ABSTRACT

The test for infringement is therefore a balance of factors in which

the standard of the informed user is used to determine the scope
of freedom of the designer to innovate in the design field, to
assess the distinctiveness of the registered design in light of prior
designs, and in comparing the registered design to the allegedly
infringing product. Overall visual impression is key to whether
infringement will be found.
Review 2 Pty Ltd v Redberry Enterprise Pty Ltd [2008] FCA 1588
(Redberry).
KENNY J
24 OCTOBER 2008
MELBOURNE
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
VID 286 OF 2007
BETWEEN:
REVIEW 2 PTY LTD (IN LIQUIDATION) (ACN 067 634
360)
First Applicant/First Cross-respondent

AND:
JUDGE:
DATE OF ORDER:
WHERE MADE:

REVIEW AUSTRALIA PTY LTD (ACN 122 295 836)

Second Applicant/Second Cross-respondent
REDBERRY ENTERPRISE PTY LTD (ACN 093 946 260)
Respondent/Cross-claimant
KENNY J
24 OCTOBER 2008
MELBOURNE

In the Redberry case, Review 2 and Review claimed that Redberry

had infringed a design registration in respect of a Review
importing and selling a dress (Redberry Dress) alleged to

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sleeveless, cross-over (or fixed-wrap) dress (Review Design) by

embody a design substantially similar in overall impression to the

Review Design.
Redberry challenged the validity of the Review Design principally
on the basis that it was not distinctive in the sense that it was
substantially similar in overall impression to a design(s) forming
part of the prior art published before the application for the
Review Design was filed.
Justice Kenny found that the Review Design was different from the
designs in the prior art and was valid. Nevertheless, due to
differences in the shape of the skirt and the pattern of the
respective Review Design and Redberry Dress, Her Honour found
that Redberry had not infringed the Review Design. The Judge
took into account the designers limited freedom to innovate a
cross-over or wrap ladies dress other than by reference to the
shape and configuration of the skirt combined with differences in
pattern (including colour).

ANALYSIS
A design will infringe a registered design if it is identical to or
substantially similar in overall impression to the registered design.
When assessing substantial similarity in overall impression, the
law requires the Court to place more importance on the
similarities between designs than differences, and to consider the
point of view of an informed user of the product someone who is
familiar with the product. The Court determined that the informed

Page20

significance of the design as a whole. This is considered from the

user was a purchaser for fashion outlets rather than either an

average consumer or a fashion designer.
The allegedly infringing dresses were of different colored and
patterned fabrics than the dress shown in the photographs in the
design registrations. Redberrys dress varied from the registered
design in the shape of the skirt as well. The Court considered that
the shape of the skirt in combination with the color and pattern of
the fabric had some significance in creating a different overall
impression of the design. Therefore, the Court found no
infringement.

HOW CLOSE TO AN AUSTRALIAN REGISTERED DESIGN

DOES A LATER DESIGN NEED TO BE TO INFRINGE IT?
Designs relate to the visual appearance of a product. According
to the Designs Act 2003, to infringe, a later design must be
substantially similar in overall impression to a registered design.
Several decisions of the Federal Court of Australia (FCA) and the
Full Court of the FCA in recent years provide guidance as to how
this test is applied. Factors to consider in determining whether an
allegedly infringing design is substantially similar in overall
impression to a registered design, s19 of the Designs Act requires
a court to have regard to various factors. More weight is to be
given to similarities between the designs than differences; regard
any design features identified in a statement of newness and
distinctiveness filed with the design application and to the

Page20

is to be had to the state of development of the prior art base, to

freedom of the creator of the design to innovate. If only part of

the later design is substantially similar to the registered design,
regard must be had to the amount, quality and importance of that
part in the context of the design as a whole. These factors are to
be assessed at the standard of the informed user.

