Manufacturers always wonder about a competitor’s product: how much do I have to change before it won’t be considered a copy? If the product is the subject of a registered design the High Court says that  removal of signs of obvious imitation may not be enough if the changes were made to hide the copying.

In Polyaire Pty Ltd v K-Aire Pty Ltd [2005] HCA 32, Polyaire successfuly claimed K-Aire had breached Polyaire’s registered design of its air conditioner grille which directs the flow of air from the unit to the room or other area to be air-conditioned.

The case turned on Section 30(1)(a) of the Designs Act 1906 (now repealed) which provides that a person infringes the monopoly in a registered design if, without the licence or authority of the owner, that person "applies the design or any fraudulent or obvious imitation of it to any article in respect of which the design is registered".

The trial judge’s findings respecting fraudulent infringement were as follows: 
"I find that Mr Rogers in designing KA1 knowingly, consciously and deliberately based his design on [Polyaire’s] outlet director part which embodied [the Design]. I make that finding having regard to a number of matters…

In my opinion, the shape and configuration of KA1 is not distinctly different from [the Design]. There are differences, the most significant of which are the absence from KA1 of the chamfered lip and
the vertical ribs on the outside of the frame. However, the features of shape and configuration which give [the Design] its distinctive appearance, namely, the snap fit mechanism, the control bars and the
blade ends including the spigots (despite small differences) have been copied. I find that KA1 is a fraudulent imitation of [the Design]."

The High Court found:

In dealing then with the question of fraudulent imitation, his Honour… adverted to the two features the absence of which had been determinative of his conclusion respecting obvious
imitation. However, he went on to indicate that there had been copying of features giving the Design its distinctive appearance, namely the snap fit mechanism, the control bars and the blade ends including the
spigots. That approach to the matter was an orthodox application of principle whereby what is not an obvious imitation may yet be a fraudulent imitation."

Section 71 of the Designs Act 2003 now relates infringement to "overall impression".