Designs Case Law Update

Reputational and Additional Damages against Non-Participating Defendants

The most significant recent design damages decision is Rock Solid Industries International (Pty) Ltd v Ozi 4×4 Pty Ltd [2025] FCA 334 (8 April 2025), where the Court confirmed that infringing a registered design can cause compensable reputational damage, awarding $50,000 for reputational harm and a further $200,000 in additional damages, on top of injunctive and declaratory relief.

Rock Solid Industries International (RSI) and Ozi 4×4 both manufacture 4×4 vehicle accessories, and the designs in dispute were for stainless-steel modular truck cap systems. A 2022 infringement dispute over two of RSI’s registered truck cap designs was resolved by settlement, but RSI commenced fresh proceedings on 18 October 2023 alleging Ozi had breached that settlement by continuing to use the designs. Ozi did not participate, so RSI obtained default judgment: Registrar Luxton declared that Ozi had contravened s 71 of the Designs Act 2003 (Cth) and breached the settlement, without RSI needing to prove infringement on the merits. Ozi was also ordered to produce evidence of the benefit it derived from infringement, such as sales figures, and failed to comply.

Takeaway: Non-participation in design litigation carries real cost, including reputational damages and a substantial additional-damages award, in a jurisdiction where design-related financial relief is otherwise rare.

Entitlement / Breach of Confidence / Copyright Infringement / Substantial Similarity / Unjustified Threats

Watson Webb Pty Ltd v Comino [2025] FCA 871 (30 July 2025) – this case has it all.

At first instance, the Federal Court considered entitlement, confidentiality, substantial similarity and unjustified threats. The Court found that Mr Comino had used Cimberio’s confidential valve drawings to obtain registered design registrations, amounting to both breach of confidence and copyright infringement. However, the Court rejected Mr Comino’s claim to sole authorship, finding that Cimberio was at least a co-designer and therefore entitled to be registered as a co-owner of the designs.

The Court also held that Mr Comino’s use and disclosure of the confidential drawings warranted equitable relief, including a constructive trust over the design rights. On infringement, however, Mr Comino and AVI escaped liability: although the dispute centred on registered designs for valves, the accused products were found not substantially similar in overall impression to the registered design.

Mr Comino was also unsuccessful on unjustified threats at first instance. The Court found that the solicitor’s correspondence relied upon did not amount to a threat of infringement proceedings, and so did not contravene the unjustified threats provisions.

The case was revisited on appeal (Comino v Watson Webb Pty Ltd [2026] FCAFC 66 (21 May 2026)), which upheld the findings of breach of confidence and copyright infringement, confirming that confidential product design information remains protected even where parties have collaborated on product development.

The Full Court was less convinced on the constructive trust. Because Mr Comino was a co-designer and jointly entitled to the registered designs, stripping him entirely of his interest went further than necessary. The Full Court emphasised that a constructive trust is a remedy of last resort and was disproportionate here.

Most significantly, the Full Court overturned the primary judge’s finding on unjustified threats, holding that the Designs Act had been misconstrued. Under ss 77 and 78, a threat of infringement proceedings is unjustified unless the threatening party can ultimately establish the alleged infringement. In short, a strongly worded letter is only as good as the infringement case behind it.

Apple – Winning in Crowded Fields and Hidden Details
Apple secured two successful outcomes before the Australian Designs Office, each highlighting a different aspect of the distinctiveness assessment.

In the first matter, the Delegate confirmed the registrability of Apple’s power bank design. Although the prior art disclosed many similar products, differences in proportions, edge treatment and overall visual appearance produced a distinct overall impression, making the design new and distinctive. In a crowded field like portable power banks, relatively modest visual differences can be enough to establish distinctiveness, because the familiar person is accustomed to identifying products by subtle distinctions.

Takeaway: In a crowded design field, small but visually meaningful differences can be enough to secure design certification. [2025] ADO 3 (10 November 2025)

Apple also succeeded in defending the validity of its design for a cushion used in a head-mounted display device. The critical issue was that the cited prior art failed to disclose several important visual features, including the underside attachment structures and clip-lock mechanisms. Because those features were absent and materially affected the overall appearance, Apple’s design was found neither identical nor substantially similar to the cited designs, and therefore new and distinctive.

Takeaway: An incomplete prior art disclosure cannot be assumed to reveal hidden design features. Where significant visual features are missing from the prior art, that absence may be enough to establish that a design is both new and distinctive. [2025] ADO 4 (24 December 2025) (Benjamin Goldsworthy)

Bodum AG v H.A.G Import Corpn (Australia) Pty Ltd – When Copying Is Not Enough
The dispute concerned the distinctive shape of Bodum’s well-known double-walled Pavina and Canteen glasses. Bodum’s registered design protection for the glasses had expired in 2014, so unable to pursue an infringement claim, Bodum instead alleged that HAG’s sale of very similar glasses under the Maxwell & Williams brand amounted to misleading or deceptive conduct and passing off. HAG openly admitted copying the shape of Bodum’s products, but the Court held that deliberate copying does not automatically establish misleading conduct. The central question was whether consumers were likely to be deceived about the commercial origin of the goods. The Court found that consumers associated the products with the Bodum brand and logo, rather than the shape of the glasses, so Bodum failed to establish the requisite secondary reputation in the product shape. HAG, by contrast, prominently used its own Maxwell & Williams branding, packaging and product markings, which substantially reduced any likelihood of confusion.

Takeaway: Once registered design protection expires, competitors may lawfully copy a product’s shape, provided their branding and marketing don’t mislead consumers into believing the products originate from, or are associated with, the original manufacturer.