FACTORS TO CONSIDER
In

determining

whether

an

allegedly

infringing

design

is

substantially similar in overall impression to a registered design,

s19 of the Designs Act requires a court to have regard to various
factors. More weight is to be given to similarities between the
designs than differences; regard is to be had to the state of
development of the prior art base, to any design features
identified in a statement of newness and distinctiveness filed with
the design application and to the freedom of the creator of the
design to innovate. If only part of the later design is substantially
similar to the registered design, regard must be had to the
amount, quality and importance of that part in the context of the
design as a whole. These factors are to be assessed at the
standard of the informed user.
THE INFORMED USER
The standard of the informed user is therefore the benchmark at
which the similarity of overall impression is assessed. It is
therefore important to gauge the informed user correctly. In
which concerned designs for womens dresses, it was held that
the informed user is not a design expert, but nor are they

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Review 2 Pty Ltd v Redberry Enterprise Pty Ltd [2008] FCA 1588,

necessarily an ordinary user of the product. Thus, the informed

user in the field of designs for womens dresses was likely to have
particular familiarity with fashion trends. For example, containers
were typically required to be square or rectangular in shape with
dimensions to facilitate packing for storage and transport;
ventilation and drainage holes were required, feet would assist in
achieving

ventilation

and

drainage,

pillars

were

preferably

included to give structural integrity to the container and to

provide substantially clear panels between the pillars. The court
used this information to determine whether the registered design
was distinctive over the prior art base. State of development of
the prior art base In each of the cases mentioned herein, the
court compared features of similarity and difference between the
registered

designs and a prior

art design

and made an

assessment as to which features of the design the informed user

would have found similar to the prior art and which distinctive,
having regard to any features highlighted in the statement of
newness and distinctiveness filed with the design application and
the freedom of the designer to innovate.
Review brought proceedings against Redberry for infringement of
their registered design no. 307708 in respect of a sleeveless
cross-over (fixed wrap) dress. Kenny J, in applying the test for
infringement, noted that s 19 of the Act called for application of
the standard of the informed user. Her Honour noted that the
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informed user must be a user of the class of product in question

(ladies dresses) and further that the user must be informed and
not merely an ordinary consumer.
In arguing that their dress was not substantially similar in overall
impression to the Review design, Redberry relied on evidence
from a person who had worked mostly as a retail sales assistant,
but also as a fashion buyer and design assistant. Reviews witness
was a designer, and a director of the company.
Her Honour took into consideration the decision of the Deputy
Registrar of Designs in the Apple case ((2007) 74 IPR 164), which
put forth the view that an informed user could be an ordinary
intended user of the product made from the design, and
ultimately rejected this proposition. Instead, guidance was sought
from several UK authorities, in particular the Architectural
Lighting case ([2006] RPC 1) in which the UK Patents County
Court defined the informed user as a regular user to whom the
design is directed and who would be aware of "'whats about in
the market? and 'what has been around in the recent past?'"
Her Honour concluded that in the context of ladies dresses, an
informed user would be a woman who might subscribe to fashion
magazines and have particular knowledge of, and familiarity with,
fashion trends and that Redberrys witness was "in the nature of
an informed user". She took into account Redberrys evidence
that the overall appearance of a dress was principally determined
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by style, cut, fit, colour/print and materials.

Noting that a dress designer is constrained by well-recognized

conventional limits of shape and configuration, and having
regard to the state of the prior art base, her Honour went on to
conclude that when viewed through the eyes of an informed user,
there were sufficient differences in the skirt and pattern (including
colour) of the Redberry dress for a finding of non-infringement.
SCOPE OF DESIGNS INVOLVING COLOR
An issue that arose at trial was whether the color of the dress the
subject of the Review design should be taken into account in
determining the extent of Reviews monopoly. The representations
of the design had been lodged in colour by the applicant.
Kenny J reasoned that "[the] weight to be given to pattern and
colour will depend on the nature of the product and the relative
importance of the different visual features of the registered
design, as viewed by the informed user, having regard to the prior
art, and the freedom of the designer to innovate."
In this instance, the evidence (and the prior art) had shown that
colour would be flagged by an informed user as an important
visual element of the design. This played a significant role in
Kenny

Js determination

of non-infringement.

This decision

highlights the need to take care when submitting representations

with a Designs application. If the registration is not to be confined
to

particular

color

or

pattern,

then

black

and

white

required, for example for clarity, then it may be prudent to

include a Statement of Newness and Distinctiveness disclaiming

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representations should be lodged. If color representations are

the color and/or pattern shown in the representations, to reduce

the risk of limiting the registration

INFRINGEMENT
In Review 2 Pty Ltd v Redberry Enterprise Pty Ltd 17, the court
held that Review's design for a cross-over or wrap dress (the
Review Design) was valid but not infringed by a dress it alleged
Redberry had made, imported and sold. In considering whether
the Redberry dress was, for the purposes of infringement,
substantially similar in overall impression to the Review Design,
Justice Kenny considered the appearance of the Review Design as
a whole by reference to the standard of the hypothetical
'informed user'. She canvassed the authorities on this person's
qualities, concluding that:
The assessment must be that of a user of ladies' garments,
which would include a potential purchaser, either in retail sales
(such as a buyer for a fashion store) or at the ultimate
consumer level.
A designer or manufacturer of ladies' garments is not, on
account of design or manufacturing knowledge alone, an
informed user.
The notional user must be informed, in the sense that the user
is familiar with ladies' garments. The informed user is not an

or less visible manufacturing features.

Page20

expert, but must be more than barely informed.

The focus for consideration is on eye appeal and not on internal

Ultimately, the court decided that, applying an objective test, the

Review Design was not infringed.
The style of dress was found to be one that was fairly common
and gave limited freedom to innovate. The key 'new' features of
the Review Design as opposed to the prior art were the skirt's
shape and the dress's pattern, including its color: the monopoly
covered by the design was restricted to these aspects.
Justice Kenny held that whether color makes a material difference
will depend on the 'nature of the product and the relative
importance of the different visual features of the registered
design.' She considered the fact that Review had submitted color
photographs of its design to be relevant.
When compared, the Review Design and the Redberry dress had
many similarities (which were to be given more weight than their
differences 18) but the two differences between them related to
those aspects of the Review Design that differentiated it from the
prior art.
In this context, an informed user would not perceive the Redberry
dress as substantially similar in overall impression to the Review
Design.

PROBLEM
In the Redberry case, Review 2 and Review claimed that Red berry
sleeveless, cross-over (or fixed-wrap) dress (Review Design) by
importing and selling a dress (Redberry Dress) alleged to

Page20

had infringed a design registration in respect of a Review

embody a design substantially similar in overall impression to the

Review Design.
In substance, the applicants claim that the Redberry garment
embodies a design that is substantially similar in overall
impression to the Review Design because, when regard is had to
the Review Dress, as depicted on the Register, and the Redberry
garment, the following similarities are manifest:

they are both sleeveless, V-necked, cross-over or fixed wrap

dresses;

the gathering on the shoulders and the shoulder widths of both

garments appears much the same;

across the upper body, both garments are gathered at the

same point on the side seam, having a similar amount of
gathering;

the fitted waist and waist tie appear the same on both
garments;
whilst the skirt on the Review Design dress is panelled and the
skirt on the Redberry dress is not, the overall effect is much
the same since both skirts fall from a fitted waist and the skirt
hem is full; and

Page20

Both garments share much the same proportions, since they

appear to have much the same shoulder to waist and waist to
hem lengths.

Redberry challenged the validity of the Review Design principally

on the basis that it was not distinctive in the sense that it was
substantially similar in overall impression to a design(s) forming
part of the prior art published before the application for the
Review Design was filed.

QUALITATIVE DATA
The court importantly found that the design registration was
limited to a combination of all the features present in the design
ornamentation.

Page20

representation including the colors present in the pattern or

DISTINCT DIFFERENCES.
(a) The Review Design skirt is figure-hugging to about half way to
the hem, when it expands suddenly and significantly relative to
the top of the skirt, giving the hem the ruffled look, to which both
Ms. Ellis and Ms. Mudie referred. This is to be contrasted with the
floppy or blousy appearance of the Redberry skirt from the waist
to the hem.
(b) The pattern (including color) of the Review Design and the
Redberry garment are different.
What differentiates the Review Design from the designs embodied
in the prior art (including the Spicy Sugar J3182RB) is the shape
and configuration of the Review Design skirt. Even so, the prior
art discloses at least one skirt that is not dissimilar in shape to the
skirt of the Review Design, although the overall impression
between the design embodied in that garment and the Review
Design is different. The prior art also makes it plain that pattern
(including colour) can be an important visual feature in the
designs embodied in the dresses said to exemplify the prior art.
Having regard to the prior art and to the Review Design, and
taking into account the freedom of the designer to innovate,
the informed user would, so it seems to me, be aware that
there is limited freedom to design a cross-over or wrap ladies
dress (or similar ladies garment) other than by reference to
the shape of the skirt (as opposed to the cross-over itself),
combined with differences in pattern (including colour). In
addition,

there

are

significant

constraints

on

designer

Page20

innovation arising from the nature of the product in question.

Designs for ladies garments are invariably limited by what
women customarily wear. By and large, the "dress" has wellrecognized conventional limits.
Redberry argued that the Court should have regard to every
visual feature, including colour, disclosed in the photographs
depicting the Review Design as registered. According to Redberry:

The fact that one dress has an orange, blue and brown
cross-hatched print and the other is a brown floral dress is a
visual feature (and indeed a striking visual feature) that must
be considered .If the Applicants did not want colour and print
to be considered they could have lodged a black and white
photograph, or a sketch

JUSTICE KENNY STATED:

Having regard to the prior art and the freedom of the designer to
innovate, what gives the Review Design its different overall
impression from the prior art (discussed further below), from the
perspective of the informed user, is the shape and configuration
of

the

skirt,

combined

with

differences

in

pattern

and

Page20

ornamentation.

QUANTITATIVE DATA
Redberry apparently ceased the conduct of which the applicants
complain when it became aware of their claim and, in any case,
before the issue of proceedings. The amount of profit to Redberry
was modest less than $2000.
In

Amended

Particulars

of

Loss

and

Damage,

the

applicants sought:
(a)

Damages by reason

of

lost

sales

in

the

sum

of

$18,919.25, calculated on the assumption that it would have

sold 133 units as sold by Redberry and would have done so at a
profit of $142.25 per garment. (Counsel for the applicants
conceded, however, that the applicants had not intended to
depart from the figure of $18,679.41 mentioned in opening
and in the original Particulars
(b) Damages for the applicants loss of reputation and
position in the Australian market of $200,000, by reason
of:
Redberrys copying the Review Design;
Redberrys selling the Redberry garment at $59 more
than half of the retail price at which the applicants sold
the Review Dress that embodies the Review Design; and
diminution of the applicants reputation as an exclusive designer
concession sites.

Page20

of original garments only available through their retail stores and

(c) Additional damages of $400,000 pursuant to s 75(3) of

the Designs Act having regard to:
the flagrancy of Redberrys conduct as constituted by the
closeness of copying and the continued denial of any knowledge
of the Review Design and/or copying; and
having regard to the apparent business practice of Redberry
and/or related entities to engage in copying the garment designs
of other designers which have been the subject of previous
proceedings against Redberry for copyright infringement; the
subject of copyright infringement claims; or the subject of
trademark infringement claims.
DESIGN STATISTICS July 2008 June 2009
Design Applications Lodged - 5319
Design Registrations - 6512
Design Registrations Certified1985
Designs Ceased (1906 Act) - 2124
Designs Ceased (2003 Act) - 120

DAMAGES
While not required to consider damages in the Redberry case,
having not found any infringement, Justice Kenny nevertheless
considered each of the heads of damage claimed by Review. Her
Honor made the following findings on the damages issue in the
two cases:

Lost sales Review argued that it would have sold the same
number of dresses as the respective respondents had imported.

Page20

FINDINGS

Justice Kenny thought some allowance should be made for the

chance that Review would not achieve the same level of sales. In
the Redberry case, the chance of a Review customer buying the
Redberry dress was considered 'very low' and the nominal lost
sales would have been reduced by 90 per cent. Diminution in
value Justice Kenny awarded $3500 in damages against
Redberry) for diminution in the value of the Review Design. The
reproduction of the Review Design 'under the cheaper...label had
the distinct potential to diminish customer interest in the Review
Design and, in consequence, consumer demand for garments
embodying the Review Design. Review positioned itself as an
exclusive brand, sold only through Review stores or concessions
in large department stores, and this exclusivity was commercially
valuable.
Additional damages In claiming additional damages, Review
relied, in part, on the alleged business practice of Redberry in
routinely copying others' designs. Justice Kenny observed that
copying per se was not unlawful under designs law and, while
evidence of repeated design infringements might be relevant to
additional damages, a tendency to copy others' designs was not.
She made the interesting comment that:
The nature of the fashion industry and its products as disclosed in
the evidence can also be borne in mind. The evidence indicates
accepted modus operandi of designers, including reputable

Page20

that copying and adapting the designs of other designers is the

designers, within the industry; and that it is through this process

that fashion products are created.
An interesting point arose when Redberry attempted to show that
their infringement (if any) did not lie in making the garments
(primary infringement) but only in their importation and sale
(secondary infringement), because they had not been made in
Australia.

A finding of secondary infringement would have

involved a lower threshold than primary infringement for the

respondent to overcome in proving that any damages awarded
should be reduced. Justice Kenny agreed that the garments in
each case were made not in Australia, but in China, finding that
an article will be 'made' in Australia for the purposes of the Act if
a direction to make the garment is given in Australia; however, it
will not be made in Australia if an Australian person issues a
direction to make a product while travelling overseas.
Traditionally, most Australian fashion houses have decided
against registering designs, as the process has been relatively
costly and hasn't kept up with the fast pace of the fashion cycle.
Australia's relatively new designs legislation, which came into
effect on 17 June 2004, allows designers to apply to register a
design and have it published (preventing others from obtaining
certification of the same, or a substantially similar, design)
without proceeding to registration. While no action can be taken
Office as a validly registered design, the new scheme has made

Page20

for infringement of the design until it is certified by the Designs

design registration an increasingly workable and realistic way for

fashion designers to protect their work.
By

comparison,

in

the

New

Cover

Group

case,

Review

succeeded in its claim for infringement of the same Review

Design in respect of the manufacture, importation and sale of
garments labelled Spicy Sugar. In contrast to the Redberry
case, Justice Kenny found that whilst the pattern (and colour) of
the Spicy Sugar garments differed to the Review Design, they
embodied a design substantially similar to the Review Design.
Again, the validity of the Review Design was challenged but was
upheld.

JUDGEMENT
A design will infringe a registered design if it is identical to or
substantially similar in overall impression to the registered design.
When assessing substantial similarity in overall impression, the
law requires the Court to place more importance on the
similarities between designs than differences, and to
consider the significance of the design as a whole. This is
considered from the point of view of an informed user of the
product someone who is familiar with the product. The Court
determined that the informed user was a purchaser for fashion
outlets rather than either an average consumer or a fashion
designer.

