Brand Developers Limited & Anor v Ezibuy Limited & Ors
High Court of New Zealand
25 January, 4 February 2011
The second plaintiff held a registered design relating to aspects of a personal exercise machine. The statement of novelty was:
The design is to be applied to an Exercise Machine and the novelty resides in the features of shape and configuration of the Exercise Machine having a tubular ring and pair of pivotally mounted knee rests movably supported on the tubular ring, as shown in the accompanying representations.
The first plaintiff had extensively advertised and promoted via infomercials its AB CIRCLE PRO, being the product protected by the registered design. The plaintiffs sought an interim injunction to restrain breach of the second plaintiff’s registered design by the defendants through importing, selling or offering for sale exercise machines which were substantial copies of the registered design.
The defendants relied on prior art comprising a predecessor to the plaintiffs’ AB CIRCLE PRO machine which featured an identical knee pivot mechanism to that depicted in the registered design.
Asher J refused to grant an interim injunction. The Court’s key findings were:
- The aspect of the design protected by registration is that described in the statement of novelty. The claim to novelty of a particular feature has the effect of excluding from protection of the Designs Act any other feature not set out in the statement of novelty. As a matter of construction of the statement of novelty, both a tubular ring and a pair of pivotally mounted knee rests movably supported on the tubular ring must exist together.
- The assessment of whether the alleged copied design is not substantially different from the registered design is influenced by the degree of novelty or originality of the registered design.
- The defendants’ product did not have the same type of tubular ring as in the registered design. The design comprised a single completely circular tubular ring. The defendants’ product had double tubular rings that formed part of the circle but did not complete it and led into a plastic collar.
- The reference in the statement of novelty to a pivotally mounted knee rest was that both the knee rests pivoted from a central point. To the eye there were real differences between the knee rests in the registered design and the defendants’ product.
- The knee pivot mechanism was not novel at the time of registration. The argument could only be made for novelty in respect of the tubular ring and its supporting of the knee rests but the same or similar tubular ring was not present in the defendants’ product.
- The plaintiffs did not have an arguable case but, in any event, the balance of convenience favoured the defendants.