Federal Court Rules on Design Infringement Under Designs Act 2003

OUTCOME: Allowed

FEDERAL COURT OF AUSTRALIA

[COMPANY] v [COMPANY] [2008] FCA 1941

[NAME] – whether [NAME] 2003 (Cth) applies to extraterritorial conduct – whether alleged [NAME]'s subsequent registration of [NAME] in respect of her own products is relevant to the questions of infringement or validity of the allegedly infringed [NAME] –whether a [NAME] that combines various features, each of which can be found in the prior art base when considered individually but not collectively in any one particular piece of prior art, is capable of being distinctive – whether infringement analysis is undertaken by comparing allegedly infringing product with registered [NAME] or with a product embodying the registered [NAME] – authorship – who is an author of a [NAME] – whether an independent contractor can be a co-author of a [NAME] – [NAME] [NAME] – what constitutes the [NAME] [NAME] – whether a [NAME] will be invalid for lack of clarity if the relevant features appear from the registered [NAME] without necessity for unreasonably prolonged or complicated series of deductions – substantial similarity as judged objectively by [NAME] "informed [NAME]" – whether "informed [NAME]" is more informed than an average [NAME] but less informed than a [NAME] – whether party has duty to check the [NAME] [NAME] where the product embodying the [NAME] carries a registration notice and the substantial similarity of the allegedly infringing, later-designed product permits the inference that the party had access to the product embodying the registered [NAME] and did or should have seen the registration notice – damages – lost sales – whether [NAME]'s sales may be claimed by [NAME] on a one-to-one basis in calculating damages

EVIDENCE – judicial notice – whether court may take judicial notice of [NAME] [NAME] displayed on IP Australia [NAME] – whether circulars published by the Administrator of Vehicle Standards constitute legislative instruments of which the court may take judicial notice – whether substantial similarity of two products permits an inference that [NAME] of later created product had reference to earlier-created work – whether court may take judicial notice of matter requiring basic computer literacy

[NAME] – accessorial liability – actual knowledge – whether representation of compliance with law may be misleading where it is based upon a commonly shared mistake of law – damages – lost sales – whether sales lost by virtue of defendant's misleading conduct greater than sales lost by virtue of defendant's infringement

WORDS AND PHRASES – "[NAME]," "informed [NAME]," "primary [NAME]," "secondary [NAME]"

Acts Interpretation Act 1901 (Cth) s 21 [NAME] 1906 (Cth) ss 17, 19 [NAME] 2003 (Cth) ss 5, 7, 13, 15, 16, 19, 39, 71, 75, 79, 93, 111, 112, 113, 118, 120 Evidence Act 1995 (Cth) ss 143, 144 Motor Vehicle Standards Act 1989 (Cth) ss 5, 7, 9, 10, 14, 18, 22, 23, 41 [NAME] Act 1949 (UK) [NAME] Act 1974 (Cth) ss 52, 53, 65C

Vehicle Standard ([NAME] [NAME]) 2005 (Cth) rr 1/00, 6/00, 49/00 Council Regulation (EC) No. 6/2002 [NAME] 2004 (Cth) reg 4 Motor Vehicle Standards Regulations 1989 (Cth) reg 4

Explanatory Memorandum to the [NAME] 2002 (Cth)

United Nations Economic Commission for Europe Regulation No.23/00 "Uniform Provisions Concerning the Adoption of Reversing Lamps for Power Driven Vehicles and Their Trailers"

[NAME] v [NAME] [COMPANY] [2008] FCA 1182 cited [NAME] v Kaye [2004] FCA 1363 cited [NAME] v [NAME] [COMPANY] [1999] ATPR 41-712 cited Adidas-Solomon AG v Turner (2003) 58 IPR 66 cited [COMPANY] v [COMPANY] (2001) 53 IPR 400 cited [COMPANY] (2007) 74 IPR 164 referred to Application by [NAME] to invalidate [NAME] in the name of [COMPANY] [2007] ECDR 10 cited [COMPANY] v [NAME] [COMPANY] [2006] ATPR 42-106 cited .[COMPANY] v [NAME] [COMPANY] (2004) 207 ALR 521 applied [NAME] and [NAME] Commission v [NAME] (2004) 208 ALR 459 cited [NAME] v [COMPANY] (2004) 218 CLR 592 cited [NAME] v [COMPANY] (2000) 202 CLR 45 cited [COMPANY] v [COMPANY] (1985) 7 FCR 75 applied [NAME]) [COMPANY] v Commissioner of Taxation (Cth) (1981) 147 CLR 297 cited [COMPANY] v [COMPANY] (1989) 15 IPR 40 cited [COMPANY] v [COMPANY] (2008) 76 IPR 83 cited [COMPANY] v [COMPANY] (1984) 57 ALR 167 cited [NAME] (1983) 152 CLR 570 cited [NAME] v [NAME] (1988) 80 ALR 486 cited [COMPANY] [2007] [NAME] 2 referred to [COMPANY] v [COMPANY] [2008] FSR 19 referred to [NAME] (1959) 101 CLR 298 cited [COMPANY] v [COMPANY] [2008] ECDR 11 cited LJ [NAME] & [COMPANY] v [COMPANY] (1978) 1A IPR 565 followed and applied [COMPANY] v [COMPANY] (2007) 235 ALR 202 cited [NAME] [COMPANY] v [NAME] (2003) 135 FCR 1 applied [NAME] v [NAME] (2000) ATPR (Digest) 46-206 applied [NAME] v [NAME] (1978) 89 DLR (3d) 195 discussed [COMPANY] v [NAME] Commission [2004] ATPR 42-000 cited [NAME] [COMPANY] v [COMPANY] (2007) 73 IPR 99 cited [COMPANY] v [COMPANY] (2007) 73 IPR 312 referred to [COMPANY] v [COMPANY] (1982) 149 CLR 191 cited [COMPANY] v [NAME] [COMPANY] [1924] 1 KB 1 discussed [COMPANY] v [COMPANY] (2003) 196 ALR 257 cited [COMPANY] v [NAME] (UK) [COMPANY] (2007) 73 IPR 605 not followed [COMPANY] v [COMPANY] (2008) 166 FCR 358 discussed [COMPANY] v [COMPANY] [COMPANY] [2008] FCA 1589 cited [COMPANY] v [COMPANY] [2008] FCA 1588 discussed and followed [COMPANY] v [COMPANY] [2008] EWHC 989 Pat cited [COMPANY] v [NAME] (2002) 118 FCR 236 cited [NAME] v The Queen (1991) 172 CLR 1 cited [NAME] [COMPANY] v Stirling [2001] FCA 1852 cited [NAME] v [NAME] (2004) 160 FCR 1 cited [NAME] [COMPANY] v [COMPANY] (1982) 42 ALR 177 referred to [NAME] [COMPANY] v [NAME] (1992) 175 CLR 514 cited [COMPANY] v Architectural Lighting Systems [2006] RPC 1 approved [NAME] v [COMPANY] (2002) 208 CLR 460 cited [NAME] ([COMPANY] v Tempo ([COMPANY] (2007) 71 IPR 307 cited Yorke v Lucas (1985) 158 CLR 661 cited

[NAME] Commission, Report No 74, [NAME] (1995)

[COMPANY] ([NAME]) v [COMPANY] ([NAME]), [NAME] [COMPANY] (ACN [PHONE]), [NAME] [COMPANY] ([NAME]), [COMPANY] (ACN [PHONE]), [NAME], [NAME] and [NAME] 316 of 2007

GORDON J

18 DECEMBER 2008

MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY VID 316 of 2007

BETWEEN: [NAME] [APPELLANT] [COMPANY] ([NAME])

Applicant

AND: [COMPANY] ([NAME])

First Respondent

[NAME] [COMPANY] (ACN [PHONE])

[NAME] [COMPANY] ([NAME])

[NAME] [COMPANY] (ACN [PHONE])

Fourth Respondent

[NAME]

[NAME] Respondent

[NAME]

[NAME]

[NAME] Respondent

AND BETWEEN: [COMPANY] ([NAME])

First [APPELLANT]

[COMPANY] ([NAME])

[NAME] [APPELLANT]

[COMPANY] (ACN [PHONE])

[NAME] [APPELLANT]

[NAME] [APPELLANT] [NAME] [APPELLANT]

[NAME]

[NAME] [APPELLANT]

[NAME]-Claimant

and: [COMPANY] ([NAME])

First [NAME]-Respondent

[NAME]

[NAME]-Respondent

JUDGE: GORDON J DATE OF ORDER: 18 DECEMBER 2008 WHERE MADE: MELBOURNE

THE COURT ORDERS THAT:

1. By 4:00pm on 23 January 2009, the parties confer and jointly file short minutes of final orders giving effect to these reasons for decision; provided that, if the parties are unable to agree, they are to submit a joint statement by 4:00pm on 23 January 2009 identifying: (1) the point(s) of agreement; (2) the point(s) of disagreement; and (3) the respective positions of the parties on the point(s) of disagreement.

2. If necessary, the proceedings be listed for directions at 9:30am on 28 January 2009. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. The text of entered orders can be located using eSearch on the Court's [NAME].

BETWEEN: [COMPANY] ([NAME])

Applicant

AND: [COMPANY] ([NAME])

First Respondent

[NAME] [COMPANY] (ACN [PHONE])

[NAME] [COMPANY] ([NAME])

[NAME] [COMPANY] (ACN [PHONE])

Fourth Respondent

[NAME] [RESPONDENT] [NAME]

[NAME] Respondent

[NAME]

[NAME]

[NAME] Respondent

AND BETWEEN: [COMPANY] ([NAME])

First [COMPANY] ([NAME])

[NAME] [APPELLANT] [COMPANY] (ACN [PHONE])

[NAME]-Claimant

[NAME] [APPELLANT] [NAME]-Claimant

[NAME]

[NAME]-Claimant

[NAME]-Claimant

and: [COMPANY] ([NAME])

First [NAME]-Respondent

[NAME]

[NAME]-Respondent

JUDGE: GORDON J DATE: 18 DECEMBER 2008 PLACE: MELBOURNE

REASONS FOR JUDGMENT

INTRODUCTION 1 Light emitting diodes ("LEDs") were, at the time of their invention, revolutionary. LEDs create virtually no heat and, as a result, use about one-tenth the power of incandescent light globes. LEDs do not use a filament that can burn out or break and good quality LED lights can last for approximately 100,000 hours of continuous use. Unsurprisingly, the [NAME], manufacture, importation and sale of LEDs in Australia is a competitive business. 2 These proceedings concern two [NAME] of rear combination LED lights ([NAME] No.302359 – dual lens and No.302360 – triple lens) ("the [NAME]") sold by the Applicant, [APPELLANT] ("[NAME]"), under the name "[NAME]" and registered under the [NAME] 2003 (Cth) ("the 2003 [NAME]"). The priority date for each [NAME] is 22 June 2004. [NAME] has the following statement of newness and distinctiveness: Seperate (sic) clip in lenses. Base to take a variety of 2, 3 or 4 combination lenses for stop, tail, indicator, reverse LED lenses, no visible screws. [NAME] of each of the [NAME] are set out in Annexure A. The [NAME] are not dimensioned. 3 The [NAME] rear combination lights are manufactured in three sizes: 80mm, 100mm and 125mm. The first batch of dual lenses was produced by [NAME]'s [NAME] (referred to throughout these proceedings for reasons of business confidentiality simply as "M") in September 2004 and sold in Australia in September 2004. The triple combination lamps were first sold in Australia in April / June 2005. [NAME]'s range of rear combination lamps includes 80BAR, 80BARR, 80BARW, 100BARR, 100BARW, 125BARR and 125BARW. The "A" stands for amber, the "R" for red and the "W" for white. 4 [NAME] contends that the [NAME] ("the [NAME]") infringed the [NAME] and, further, by their conduct, contravened ss 52, 53 and 65C of the [NAME] Act 1974 (Cth) ("the TPA"). [NAME] contends that the [NAME] ("the Directors") authorised, directed and, further or alternatively, procured the conduct of the [NAME] Respondents. [NAME] no longer seeks relief against the [NAME] Respondent, [NAME] [RESPONDENT]. 5 By [NAME]-claim, the Respondents (except for the [NAME] Respondent, [RESPONDENT]) seek revocation of the [NAME] on three bases. First, pursuant to s 120(1) of the 2003 [NAME], the [NAME] contend the [NAME] are invalid as [NAME] are unclear and the monopoly lacks certainty. Secondly, pursuant to s 93(3)(c) of the 2003 [NAME], the [NAME] contend that [NAME] is not solely entitled to registration of the [NAME] because [NAME] also has a co-entitlement and finally, pursuant to s 120(1) of the 2003 [NAME], the [NAME] contend the [NAME] are not new and distinctive but are substantially similar in overall impression to a [NAME] that forms part of the prior art base. 6 The [NAME] also seek relief against [NAME] in relation to what they describe as unjustified threats of [NAME] infringement and [NAME] relief against [NAME] and [NAME] (a director of [NAME]) in relation to allegedly misleading statements made by [NAME] on its [NAME], in a circular sent to 5,000 prospective customers and on its packaging for its lights. 7 As these reasons for decision will demonstrate: (1) there is no basis for revocation of the [NAME]. The [NAME] are not invalid. [NAME] are clear and the [NAME] are distinctive. The monopoly does not lack certainty. Moreover, [NAME] is entitled to registration of the [NAME]. No [NAME] has a co-entitlement to registration; (2) the [NAME] infringed the [NAME]; (3) the [NAME] contravened ss 52 and 53 of the TPA, but not s 65C, by representing that their own LED lights were approved or compliant with product safety standards known as the [NAME] [NAME] ("[NAME]"); (4) the Directors authorised, directed and further or alternatively procured the conduct of the [NAME] Respondent, [RESPONDENT] ("[NAME]"), and the Fourth Respondent, [RESPONDENT] ("[NAME]"), in relation to the infringement of the [NAME], but were not knowingly concerned in the contraventions of ss 52 and 53 of the TPA; (5) [NAME] is entitled to recover damages for the infringement of the [NAME] but is not entitled to additional damage for contraventions of ss 52 and 53 of the TPA; and (6) the [NAME]-claims alleging unjustified threats of [NAME] infringement and [NAME] relief against [NAME] and [NAME] in relation to allegedly misleading statements made by [NAME] lack merit and must be dismissed. 8 These reasons for decision are structured as follows: Contents Par (s) A 2003 [NAME] [9] – [15] B Authorship and Revocation [16] – [31] C Alleged Invalidity of the [NAME] [32] – [50] D New and Distinctive [51] – [67] E Infringement [68] – [83] F Affirmative Defence: s 75(2) of the 2003 [NAME] [84] – [94] G Relief [95] – [102] H [NAME] the [NAME] [103] – [166] I Directors' Liability? [167] – [180[NAME] [NAME] and [NAME] [181] – [200] K Orders [201] – [202]

A. 2003 [NAME] 9 The relevant provisions of the 2003 [NAME] are not in dispute. What is disputed is the construction and application of those provisions to the facts. 10 "[NAME]" in relation to a product is defined in s 5 of the 2003 [NAME] to mean "the overall appearance of the product resulting from one or more visual features of the product". The phrase "visual feature", in relation to a product, is defined in s 7(1) of the 2003 [NAME] to include "the shape, configuration, pattern and ornamentation of the product". Section 7(2) goes on to provide that "a visual feature may, but need not, serve a functional purpose" and that the following are not visual features of a product (s 7(3)): (a) the feel of the product; (b) the materials used in the product; (c) in the case of a product that has one or more indefinite dimensions: (i) the indefinite dimension; and (ii) if the product also has a pattern that repeats itself - more than one repeat of the pattern. 11 Chapter 2, Part 4 of the 2003 [NAME] deals with the validity of registrable [NAME]. "A [NAME] is a registrable [NAME] if the [NAME] is new and distinctive when compared with the prior art base for the [NAME] as it existed before the priority date of the [NAME]": s 15(1) of the 2003 [NAME]. The "prior art base" for a [NAME] is defined in s 15(2) as consisting of: (a) [NAME] publicly used in Australia; and (b) [NAME] published in a document within or outside Australia; and (c) [NAME] in relation to which each of the following criteria is satisfied: (i) the [NAME] is disclosed in a [NAME] application; (ii) the [NAME] has an earlier priority date than the designated [NAME]; (iii) the first time documents disclosing the [NAME] are made available for [NAME] inspection under section 60 is on or after the priority date of the designated [NAME]. 12 A [NAME] is new "unless it is identical to a [NAME] that forms part of the prior art base for the [NAME]": s 16(1) of the 2003 [NAME] (emphasis added). A [NAME] is distinctive "unless it is substantially similar in overall impression to a [NAME] that forms part of the prior art base for the [NAME]": s 16(2) (emphasis added). The emphasised language is important because it demonstrates that newness and distinctiveness are to be assessed not by comparing the [NAME] in question to the prior art base as a whole but by comparing it individually to each relevant piece of prior art. [NAME] way, a [NAME] that combines various features, each of which can be found in the prior art base when considered as a whole but not in any one particular piece of prior art, is capable of being new or distinctive. In addition, subject to s 15(2)(c) of the 2003 [NAME], the newness or distinctiveness of a [NAME] is not affected by the mere publication or [NAME] use of the [NAME] in Australia on or after the priority date of the [NAME] or by the registration of [NAME] [NAME] with the same or a later priority date: s 16(3). 13 Section 17 prescribes the things that are to be disregarded for the purpose of deciding whether a [NAME] is new and distinctive. There is, however, no claim in the present case that the [NAME] are identical to any prior art (ie not new); rather, the respondents claim that the [NAME] are substantially similar to the prior art (ie not distinctive). Section 19 prescribes the factors to be considered in assessing substantial similarity in overall impression. It provides that: (1) If a person is required by this Act to decide whether a [NAME] is substantially similar in overall impression to [NAME] [NAME], the person making the decision is to give more weight to similarities between the [NAME] than to differences between them. (2) The person must also: (a) have regard to the state of development of the prior art base for the [NAME]; and (b) if the [NAME] application in which the [NAME] was disclosed included a statement (a statement of newness and distinctiveness) identifying particular visual features of the [NAME] as new and distinctive: (i) have particular regard to those features; and (ii) if those features relate to only part of the [NAME] - have particular regard to that part of the [NAME], but in the context of the [NAME] as a whole; and (c) if only part of the [NAME] is substantially similar to [NAME] [NAME], have regard to the amount, quality and importance of that part in the context of the [NAME] as a whole; and (d) have regard to the freedom of the [NAME] of the [NAME] to innovate. (3) If the [NAME] application in which the [NAME] was disclosed did not include a statement of newness and distinctiveness in respect of particular visual features of the [NAME], the person must have regard to the appearance of the [NAME] as a whole. (4) In applying subsections (1), (2) and (3), the person must apply the standard of a person who is familiar with the product to which the [NAME] relates, or products similar to the product to which the [NAME] relates (the standard of the informed [NAME]). (5) In this section, a reference to a person includes a reference to a court. 14 It will be necessary to return to consider these and [NAME] provisions of the 2003 [NAME] in greater detail later in these reasons for decision. It is sufficient at this point to note that the express provisions of the Act are a complete answer to the [NAME]' submission that because [NAME] of them had "registered [NAME] of their own which reflect the commercial products that they sell" it provides a "further indicator that there is sufficient distinction between the [[NAME]'] products and the [[NAME]] to avoid infringement". In fact, it is [NAME] entity based in Mauritius and associated with the [NAME], [RESPONDENT] ("[NAME]"), [RESPONDENT], which on 9 October 2006 lodged applications for registration of [NAME] for a single, double and triple tail light assembly which were subsequently accepted ("the [NAME]"). [NAME] of each [NAME] are set out in Annexure B. 15 But whatever the relationship of [COMPANY] to the [NAME], two things are clear. First, the [NAME] are irrelevant to the newness and distinctiveness of the [NAME] (ie the validity question) because they were published subsequently: s 16(3). Secondly, the fact that the [NAME] were accepted for registration says nothing with respect to their own newness and distinctiveness (ie the infringement question); s 39 requires the Registrar to [NAME] any [NAME] (subject to certain exceptions: s 43) that satisfies certain formalities; there is no inquiry into whether the [NAME] is registrable. It is only during the examination process that the Registrar considers whether the [NAME] is registrable: s 65. (Indeed, in this case an examiner raised the concern that the [NAME] were not new and distinctive in light of [NAME]'s prior [NAME].) Even then, a Registrar's decision upon examination is not entitled to judicial deference: see s 88. In short, the fact that the [NAME] may maintain registered (and even examined) [NAME] in respect of their own products is irrelevant to the judicial determination of whether those products infringe the earlier-registered [NAME] and whether those [NAME] are registrable.

B. AUTHORSHIP AND REVOCATION 16 It is convenient to start with the [NAME]' contention that the [NAME] should be revoked pursuant to s 93(3) of the 2003 [NAME] because "M", not [NAME] [NAME], is in fact the sole or joint author entitled to registration. For their part, the [NAME]-respondents have two responses: (1) [NAME] [NAME] is the sole author of the [NAME] and his employer [NAME] is the only person entitled to registration; and in the alternative (2) even if "M" (jointly) created the [NAME], it did so pursuant to a contract with [NAME] and therefore would not be a person entitled to registration under s 13 of the 2003 [NAME] in any event. With respect to the first point, the [NAME] dispute the proper legal characterization of the facts relevant to creation; with respect to the [NAME], they submit that as a matter of law an independent contractor such as "M" must be distinguished from an employee (whose [NAME] created in the course of employment they concede would belong to the employer). 17 Who then, in fact, is entitled to be entered as the registered owner of the [NAME]? Section 13(1) of the 2003 [NAME] lists the persons "entitled to be entered on [NAME] as the registered owner of a [NAME] that has not yet been registered." The list is: (a) the person who created the [NAME] ([NAME]); (b) if [NAME] created the [NAME] in the course of employment, or under a contract, with [NAME] - the [NAME], unless [NAME] and the [NAME] have agreed to the contrary; (c) a person who derives title to the [NAME] from a person mentioned in paragraph (a) or (b), or by devolution by will or by operation of law; (d) a person who would, on registration of the [NAME], be entitled to have the exclusive rights in the [NAME] assigned to the person; (e) the legal personal representative of a deceased person mentioned in paragraph (a), (b), (c) or (d). Unsurprisingly, more than one person may be entered on [NAME] as the registered owner of a [NAME]: s 13(3)(a) of the 2003 [NAME]. However, each of the persons registered must fall within one or more of the categories of persons listed in s 13(1). If not all of the entitled persons are included in the registration, the court may revoke the registration: s 93(3). 18 The registered owner of the [NAME] is [NAME]. The [NAME] contend that the [NAME] should be revoked because when each of the [NAME] was first registered, [NAME]'s [NAME], "M," was entitled to be registered in addition to or in lieu of [NAME] and was not so registered. The [NAME]' contention should be rejected. To understand the flaws in that contention, it is necessary to restate [NAME] of the facts. 19 In 1987, [NAME] [NAME] established a business selling automotive parts under the name "[NAME]". In 2002, [NAME] [NAME] incorporated a company "[COMPANY]" in relation to that business. In April 2002, [NAME] [NAME] attended the Automotive Parts Association Trade Show in Taiwan and became aware of the use of LEDs in automotive lamps. At the same trade show, [NAME] [COUNSEL] met a representative from a Taiwanese company, [COMPANY] ("[NAME]"), discussed with that representative the lights that [NAME] manufactured and ascertained that [NAME] would be interesting in [NAME] lights for [NAME] [NAME] company. 20 After the trade show, [NAME] [NAME] developed an 80mm x 80mm square lamp comprised of an injection-moulded lens fitted with LEDs. The circuit board containing the LEDs was fitted inside the lens, then held in place and sealed by pouring resin over the top of the circuit board. The lamps were then clipped into a simple base attached to the vehicle. The resulting lamp was both waterproof and dustproof. After corresponding by email with the [NAME] representative, [NAME] visited [NAME] in Taiwan in mid-July 2003. Before going to Taiwan, [NAME] prepared sketches of his [NAME] for a single square LED lamp, 80mm x 80mm. At the meeting in Taiwan, [NAME] [NAME] provided the [NAME] representatives with the sketches and a sample of a conventional 80mm x 160mm lamp. 21 Between July and December 2003, [NAME] [NAME] requested [NAME] to manufacture the single lens in three sizes – 80mm x 80mm, 100mm x 100mm and 125mm x 125mm. There were difficulties and relations ultimately soured. [NAME] manufactured single LED lamps and the bases for such lamps which were sold in Australia from about February 2004. [NAME] continued to supply the lamps without the base until about February 2006. 22 In approximately April 2004, either during or after attending [NAME] Association Trade Show in Taiwan, [NAME] [NAME] met in a hotel board room with "M"'s owner and [NAME] of its representatives. [NAME] [NAME] provided them with samples of a single-lens 80mm x 80mm LED automotive lamp (being the lens manufactured by [NAME]) and [NAME] hand-drawn sketches he had prepared of a lamp base into which individual red, amber and white lamps could be fitted as double and triple combination lamps. [NAME] did not retain copies of the sketches. In addition to the samples and the sketches, [NAME] [NAME] explained the combination lights and his estimate of the likely sales of such lights. [NAME] [COUNSEL], a representative from "M," gave evidence that he received the samples and the sketches together with an explanation from [NAME] [NAME]. [NAME] [NAME] evidence was that [NAME] [NAME] provided three hand-drawn sketches of the base, being a sketch of the dual base from the top view, a sketch of the dual base from the rear view and a sketch of the [NAME]-section of the side view. The drawings did not show dimensions. [NAME] [NAME] evidence was that his sketches were only of two views, [NAME] [NAME] gave evidence that the hand-drawn sketches were of the views set out in the engineering drawings marked "1", "2" and "3" on Annexure C. I accept [NAME] [NAME] evidence. 23 Following the meeting, [NAME] [NAME] worked with [NAME] to convert [NAME]'s hand-drawn sketches into CAD ([NAME]) format. "M"'s [NAME] used CAD technology to prepare detailed engineering drawings of a 3D model and 2D drawings of the combination lamp base. At a practical level, the use of CAD enables an operator of the computer software to lay out and develop work on a screen, print it out and save it for future editing. Having converted [NAME] [NAME] hand drawn sketches of the base into CAD format, [NAME] [NAME] printed the engineering drawings of the lamp base. A copy of the engineering drawing, in the form of Annexure C, was sent by [NAME] [NAME] to [NAME] [NAME]. 24 On 4 June 2004, [NAME] [NAME] emailed [NAME] [NAME] asking "M" to provide him with a price for making a mould to house, in both dual and triple combination, the LED 80mm lamps with the same pattern lenses as the sample [NAME] [NAME] had provided to "M" back in April 2004. On 11 June 2004, M sent by facsimile an invoice to [NAME] quoting US$7,500 to create a "mold for base [NAME] for two LED80 one mold with one cavity". [NAME] [NAME] accepted "M"'s quoted price. "M"'s [NAME] used the CAD engineering drawings to prepare a mould for the two combination lamp base. The CAD engineering drawings were created using the same software that controls the machines which cut moulds from a diecast metal blank from which the products were produced, thus greatly simplifying the process of [NAME] an actual product from the [NAME]. 25 [NAME] also produced a three-dimensional model of the combination lights. On 18 June 2004, after receiving a copy of the model, [NAME] [NAME] printed drawings from the three-dimensional model and used those drawings as the basis for [NAME]'s application to [NAME] the dual and triple combination lamp [NAME]. [NAME] [NAME] gave evidence that "M"'s quoted price (and ultimate bill, which was paid by [NAME]) for production of the mould included, without any separate allocation, the cost of creating the CAD drawings, which, as noted earlier, are used to control the die-cutting machines to cut the moulds. 26 Authorship of a [NAME] is in the "person whose mind conceives the relevant shape, configuration, pattern or ornamentation applicable to the article in question and reduces it to visible form": [COMPANY] v [COMPANY] (1985) 7 FCR 75, 80. On the facts just described, it is clear that [NAME] [NAME] is the person who conceived the relevant shape, configuration and pattern of the [NAME] and reduced it to a visible form; "M" simply converted that [NAME] to an electronic form in order to facilitate the production process. [NAME] way, it was [NAME] [NAME], not "M", who had the idea for dual and triple combination LED lamps in one base. It was [NAME] [NAME] who reduced that idea to visible form in the sketches. As the engineering drawings marked "1", "2" and "3" on Annexure C record, it was [NAME] [NAME] sketches which contained the features different from those in any [NAME] previous [NAME].

Accordingly, [NAME] [NAME] was "the person who created the [NAME]" and his company as his employer was the sole person entitled to be registered as its owner: s 13(1)(b) of the 2003 [NAME]. 27 Assuming, contrary to what I have just found, that the facts set out above would support the conclusion that it was an employee or employees of "M", instead of (or in addition to) [NAME] [NAME], who was the author of the [NAME], then my conclusion on the entitlement question would not change. I accept (and it was not contested) that "M" was an independent contractor rather than an employee of [NAME]. That being so, "M" and its employees did the work "under a contract with [NAME]" ([NAME]) within the meaning of s 13(1)(b) of the 2003 [NAME] and [NAME] is the person entitled to [NAME] the [NAME] thus created. 28 There was [NAME] dispute as to whether there was in fact any contract between [NAME] and "M" for the creation of the CAD drawings. The proposition was founded on the basis that there was no separate charge or entry on any billing invoice relating specifically to the provision of that particular service. It may greatly be doubted that the absence of an itemised amount charged for the service goes any distance towards showing that the work was not done under a contract. Be this as it may, in the end, I accept the evidence of [NAME] [NAME] that the price on the invoice for the moulds included in it the cost of the creation of the CAD drawings, which were necessary and incidental to the manufacture of the moulds themselves. In [NAME] words, I am satisfied that the [NAME], to the extent that they were created by "M" at all, were so created pursuant to a contract with [NAME]. 29 The only remaining question, then, is whether that contractual relationship in the absence of an employment relationship is sufficient to make [NAME] the owner of the [NAME] under s 13(1)(b) of the 2003 [NAME]. In my view, it is. As noted above, the plain language of s 13(1)(b) states that if "[NAME] created the [NAME] in the course of employment, or under a contract, with [NAME] - the [NAME]" is the person entitled to be registered as the [NAME]'s owner. As the disjunctive word "or," coupled with the commas on either side of the phrase "under a contract" indicate, there are two separate and distinct circumstances in which the [NAME] of a [NAME] is not entitled to [NAME] it: (1) where [NAME] creates the [NAME] in the course of employment, whether or not there is a specific contract; and (2) where [NAME] creates the [NAME] under a specific contract, whether or not there is an employment relationship. This case would fall in the latter category. 30 The [NAME] submitted that s 13(1)(b) should be found to have the same meaning as s 19(2) of the [NAME] 1906 (Cth) ("the 1906 [NAME]"), which provided that "[w]here, in accordance with an agreement for valuable consideration entered into by a person with [NAME], the [NAME] or an employee of the [NAME] acting in the course of his employment makes a [NAME] for the first-mentioned person, the first-mentioned person is the owner of the [NAME]." I agree that the language of the old provision is substantively not different from the new. It is to be noted, however, that under this provision of the 1906 [NAME], employees are distinguished from "[NAME] persons" acting in accordance with a contract (ie independent contractors) by use of the disjunctive "or" to establish two separate and independent circumstances in which the ownership of a [NAME] does not vest in its [NAME]. That is, the text of the former Act bears a construction that I would independently ascribe to the current provisions. Moreover, the [NAME] cited no case or authority (and my own researches have discovered none) to contradict or otherwise dissuade me from this plain reading of the old and new acts.

Accordingly, the submission that an independent contractor such as "M" retains any entitlement to [NAME] a [NAME] created pursuant to a contract must be rejected. 31 For those reasons, the [NAME]' contention that the registration of the [NAME] should be revoked pursuant to s 93(3)(c) of the 2003 [NAME] on the basis that [NAME] is not solely entitled to registration of the [NAME] because [NAME] also has a co-entitlement is rejected.

C. ALLEGED INVALIDITY OF THE [NAME] AS [NAME] 32 The [NAME]' further contention was that the registration of the [NAME] should be revoked pursuant to s 120(1) of the 2003 [NAME] because the visual features of the registered [NAME] are unclear and are thus invalid. The invalidity is said to arise because [NAME] fail to adequately delimit the scope of the monopoly afforded by registration. 33 Before turning to the facts relevant to this issue, it is necessary to look again at the system of registration prescribed by the 2003 [NAME]. A registered [NAME] is a [NAME] that is registered in conformity with the 2003 [NAME]: s 5. The 2003 [NAME] requires that there be a [NAME] kept at the [NAME] Office: s 111(1). [NAME] may be kept by computer: s 112. Particulars of a registered [NAME] must be entered in [NAME]: s 111(2). Those particulars include [NAME] of the [NAME]: s 111(2)(c). A "representation" means "a drawing, tracing or specimen of a product embodying a [NAME] or a photograph of such a drawing, tracing or specimen": s 5. [NAME] is entitled to access all documents filed in connection with the registration of the particulars of a [NAME]: ss 111(3) and 113(1). If [NAME] is kept by use of a computer, inspection of [NAME] is satisfied by giving [NAME] access to a computer terminal that they can use to inspect particulars kept by use of a computer: s 113(2). 34 [NAME] is prima facie evidence of any particulars entered in it: s 118. Moreover, if [NAME] is wholly or partly kept by use of a computer, a document issued by the Registrar producing in writing all or any of the particulars comprising [NAME] or that part of it, is admissible as prima facie evidence of those particulars: s 118(2). Finally, a signed copy of or signed extract from [NAME] is admissible in any proceedings as if it were the original: s 118(3). It will be necessary to return to consider these provisions in further detail. 35 The facts relevant to this issue are not in dispute. The legal characterisation of them is disputed. 36 IP Australia operates a [NAME] at www.[NAME] Access to that part of [NAME] kept by use of a computer is through this [NAME]. A copy of one form of [NAME] of each [NAME] extracted from the IP Australia [NAME] is set out in Annexure A. These [NAME] were also attached to Certificates of Registration produced by the [NAME] Office and tendered in evidence. The drawings in Annexure A are pink and faint. It will be necessary to return to consider the form of these drawings later in these reasons for decision. 37 To use the IP Australia [NAME] to search for [NAME] of a registered [NAME], it is first necessary to go to a webpage headed "AU [NAME]". That page informs users that not all [NAME] are available online and that copies of [NAME] can be obtained from the [NAME] Office in Canberra. The foot of the page contains a statement that "[c]ontinuing further indicates your acceptance of the terms and conditions defined in 'Legal and Copyright' button above". That "Legal and Copyright" notice states, inter alia, that the databases accessible through the IP Australia [NAME] contain errors and inaccuracies. 38 [NAME]'s solicitor gave evidence in this matter that, in addition to inspecting that part of [NAME] maintained by computer, he inspected the physical files maintained by IP Australia in respect of each of the [NAME] which had been sent from Canberra to Melbourne. Each physical file included a set of six greyscale drawings with perforations on the left hand margin indicating that they were received by IP Australia on 22 June 2004, being the filing date of the application for registration. Each set was kept on the relevant file in an envelope endorsed with the word "Informals". The greyscale drawings are not faint like the pink drawings displayed on the IP Australia [NAME]. A review of the file maintained by IP Australia revealed that the application for registration of each [NAME] in June 2004 was accompanied by one set of the greyscale drawings. Regulation 4.04(1)(f) of the [NAME] 2004 (Cth) states that for s 39(2)(a) of the 2003 [NAME], part of the formalities check is confirmation by the Registrar that the application includes 5 copies of each representation of each [NAME]. Of course, [NAME]'s application did not. 39 In November 2004, [NAME] [NAME] received notice from IP Australia that his application for registration did not satisfy the formal requirements for registration because he had provided the office with only 1 set of [NAME], namely the greyscale drawings. The notice stated that if the problem was not fixed within 2 months, the applications might lapse. The pink drawings were subsequently lodged by [NAME] [NAME] in response to that request from IP Australia. 40 Two questions arise for determination. First, what is the registered [NAME] (ie what are the legally cognisable [NAME] of the [NAME]), and secondly, is that registered [NAME] "reasonably clear and succinct"? 41 In LJ [NAME] & [COMPANY] v [COMPANY] (1978) 1A IPR 565, 571-72, [NAME] said: I am clearly of opinion that a registered [NAME] in order to be valid, must be reasonably "clear and succinct"; that is to say the [NAME] sought to be monopolised by copyright must appear with reasonable clarity, and without necessity for unreasonably prolonged or complicated series of deductions, from the registered representation of an article to which the [NAME] has been applied. In argument in [NAME] v [NAME] (1920) 37 RPC 233, [NAME] said: A [NAME] may be valid for any form that is new, subject to this, that it must be distinctand present an appearance that strikes the eye as being different from any previously existing shape. [Emphasis added.] … But in [NAME] law I think that the [NAME] is addressed to a [NAME] who might be called a [NAME], but that a [NAME] is not necessarily familiar with particular methods of manufacture per se; I think he knows the prior art articles and the prior art registered [NAME] and knows as much about manufacture as he would reasonably be expected to deduce from a study of those [NAME] and articles, but not necessarily any more. … I do think that if a [NAME], depicted by reference to an article to which it has been applied, appears difficult to construe, evidence is admissible from persons familiar with those articles and with methods of applying [NAME] to them, at all events where the [NAME] is as here confined to configuration. In what follows I use the expression "[NAME]" as a shorthand for a person with the elementary knowledge that I have above indicated; that is to say a person in the circumstances of this case, who is familiar at least with the shape and appearance and (so far as obvious) constituents of prior art roof tiles composed wholly or chiefly of metal, as known at the priority date of the registration. (Emphasis added.) 42 Much of the [NAME]' arguments proceeded from the premise that no sufficient representation of each [NAME] appeared on IP Australia's [NAME]. The [NAME] submitted that the visual features of the [NAME] were hard to discern when looking at the pink drawings. [NAME] [NAME], a consultant to the automotive electrical [NAME], was called to give evidence by the [NAME]. He looked at the pink drawings on the IP Australia [NAME] and in the Certificates of Registration produced by the [NAME] Office tendered in evidence and initially said he had difficulty in understanding the features of the [NAME] such as the side profile of the base and the degree of rounding of the lens. In [NAME]-examination, he modified that evidence to the extent of acknowledging that he was able to discern features of the [NAME] except for the curved ends. [NAME] witnesses gave evidence about the pink drawings and what they could and could not discern from them. It is therefore necessary to examine the validity of the [NAME]' premise that no sufficient representation of each [NAME] appeared on IP Australia's [NAME] with [NAME] care. 43 As I noted earlier, printed [NAME] of [NAME] of what was displayed when IP Australia's database was searched were tendered in evidence. Five different views of each [NAME] were tendered. Even if one of those views were to be thought insufficient to convey to the observer all of the relevant features of the [NAME] it by no means follows that the combination of images is necessarily deficient in that respect. 44 In my view, it is possible to discern from the printed [NAME] the visual features of the [NAME], including the two particular matters to which [NAME] [NAME] drew special attention, the side profile of the base and the degree of rounding of the lens. Adopting the language of [NAME], I consider each [NAME] to be reasonably "clear and succinct". It may be said that the pink drawings are not perfect or that they could be better or clearer. However, each [NAME] does appear with reasonable clarity, and without necessity for unreasonably prolonged or complicated series of deductions, from the registered representation of an article to which the [NAME] has been applied. 45 It is necessary to record, however, that the documents that were tendered show a particular magnification and resolution of [NAME] appearing in the database. Because the data is held electronically and displayed on the IP Australia [NAME] (in Adobe Reader as PDF documents), it is possible, within limits, to reproduce [NAME] at greater magnification than may first be displayed on the screen. That is, the printed exhibits cannot be taken as necessarily indicating the largest magnification or best resolution of what appears in the database and is accessible by [NAME]. Again, it is possible to observe on IP Australia's [NAME] the five different views of each [NAME]. When those views are displayed at higher magnifications, the details and specifications of each [NAME] appear not just with reasonable clarity, but with great clarity. 46 However, when I asked the parties after the hearing whether it would permissible for the Court to have regard to the magnified displays on the [NAME] (which were not tendered into evidence by way of printed or electronic copy), the Respondents contended that there was no evidence that [NAME] on the IP Australia [NAME] could be or were in fact magnified by any witness or that a member of [NAME] seeking information as to a registered [NAME] would be expected to electronically magnify the online [NAME]. I reject both contentions. First, there was evidence that witnesses had accessed the [NAME] on the IP Australia [NAME] and magnified [NAME] to [NAME] extent. 47 Secondly, the 2003 [NAME] itself makes assumptions and imposes expectations about [NAME]'s access to and use of computers to view the registered [NAME]. As noted earlier, the Act provides that [NAME] may be kept by computer and that [NAME] must be given access in the [NAME] Office to a computer terminal in order to inspect the particulars of [NAME]: ss 112 and 113. Notably, the Act does not stipulate that the [NAME] Office must explain to a member of [NAME] how to use the computer to view the [NAME]; rather, the provision of access is said to be sufficient, which necessarily carries with it a presumption or expectation that [NAME] will know enough about computers to be able to make use of that access without further prompting (or that if they do not know enough, the problem will be theirs rather than that of the [NAME] Office or the registered proprietor of the [NAME]). In that context (ie the context of a [NAME] registration system which is publicly accessible through a [NAME] and provides a tool to enable users of the system to magnify [NAME] to a size larger than that physically filed), it would be absurd to draw a distinction between a presumption or expectation that a member of [NAME] would be able to access the base-level display of a [NAME] on the computer (an expectation which the parties implicitly accepted in their submissions) and a presumption or expectation that that person would not be able to go one further step and click on the magnifying lens at the top of the screen in Adobe Reader without prompting (which was effectively what was put by the Respondents). Because no special [NAME] or complicated process is required to magnify an image (the magnifying lens icon, which is used with the same signification in many internet and desktop computing applications, is displayed prominently at the top of screen as soon as the base-level magnification of the [NAME] is opened), once one presumes that a person will be able to access the image at all (again, a presumption implicit in the Act and accepted by the parties) then it must also be presumed or expected that the person could magnify that image without prompting. 48 Although I do not consider it necessary in this case to rely on it in light of ss 112 and 113 of the 2003 [NAME] and my primary conclusion that the printed [NAME] of the [NAME] tendered in evidence were reasonably clear, I should also note that the doctrine of judicial notice stated in s 144 of the Evidence Act 1995 (Cth) provides an additional or alternative basis for reaching the same conclusion. Section 144 provides that proof is not required about knowledge that is not reasonably open to question and that is common knowledge generally, and that a judge may acquire knowledge of that kind in any way he or she sees fit. I consider that it is not reasonably open to question that PDF images may be magnified in Adobe Reader and that this fact has been and is general common knowledge to any [NAME] of computers and the internet during the relevant period of 2004 to the present.

Accordingly, I would be inclined to the view that proof was not required that a member of [NAME] seeking information as to a registered [NAME] would be expected to be able to electronically magnify the online [NAME], such that the Court is not barred from viewing the [NAME] online at higher magnifications. 49 These additional considerations provide separate support to reject the contention that the visual features of the [NAME] are unclear. [NAME] do not fail to adequately delimit the scope of the monopoly afforded by registration. 50 In the circumstances, I need not express a concluded view as to whether [NAME] in the case of these [NAME] is identified as being [NAME] printed from the IP Australia [NAME] and tendered in evidence, as what is held electronically and accessible by [NAME] on the IP Australia [NAME], as incorporating [NAME] or all of the hard copy documents held on the file maintained by IP Australia, or as [NAME] combination thereof. The reason is that, in my view, each [NAME] that is registered is reasonably clear regardless of which of the foregoing definitions of [NAME] is used. It is therefore not necessary to resolve the question of what exactly is [NAME] for the purposes of the 2003 [NAME] or to resolve the question which would otherwise arise of what obligation a person who searches [NAME] electronically has if that search suggests that what is available electronically is incomplete or equivocal in a way which might be resolved by examination of hard copy documents kept on the relevant file.

D. NEW AND DISTINCTIVE 51 The [NAME] next submitted that, pursuant to s 120(1) of the 2003 [NAME], each [NAME] is invalid and should be revoked because each is substantially similar in overall impression to the prior art base and, in particular, [NAME]'s own single-lens LED lamp which forms part of that prior art base. That contention should be rejected. 52 The relevant provisions of the 2003 [NAME] are referred to above: see [9] to [13]. That a [NAME] is required to be "new and distinctive" to be protected under the 2003 [NAME] is a threshold requirement introduced in the 2003 [NAME]. The 1906 [NAME] used very different language. It required a [NAME] to be "new or original" and provided (s 17(1)) that a [NAME] was not to be registered in respect of an article if the [NAME]: (a) differs only in immaterial details or in features commonly used in the relevant trade from a [NAME] that, before the priority date in respect of the application for registration, was registered, published or used in Australia in respect of the same article; or (b) is an obvious adaptation of a [NAME] that, before the priority date in respect of the application for registration, was registered, published or used in Australia in respect of any [NAME] article. 53 As a result of difficulties in interpretation and application, the [NAME] Commission ("[NAME]") recommended that the "innovation threshold" in s 17(1) of the 1906 [NAME] be replaced by the two-step "new and distinctive" test now found in the 2003 [NAME]: Report No 74, [NAME] (1995) (the "[NAME]"). The [NAME] addressed the issue in the following terms: 5.8 Meaning of distinctive. Distinctiveness is a term used by the courts to express the quality that a [NAME] must have to differentiate it sufficiently from previously published or used [NAME]. For example the courts have said for a [NAME] to be protected there must be a special or distinctive appearance, something in the [NAME] which captures and appeals to the eye. To have that effect, the [NAME] must be noticeable and have [NAME] perceptible appearance of an individual character: [[COMPANY] v [COMPANY] (1989) AIPC 90-569, 38, 975. In [NAME] case, relating to furniture [NAME], it was said that [NAME] in such a field is a subtle thing and, provided it is distinctive to the trained eye, I think that registration should not be denied in view of the element of subtlety which is involved in the combination of old features in a particular way and the manner in which they are combined: [COMPANY] v [COMPANY] (1965) 10 FLR 224, 227; approved in [COMPANY] v [NAME] ([COMPANY] [1986] AIPC 90-302.] [NAME] cases have spoken of 'the overall distinctive appearance of the registered [NAME]'[[COMPANY] v [NAME] ([COMPANY] (1987) AIPC para 37, 634, 638] the ridging or grooving of a [NAME] being 'sufficiently bold and distinctive in its appeal to the eye', [[COMPANY] v [COMPANY] (1982) 42 ALR 127, 133] a shape or configuration that is 'distinctly different' from that in respect of which a [NAME] is registered[[COMPANY] v [NAME] [COMPANY] [1989] AIPC para 90-616, 39, 334, 348] and a [NAME] that must be 'distinct and must present an appearance that strikes the eye as being different' [[NAME] LJ & [COMPANY] v [COMPANY] (1979) 49 AOJP 3611] … 5.9 Grounds for adopting the new test. The [[NAME]] favours the two tiered approach and the distinctiveness test for several reasons. • The distinctiveness test is a [NAME] approach. It recognises the importance of [NAME] in product differentiation. It is consistent with the way in which designers work. • It will discourage the tendency to focus narrowly on 'one individual specific appearance' and to count up the differences between [NAME]. • It incorporates in a single concept many of the qualities sought in [NAME] unsatisfactory expressions such as 'judged by the eye', 'eye appeal', 'immaterial detail', 'trade variants', and 'obvious adaptation'. • It is a more focussed test for assessing the degree to which a [NAME] is an advance on the prior art. • It allows a different prior art base to be defined for novelty as against distinctiveness. This is useful because the aim with the novelty test is to exclude identical [NAME] but the aim with the distinctiveness test is to recognise innovation. • It directly addresses the need for greater differentiation between [NAME], both for registration and infringement purposes, that was evidenced by submissions, consultations and the [[NAME]'s] survey of [NAME] users. ([NAME] formatting altered; footnotes moved to text in brackets.) 54 The [NAME] formed the basis of the 2003 [NAME]: Explanatory Memorandum to the [NAME] 2002 (Cth)at 1. Under the 2003 [NAME], a [NAME] is distinctive "unless it is substantially similar in overall impression to a [NAME] that forms part of the prior art base for the [NAME]" as it existed before the priority date of each [NAME]: s 16(2) (emphasis added). As noted earlier, that test has an important temporal aspect: anything which occurs after the priority date (the filing date of the application for registration) is irrelevant: s 16(3). 55 Secondly, contrary to the Respondents' submissions, distinctiveness is to be assessed not by comparing the [NAME] in question to the prior art base as a whole but by comparing it individually to each relevant piece of prior art: s 15(1) read with ss 16(1) and (2). Part 4 of Chapter 2 of the 2003 [NAME] must be read as a whole. The Respondents cannot, as they do, simply selectively choose ss 15(1) and 19(2) to support their contention that a comparison is made of the [NAME] with the totality of the entire relevant prior art base for that [NAME] whilst ignoring the express words of the rest of Pt 4 including ss 16 and 19(1). It is those sections which expressly provide that a [NAME] is distinctive unless it is substantially similar in overall impression to a [NAME] that forms part of the prior art base for the [NAME]. As a result, a [NAME] that combines various features, each of which can be found in the prior art base when considered as a whole but not in any one particular piece of prior art, is capable of being distinctive: [COMPANY] v [COMPANY] [2008] FCA 1588 at [60]; [COMPANY] v [COMPANY] [2008] ECDR 11 at [82]-[84] (stating that the registered [NAME] must be assessed with regard to particular prior [NAME] rather than a [NAME] amalgam of a number of prior [NAME]). See also [COMPANY] v [COMPANY] (2007) 235 ALR 202 (upholding the validity in the patent context of a combination of features known collectively in the prior art). 56 Thirdly, the judgment is an objective one. In assessing substantial similarity in overall impression, the standard to be applied is that of the informed [NAME] - namely, the court standing in the shoes of a notional person who is familiar with the product to which the [NAME] relates, or products similar to the product to which the [NAME] relates: s 19(4); [COMPANY] v [COMPANY] [2008] FCA 1588;see also [COMPANY] v [COMPANY] (1989) 15 IPR 403, 408-409. That informed [NAME], in assessing substantial similarity in overall impression: 1. gives more weight to similarities between the [NAME] than to differences between them: s 19(1); 2. considers the state of development of the prior art base for the [NAME]: s 19(2)(a); 3. considers the particular visual features of the [NAME] described in the statement of newness and distinctiveness in the context in which they appear: s 19(2)(b) and (c); 4. if only part of the [NAME] is substantially similar to [NAME] [NAME], considers the amount, quality and importance of that part in the context of the [NAME] as a whole: s 19(2)(c); and 5. considers the freedom of the [NAME] of the [NAME] to innovate: s 19(2)(d). 57 The "informed [NAME]" concept in the 2003 [NAME] has been the subject of recent judicial consideration in Australia: [COMPANY] v [COMPANY] [2008] FCA 1588 at [19]-[27]; [COMPANY] v [COMPANY] [COMPANY] [2008] FCA 1589. It is a concept the [NAME] borrowed from European Community [NAME] law, now codified in Council Regulation (EC) No. 6/2002 and in the [NAME] Act 1949 (UK): see [NAME], para 5.17-5.21 and 6.12-6.13; [COMPANY] v [NAME] (UK) [COMPANY] (2007) 73 IPR 605 at [32] and [COMPANY] v [COMPANY] [2008] FSR 19 at [7]. 58 The "informed [NAME]" concept has also been considered by the courts in the United Kingdom. In [COMPANY] v Architectural Lighting Systems [2006] RPC 1 at [59], Judge Fysh QC of the Patents County Court defined an informed [NAME] in the following terms: First, this notional person must obviously be a [NAME] of articles of the sort which is subject of the registered [NAME] - and I would think, a regular [NAME] at that. He could thus be a [NAME] or buyer or be otherwise familiar with the subject matter say, through use at work. The quality smacks of practical considerations. In my view the informed [NAME] is first, a person to whom the [NAME] is directed. Evidently he is not a [NAME] of the articles and both counsel roundly rejected the candidature of "the man in the street". "Informed" to my mind adds a notion of familiarity with the relevant rather more than what one might expect of the average [NAME]; it imports the notion of "what's about in the market?" and "what has been about in the recent past?" I do not think it requires an archival mind (or eye) or more than an average memory but it does I think demand [NAME] awareness of product trend and availability and [NAME] knowledge of basic technical considerations (if any). In connection with the latter, one must not forget that we are in the territory of [NAME] and thus what matters most is the appearance of things; as [NAME] [NAME] reminded me, these are not petty patents. Therefore, focus on eye appeal seems more pertinent than familiarity with the underlying operational or [NAME] technology (if any). I feel uncomfortable with analogy to the "man [NAME] in the art" whose "nerd-like" (and [NAME]) attributes seem too technical: [COMPANY] [2004] R.P.C. 46 at [6-12] ( CA). This formulation was considered and approved by [NAME] in [COMPANY] 73 IPR 605at [31], [32] and [41] and was also applied in Application by [NAME] to invalidate [NAME] in the name of [COMPANY] [2007] ECDR 10. To the extent that it matters (and it might not), the [NAME] ("the [NAME]") has indicated that the informed [NAME] concept is an objective test where the [NAME] is an ordinary or typical member of a sample of users of the product who is reasonably informed, being neither barely informed nor fully [NAME]: [COMPANY] (2007) 74 IPR 164 and [COMPANY] [2007] [NAME] 2 as discussed in [COMPANY] v [COMPANY] [2008] FCA 1588 at [25]. 59 Although it would be dangerous to attempt [NAME] comprehensive statement of principles that might be applied to the concept, it is apparent that an informed [NAME]: 1. is reasonably informed; not an [NAME] but more informed than an average [NAME]; 2. is an objective standard. However, [NAME] evidence may still be adduced in court to assist the Court in applying the informed [NAME] concept; 3. focuses on visual features and is not concerned with internal features or features that are not visible to the naked eye. 60 In the present case, the Respondents accept that each [NAME] is new when compared to the prior art base as it existed before the priority date of each [NAME]. The question which then arises is whether each [NAME] is distinctive. In order to answer that question, two sub-questions arise for consideration. What was the prior art base before the priority date of each [NAME]? What are the visual features of each [NAME]? 61 The prior art in evidence was extensive. The Respondents placed specific reliance upon the following prior art base products: 1. the products depicted in the [NAME] 2000/2001; 2. the [NAME] "Squircular"; 3. the products depicted in the [NAME] catalogue 2000/2001; 4. the products depicted in the [NAME] 2004/2005 (except those marked "new"); 5. [NAME] of the products depicted in the [NAME] 2003/2004; 6. [NAME] and products; and 7. [NAME]'s single-lens LED lamp. 62 Before turning to consider the prior art base, at this point in the argument it is important to remember that the Respondents accept that the following distinctions existed between the prior art base (which, incorrectly, they would have considered as a whole) and the [NAME]: 1. the absence of visible screws; 2. the different visual features of the rear or base views of the [NAME]; 3. the "cut-out" or "recess" at the end of a lamp; and 4. the sloping, rounded mounting bracket surrounding the lenses. 63 The question is whether an informed [NAME] - a person familiar with the product to which the [NAME] relates, or products similar to the product to which the [NAME] relates, and having regard to those matters listed in [56] above - would consider a [NAME] with the distinct features listed in [62] as substantially similar in overall impression to a [NAME] that forms part of the prior art base for the [NAME]? In my view, such a person would not consider either [NAME] to be substantially similar in overall impression to a [NAME] that forms part of the prior art base for the [NAME]. 64 If one looks at the [NAME] which comprise the prior art base, one can identify [NAME] and products, including [NAME]'s single-lens lamp, with [NAME] of the features found in each of the [NAME] - a lens separate from the base and from each [NAME], a low profile with an open base and no visible screws. However, none of those [NAME] include all or most of the features listed in [62] above, being features described in the statement of newness and distinctiveness for each of the [NAME]: see [2] above. For example, if one looks at [NAME]'s single-lens lamp, it is apparent that, apart from the absence of visible screws, the product contains none of the [NAME] features. 65 If one turns to consider the state of development of the prior art base, each of the [NAME] and the features described in the statement of newness and distinctiveness was a distinct advance over the prior art base in the sense that it combined various existing features in a way that had not been done before. On application to [NAME] each [NAME], the advances recorded in those [NAME] over the prior art base were substantial. And, as was acknowledged by [NAME] [NAME], each of the features listed in [62] was quite arbitrary from a [NAME] point of view. That is to say, the features were the product of conscious [NAME] choice rather than compelled by [NAME]-wide standards or technological constraints. Contrary to the Respondents' contentions, the visual features chosen by [NAME] [NAME] were not "so little different from the [NAME] available in the prior art base" as to be substantially similar in overall impression. Visually the product was different – it was modern and streamlined with curved edges. No product in the prior art base incorporated all (or most) of the features listed in [62] in one product. In those circumstances, I do not consider that a person familiar with the product to which the [NAME] relates, or products similar to the product to which the [NAME] relates, would consider either [NAME] as substantially similar in overall impression to any of the [NAME] that form part of the prior art base. 66 In considering the prior art base and the issue of whether each [NAME] is substantially similar in overall impression to any of the [NAME] that form part of the prior art base, the Respondents submitted that it was necessary to consider a product comprising several of [NAME]'s single-lens lamps set side by side. Although at least one witness, [NAME] [NAME], gave evidence that he had seen LED's single lenses installed side by side on vehicles, it was by no means clear when he saw such a configuration or what the precise configuration as to number and composition looked like. That lack of detail is probably fatal to the contention that each [NAME] is substantially similar in overall impression to an arrangement of [NAME]'s single-lens lamps side by side. 67 Furthermore, even if I were to assume, hypothetically, that a person had physically abutted two or three of [NAME]'s single-lens lamps side by side before the priority date of each [NAME] and that such a creation constituted a [NAME] publicly used in Australia within the meaning of s 15(2) so as to make it a part of the prior art base, I do not consider that a person familiar with the product to which the [NAME] relates, or products similar to the product to which the [NAME] relates, would consider each [NAME] to be substantially similar in overall impression to such a configuration. Instead of one continuous base along the long axis, there would be two or three bases with no flat strip or landing between each lens. And the sides of each base would not comprise a sloping, rounded mounting bracket surrounding a lens but would have vertical or straight sidewalls surrounding each lens. The underside of the bases would be different in shape, with mounting holes in different positions. For those reasons as well, the [NAME]' contention of substantial similarity is rejected.

E. INFRINGEMENT 68 [NAME] contends that the [NAME] with code numbers [POSTCODE], TL80RRA / TL80ARR, TL80ARW, TL100 [NAME] / TL80RAA, TL100ARW, TL125 AAR / TL125 RRA and TL125 [NAME] ("[NAME]") infringe the [NAME]. 69 It is common ground that the [NAME] are not identical to the [NAME]. The question then is whether [NAME] embody [NAME] that are "substantially similar in overall impression" to the [NAME]: s 71(1)(a) of the 2003 [NAME]. 70 The 2003 [NAME] was drafted so that the test of whether an allegedly infringing product is substantially similar in overall impression to the registered [NAME] is the same test applied to determine whether a [NAME] was distinctive for registration purposes: [NAME] 5.22-5.23. As the [NAME] said, "[T]he infringement and distinctiveness tests should be the same so that an infringing [NAME] is not a distinctive [NAME] and vice versa": para 5.22. Adopting the same test for distinctiveness and infringement broadens the scope of protection. The extent of difference required to make a [NAME] distinctive will depend on the state of development of the relevant prior art base. A more developed prior art base will mean that smaller differences will be sufficient to result in a finding that there is no substantial similarity: para 5.23. 71 How then does one assess the overall impression of a [NAME] in infringement proceedings? As noted earlier, until recently there has been little [NAME] judicial consideration of the 2003 [NAME]. The principal cases to date include [COMPANY] v [COMPANY] [2008] FCA 1588; [COMPANY] v [COMPANY] (2008) 166 FCR 358; [COMPANY] v [COMPANY] [COMPANY] [2008] FCA 1589 and [COMPANY] v [COMPANY] (2007) 71 IPR 307. 72 The principles set out in [53]-[59] are equally applicable in the infringement context. As s 71 of the 2003 [NAME] (read with s 19) makes clear, the court assesses whether the allegedly infringing [NAME] is substantially similar in overall impression to the registered [NAME] by comparing the allegedly infringing product to the registered [NAME] in the context of the whole appearance of the [NAME]: see also [NAME] para 6.25. The whole appearance is relevant as the context for the [NAME] even though, strictly, the [NAME] is only the distinctive visual features of the product. Greater weight is given to distinctive features than to [NAME] parts of the [NAME], although still in the context of the whole of the appearance. The same principles of assessment apply where the distinctive features relate only to part of the [NAME]: ss 19(2)(b)(ii) and (c). Moreover, in determining whether a [NAME] is infringed the Court must give more weight to similarities between the [NAME] than to differences between them: s 19(1). 73 This legislative approach to the question of infringement ensures that courts assess infringement in the context of the whole appearance of competing [NAME] rather than focusing on the differences between them. In addition, the scheme of the 2003 [NAME] requires the Court looking through the eyes of an informed [NAME] to consider: 1. the state of development of the relevant prior art base. As stated earlier, one measure is whether the difference in distinctiveness between the [NAME] and any previously known [NAME] is greater than the difference between the [NAME] and the allegedly infringing [NAME]: s 19(2)(a); 2. the new and distinctive features of the [NAME]: s 19(2)(b)(i); 3. where only part of a [NAME] is substantially similar to [NAME] [NAME], the amount, quality and importance of that part in the context of the [NAME] as a whole: s 19(2)(c); 4. the freedom of the [NAME] of the [NAME] to innovate. In [NAME] words, the nature and use of a product, or part of it, is a factor in defining the scope of [NAME]'s freedom to choose shape and materials: s 19(2)(d). 74 There is little doubt that first impressions are important when comparing a registered [NAME] with an allegedly infringing product in the manner prescribed by the 2003 [NAME]: [NAME] para 5.15. In the United Kingdom, in applying an "overall impression" test, the approach is to hold a product embodying the registered [NAME] (provided that the Court is satisfied that it is a true embodiment of the registered [NAME]) and the alleged infringing product in hand and undertake a reasonably careful comparison between the two: [COMPANY] 73 IPR 605 at [12]. See also [COMPANY] v [COMPANY] [2008] FSR 19 at [6] (citing [NAME] for the proposition that court may have regard to a physical embodiment of the registered [NAME] in making the comparison to the allegedly infringing product); but see [COMPANY] v [COMPANY] [2008] EWHC 989 Pat at [124] (stating that the exercise involves comparing the registered [NAME] to a photograph of the allegedly infringing product rather than the product itself). 75 With respect, I disagree with the proposition that as a general matter a court should start out by comparing product with product rather than registered [NAME] with product. First and most importantly, such an approach is inconsistent with the statutory language. Section 71(1)(a) directs the court to perform the substantial similarity analysis by comparing a product (the allegedly infringing item) to the registered [NAME]. Secondly, [NAME] approach is inconsistent with that taken by [NAME] in [COMPANY] v [COMPANY] [2008] FCA 1588 at [28], [35]. Significantly, the [NAME] evidence in Review was challenged on the basis that the witness had improperly compared product with product (and had even tried the products on): see [33]. [NAME] ultimately allowed the evidence, [NAME] nevertheless proceeded on the basis that the comparison for the court was between registered [NAME] and product and the [NAME] evidence in question had to be taken subject to the complaints made by the [NAME] side: see [34]-[36]. 76 I am of a similar view. While there may be circumstances in which it is appropriate (or at least not wholly inappropriate) for an [NAME] witness giving evidence as an informed [NAME] to have regard to a product embodying the registered [NAME] in providing an opinion on the substantial similarity question, the task for the court itself as laid down by the statute remains to compare the registered [NAME] to the allegedly infringing product. Moreover, even if I were not inclined to the view of [NAME], I could not, in light of the statutory language, consider [NAME]'s approach plainly wrong, and thus I would follow it in preference to [NAME] approach in any event. 77 I therefore conclude that infringement is determined by comparing the allegedly infringing product against the registered [NAME], not by comparing a product embodying the registered [NAME] against the infringing product: s 71. Thus the fact that the actual LED light is similar to the [NAME] TL light is not relevant. Moreover, infringement is determined by comparing only the visible features of the [NAME] to the infringing product: ss 7 and 19. Thus the fact that the products have different materials in the lens or have different voltages is also irrelevant. 78 If a visual comparison is made of the top view of a [NAME] (such as the TL80ARW) against the registered [NAME] (eg figures 1, 2, 3 and 4 of 6 in Annexure A), the [NAME] is "substantially similar in overall impression" to the [NAME]: s 71(1)(a) of the 2003 [NAME]. There is a continuous base. There is a flat strip or landing between each lens. The sides of the base of both the [NAME] and the [NAME] comprise a sloping, rounded mounting bracket surrounding the lenses. 79 It is true that [NAME] contain visible screws while the statement of newness and distinctiveness accompanying the [NAME] emphasises the "no visible screws" feature of the [NAME]. However, although the [NAME] contains two screws in each flat strip or landing between each lens, it is not a feature which in my view substantially distinguishes the [NAME] from the registered [NAME]. The presence of the screws does not create a different "visual appeal". The screws are the same colour as the flat strip or landing between each lens and sit low in the socket. They are not "visual" screws as one would describe the screws in [NAME] of prior art such as the [NAME] 48 94840 or [NAME] 2400, where the screws are chrome in colour and protruding. 80 Figures 5 and 6 of the [NAME] are of the rear view of the [NAME]. Upon a visual comparison of the rear view of the same [NAME] against figures 5 and 6 of the [NAME], the [NAME] is "substantially similar in overall impression" to the [NAME]. Again, there is one base with rounded corners. There is an opening for each lens of similar shapes with the shapes in the same configuration. There is the same number of mounting holes for the screws and the holes are in the same position. 81 Moreover, as [NAME] [NAME] properly conceded at trial, [NAME] are much closer to the [NAME] than they are to [NAME]'s own single-lens LED lamp which forms part of the prior art base. 82 For those reasons, the [NAME] with the code number [POSTCODE] infringes [NAME] No.302359 – dual lens and each of [NAME] with the code numbers, TL80RRA / TL80ARR, TL80ARW, TL100 [NAME] / TL80RAA, TL100ARW, TL125AAR / TL125 RRA and TL125 [NAME] infringe [NAME] No.302360 – triple lens. 83 Having determined that [NAME] infringe the [NAME] it is necessary to consider the question of relief and whether the respondents have an affirmative defence under s 75(2) of the 2003 [NAME].

