Gram Engineering Pty Ltd v Bluescope Steel Ltd [2013] FCA 508

Gram Engineering Pty Ltd v Bluescope Steel Ltd [2013] FCA 508

Gram's registered design is new or original under the Designs Act 1906 (Cth) as it is visually distinct from prior art, especially through its six pan vertical sawtooth configuration, and does not merely consist of immaterial differences or features commonly used in the trade. Bluescope's Smartascreen product is an obvious imitation of Gram's design, as the dominant visual impression is the repeating six pan sawtooth profile which is substantially the same in essential features, notwithstanding minor differences such as ridge/valley and micro-fluting. There is insufficient evidence to establish fraudulent imitation, but Gram is the owner and entitled to the registered design, having...

Jurisdiction
Australia
Judgment Date
31 May 2013
Procedural Posture
Civil / First Instance Judgment
Outcome
Declaration of infringement for obvious imitation; further orders to be brought in by the parties; costs awarded to applicant.
Legal Topics
['registered Designs' 'design Validity' 'design Infringement']
['intellectual Property'] ['registered Designs' 'design Validity' 'design Infringement']

Case Brief

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Procedural Posture

Civil / First Instance Judgment

Legal Issues

  1. 1 ["Whether Gram's design for a steel fencing panel is new or original under Designs Act 1906 (Cth) s 17" "Whether the Smartascreen product infringes Gram's registered design as an obvious or fraudulent imitation under s 30(1) of the Act" 'Whether Gram is entitled to the ownership of the design under the Act']

Ratio Decidendi

Gram's registered design is new or original under the Designs Act 1906 (Cth) as it is visually distinct from prior art, especially through its six pan vertical sawtooth configuration, and does not merely consist of immaterial differences or features commonly used in the trade. Bluescope's Smartascreen product is an obvious imitation of Gram's design, as the dominant visual impression is the repeating six pan sawtooth profile which is substantially the same in essential features, notwithstanding minor differences such as ridge/valley and micro-fluting. There is insufficient evidence to establish fraudulent imitation, but Gram is the owner and entitled to the registered design, having...

Court Disposition

Declaration of infringement for obvious imitation; further orders to be brought in by the parties; costs awarded to applicant.

Orders

  • ["Declaration that Bluescope infringed Gram's design by applying an obvious imitation to the Smartascreen panel" 'Parties to bring in short minutes of order addressing the form of declaration and whether Gram seeks an enquiry as to damages or an account of profits' 'Intention to refer the enquiry or account to a...