15 April 2010

Gasp Dresses Infringe but Designs Invalid

Case: Rosemin Pty Ltd v Gasp Jeans Chadstone Pty Ltd FCA 228
Date: 16 March 2010

This case does not have any interpretative content. Rather, it is an interesting study of how our courts deal with evidence. For that reason, it's worth reading.

Rosemin is the registered owner of a number of design registrations covering various dresses. Rosemin claimed that sale of various dresses by Gasp infringed the registered designs. Gasp admitted that its
dresses are "identical to or substantially similar in overall impression" to the Rosemin designs. Gasp also admitted that it "sold or otherwise disposed of, or offered to sell or otherwise dispose of, the Gasp Dresses. It followed that Gasp would have infringed if the design registrations were validly issued.



Gasp contended that the designs were available to the public before the effective date of the registered designs. Evidence in support of this contention was provided by way of witnesses, documents and a photo shoot that allegedly took place before the effective date, namely the priority date of 16 November 2006.

Some interesting interplay occurred between the witnesses for Gasp and counsel for Rosemin. Purchase orders made up part of the documentary evidence. These pre-dated the priority date. Rosemin contended that their authenticity could not be accepted because they appeared to be signed by the same pen. The pen-wielder testified that he didn't use a specific pen.

Needless to say, this had little probative value and was rejected by the court. The lack of electronic versions also failed to sway the court. There were irregularities in the sales reports and Rosemin attempted to base an allegation of fabrication on those irregularities. Rosemin's contention was based on the witness's failure to answer questions directly. The court acknowledged the irregularities but pointed out that the witness was unfamiliar with the technical details of the accounts package and was not previously aware of the irregularities. Again, that contention was rejected.

It appears to me that this particular court used a relatively high bar to assess fabrication of evidence. But, as Middleton J set out: "I have been mindful that there must be clear evidence of prior use upon which I can rely and unsupported recollections of witnesses need be treated with care. However, other than the Sales Reports, I have concluded that I can safely rely upon the other documentation relied upon by Gasp to support its case on the cross-claim seeking revocation. I have considered the evidence of the witnesses, considering it carefully in the light of the probabilities otherwise shown to exist."

Even if Rosemin had evidence to support a contention that it had conceived the design before Gasp, that would not have helped. Any commercial disclosure before the priority date would render the registrations invalid.

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