F. AFFIRMATIVE DEFENCE: S 75(2) OF THE 2003 [NAME] 84 Strictly speaking, the Respondents did not (and could not) plead a s 75 affirmative defence because they had "taken advice" (that is, they were aware that [NAME]'s products were the subject of registered [NAME] protection and had in fact sought legal advice as to whether their own products would infringe). However, they did raise s 75 in the context of their argument (considered at [32]-[50] above) about [NAME] and invalidity of the [NAME] due to the uncertainty of [NAME] contained therein. Because s 75 does inform the debate about the limits of the monopoly conferred by registration under the 2003 [NAME] (an Act which has to be construed as a whole), it is therefore still useful to examine it (operating under the assumption that the Respondents had not "taken advice") in order to see whether the Respondents could otherwise have made out the defence. 85 Section 75(2) of the 2003 [NAME] provides an affirmative defence to infringement in the discretion of the court: (2) The court may refuse to award damages, reduce the damages that would otherwise be awarded, or refuse to make an order for an account of profits, if the defendant satisfies the court: (a) in the case of primary infringement: (i) that at the time of the infringement, the defendant was not aware that the [NAME] was registered; and (ii) that before that time, the defendant had taken all reasonable steps to ascertain whether the [NAME] was registered; or (b) in the case of secondary infringement--that at the time of the infringement, the defendant was not aware, and could not reasonably have been expected to be aware, that the [NAME] was registered. 86 The first question to be resolved is whether each of the respondents is a primary [NAME] (ie someone who makes an infringing product s 75(5) read with s 71(1)(a)) or a secondary [NAME] (ie someone who engages in any [NAME] infringing conduct s 75(5) read with s 71(1)(b)-(e)). 87 In [COMPANY] v [COMPANY] (2008) 166 FCR 358 ([NAME]), [NAME] concluded that the word make in s 71(1) also includes those who direct, cause, or procure an infringing item to be made as well as those who make such an item themselves: [NAME] at [21]. At first glance, therefore, it would seem that [NAME] and [NAME] would be considered primary infringers. Although they did not make the products themselves, they directed, caused, or procured the [NAME] lights to be made by issuing purchase orders to their [NAME] based on samples, [NAME], or [NAME] specifications. [NAME] and [NAME], having only sold the products, would be secondary infringers. 88 I say "at first glance," however, because in the Review cases, [NAME] added an important qualification to [NAME]'s holding in [NAME]. [NAME] noted the long-standing common law presumption, codified in s 21(1)(b) of the Acts Interpretation Act 1901 (Cth), that statutes are to be read as being confined to their operation within territorial limits: [COMPANY] v [COMPANY] [2008] FCA 1588 at [77]; [COMPANY] v [COMPANY] [2008] FCA 1589 at [48]. Although the Respondents in this case did not raise any extraterritoriality issue, I consider it appropriate to do so because the parties did not have the benefit of [NAME] judgment at the time of trial and because the issue relates to the Court's jurisdiction - that is, it goes to a matter in respect of which the Court is required to satisfy itself regardless of the parties' submissions or lack thereof. 89 In my view, [NAME] was correct in concluding that operation of the 2003 [NAME] must, in the absence of clear legislative guidance to the contrary, be confined to the territory of this country. To hold otherwise would risk improperly subjecting unwitting foreign companies (assuming a plaintiff could satisfy personal jurisdiction, service of process and [NAME] procedural requirements) to liability in Australia for acts which might be perfectly legal in terms of their own domestic intellectual property regimes. It would be tantamount to holding that a company which does business wholly within foreign borders ought to be charged, when doing business with an [NAME], with knowledge of [NAME] [NAME] law as well as a duty under that law to verify the provenance of [NAME] provided to it for manufacture. 90 For those reasons, [NAME] could not be considered primary infringers, even though they procured the making of the infringing [NAME] lights, because the actual manufacture occurred outside of Australia. That is not to say that they would therefore escape liability completely. Rather, each of [NAME], [NAME], [NAME] must be considered secondary infringers on the basis of their having imported (in the case of [NAME]) or offered for sale (in the case of all four) in Australia the infringing [NAME] lights. I would consider the Director Respondents as secondary infringers as well, on a similar basis as that given by [NAME[NAME] in [NAME] - namely, that importing or selling, as the case may be, should be understood to also include directing, causing, or procuring an infringing item to be imported or sold. The relevant provision of s 75 is therefore s 75(2)(b). That subsection requires the court to consider, in determining whether an affirmative defence is available, whether a secondary [NAME] was aware or could not reasonably have been expected to have been aware that the [NAME] was registered. 91 Assuming that [NAME] and [NAME] in fact had taken no steps to ascertain whether the [NAME] were registered at the time of the infringing conduct, that fact alone might not have disentitled them to rely upon the affirmative defence. The language of s 75(2)(b) ("could reasonably have been expected to be aware") shows that a Court cannot assume that there is always an affirmative duty to search [NAME]. Such a possibility was referred to by the [NAME] at par 14.16 of its Report in the following terms: [NAME] provides notice to the world that a [NAME] is registered. If a defendant has not searched [NAME], the court may conclude under s 32B that a search was a reasonable step that the defendant had neglected to take. It should not be mandatory for persons who claim innocence in infringement to search [NAME]. However in exercising its discretion, the court may take into account whether it was reasonable in all the circumstances for a search to have been conducted. (Emphasis added.) 92 The [NAME] added at par 14.17, "It would be inappropriate for a retailer or importer, who may deal with a variety of products, to be required to check whether the products' [NAME] have all been registered." I accept that it would be inappropriate to impose a per se duty on secondary infringers. However, in my view, there will be circumstances where a secondary [NAME] should reasonably be expected to check whether the products' [NAME] have been registered. If, having checked, they would have ascertained the limits of the monopoly (which is the case here), then they would not be able to make out the affirmative defence. 93 The question is therefore whether, in all the circumstances, it would have been reasonable in this case for the Respondents to have searched [NAME]? In my view, it would have been. That conclusion is dependent on two findings. First, having regard to the substantial similarity between the [NAME] and [NAME] and in the absence of any evidence to the contrary, it would be reasonably open to infer that a representative of [NAME] (and for that matter, [NAME] and [NAME]) saw the commercial embodiment of the [NAME]: [NAME] (1959) 101 CLR 298. Secondly and more importantly, the commercial embodiments of the [NAME], in both their packaged and unpackaged form, contain a form of notice that would give rise at least to a duty to check the name [NAME] on [NAME]. The notice is at the foot of the packaging and comprises the words "[NAME]". The rear of the base of each lamp has embossed on it a further notice, "[NAME] [NUMBER STATED]." There is no suggestion here that the notification on [NAME]'s packaging was defective for s 75 purposes in any of the ways described by [NAME] or [NAME[NAME]: see [COMPANY] v [COMPANY] [2008] FCA 1588 at [80]-[81] (accepting that a [NAME] notification affixed to the product, such as a swing tag, could be sufficient to put a potential [NAME] on notice but finding on the facts that there was not such notice at the relevant time); and [NAME] at [48]-[52] (finding that the swing tag did put the [NAME] on notice, but refusing to take the notification into account in determining damages because the tag was misleading in part). 94 Accordingly, none of the Respondents could make out an affirmative defence under s 75.

[NAME]. RELIEF 95 [NAME] seeks damages for infringement of the [NAME]. [NAME] submitted it was entitled to damages assessed at $542,529.24. That sum was calculated as follows: Product Pre-Recall Units "sold" Post Recall Units sold [NAME]'s Average Margin Total TL 80 [NAME] 4980 1754 6734 $25.10 $169,023.40 [NAME] 280 1694 1974 $31.98 $63,128.52 [NAME] 338 833 1171 $46.98 $55,013.58 100 [NAME] - 100 100 - $0.00 [NAME] 1196 394 1590 $63.58 $101,092.20 [NAME] 398 304 702 $77.71 $54,552.42 125 [NAME] - 6 6 - $0.00 [NAME] 345 446 791 $76.72 $60,685.52 [NAME] 108 276 384 $101.65 $39,033.60 7,645 5,807 13,452 $542,529.24

96 Before turning to consider [NAME]'s claim for damages, a number of matters must be noted. First, [NAME]'s claim (set out in the table) proceeds on a false assumption that [NAME] lost every sale secured by [NAME]. The assumption is false because, among [NAME] things, the prices of the respective products were not the same, nor was it established that both sides' products were stocked in the same places, such that a customer not able to obtain one would automatically turn to the [NAME]. Ultimately, [NAME] properly conceded that the underlying assumption was not accurate. Notwithstanding the concession, [NAME] submitted that because it was "a significant established player in the market", it would have secured a significant number of those sales and the calculation provides a "yardstick of comparison". On any view, however, [NAME] is not entitled to the whole of the amount claimed. Secondly, [NAME] made no claim for general damages. 97 Thirdly, the amount of [NAME]'s margin was not in dispute. However, in relation to the [NAME], it is important to realise that [NAME] produced two products in each of the 80 series. Each product had a different margin. All parties adopted the average of the margins in calculating damages. 98 How then are damages to be assessed? The [NAME] contend that if [NAME] is entitled to the sales made by them at the margins specified by [NAME], then the damages would be as follows: [NAME] [NAME] sold Sept 2006 – June 2007 [NAME] 2007 – May 2008 Total Agreed Margin Total TL 80 [NAME] 0 1,708 1,708 $25.10 $42,862 [NAME] 0 11 11 $31.98 $352 [NAME] 338 869 1,207 $46.98 $56,699 100 [NAME] 0 0 0 $63.58 0 [NAME] 396 291 687 $77.71 $53,387 125 [NAME] 0 0 0 $76.72 0 [NAME] 108 283 391 $101.65 $39,745 $193,045.00

99 The difference between the two tables reflects that [NAME]'s figures for units "sold" pre-recall (when [NAME] was selling the TL Series) are based on invoices of products purchased from the [NAME], not the units sold. The Respondents used the number of units in fact sold. For the period in which [NAME] sold the units, [NAME] estimated the number of units "sold" by taking the actual monthly sales (in $) of each product recorded in the respondents' [NAME]'s report and then dividing those sales by the average cost of each unit in a stock report to obtain an estimate of the number of units sold. On the [NAME] hand, the Respondents used the monthly sales (showing both volume and amount ($) of sales) for [NAME] since July 2005. Unsurprisingly, the numbers of units sold do not coincide and the discrepancy cannot be resolved based on the evidence before the Court. That is, I do not consider that it would be a useful expenditure of the Court's time (assuming that it were in fact possible on the evidence) to seek to arrive at a precise number. This is particularly so in light of the false one-to-one lost sales premise; no evidence was adduced that would give the Court the ability to calculate a precise discount. 100 In the circumstances, the better approach is to assess damages doing the best I can, even if such quantification necessarily involves a degree of speculation and guesswork: eg [COMPANY] v [COMPANY] (2003) 196 ALR 257 at [37]-[38]; Adidas-Solomon AG v Turner (2003) 58 IPR 66 at [4]-[5]; [COMPANY] v [COMPANY] (1984) 57 ALR 167, 183; [NAME] [COMPANY] v Stirling [2001] FCA 1852 at [7]. 101 Applying that approach, I consider that it is fair, based on the evidence to which I have referred, to assess damages at the amount contended for by the Respondents, rounded up to $200,000.00. I do so for a number of reasons. First, the figures in the table at [98] were submitted by the Respondents on the basis that the sum of $193,045 was the "limit (maximum) of the … monetary relief as far as the evidence permits." Secondly, although even the Respondents' evidence appears to proceed on the incorrect one-to-one assumption identified earlier, having regard to the summary of sales attached to the [NAME]'s report, the number of units included in the table appears to be a conservative assessment of the number of units in fact sold by [NAME]. In [NAME] words, I consider that the actual sales were higher and thus to award only $200,000 would in fact give the Respondents a discount in recognition of the fact that not all sales by them can properly be deemed lost sales of [NAME]. 102 Before proceeding, I should note that none of the [NAME] attempted to raise a claim of proportionate liability, nor was any evidence led in an attempt to segregate the sales on an individual company basis with respect to [NAME] and [NAME]. Subject to any agreement among the parties as to the form of final orders, I consider that in the circumstances the proper course at this stage is to proceed on the basis that damages should be assessed jointly and severally. Whether the Respondents come to [NAME] agreement among themselves is a matter for them.

H. [NAME] ACT CLAIMS AGAINST THE [NAME] 103 As noted earlier, [NAME] contends that the [NAME], by their conduct, contravened ss 52, 53 and 65C of the TPA and that the Directors authorised, directed and further or alternatively procured the conduct of the [NAME] Respondents. 104 [NAME] contends that, for differing periods of time, the [NAME] offered for sale, and sold, in Australia [NAME] with the following product codes:

1. Single Lamps - TL80A (amber indicator), TL80R (red stop / position) and TL80W (white reversing);

2. Dual LED Assemblies - TL80 RA (red / amber);

3. Triple LED Assemblies - TL80 RRA / TL80 [NAME], TL80 [NAME], TL100 [NAME] / TL 80RRA, TL100ARW, TL125AAR / TL125 RRA, TL125 [NAME]. 105 There is no dispute that each of [NAME], [NAME], [NAME] offered for sale and sold LED automotive lamps branded "[NAME]". The role of each of the Corporate Respondent, however, was different. Prior to 1 July 2007, [NAME] were imported by [NAME] and distributed by [NAME]. [NAME]'s only independent distributors were [COMPANY] and [NAME]. After 1 July 2007, the position was reversed – [NAME] imported the products and [NAME] became the distributor. Throughout the period, [NAME] sold the [NAME] lamps through its own distribution network which included [NAME] automotive electrical distributors, auto electricians and OEMs ("[NAME]") in the caravan and trailer [NAME]. [NAME] was a retailer of [NAME] which it, in turn, had obtained from [NAME] and [NAME]. 106 [NAME]'s principal complaint is that each of the products listed in [104] bore one of "Complies with ADR1", "Complies with ADR6" or "Complies with ADR 49" together with the phrase "ADR Approved" on the packaging ("the [NAME]") and that [NAME] conveyed by those [NAME] were misleading and deceptive. There were, in fact, a number of versions of those products imported into Australia and sold by [NAME], [NAME], [NAME] and [NAME] 1, Version 2 and Version 3.

Version 1 107 Version 1 lamps were obtained from [NAME], a company which later changed its name to [NAME]. In June and November 2006, [NAME] placed orders for Version 1 lamps. There were two shipments of lamps. [NAME] received the first shipment in November 2006. [NAME] placed the first order for Version 1 lamps with [NAME] in November 2006. [NAME] supplied the lamps to [NAME], which onsold them to [NAME] for subsequent sale and distribution. The [NAME] shipment of Version 1 lamps was received by [NAME] in January 2007. All Version 1 lamps had the words "Complies with [NAME]/6/49" stamped on the face of the lens. [NAME] obtained two examples of Version 1 lamps (TL80 RA and TL80 [NAME]) from [NAME] [NAME] of [NAME] in November 2006. 108 In or about March 2007, the [NAME] and [NAME] Commission ("the [NAME]") intervened in the sale of these lamps with the result that the sale of Version 1 lamps ceased and the Version 1 lamps were recalled from the market. In June 2007, [NAME] gave certain undertakings to the [NAME] and instigated a program to recall Version 1 lamps which had earlier been sold. 109 There was, in fact, [NAME] version of these lights which were referred to in the proceedings as "Version 1A". They differed slightly from Version 1. For present purposes, those differences are not material.

Version 2 110 The Version 2 lamps were manufactured by a new [NAME], [NAME]. The first shipment was received by [NAME] in late July or August 2007. The lights were not packaged in blister packs. The [NAME] shipment (received in August 2007) and subsequent shipments were packaged in blister packs which contained a card showing details of the lamps and the words "ADR Approved". All the lamps had the words "Complies with ADR" stamped on the face of the lens. 111 [NAME], [NAME] and [NAME] admit that they sold LED automotive lamps branded "[NAME]" from about August 2007 in packaging bearing the words "ADR Approved". [NAME] admits that it sold LED automotive lamps branded "[NAME]" from about September 2007 in packaging bearing the words "ADR Approved". 112 Examples of Version 2 lamps were tendered in evidence. A TL80ARW purchased on about 22 October 2007 and three lamps in February 2008 (TL80ARW, TL100ARW and a TL125 [NAME]).

Version 3 113 Version 3 lamps differ from Version 2. Version 3 lamps have a different diffusion pattern on the lens. The lamps have the words "[NAME] with ADR" stamped on the face of the lens. Examples of the Version 3 lamps were purchased from [NAME] on about 20 April 2008.

