Summary:

1. The Plaintiff (Watkins) manufactured spa pools which were primarily sold under the brand HOT SPRING®.  Watkins is the registered proprietor of New Zealand Registered design 418933 (“NZ 418933”) for a spa pool cabinet.

2. Watkins alleged that several spas in the First Defendant’s (Prestige) Sunrans SR range infringed copyright in the design of their spa cabinet. Prestige admitted importation, advertising, and offering to sell (although it did not sell); but denied any infringement.

Facts:

3. In 2013, Watkins decided to redesign their flagship spa pool range the “Highlife Collection”, which had been sold for over 40 years.  Watkins collaborated with BMW Group company, Designworks, to develop what would become Watkins’ “NXT” range.  The spa cabinet of Watkins’ NXT design is the subject of NZ 418933.

4. Watkins’ senior engineering manager gave evidence identifying elements of the NXT design which he considered a break from the pre-existing state of spa pool cabinet design at [7]. Evidence was also given that Prestige advertised and offered to sell (and actually sold) the allegedly infringing spa pools.

5. Watkins also presented expert evidence from an experienced industrial designer. The expert explained the process of industrial design and its intended influence on customers. He also compared the NXT spa to prior art provided to him. Finally, he inspected and compared the NXT and Sunrans SR spas. He disputed many of the distinctions between the spa cabinets put to him in cross-examination.

6. Prestige called a single witness who had been involved in the design, manufacture, sale and marketing of spa pools for over 40 years. The witness while stating that “it is clear that you are looking at two different products” initially thought two side-by-side photographs of the NXT and SR pools were both of SR pools.

The Law:

7. His Honour relied heavily on the principal New Zealand authority of UPL Group Ltd v Dux Engineers Ltd [2],  which followed the Privy Council decision of Interlego Ag v Tyco Industries Inc. [3]

U P L Group Ltd v Dux Engineers Ltd 

8. Somers J in UPL Group Ltd held “[w]hether there is an infringement of copyright in a registered design is a question of fact of which the eye is the [judge]”.   [4]

9. Somers J emphasised that the Design Registration and the alleged infringement needed to be viewed against the other, so that the subject of the design was to be taken as the measure of any infringement. He also considered the relationship between the scope of the designs’ novelty or originality and the extent of the infringement. Jagose J summarised this point saying that small differences would not save the defendant, unless novel or original features were “but little removed from prior art”.   [5]

10. Somers J noted that while it is not always easy to compare a two-dimensional design with a three-dimensional object and articles manufactured by the plaintiff which embody the design may be compared with the artefact said to infringe. Ultimately, the comparison needs to be between the design representation in the infringing product. Manufactured articles must be disregarded to the extent they fail to reflect those designs representations.

11. In Watkins, Jagose J considered the “separately and together and closely and at a distance” methodology, the “imperfect recollection” test (confusion as to whether a particular article embodies the previously seen design) and “actual use” test (disregard technical similarities).  [6]

12. His Honour also agreed with Prestige’s counsel that the judging eye is that of an informed customer or consumer.

The assessment

13. In making his assessment, Jagose J considered the below  [7] :

• all witnesses accepted the designs representation constituted a material break from prior art;
• his inspection of Watkins’ NXT product affirmed the product’s commercial embodiment of the design representations;
• his inspection of the alleged infringing spa cabinet left him with the impression that the Prestige model could easily have been an earlier iteration from the NXT design representation. This was his impression viewing the two products side-by-side, both closely (while keeping both in vision) and especially at a greater distance.

14. His Honour dismissed Watkin’s counsel’s submission that because the Prestige model’s central column to distribute its weight were dictated solely by function they had to be disregarded as a part of the design.

Result

15. His Honour found that Prestige’s spa cabinets to be articles to which a design not substantially different from Watkins NZ 418933 had been applied.

Comments

16. In light of the acceptance by witnesses for both parties that the appearance of the design representations constituted a material break from the prior art, and the admission by Prestige’s witness that he initially mistook a photograph of the Watkins pools for one of the Prestige pools, even when shown side-by-side with an actual photograph of a Prestige pool, it appears his Honour had little difficulty in deciding that the Prestige pools were “not substantially different” from those shown in the design representations. However, in light of the current worldwide interest in the availability and validity of so called “partial” designs (as evidenced by a panel session on the topic at the 2017 AIPPI World Congress), and the paucity of registered design cases in New Zealand, it would have been useful if his Honour had provided some context for his decision to disregard the determined features as shown in dashed lines in the representations.  For now, New Zealand practitioners continue to wait for guidance from the Court on this issue.