Polyaire Pty Ltd v K-Aire Pty Ltd [No 2] [2005] HCA 41

HIGH COURT OF AUSTRALIA

McHUGH, GUMMOW, HAYNE, CALLINAN AND HEYDON JJ

POLYAIRE PTY LTD APPELLANT

AND

K-AIRE PTY LTD & ORS RESPONDENTS

Polyaire Pty Ltd v K-Aire Pty Ltd [No 2]

[2005] HCA 41

11 August 2005

(A51/2004)

ORDER

The orders pronounced by the Court on 16 June 2005 be sealed.

Representation:

D M Yates SC with B J Jenner for the appellant (instructed by Lynch Meyer)

D K Catterns QC with S J Goddard for the respondents (instructed by Thomson Playford)

Notice: This copy of the Court's Reasons for Judgment is subject to formal revision prior to publication in the Commonwealth Law Reports.

CATCHWORDS

Polyaire Pty Ltd v K-Aire Pty Ltd & Ors [No 2]

Intellectual property – Designs – Infringement of a registered design – Fraudulent imitation of a registered design – Where alleged infringing design was devised by modifying an initial design after allegation that initial design constituted infringement of registered design – Whether alleged infringing design a fraudulent imitation of a registered design.

Designs Act 1906 (Cth), s 30(1)(a).

1. McHUGH, GUMMOW, HAYNE, CALLINAN AND HEYDON JJ. At trial, Besanko J granted declaratory and injunctive relief in respect of the two articles identified in the action as KA1 and KA2. The article KA2 was devised after Polyaire had notified K-Aire on 31 October 1996 that it believed the manufacture and sale of items in the form of KA1 infringed the Design. Mr Rogers, the industrial designer who was held by Besanko J to have designed KA1, knowingly, consciously and deliberately basing the design on Polyaire's outlet director part which embodied the Design, was involved in the modifications to KA1 which led to the production of KA2. Besanko J found that, as with KA1, KA2 was a fraudulent imitation of the Design. 2. After delivery of reasons on 16 June 2005, the Court received, by leave, written submissions by the parties respecting the application of its reasoning respecting fraudulent imitation to the findings of Besanko J concerning KA2. The Court had held that there was no substance in the complaints made by the respondents concerning the finding of fraudulent imitation by KA1. 3. Schedules 1, 2 and 3 to the reasons of the Full Court of the Federal Court[1] conveniently reproduce respectively the drawings accompanying the Design, and representations of KA1 and KA2. 4. In considering KA2 Besanko J identified five differences between KA2 and the Design further to those between KA1 and the Design. He said: