The High Court recently handed down its decision in the latest registered design infringement case to make a splash in New Zealand. Registered design infringement cases are very rare in New Zealand, so the decision has been welcomed with interest.
Watkins Manufacturing Corporation, a spa pool manufacturer who operates through the Hot Springs Spa brand in New Zealand, sued Prestige Pools for infringement of its design registration covering a spa pool cabinet design.
Watkins had earlier decided to update one of its popular Highlife spa designs which had been in the market for some time. The result was the ‘NXT design’ which was registered as a design in New Zealand. The NXT design (which solely covers the sides of the spa pool), and its resulting 3D product, is shown in the following representations:
Watkins became aware that Prestige was offering the following new range, with three different models:
Watkins alleged that Prestige’s models were not substantially different from its registered NXT design for a spa pool cabinet and that Prestige had infringed its registered design by importing, advertising, offering for sale or selling the spa pools.
In evidence, Watkins noted that its NXT design was different from earlier spa pool designs in that its design had distinct corner sections and grooved wide panelled horizontal slats which were new to the market. Both Watkins and Prestige’s experts agreed that the NXT design was new to the industry and that the design of the corners and horizontal slats with grooving were an innovative, material break from earlier spa designs. This is important as the higher the degree of originality in the design, the broader the scope of protection afforded to it.
The Judge decided that the appearance of the spa pool cabinet of registration covered:
- the narrowly spaced apart wide horizontal planks and the way they joined at the corners;
- the visual appearance of the corner columns; and
- the devices featured on the spa pool.
The Judge inspected a 3D version of Watkin’s NXT design as well as Prestige’s spa model. The judge considered that both spa pool models featured the design aspects covered in the representations of the NXT design registration. As a result, the judge decided that Prestige’s spa models were not substantially different from the NXT design registration and infringed the design.
This case reaffirms the key points of design infringement in New Zealand:
- design infringement is a question of fact judged by the eye;
- the judging eye is the informed customer or consumer;
- the assessment is between the representations included in the registered design and the 3D product that is being sold by another trader;
- a 3D version of the registered design can assist in the comparison to the extent that it displays the registered design features; and
- the level of originality determines how likely another product is to infringe. If the design is novel and new to the market, it will have a greater degree of protection and less similar designs may still be infringements. Conversely, if the design has a lesser degree of novelty, a product may be able to avoid infringement with smaller differences.