Lacey v Foggin [2002] FCA 1282

FEDERAL COURT OF AUSTRALIA

Lacey v Foggin [2002] FCA 1282 INTELLECTUAL PROPERTY – Designs – alleged infringement of registered design for a head massager - whether respondent's article is an application or obvious imitation of registered design - challenge by respondent to validity of applicant's registered design – whether registered design amounts to a "method or principle of construction" Designs Act 1906 (Cth) ss 4, 30, 32B Firmagroup Australia Pty Ltd v Byrnes & Davidson Doors (Vic) Pty Ltd (1980) 180 CLR 483, followed Dalgety Australia Operations Ltd v F F Seeley Nominees Pty Ltd (1984-86) 6 IPR 361, referred to Malleys Ltd v J W Tomlin Pty Ltd (1961) 180 CLR 120, followed Dart Industries Inc v Décor Corp Pty Ltd (1989) 15 IPR 403, followed Wanem Pty Ltd v Tekiela (1991) 19 IPR 435, considered Dunlop Rubber Co Ltd v Golf Ball Developments Ltd (1931) 48 RPC 268, referred to Gerard Industries Pty Ltd v Auswide Import Export Pty Ltd (1998) 40 IPR 119, cited Macrae Knitting Mills v Lowes Ltd (1936) 55 CLR 725, referred to Oren and Tiny Love Limited v Red Box Toy Factory Ltd [1999] EWHC Patents 255, considered Schmittzehe v Roberts (1955) 72 RPC 122, considered Colbeam Palmer Ltd v Stock Affiliates Pty Ltd (1968) 122 CLR 25, referred to Dart Industries Inc v Décor Corp Pty Ltd (1993) 179 CLR 101, referred to DWAYNE DERRICK LACEY v CHRIS FOGGIN N 987 of 2001 MADGWICK J 17 OCTOBER 2002 SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY N 987 OF 2001

BETWEEN: DWAYNE DERRICK LACEY

APPLICANT

AND: CHRIS FOGGIN

RESPONDENT

JUDGE: MADGWICK

DATE OF ORDER: 17 OCTOBER 2002

WHERE MADE: SYDNEY

THE COURT: 1. Declares that the respondent has infringed the Australian Registered Design No 134633 ("the Design"). 2. Orders that the respondent, whether by himself or his servants or agents, be permanently restrained from infringing the Design and in particular from: (a) applying the Design or fraudulent or obvious imitations of the Design to non-electric head massage devices ("Infringing Head Massagers"); and (b) selling, offering or keeping for sale or hire, Infringing Head Massagers; and (c) manufacturing, selling, offering for sale or keeping for sale any of the head massagers marketed under the name "Shiver Me Timbers!" during the term of the Design. 3. Orders that an account be conducted by a Registrar of profits of the respondent arising out of his application of the Design with the parties to submit proposed directions in relation to the conduct of the account of profits within seven days. 4. Orders that the respondent is to pay the costs of the proceedings. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.