[NAME]'s Contentions 114 [NAME] contends that because of the [NAME] on all of [NAME], each of [NAME], [NAME], [NAME] represented to [NAME] and / or [NAME] that each of [NAME]: 1. complies with the [NAME]; and further or in the alternative 2. is approved for the purpose of compliance with the [NAME], ("[NAME]"). 115 Further, [NAME] contends [NAME] were false and misleading because [NAME]: 1. do not comply with [NAME], which is concerned with the photometric requirements of reversing lamps; 2. do not comply with ADR 6, which is concerned with the photometric requirements of direction indicators; 3. do not comply with ADR 49, which is concerned with the photometric requirements for devices which signal to the road users the position, orientation and movement of the vehicle; 4. were not approved for the purposes of compliance with the [NAME] prior to October or November 2007. 116 In considering these claims, it is first necessary to seek to explain the [NAME], their source and how they operate. I say "seek to explain" because the system is complex and the parties were in dispute not only about the way in which the system operated but what it is that the system requires.

Relevant Vehicle Standards 117 The Motor Vehicle Standards Act 1989 (Cth) ("[NAME]") is the starting point. The objects of [NAME] are to achieve uniform vehicle standards for new vehicles and to regulate the supply of used imported vehicles. Sections 14 and 18 of [NAME] prohibit the supply of new vehicles or importation of road vehicles that are non-standard or do not have an identification plate. A "new vehicle" does not include a vehicle component: s 5 of [NAME]. An "identification plate" is a "plate declaring the status of a road vehicle in relation to the national standards and approved to be placed on vehicles of that type or description under procedures and arrangements provided for in subsection 10(1)". 118 Section 10 provides: (1) The Minister may determine, from time to time, procedures and arrangements for the placement of plates on road vehicles or vehicle components if approval has been given under subsection 10A(1), (2) or (3) for plates to be placed on the vehicles or vehicle components. (2) Without limiting the generality of subsection (1), the Minister may determine procedures and arrangements in relation to identification plates, including procedures and arrangements with respect to: (a) the categories of identification plates to be utilised; and (b) the content, form and function of identification plates; and (c) the nature, content, sources and format of evidence to be presented to establish whether, and to what extent, a road vehicle or vehicle component complies with the national standards; and (d) the analysis, verification and supplementation of such evidence; and (e) the manner in which partly completed road vehicles are to be provided for; and (f) the manufacture and supply of identification plates; and (g) the placement of identification plates; and (h) the retention of records and information relevant to applications for, and the giving of, approvals under section 10A. (3) A determination under this section is a legislative instrument. 119 Section 10A provides that "[i]f new vehicles of a particular type, or vehicle components of a particular type, comply with the national standards, the Minister must give written approval for identification plates to be placed on vehicles or components of that type." There is no suggestion in the present case that any application was made to the Minister for approval for an identification plate to be placed on any of [NAME]. 120 The reference to "national standard" is a reference to a "vehicle standard" determined under s 7 of [NAME]: see s 5 and the definition of "national standard". 121 A "vehicle standard" is defined in s 5 of [NAME] to mean a safety, security, energy or emission "standard for road vehicles or vehicle components". Section 7 provides that "the Minister may, by legislative instrument, determine vehicle standards for road vehicles or vehicle components" (emphasis added). The Minister may also, by legislative instrument, determine procedures for testing whether vehicles and components comply with [NAME]: s 9. These functions or powers are non-delegable: s 23 of [NAME]. "Vehicle component" is defined in s 5 to mean "a component to be used in the manufacture of a road vehicle, and includes a component of such a component". A component includes an assembly: s 5. 122 Section 41 of [NAME] provides that: For the purpose of sections 65C … and 65F of the [TPA], a national standard (including a standard designed for a purpose referred to in paragraph (b) or (c) of the definition of vehicle standard in section 5 of this Act) is to be taken to be a prescribed [NAME] product safety standard. 123 There is an Administrator of Vehicle Standards: s 22 of [NAME]. It is common ground that proof of vehicle standards is not required: s 143(1)(b) of the Evidence Act 1995 (Cth). The Minister has determined the following relevant standards as vehicle standards pursuant to s 7 of [NAME]:

1. Vehicle Standard ([NAME] [NAME] 1/00 – Reversing Lamps) 2005 – [NAME] dated 21 November 2005 ("[NAME]"), prescribes the photometric requirements for reversing lamps which will warn pedestrians and [NAME] road users that the vehicle is about to move or is moving in the reverse direction, and which during the hours of darkness will aid the driver in reversing manoeuvres;

2. Vehicle Standard ([NAME] [NAME] 6/00 – Direction Indicators) 2005 – Yellow / Amber dated 13 December 2006 ("ADR 6"), prescribes the photometric requirements for a device mounted on a motor vehicle or trailer which when operated by the driver signals the latter's intention to change the direction in which the vehicle is proceeding;

3. Vehicle Standard ([NAME] [NAME] 49/00 – Front and Rear Position (Side) Lamps, Stop Lamps and End Outline Marker Lamps) 2005 – Red dated 3 April 2007 ("ADR 49"), prescribes the photometric requirements for light-signalling devices which will indicate the presence, width and position of the vehicle when viewed from the front and from the rear. The determination accompanying [NAME] suggests that the ADR was determined to be a vehicle standard under s 7(1) of [NAME]. No such provision exists. For the purposes of this analysis I have assumed that the determination was in fact made under s 7 of [NAME]. None of the parties suggested that this apparent error invalidated or otherwise altered the operation of the standard, and in any event the authorities hold that, as a general matter, judicial redrafting of obvious typographical errors is permitted: [NAME] v The Queen (1991) 172 CLR 1, 21-22; [NAME]) [COMPANY] v Commissioner of Taxation (Cth) (1981) 147 CLR 297, 305, 311, 321. 124 Application may be made to the Minister for approval of a vehicle component, being a component that is to be supplied to the market for the manufacture of a new vehicle being an approval that states that the component complies with particular national standards or relevant parts of particular national standards: reg 4 of the Motor Vehicle Standards Regulations 1989 (Cth). It is not suggested that this form of approval was followed or had to be followed in the present case. 125 Before turning to consider the content and effect of the [NAME] referred to above, reference should be made to two [NAME] items. First, there is the "Vehicle Standard ([NAME] [NAME] Categories) 2005" which "set[s] out matters, such as definition of key terms, which apply in common to particular [[NAME]]" and contains material which needs to be read in conjunction with particular [NAME] in order to establish the rights and obligations which those [NAME] create. In that ADR, "approved" is defined to mean "approved by the Administrator" but the ADR goes on to provide that where a term is defined within an ADR as well as in the list of defined terms, the definition in the ADR takes precedence for the purposes of the particular ADR. I will turn to consider the relevant [NAME] and their contents shortly. 126 The [NAME] item is in fact a group of items published by the Administrator and known as "Circulars". The Circulars do not have legislative or regulatory force. [ADDRESS] cannot have regard to them under s 143 of the Evidence Act 1995 (Cth). What then is the status of the Circulars? One was tendered in evidence (Circular 0-4-26). Others (Circulars 0-2-11, 0-3-2, 0-3-4, 0-3-6, 0-4-18, 0-12-0 and 0-13-1) were provided to the Court following the hearing, although leave to reopen for the purpose of tendering them was neither sought nor granted. I have read the Circulars. They do not contain matters "so generally known that every person may be reasonably presumed to be aware" of them: [NAME] v [COMPANY] (2002) 208 CLR 460 at [64] (per [NAME]).

Accordingly, the Court cannot have regard to them under s 144 of the Evidence Act 1995 (Cth). Putting Circular 0-4-26 to one side, the [NAME] are therefore not properly before the Court and I have not relied on them in coming to the views expressed in these reasons. 127 Circular 0-4-26 is entitled "Application for Component Registration Numbers ([NAME])". It "sets out the requirements and conditions regarding the application for, and issuing of, [[NAME]] for vehicle components": par 1.1. Applicants for a CRN can be the component [NAME], component supplier or the vehicle [NAME]: par 1.5. The CRN process is directed at registering vehicle components to be used in new motor vehicles. The Department of Transport and Regional Services (now known as the Department of Infrastructure, Transport and Regional Services) ("[NAME]") creates a [NAME] of components that are commonly used in new vehicles for administrative convenience. 128 The Circular provides that theAdministrator of Vehicle Standards will accept [NAME] as evidence of compliance in Summary of Evidence submissions. What those submissions are or the use to which they are put, is not explained. In any event, [NAME] will only be issued for components that are fitted to new motor vehicles or trailers (par 1.4) and for, inter alia, "(i) Lighting and light signalling devices (various [NAME])": par 1.6. However, [NAME] will not be issued for lighting and light-signalling devices using UNECE (United Nations Economic Committee for Europe) regulation approvals (par 1.7) or for components exclusively for the [NAME] (par 1.8). The Circular then goes on to specify the manner in which an applicant applies for a CRN. For example, a separate application is required for each Make-Model and, in the case of combined lighting and signalling devices, separate applications are also required for each different function (eg stop, position or indicator): par 2.4. 129 The application procedures are prescribed: section 3. Applicants for [NAME] must first [NAME] with the Road Vehicle Certification System ("[NAME]") as a [NAME]: par 3.1. An application for a CRN for a Make-Model must consist of a number of nominated forms including what is described as "the relevant SE forms for the particular ADR" and a letter from the new vehicle [NAME] that would be fitting the component: par 3.4. An application that has demonstrated compliance with the relevant ADR will be granted a CRN: par 3.8. CRN documentation is then issued to the [NAME] for information and safe keeping: par 3.8. 130 The Circular goes on to provide that where there are changes in the specification of a component during the production life of the component, it is the responsibility of the [NAME] to ensure the continued compliance of any revised specification component with the relevant ADR: par 5.1. The fact of continued compliance is required to be documented and available for inspection by inspectors if requested: par 5.1. In particular, if a running change to an approved component is likely to have an impact on ADR compliance, the component will need to be re-tested and the results lodged: par 5.2. On the [NAME] hand, a running change to an approved component that does not impact on its ADR compliance may be implemented without the prior approval of the Administrator: par 5.3. 131 Finally, the Circular states that [NAME] are expected to put in place a Quality Plan to ensure that only the specified approved components are identified with the [NAME] granted: par 8.1. Components that are in any way different from those described in the final form of the applications for [NAME] shall not be supplied under those [NAME]: par 8.2. Once marketing of the specified components in Australia has ceased, [NAME] are required to notify the Administrator of Vehicle Standards of the date of manufacture of the last specified components supplied to the market in Australia: par 9.1 132 The interaction, both legally and practically, between the Circular and the system it describes and the [NAME] identified above is in issue because (1) [NAME] submitted that the words "ADR Approved" have a prescribed meaning, namely that the product was approved by the Administrator of Vehicle Standards, and none of [NAME] had such approval and (2) [NAME] alleges that each of [NAME], [NAME], [NAME] and [NAME] contravened s 65C(1) of the TPA because they supplied lamps used, or likely to be used, by a [NAME] in respect of which there was a prescribed [NAME] product safety standard (the [NAME]) with which the products do not comply. 133 As noted earlier, the approval process for components provided for by [NAME] (see [124] above) was not adopted and can be put to one side. The question which then arises is what is the status of the CRN procedure outlined in Circular 0-4-26 and the interaction between that Circular and the [NAME]? With respect to the [NAME], it is clear that by virtue of ss 5, 7 and 41 of [NAME] they are prescribed [NAME] product safety standards for purposes of s 65C of the TPA. Circular 0-4-26 purports to create a system for demonstrating compliance with those safety standards in certain circumstances. In the Subject Index of Circulars issued by the Administrator, the Circular is listed under the heading "Certification Procedure". However, it must be remembered that power to set procedures and arrangements for determining compliance with the Act belongs to the Minister, not the Administrator, and cannot be delegated: ss 9, 23. Presumably that is why Circular 0-4-26 states that a CRN is merely evidence a [NAME] of new vehicles can rely upon in demonstrating compliance with an ADR; however, it does not and cannot in itself establish compliance. Therefore, the fact that a person may hold a CRN in respect of a particular vehicle component does not of itself legally entitle the [NAME] to claim compliance or approval. Moreover, as noted earlier, Circular 0-4-26 does not purport to create a generally applicable "compliance" procedure - it provides that [NAME] will only be issued for components that are fitted to new motor vehicles. It is not relevant to the [NAME]. 134 Putting aside for the moment the fact that there appears to be no generally applicable or conclusive administrative procedure for establishing ADR compliance, it is also necessary to consider the substance of the standard itself. What standard then do the [NAME] require? Although each ADR provides a standard for different types of lamps, so far as is relevant, each of the relevant [NAME] is in similar terms. I will use [NAME] as the example. 135 As noted earlier, the scope of [NAME] is to "prescribe … the photometric requirements for reversing lamps which will warn pedestrians and [NAME] road users that the vehicle is about to move or is moving in the reverse direction, and which during the hours of darkness will aid the driver in reversing manoeuvres": Pt 1. The standard then specifies that devices complying with the technical requirements of Appendix A as varied by Pt 5 Exemptions and Alternative Procedures and Pt 6 Supplementary General Requirements shall be accepted as complying with the ADR. Appendix A is, in fact, UNECE Regulation No 23/00, the Uniform Provisions Concerning the Approval of Reversing Lamps for Power Driven Vehicles and their Trailers. In general terms, Pt 5 of the Regulation provides that certain provisions of Appendix A are not applicable and Pt 6 provides that certain requirements are supplementary to the requirements of Appendix A. 136 Paragraph 6.1 of the ADR entitled "Supplementary General requirements" provides that "the requirements and procedures set out in Annexes 5 and 6 of Appendix A are acceptable for the purposes of demonstrating compliance with the technical requirements of this rule". The reference to Annex 6 is in fact a reference to Annex 6 as amended by par 5.1 of the Regulation. In addition to compliance in that manner, par 7.1 provides that the technical requirements of any of the editions of the UNECE Regulation No 23/00 are deemed to be equivalent to the technical requirements of this rule. Such a provision is unusual. Part 5 of the ADR substantially amends and, most importantly, substantially weakens UNECE Regulation No 23/00. In particular, the amendments removed from the UNECE Regulation sections 2, 3 and 4 headed "Application for Approval", "Markings" and "Approval". That is significant. Those sections prescribed not only a process for approval but standards to be met to obtain "approval" which are significantly more stringent than those set out in Annex 5 and 6. In [NAME] words, the substantive standard to which the CRN process in Circular 0-4-26 applies is much less rigorous than the UNECE Regulation No 23/00 and compliance with the higher standard necessarily means compliance with the [NAME] standard. 137 However, the question remains, what then is the [NAME] standard? One thing that does not inform the answer to this question is [NAME] practice. A deal of evidence was led as to what automotive [NAME] experts thought the [NAME] required and how the [NAME] tested for compliance in practice. The general thrust of this evidence was that the [NAME] treated much of the removed sections as still being applicable. However, as the Court stated in [NAME] v [NAME] (2000) ATPR (Digest) 46-206 at [49], any [NAME] practice adopted as to the testing of products against a safety standard cannot affect the proper construction of the requirements under the safety standard. As [NAME[NAME] said at first instance in that decision ([NAME] v [NAME] [COMPANY] [1999] ATPR 41-712 at [22]), "The Standard means what it says". 138 Paragraph 6.1 of the Regulation stipulates that "the requirements and procedures set out in Annexes 5 and 6 of Appendix A are acceptable for the purposes of demonstrating compliance with the technical requirements of this rule". Annexure 5 in turn states, "The conformity requirements shall be considered satisfied from a mechanical and geometric standpoint if the differences do not exceed inevitable [NAME] deviations within the stipulated requirements": Annexure 5 at 1.1. In relation to photometric requirements, no measured value can deviate unfavourably by more than 20% from the prescribed values. The values are prescribed in section 6 of Appendix A. 139 By way of example, the light intensity requirements prescribed in paragraphs 6.2, 6.3 and 6.5 of Appendix A will be satisfied by the following measurements: Para No Measurement Prescribed Value Permissible deviation 6.2 Intensity along the axis Not less than 80 candelas Not less than 64

(80 - 20%) candelas 6.3 Intensity of light in all directions in which light can be observed Directions in or above the horizontal plane Not exceed 300 candelas Not exceed 360

(300 +20%) candelas Directions below the horizontal plane Not exceed 600 candelas Not exceed 720

(600 +20%) candelas 6.5 Single lamp containing more than one light source. (1) Lamp shall comply with the minimum intensity requirement when one light source has failed. -20%

(2) When all light sources are illuminated the maximum intensities shall not be exceeded. +20%

140 In the present case, the [NAME] sold [NAME] marked with the [NAME] relying upon the oral assurance of the [NAME] as to their performance characteristics and without first having obtained a test report and then a CRN for them. (The [NAME] did eventually obtain written test reports but only after they had begun making [NAME] - that is, after they had begun supplying products marked with the [NAME].) 141 It is this conduct which [NAME] asserts is in breach of ss 52, 53(a), 53(c) and 65C of the TPA and which lies at the heart of the issues to be addressed in this section of the judgment.

