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ARTICLE · 07 SEPTEMBER 2016

Registered designs: What is the appropriate form of order for injunctive relief?

Corrs Chambers Westgarth
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This judge granted an injunction in broad terms, consistent with the usual trade mark and copyright infringement orders.

AustraliaIntellectual Property
Odette Gourley
Odette Gourley
Elizabeth Duncan (Formerly With Corrs Chambers Westgarth)
Elizabeth Duncan (Formerly With Corrs Chambers Westgarth)
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Intellectual property lawyers will be very familiar with the usual form of order for the injunctive relief awarded in trade mark infringement cases. It extends to any name, word, mark, sign or device 'substantially identical with or deceptively similar to' the registered mark in suit. In registered design cases, on the other hand, the appropriate form of order is not so clear.

In NSW, a decision by the Federal Court in Multisteps v Source and Sell [2013] FCA 743 has been influential in suggesting that injunctive relief in registered design cases should be limited to the specific products alleged to infringe.

However, a more recent decision in Hunter Pacific International Pty Ltd v Martec Pty Ltd (No 2) [2016] FCA 1041 saw Justice Nicholas grant an injunction in broad terms, consistent with the usual form of order in trade mark and copyright infringement cases.

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