the visual comparison undertaken by the Court involves both first impressions and later impressions. The Court accordingly observes that while the similarities between the Technicon pan compared with the registered design are initially striking, closer inspection reveals certain differences.

Cowdroy J concluded that the differences between the two meant that the alleged infringement did not “possess such a close resemblance to the registered design that it is ‘almost unmistakeable’” and therefore was not an obvious imitation.

On the question of fraudulent imitation, the Court noted that:

whether a product constitutes a fraudulent imitation of a registered design requires an examination of the alleged infringer’s state of knowledge of the relevant registered design … it is not necessary that the alleged infringer had actual knowledge of the fact of registration of the registered design, but merely that the alleged infringer had reason to believe or strongly suspect, or had wilfully disregarded the likelihood of such registration

In this instance, and in part relying on Technicon’s familiarity with the registered design system having sought design registration itself, it was held that Technicon ‘had reason to believe or strongly suspected’ that the design of the Trident toilet pan (the commercial embodiment of the registered design to which it had reference) may have been registered.

The Court further found that the Technicon pan “incorporates significant visual features of the registered design”, which combined with the finding of implied knowledge, led to a finding of fraudulent imitation and hence infringement.

This decision highlights the dangers of seeking to adopt or adapt a competitor’s product design and that lack of actual awareness of the existence of registered rights will not necessarily prevent a finding of infringement. Generally it will be preferable to be fully aware of all relevant design registrations in order to better design around the rights of others.

In Apotex v Les Laboratoires Servier, the patentee, Servier, sought to explain the “reasons for and factors impacting on” its decision to seek amendment via affidavits from the solicitor having the conduct of the proceedings. Apotex served a notice to produce, seeking documents recording or referring to the solicitor’s views as expressed in the affidavits, including his views that amendments to the patent were necessary. Servier resisted production, claiming privilege in the documents sought.

Bennett J noted that “Apotex does not presently rely on a primary obligation to waive legal professional privilege as part of the obligation of good faith on the part of a party seeking to amend a patent.” Rather, Apotex relied upon an implied waiver of privilege by Servier due to its reliance on the affidavits which disclosed the giving of advice regarding the amendment. Her Honour, having considered the authorities relating to waiver, concluded that:

It must be accepted that the application to amend was made with instructions from Servier. Accordingly, Servier intentionally presented Mr Hamer’s affidavits and evidence as evidence of its reasons for making that application. In effect, Servier has disclosed the legal advice of Mr Hamer by presenting that advice as the totality of its reasons for seeking amendment. It is then inconsistent with that presentation to claim legal professional privilege with respect to the communications between Servier and Mr Hamer concerning Mr Hamer’s opinion, Servier’s instructions, the application for amendment and Servier’s reasons for making it.

This decision provides another clear illustration of the importance of carefully reviewing a patent with a view to the need for any amendment prior to the commencement of proceedings.