Legislation and Relevant Principles 142 Section 52 of the TPA relevantly provides that: A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive. 143 The relevant legal principles are well known. A two-step analysis is required. First, it is necessary to ask whether each or any of the pleaded [NAME] is conveyed by the particular events complained of: [NAME] v [COMPANY] (2000) 202 CLR 45 at [105]; [COMPANY] v [NAME] Commission [2004] ATPR 42-000 at [18] per [NAME] (with whom [NAME] agreed) and [COMPANY] v [NAME] [COMPANY] [2006] ATPR 42-106 at [37]. 144 Secondly, it is necessary to ask whether [NAME] conveyed are false, misleading or deceptive or likely to mislead or deceive. This is a "quintessential question of fact": [NAME] and [NAME] Commission v [NAME] (2004) 208 ALR 459 at [49]. 145 Because the conduct complained of in the present matter was not directed at a specific individual, both questions that have been identified must be considered by reference to the [NAME] or classes of [NAME] likely to be affected by the conduct: [COMPANY] v [COMPANY] (1982) 149 CLR 191, 199 per Gibbs CJ; Nike at [102], [103], [105] and [106]; [NAME] v [COMPANY] (2004) 218 CLR 592 at [36] per [NAME], [NAME]. 146 In .[COMPANY] v [NAME] [COMPANY] (2004) 207 ALR 521 at [12]-[26], [NAME] provided a useful summary of the approach that might be taken where a court is required to assess conduct by reference to a specific [NAME] or classes of [NAME] and did that by particular reference to [NAME] [COMPANY] v [COMPANY] (1982) 42 ALR 177, 202-203 per [NAME] JJ and Nike at [100]-[103]. The approach may be summarised in six points, as follows: (1) first, identify the relevant section or sections of [NAME] by reference to which the issue is to be tested. The target section or sections of [NAME] would, of course, vary according to the facts of each case: [NAME] at 209 per [NAME[NAME]; [NAME] v [NAME] (1988) 80 ALR 486, 516; (2) [NAME], having identified the relevant section or sections of [NAME], consider who comes within that section or those sections. This may include the astute and the gullible, the intelligent and the not so intelligent, the well educated and the poorly educated: see also [NAME] at 199 per Gibbs CJ; (3) [NAME], it is permissible, but not essential, to have regard to evidence that [NAME] person has in fact been misled, though this evidence will not be conclusive; (4) fourth, it is necessary to enquire whether any proven misconception has arisen because of the misleading or deceptive conduct; (5) [NAME], where the persons alleged to have been mislead are members of a [NAME], it is necessary to isolate a representative member of the [NAME] and enquire whether that [NAME] is likely to be deceived; (6) sixth, when considering the likely effect of the misrepresentation on this [NAME], he or she should be judged as an "ordinary" or "reasonable" member of the [NAME], excluding reactions to the representation that are "extreme" or "fanciful". 147 The question in this case can therefore be stated as being whether an ordinaryor reasonable member of each identified [NAME] would perceive the [NAME] as conveying one or both of [NAME]? If yes, the next question is whether [NAME] are false, misleading or deceptive or likely to mislead or deceive an ordinary or reasonable member of each identified [NAME]. 148 [NAME] also alleges that the conduct complained of contravenes ss 53(a) and (c) of the TPA, which provide: A corporation shall not, in trade or commerce, in connexion with the supply or possible supply of goods or services or in connexion with the promotion by any means of the supply or use of goods or services: … (a) falsely represent that goods are of a particular standard, quality, value, grade, composition, style or model …; … (c) represent that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have … 149 Section 53 identifies specific types of conduct which, if engaged in by a corporation in connection with the promotion or supply of goods and services, will contravene ss 52 and 53 of the TPA. However, unlike s 52, breach of s 53 is an offence: [NAME] of the TPA. If the conduct complained of by [NAME] contravened s 52 of the TPA, then having regard to its content, that conduct would also contravene ss 53(a) and (c) of the Act. 150 Finally, [NAME] also alleges that the conduct complained of contravenes s 65C(1) of the TPA. Section 65C(1) provides that "a corporation shall not, in trade or commerce, supply goods that are intended to be used, or are of the kind likely to be used, by a [NAME] if the goods are of a kind (a) in respect of which there is a prescribed [NAME] product safety standard and which do not comply with that standard." The [NAME] ([NAME]) Regulations 1979 (Cth) prescribe relevant [NAME] product safety standards: s 65C(2).

Analysis 151 As noted earlier, a two-step analysis is to be undertaken in considering the application of s 52 of the TPA. First, is each or any of [NAME] conveyed by one or more of the [NAME]? If so, are [NAME] false, misleading or deceptive or likely to mislead or deceive an ordinary or reasonable member of each identified [NAME]? 152 Before turning to [NAME], it is necessary to understand that two classes of [NAME] are pleaded: [NAME] and / or [NAME]. As noted above, the targeted section or sections of [NAME] will vary according to the facts of each case: see [146(1)] above. The parties failed to address the question of the relevant [NAME] or classes and the effect (if any) of such distinctions. However, the evidence disclosed that [NAME] fell into two general classes – the [NAME] of vehicles or trailers and the [NAME]. The [NAME] comprises those [NAME] who purchase tail lights to replace one which has broken or to add [NAME] tail light to the existing tail lights on a vehicle or trailer. Many of the [NAME] sales occur through [NAME]. The division is important. It is important because the [NAME] convey a different representation to the [NAME] of vehicles and trailers than they do to the [NAME] [NAME]. [NAME] then are conveyed?

What conveyed to [NAME] of vehicles and trailers? 153 Dealing first with [NAME] of vehicles and trailers, each of [NAME] bore the [NAME]. What do those words convey? Compliance with a standard? Tested to a standard? Approved? Those who work in the [NAME] know (or think they know - as we have seen, what the rules and regulations actually require is [NAME] matter) that the process is one in which a product is tested by a [NAME] for particular performance characteristics against criteria set out in an ADR. The laboratory's report is provided to [NAME] together with an application for a CRN and then [NAME] allocates a unique CRN number to the product in relation to the particular ADR against which it was tested. On any view, [NAME] (or [NAME] combination of them) are conveyed by the [NAME] to those in the [NAME].

What conveyed to [NAME]? 154 What do the words convey to those who do not work in the [NAME]? They do not know the system. All they know is that the product bears [NAME]. The [NAME] represent, at the very least, that the lamps comply with [NAME] kind of governmental safety standard. The phrase connotes approval by an authorised (ie government or government-approved) body.

[NAME] false, misleading or deceptive? 155 The next question is whether [NAME] were false, misleading or deceptive or likely to mislead or deceive an ordinary or reasonable member of each identified [NAME]. As noted earlier, [NAME] were sold bearing the [NAME]. Moreover, the [NAME] conveyed a different representation to each identified [NAME].

[NAME] of vehicles and trailers 156 Both the phrase "ADR Approved" and "Complies with ADR" were false, misleading or deceptive or likely to mislead or deceive an ordinary or reasonable member of the identified [NAME]. As noted earlier, those who work in the [NAME] understand that the process is one in which a product is tested by a [NAME] for particular performance characteristics against criteria set out in an ADR. The laboratory's report is provided to [NAME] together with an application for a CRN and then [NAME] allocates a unique CRN number to the product in relation to the particular ADR against which it was tested. In the present case, at the relevant time none of the [NAME] had obtained a CRN let alone a test result from a certified laboratory that provided any basis for making such a claim. That the entire [NAME] may be operating under a misconception as to the actual procedural and substantive requirements for ADR compliance does not change the fact that an ordinary member of the [NAME] would be misled by [NAME] in that they would think that the product in question had been tested and administratively "approved" (the quotation marks being necessary to acknowledge that the approval in question was not necessarily legally cognisable) when in fact it had not.

[NAME] 157 There was no basis for asserting that the lamp was "ADR Approved". It was not "approved" by anybody. Neither the [NAME] nor Circular 0-4-26 prescribe an "approval process". [NAME] certainly does not "approve" anything. Moreover, I reject the submission of the [NAME] that a CRN was unnecessary and it was merely sufficient for them to obtain a report from a [NAME] before labelling the goods "ADR Approved". The [NAME] does not "approve" anything either. It merely tests lamps given to it and produces a report. The phrase "ADR Approved" was false, misleading or deceptive or likely to mislead or deceive an ordinary or reasonable member of the identified [NAME]. 158 The [NAME] was the phrase "Complies with ADR". To those who do not work in the [NAME], the phrase conveys at the very least the message that the product has been properly tested (and by properly I mean that an ordinary [NAME] would not think that an oral or unsupported assurance was sufficient to justify the representation) and has met the standard prescribed by the relevant ADR (and here again the difficulties in identifying the actual procedural and substantive content of ADR compliance are of course irrelevant - the ordinary [NAME] would neither know nor care; the point is only that they would think the product had been tested by a reputable body and found "up to snuff"). In the present case, the phrase "Complies with ADR" was false, misleading or deceptive or likely to mislead or deceive an ordinary or reasonable member of the identified [NAME] until at least August or September 2007 because none of the [NAME] had obtained written test results from a certified laboratory that provided any basis for making such a claim.

[NAME] claims 159 [NAME] also breached ss 53(a) and 53(c) of the TPA for the same reasons that [NAME] breached s 52 of the TPA. 160 However, there is no violation of s 65C of the TPA. As noted earlier s 65C1(a) prohibits the supply of goods which do not comply with a prescribed safety standard. In contrast to ss 52 and 53, s 65C does not ask whether a [NAME] is likely to be misled, nor does it ask what a [NAME] might understand about a certain product. To put it even more bluntly, s 65C is not concerned with [NAME] at all. It simply poses an objective question: has a product been supplied for [NAME] use which does not comply with a prescribed safety standard? To prove a case under this provision, a party must: (1) identify a product; (2) identify the time of supply of that product; (3) identify the relevant safety standard in force at the time; and (4) lead evidence showing that the particular product did not meet the standard: see [NAME] v [NAME] [COMPANY] [2008] FCA 1182 at [10]. 161 [NAME], in approaching its case on a misleading and deceptive conduct basis only, failed to establish the elements of its s 65C case in a satisfactory manner. While it led evidence of safety tests and the supply of lamps, it failed to connect particular lamps, having been supplied at particular times, to particular tests demonstrating non-compliance of those lamps with the [NAME]. The last bit would in any event have been tricky, if not impossible, because the [NAME], due to the peculiar amendments that have been made to the UNECE Regulation and the uncertain status of the Circulars, do not really prescribe much of a standard. Not only is a 20% variance in luminosity allowed, there is no procedure (notwithstanding any [NAME] practice or understanding to the contrary) as to how compliance with the standard is to be assessed and proved. Based on the evidence, it appears that the tests relied on by [NAME] to establish the non-compliance of [NAME] may have applied stricter procedural and substantive criteria than those actually imposed by the applicable rules and regulations. Therefore, I cannot be satisfied on the balance of the probabilities that the [NAME] did in fact supply products that did not comply with the [NAME].

No damage 162 Notwithstanding that one or more of [NAME] conveyed was false, misleading or deceptive or likely to mislead or deceive, [NAME]'s claims under the TPA fail because [NAME] did not establish an essential element of the cause of action – damage: [NAME] [COMPANY] v [NAME] (1992) 175 CLR 514, 525 (per [NAME]). Although never properly articulated, the causation and damages theory of [NAME]'s TPA claims seemed to be a lost sales theory similar to that underpinning the infringement claim: (1) (a) [NAME] prefer to buy, or (b) in [NAME] cases will only buy; (2) products that are marked as complying with applicable safety standards and that do comply with those standards; (3) [NAME]'s lamps comply with the [NAME]; (4) had it been known to the market that the [NAME]' products did not comply with the [NAME] (ie if they did not bear the [NAME]); (5) all those who purchased the [NAME]' products; (6) would instead have purchased [NAME]'s lamps; (7) such that [NAME] caused [NAME] to lose sales in the amount of the [NAME]' sales. 163 As noted earlier, [NAME]'s claim seemed to assume that every sale made by the [NAME] of a [NAME] would have been a sale that [NAME] would have made. That is not an assumption that can be made in the infringement context, and it is even more remote in the TPA context. It is not supported by human experience or, more importantly, by the evidence. As I noted at the outset, the market in Australia for LED automotive lamps was highly competitive. There was evidence that certain large [NAME] would only buy from [NAME] holding [NAME]; however, there was no evidence to show that ordinary [NAME], particularly [NAME] [NAME], considered safety compliance to be so material as to prevail over factors such as price and convenience. 164 Furthermore, it goes without saying that [NAME]'s lost sales, whatever the precise number of units, cannot be double counted. In no event could they be more than the number of units actually sold by the [NAME]. As noted earlier, I calculated infringement damages based on the assumption that the Respondents' sales data reflected the number of units actually sold by them, less a certain (not precisely quantifiable) discount based on the fact that their data was on the conservative side. To receive any damages under the TPA over and above the infringement award, [NAME] would have to satisfy the Court that the TPA contraventions caused it to lose additional sales. 165 On the evidence before me, [NAME] has not done that. First, I re-emphasise the absence of any evidence as to the materiality of safety compliance [NAME] to the average [NAME]. [NAME], the infringement lost sales claim will, by its nature, tend to encompass a greater sum than a TPA claim on the same basis because by hypothesis the infringing product would not have been in the market. That is to say, had the [NAME] not infringed the [NAME], they would not have produced [NAME] and [NAME] would have had one less competitor. On the [NAME] hand, in the [NAME] world in which the [NAME] did not breach ss 52 and 53 of the TPA, their [NAME] could still have been on the shelves alongside [NAME]'s lamps; the only difference would have been that they would not have borne the [NAME]. It is difficult to see how [NAME] could lose more sales in a notional world where the [NAME] were still allowed to sell their products (albeit without "ADR Approved" and "Complies with ADR" endorsements) than in a world where [NAME] did not exist at all. 166 For those reasons, I am not satisfied that [NAME] established any additional loss arising from any one or more of the TPA contraventions.

Accordingly, I would not grant [NAME] any relief in relation to these claims in addition to that identified above.

I. DIRECTORS' LIABILITY?

Introduction 167 As noted earlier, [NAME] also contends that the [NAME] ("[NAME] [RESPONDENT]") and the Seventh Respondent ("[NAME] [RESPONDENT]") ("the Directors") authorised, directed and further or alternatively procured the conduct of the [NAME] Respondents. During the course of the hearing, [NAME] stated that it no longer seeks relief against the [NAME] Respondent, [NAME] [RESPONDENT]. 168 In relation to the Directors, that conduct is said to include: 1. that the Directors have acted in concert with [NAME] in respect of its infringement of the [NAME] or wrongfully procured and or induced [NAME] and [NAME] to infringe the [NAME]; and 2. that under ss 75B, 80 and 82(1) of the TPA, each of the Directors was a person who aided and / or abetted and or was directly or indirectly knowingly concerned in or party to the contravention by each of [NAME] and [NAME] of ss 52, 53(a), 53(c) and 65C of the TPA. 169 At the time of the "relevant events", [NAME] [NAME] and [NAME] [NAME] were directors of [NAME] with [NAME] acting also as Chairman. [NAME]'s evidence was that he, together with [NAME] [NAME], "is the boss" of [NAME]. In relation to Version 1 lamps, the "relevant events" included, but were not [COMPANY] to, the conception and [NAME] of the infringing [NAME] lights at a time when at least [NAME] [NAME] was aware of the existence of the [NAME], discussions with [NAME] about the manufacture of the those lights and the subsequent importation and sale of them in Australia. In addition, [NAME] [NAME] designed and conceived the Version 2 and 3 lights and arranged for their manufacture and importation into Australia. Moreover, [NAME] [NAME] was the nominated signatory for all applications for [NAME] and the addressee for all correspondence from [NAME] relating to [NAME]. In addition, he was involved in photometric testing of [NAME] lights and knew what [NAME] [NAME] was doing in relation to [NAME]. 170 In determining whether this level of conduct and knowledge establishes liability, each cause of action needs to be considered separately.

