Which case won?

casea
The case for Gram Engineering
  • We invented the GramLine steel fencing panel sheet in 1993 and registered the design in 1994. Our product should be protected under the Designs Act 1906.
  • Ours was the first product on the market which was symmetrical, i.e. the panels looked the same from both sides of the fence.
  • The ingenuity and practicality of our fencing panels is demonstrated by their overwhelming commercial success.
  • BlueScope has infringed our design by copying the essential features of our GramLine fencing infill sheet in its SMARTASCREEN panels.
caseb
The case for BlueScope Steel
  • We developed our SMARTASCREEN panels independently by means of a three-stage product development process between 1995 and 2001.
  • We deny that we imitated the design of the GramLine fencing panels.
  • Our SMARTASCREEN panels have several features which make them visually different and distinct from the GramLine panels.
  • The GramLine design should never have been registered in the first place because it is not novel or original. There were numerous products already in existence which shared common features with the GramLine panels when they were launched.

So, which case won?

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Case A Case B

Case A won. You were right!

How people voted
a63%
b37%

Expert commentary on the court's decision

“Determining whether something is an obvious imitation of a registered design is purely a visual test, not one based on mathematical measurement.”
“Fraudulent” or “obvious” imitation of a registered design

In the case Gram Engineering Pty Ltd v BlueScope Steel Ltd [2013] FCA 508, Gram Engineering’s claim hinged on section 30(1)(a) of the Designs Act 1906, which deals with “fraudulent” or “obvious” imitation of a registered design. An obvious imitation is something which is very close to the original design, so that the resemblance to it is immediately apparent to the eye. This is a purely visual test, not one based on mathematical measurement.

Prior art and novelty of GramLine design

In its defence, BlueScope claimed that the GramLine design should not have been registered because it was not novel or original. To support this argument, BlueScope presented the court with the “prior art” – that is, evidence to demonstrate that the GramLine product was already known at the time its design was registered.

BlueScope referred to several products which were in existence before GramLine appeared on the market and which BlueScope said had common features with the GramLine fencing panels. These were a variety of roofing materials, siding panels and cladding products. However, the court found that none of the prior art relied on by BlueScope had the same combination of six modules per sheet with the proportions and angles that distinguished the GramLine fencing panels.

Obvious imitation of Gram’s registered design by BlueScope

The court concluded that the design of the GramLine panels was original, special and distinctive, and that Gram Engineering was entitled to register that design. Further, the court determined that the sawtooth profile of the GramLine fencing panels was its dominant feature and that BlueScope had applied an obvious imitation of Gram Engineering’s design in creating its SMARTASCREEN fencing panels.

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