color through the use of color photographs, without a statement

of newness and distinctiveness to otherwise define the design,

Page20

Significantly, the fact that the Review Design was registered in

was considered by the Judge as relevant to determining the

extent of the monopoly of the registration. In assessing whether a
registered design is infringed, the Court may take into account
pattern and color as visual features which form part of the subject
matter protected by registration, unless disclaimed in some way.
When seeking registration of a fashion design, very careful
consideration should be given as to what are the visual features
which are sought to be protected.
The Judge noted in the Redberry case that had infringement been
established, the Court would have been entitled to exercise its
discretion to refuse to award damages or to reduce the damages
that would otherwise be awarded as it was found on the evidence
that Redberry was not aware, and could not reasonably have been
expected to have been aware, that the Review Design was
registered. The Designs Act provides that it is prima facie
evidence that the defendant was aware that the design was
registered if the product embodying the registered design to
which the infringement proceedings relate, or the packaging of
the product, is marked so as to indicate registration of the design.
An example would be affixing a garment with a swing tag
notifying design registration.
In both the Redberry case, the Judge observed that copying and
adapting designs of other designers is common place in the
can be a particularly useful way for designers to protect their
seasonal fashion wares.

Page20

fashion industry. Implementing a design registration filing strategy

Justice Kenny found that the Review Design was different from the
designs in the prior art and was valid. Nevertheless, due to
differences in the shape of the skirt and the pattern of the
respective Review Design and Redberry Dress, Her Honor found
that Redberry had not infringed the Review Design. The Judge
took into account the designers limited freedom to innovate a
cross-over or wrap ladies dress other than by reference to the
shape and configuration of the skirt combined with differences in
pattern (including color). Kenny J found that the Review Design
was valid but that Redberry had not infringed it.
In the Redberry case, the Court found no infringement of
the registered design and stated:
There are also two distinct differences. These are:
(a) The Review Design skirt is figure-hugging to about half way to
the hem, when it expands suddenly and significantly relative to
the top of the skirt, giving the hem the ruffled look, to which both
Ms. Ellis and Ms. Mudie referred. This is to be contrasted with the
floppy or blousy appearance of the Redberry skirt from the waist
to the hem.
(b) The pattern (including color) of the Review Design and the
Redberry garment are different.
This case reminds us that while a design registration may be
confined by what has been disclosed in the prior art.

Page20

found valid, the monopoly conferred by registration can be closely

The allegedly infringing dresses were of different coloured and

patterned fabrics than the dress shown in the photographs in the
design registrations. Redberrys dress varied from the registered
design in the shape of the skirt as well. The Court considered that
the shape of the skirt in combination with the colour and
pattern of the fabric had some significance in creating a
different overall impression of the design. Therefore, the Court
found no infringement.
Finally judge concluded that Redberry acknowledged that,
if differences between the Review Design and the design
in the Redberry garment as regards the shape of the skirt
and the pattern (including color) avoided a finding of
infringement, then the likely outcome was that the Review
Design was valid but not infringed.

Page20

REFERENCES

 ATACADOR, J. (2008, DECEMBER 3). DESIGNERS UNDER

REVIW.

Retrieved

from

http://www.davies.com.au/ip-

news/designers-under-review: http://www.davies.com.au/
CLAYTON, G. &. (2008, OCTOBER 27). Federal Court of
Australia.

Retrieved

from

http://www.austlii.edu.au/au/cases/cth/federal_ct/2008/1588.
html:
http://www.austlii.edu.au/au/cases/cth/FCA/2008/1588.html
Jones, M. L. (2008, OCTOBER 3). INTELLECTUAL PROPERTY.
Retrieved

from

http://www.allens.com.au/pubs/ip/ipbulldec08.htm:
http://www.allens.com.au
(Clothing cases reveal the limits to design protection,
n.d.)Clothing cases reveal the limits to design protection.
(n.d.).
Retrieved
from
ipwhiteboard:
http://www.ipwhiteboard.com.au/clothing-cases-reveal-thelimits-to-design-protection/

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CONTENTS
ABSTRACT................................................................................... 1
ANALYSIS..................................................................................... 2
FACTORS TO CONSIDER.............................................................3
INFRINGEMENT........................................................................... 7
PROBLEM..................................................................................... 8
QUALITATIVE DATA...................................................................10
QUANTITATIVE DATA................................................................12
DAMAGES..................................................................................13

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JUDGEMENT............................................................................... 15