Joint tortfeasors to the [NAME] infringement? 171 In relation to the infringement of the [NAME], [NAME] alleges that the Directors are joint tortfeasors to the [NAME] infringement as each had "a common [NAME]" with [NAME] to infringe the [NAME]. 172 As submitted by counsel for the Directors, the test to be applied is far from certain. One line of cases adopts what is known as the "direct or procure" test ([COMPANY] v [NAME] [COMPANY] [1924] 1 KB 1, 14-15, while the [NAME] line of cases adopts the test in [NAME] v [NAME] (1978) 89 DLR (3d) 195 that a director is only personally liable if it is reasonable to conclude that the purpose of the director was not the direction of the [NAME] and selling activity of the company in the course of his relationship to it but the "deliberate, wilful and knowing pursuit of a course of conduct that was likely to constitute infringement or reflected an indifference to the risk of it": at 204-205. 173 In [COMPANY] v [COMPANY] (2001) 53 IPR 400 at [39], a [NAME] infringement case, the [ADDRESS] of the Federal Court considered the two tests in the following terms: The authorities were collected and analysed by [NAME] in King v Milpurrurru (1996) 66 FCR 474 at 494-500….. [NAME] noted the existence of two lines of authority. One line supported what she called the "[COMPANY] test": whether the director had "directed or procured" the company's infringement. The [NAME] line supported "the [NAME] test": whether the director had engaged in "the deliberate, wilful and knowing pursuit of a course of conduct that was likely to constitute infringement or reflected an indifference to the risk of it". [NAME] expressed a preference for the [NAME] test, on the basis that the [COMPANY] test did not "pay sufficient regard, either to the separate legal existence of the company, or to the fact that the company acts through its directors": see [66 FCR at 500]. However, this preference had no immediate consequence; [NAME] held (again at [500]) that the appellants were not liable under either test. 174 After listing a number of cases (at [40]-[41]) supporting each approach and considering the submissions of the parties, the [ADDRESS] went on to say (at [43]-[44]): The difference between the two tests may be more apparent than real. We are not aware of any case in which it has been held that a director or officer of a company directed or procured the company's infringing act, yet that person escaped liability because he or she did not deliberately, wilfully or knowingly pursue a course of conduct that was likely to constitute infringement or that reflected indifference to the risk of infringement. This may be because, in practice, an act of direction or procurement will generally meet the [NAME] test. It is notable that, in [NAME] itself, the Canadian Federal Court of Appeal declined (at 204) to "go so far as to hold that the director or officer must know or have reason to know that the acts which he directs or procures constitute infringement". [ADDRESS] declined to do this because that "would be to impose a condition of liability that does not exist for patent infringement generally". To the extent there is a real difference between the tests, each has eloquent supporters. One day it may be necessary, in a practical sense, to choose between them. But it is not necessary to do so in this case. 175 The position here is the same. This is not a case in which [NAME] [NAME] and [NAME] acted only as directors of the infringing companies. Each had personal knowledge of the [NAME] and of the [NAME] facts and matters set out above (see [169]). To adopt the language of the [ADDRESS], it was clear that each of [NAME] [NAME] and [NAME] "was personally an actor invading [[NAME]'s] rights: by creating the [[NAME]]" and taking the [NAME] steps outlined above. These sequences of actions were "the deliberate, wilful and knowing pursuit of a course of conduct" that was likely to constitute infringement or, at least, reflected a conscious indifference to the risk of infringement. As a result, each of the Directors also engaged in the [NAME] infringement. Each is a joint tortfeasor to the [NAME] infringement as each had "a common [NAME]" with [NAME] and [NAME] to infringe the [NAME] and is jointly and severally liable to [NAME] for the damages assessed.

Secondary liability under the TPA 176 The next matter to be considered is the claim of secondary liability of the Directors under the TPA. The principles are well established. Natural persons will be liable in damages for a contravention by a corporation if they had a "close, rather than a remote involvement in the contravention": [NAME] (1983) 152 CLR 570, 584. Moreover, the participation in the contravention requires actual, rather than constructive, knowledge of the essential matters that make up the contravention: Yorke v Lucas (1985) 158 CLR 661, 666-670 and 677, [COMPANY] v [NAME] (2002) 118 FCR 236 at [67] and [NAME] v [NAME] (2004) 160 FCR 1 at [8]-[9]. 177 [NAME] and [NAME] had actual rather than constructive knowledge of the "essential matters" that make up the contraventions under the TPA? 178 As noted earlier, two contraventions were pleaded; namely that the Directors "aided and / or abetted and / or were directly or indirectly knowingly concerned in, or party to" (1) the alleged mislabelling of [NAME] as to compliance with the [NAME] (in contravention of ss 52, 53(a) and (c) of the TPA) and (2) the alleged contraventions of [NAME] 1, 6 and 49 as "prescribed [NAME] product safety standards" (in contravention of s 65C of the TPA). The former was made out, but the latter was not. 179 However, as explained earlier in these reasons for decision (see [162]-[166]), notwithstanding that one or more of [NAME] was false, misleading or deceptive or likely to mislead or deceive within the meaning of ss 52 and 53, [NAME]'s claims failed because [NAME] did not establish an essential element of the cause of action – damage. As a result, it is unnecessary to consider whether the Directors "aided and / or abetted and / or were directly or indirectly knowingly concerned in, or party to" the contravention by the corporation. 180 However, if [NAME] had established damage, I do not consider that each of [NAME] and [NAME] knew of the "essential matters" that enabled [NAME] to be characterised in the manner contended: [NAME] v Kaye [2004] FCA 1363 at [182]-[186]. To adopt the language of the majority of the [ADDRESS] in [NAME] [COMPANY] v [NAME] (2003) 135 FCR 1 at [12-16], although I accept that each of [NAME] and [NAME] knew (1) that [NAME] were manufactured, sold and packaged and (2) the content of the manner in which they were sold which might lead members of at least one [NAME] of [NAME] to believe that the products complied with "prescribed [NAME] product safety standards", I do not conclude that either [NAME] or [NAME] knew the facts that meant that [NAME] were not correct. As to the "ADR Approved" representation, they gave evidence as to their subjective understanding of the representation conveyed, which, while possibly negligent or even reckless, was not such as to suggest wilful blindness or actual knowledge of how a relevant purchaser might understand it. As to the "Complies with ADR" representation, their evidence (which I accept) was that they relied upon oral and written assurances from their [NAME] and testing laboratories which turned out to be belatedly or never substantiated. Was that conduct less than wise? - Yes. Was it negligent and possibly even reckless? - Again, yes. But on the current state of the authorities that is not sufficient to establish the actual knowledge necessary to establish accessorial liability under the TPA. Significantly, it was never put to either [NAME] [NAME] or [NAME] [NAME] during the course of [NAME]-examination that they knew these "essential matters".

Accordingly, even if [NAME] had established that the TPA contraventions had caused it damage, they could not establish the secondary liability of the Directors for those contraventions.

J. [NAME]-[NAME] AND [NAME] 181 By way of [NAME]-claim, the [NAME] contend that [NAME] and [NAME] engaged in conduct which constitutes unjustified threats of [NAME] infringement and, separately, [NAME] conduct which breaches s 52 of the TPA.

Unjustified threats of [NAME] infringement 182 There were two allegations of unjustified threats of [NAME] infringement under ss 77 and 79 of the 2003 [NAME]. The first concerned a document circulated by [NAME] on 5 February 2007. The [NAME] related to a letter sent by [NAME]'s solicitors to [NAME] and [NAME] dated 7 September 2007. 183 Neither of these documents supports such an allegation. First and foremost, I found that the [NAME] were properly registered and the claim of infringement is made out, so it could not be said that allegations of infringement were unjustified even if they were deemed threats: [NAME] [COMPANY] v [COMPANY] (2007) 73 IPR 99 at [232] (suggesting that where there is actual infringement a threat will not be unjustified). Secondly, the 5 February 2007 document did not, in its terms, contain any threat of proceedings for [NAME] infringement. The document contained 6 paragraphs. The first five related to the [NAME]. The last paragraph stated: Since the lamps are similar in appearance to [NAME]' lamps, we are currently consulting our legal advisers regarding litigation against vendors of these lamps in order to protect our reputation and to protect [NAME]. Taken at its highest, it states that [NAME] was seeking legal advice. It makes no threat of proceedings for [NAME] infringement: but cf [COMPANY] v [COMPANY] (2007) 73 IPR 312 (concluding that a similar letter constituted a threat under s 128 of the Patent Act 1990 (Cth)). 184 Thirdly, the [NAME] event, the 7 September 2007 letters, contained a threat of legal proceedings at a time when the current proceedings had already been on foot for [NAME] 5 months against [NAME] and [NAME] in respect of infringement of the [NAME]: see [COMPANY] v [COMPANY] (2008) 76 IPR 83 at [41] and authorities there cited (stating that threats made after proceedings have already been instituted or that result in the bringing of proceedings are less likely to be deemed unjustified). 185 For those reasons, the [NAME]' claim of unjustified threats of [NAME] infringement is rejected.

TPA claims 186 The [NAME] also claim that [NAME] and [NAME] [NAME] engaged in misleading and deceptive conduct. The conduct said to breach s 52 of the TPA comprised three separate events.

[NAME]'s [NAME] 187 The first concerned the contents of [NAME]'s [NAME] from 25 July 2007 until 7 January 2008 insofar as that [NAME] contained the following statements under the heading "Beware of Inferior Copy's (sic) from China" ("[NAME] representation"): Below is a list of company's (sic) with Questionable Practices, these company's (sic) are either Notorious for Ripping off [NAME], Ripping off Trademark Names, Stamping ADR … on Lenses when they are not, and selling Inferior, Low Quality, Low Grade copied products that fail. The below companies do not have our specially formulated resin and their resin sealing method will crack away from the lenses with temperature changes and vibration. The below companies may claim they have this method, but can you trust them. 1/ [NAME] http://www.[NAME] [NAME] of [NAME] brand lamps which are inferior copies of our product, leaking lenses, low grade LEDs, product recalled in Australia because they don't meet the necessary standards, lenses stamped ADR approved when they are not. We have instituted copyright proceedings (sic) against [NAME] in the federal court. To view Recall go to http://www.[NAME] … 188 The notice was removed from [NAME]'s [NAME] on the advice of its solicitor and [NAME] months after being told that the [NAME] considered the statements in the notice to be false. 189 At the time that the notice was placed on [NAME]'s [NAME], only Version 1 [NAME] had been sold by [NAME] and [NAME] in Australia. Version 3 [NAME] were not sold until after the notice had been taken down from [NAME]'s [NAME] in January 2008. 190 On any view, portions of the notice were false at one time or [NAME]. At no time were copyright proceedings instituted. Moreover, [NAME] knew no later than 7 August 2007 that [NAME] was not the [NAME] of [NAME]. 191 In the end, however, the conduct does not give rise to any relief. None of the [NAME] did or could establish loss or damage resulting from the conduct. In fact, assuming that the [NAME] caused them to lose sales on the infringing [NAME], then it saved the [NAME] money in that it reduced the number of their sales (and thus [NAME]'s corresponding lost sales) based on which infringement damages were awarded. The claim should be rejected.

August 2007 letter 192 The [NAME] event concerned a circular letter distributed in August 2007 entitled "[NAME] TO [NAME]" ("the Letter Representation"). The Circular was in the following form: [NAME], Please be aware that ADR compliance is very difficult to attain by inferior quality lamps, [NAME] [NAME] have resorted to stamping the lens as ADR compliant when in actual fact they are not! With the popularity of LED lamps the market has become inundated with cheap inferior copies of many different original [NAME]. This is extremely disappointing for the original designers and we hope that you support us by not purchasing copied products. The contents of the notice below has been published by the [NAME] on its [NAME]: www.[NAME] 193 The [NAME] notice recorded, as was the fact, that its investigation into alleged non-compliance with the ADR for automotive lights had resulted in [NAME] providing a court-enforceable undertaking. The notice went on to state: [NAME] had represented that its range of [NAME] complied with certain [[NAME]]. Independent testing showed that these lamps failed to meet the light requirements of the [NAME] rules. The [NAME] considered that by representing that the lamps complied with the rules when they did not, [NAME] falsely represented to [NAME] that these lamps were of a particular standard. [NAME] also represented that the lamps had performance characteristics that they did not have. Further the [NAME] considered that [NAME] had supplied goods not compliant with prescribed [NAME] product safety standards. [NAME] responded promptly to the [NAME]'s concerns. It has given the [NAME] a s 87B court-enforceable undertaking that it will:- · Complete a total recall of non compliant lamps sold by [NAME] by contacting each affected customer to explain the nature of the contraventions and offer to exchange the non-compliant lamps, and implement a [NAME] compliance program. · Not supply products that are subject to [NAME] product safety standard, unless the products comply with the relevant standard. · Quarantine all non compliant lamps and have them shipped back to the [NAME] in China where the [NAME] will make the necessary changes to these lamps to ensure compliance with the rules …. 194 The [NAME] notice was drafted by the [NAME]. It was factual both historically and in relation to the arrangements existing at the time the notice was issued. Consistent with [NAME] practice, the notice was and remains on the [NAME]'s [NAME]. 195 The circular was sent to 5,000 automotive part resellers, electricians and truck and trailer [NAME] in Australia in August 2007. At that time, the [NAME] had only sold Version 1 [NAME] in Australia and had not completed the recall of those products. 196 There is perhaps an interesting question whether the further dissemination or adoption of a factually true statement made by [NAME] would in these circumstances constitute misleading or deceptive conduct. However, whether the contents of the Circular were false, misleading or deceptive or likely to mislead or deceive can be put to one side because, again, none of the [NAME] did or could establish loss or damage resulting from the conduct. The claim should be rejected.

[NAME]'s packaging 197 The [NAME] event concerned the contents of [NAME]'s own packaging from at least December 2005 until November 2007 ("[NAME]"). The complaint relates to the statement on the rear of packaging that: "We only use polycarbonate thermoplastic which has an extremely high impact tolerance" 198 The evidence disclosed that when [NAME] changed [NAME] from [NAME] to "M", the composition of the lamps changed from polycarbonate to acrylic, but [NAME] forgot to change its packaging. The change to acrylic occurred in about January 2006. [NAME] of the packaging still contained [NAME] in July 2008. There is no doubt that from January 2006 (at the latest) [NAME]'s products were made of acrylic and not polycarbonate. 199 As noted earlier, a two-step analysis is to be undertaken in considering the application of s 52 of the TPA. First, is the representation conveyed? If so, is the representation false, misleading or deceptive or likely to mislead or deceive an ordinary or reasonable member of each identified [NAME]? There are two hurdles to the claims made by [NAME], [NAME] and [NAME]. First, the [NAME] was not identified. I suspect, but do not know, that if the classes are those identified earlier (ie [NAME] and [NAME] purchasers), the question posed in relation to each of those classes might produce a different result. In [NAME] words, an ordinary or reasonable member of those who work in the [NAME] might be different to a [NAME] who buys the product in the [NAME]. The former might be interested in the composition of the lamp's lens. The latter I suspect would not be – his or her interest is likely to be price and possibly how the product looks. As [NAME] [NAME] said in evidence, although polycarbonate was very fashionable many years ago, it has never been a factor in a customer's decision to purchase lamps. 200 This last point brings up the [NAME] hurdle faced by [NAME], [NAME] and [NAME], which is that they did not and cannot establish that they suffered any loss as a result of [NAME]. Not only did the evidence show that lens composition is not a significant factor in a customer's purchase decision at all (ie no causation generally), there is no evidence to show that an accurate representation would have caused [NAME] to purchase [NAME] as opposed to [NAME] [NAME] polycarbonate lens (ie no causation specifically). Furthermore, even assuming that [NAME], [NAME] and [NAME] had established lost or depressed sales in the period from 2006 to 2008 (which would be difficult, if not impossible, given that the [NAME] lamps were brought to market well after the January 2006 [NAME] change in lens composition so that there was never a period to which a sales comparison could be made when the [NAME] lamps were on the market without [NAME] being made), the evidence disclosed numerous [NAME] causes for the fact that the sales of [NAME] were likely to be affected. It is unnecessary to address each of them. It is sufficient for present purposes to record that the [NAME] brand was damaged by the [NAME] recall, a recall that was consented to. This [NAME] hurdle provides [NAME] separate and independent reason why this aspect of the [NAME]-claim fails.

K. ORDERS 201 I do not propose to make final orders today. 202 I will instead order the parties to confer and jointly file short minutes of final orders giving effect to these reasons for decision, including orders as to the further conduct of this matter, by 4.00pm on 23 January 2009. If the parties are unable to agree, they are to submit a joint statement by 4.00pm on 23 January 2009 identifying: (1) the point(s) of agreement; (2) the point(s) of disagreement; and (3) the respective positions of the parties on the point(s) of disagreement, in which case I will list the matter for further directions or argument as necessary. I certify that the preceding two hundred and two (202) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Gordon.

Associate:

Dated: 18 December 2008

[NAME]: [APPELLANT] and [NAME]

[NAME]: [APPELLANT]

[NAME], [NAME], [NAME] Applicants: [redacted]

[NAME], [NAME], [NAME] Respondents: [redacted]

Counsel for the [NAME], [NAME]: [NAME] [COUNSEL]

Solicitor for the [NAME], [NAME]: [NAME]

Counsel for the [NAME]: [NAME] [COUNSEL] [NAME] and Dr [COUNSEL]

Solicitor for the [NAME]: [COUNSEL]

[NAME]: [APPELLANT] and [NAME]

[NAME]: [APPELLANT] of Hearing: 15-18, 21-23 and 25 July, 21 August and 27 October 2008

Date of Final Written Submissions: 29 August, 5, 15 and 18 September and 26 October 2008

Date of Judgment: 18 December 2008

ANNEXURE A - [NAME] of each of the [NAME].

ANNEXURE B - [NAME] of each of the [NAME].

ANNEXURE C - Engineering drawings