirectly) for sale or for using for the purpose of any trade or business;
(b)selling or otherwise disposing of, or advertising, promoting or offering to sell, hire or otherwise dispose of; or
(c)using for the purposes of any trade or business; or keeping for the purpose of doing any of these acts:
(i)dual battery volt meters for the Prado 150 (and similar), and for the Prado 120 (and similar), and
(ii)any other product embodying a design that is identical to or substantially similar in overall impression to either of the designs.
102.PositiveG seek pre‑judgment interest. I have been provided with interest calculations on the basis of the applicable rates in the Federal Court since the commencement of proceedings in the case of the Infringing Products, and since the filing of the amended originating application and the amended statement of claim on the Further Infringing Products in the respective sums of $117.05 in relation to 253 days in total, and $32.68 in relation to 75 days. I am satisfied it is appropriate to award pre‑judgment interest in a total sum of $153.06, and I will so order.
103.PositiveG further seeks interest pursuant to s.77 of the Act, and whilst it may be unnecessary to so make an order, for clarity and certainty I am prepared to order interest on the amount of the damages awarded under s.75(1) of the Designs Act, but not on the additional damages amount.
104.Finally, PositiveG seeks its costs, and reasonably does so in accordance with the schedule 1 of the Rules. I certify it was reasonable to employ an advocate, and wish to record here that I have been greatly assisted by Ms Davis in this hearing. I will order that the Respondent pay the Applicant the sum of $12,340.46, being costs fixed under schedule 1 of the Rules. I will make orders effective as of today.
I certify that the preceding one hundred and four (104) paragraphs are a true copy of the reasons for judgment of Judge Baird
Associate:
Date: 16 September 2020
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