Available Remedies for Design Infringement in Australia

Registering a design gives you valuable protection over the unique visual appearance of your product. But what happens if someone copies it? The Designs Act 2003 doesn’t just define what counts as infringement (section 71). It also sets out the remedies available to design owners and exclusive licensees when infringement occurs (section 75).

What Counts as Design Infringement?

Before diving into remedies, it’s important to recall what infringement looks like under section 71. A person infringes a registered design if, without the owner’s or exclusive licensee’s permission, they-

• Make or offer to make a product that embodies a design identical or substantially similar to the registered design,
• Import such a product into Australia for commercial use,
• Sell, hire, or otherwise dispose of the product,
• Use the product in trade or business, or
• Keep the product for these purposes.

Both primary infringement (making or offering to make the product) and secondary infringement (selling, importing, or using it) are covered.

Once infringement is established, the next question is: what remedies are available?

Main Remedies for Design Infringement

Under section 75(1) of the Designs Act, the court has discretion to grant various forms of relief. The two primary remedies are-

Injunctions

An injunction is a court order that restrains the infringer from continuing their actions. For design owners, this is often the most urgent and practical remedy, as it stops the market harm caused by infringing products.

An injunction can be interim (granted early in proceedings to prevent ongoing damage while the case is heard), or permanent (granted after a successful case, preventing future infringement).

Courts can tailor the terms of an injunction to the circumstances, for example, ordering the destruction or delivery up of infringing products.

Damages or Account of Profits

The plaintiff has a choice between damages, i.e. financial compensation for the losses suffered due to infringement (lost sales, reputational harm, etc.), or an account of profits, i.e. handing over the profits the infringer made from the unlawful use of the design.

This choice allows design owners to pick the remedy that maximizes recovery. If the infringer made significant gains, an account of profits may be more attractive. If the design owner can demonstrate direct losses, damages may be preferable.

When may courts reduce or refuse awards?

While the law gives strong remedies, section 75 also recognizes fairness to defendants who may not have known about the registration.

Infringement Before Registration

If the infringement occurred before the design was registered, courts may refuse to award damages, reduce the damages awarded, or refuse to order an account of profits.

This protection applies if the defendant can prove they were not aware and could not reasonably have been expected to be aware that an application for the design had been filed (section 75(1A)).

Infringement After Registration

For infringements after registration, the law distinguishes between primary and secondary infringement.

Primary Infringement (making or offering to make the product), where a defendant may avoid or reduce damages if they show they were not aware the design was registered and had taken all reasonable steps to check.

Secondary Infringement (selling, importing, using, or keeping the product), where a defendant may avoid or reduce damages if they did not know, and could not reasonably have been expected to know, the design was registered.

This framework ensures that innocent infringers, such as retailers unknowingly selling infringing goods, are not penalized as harshly as deliberate copiers.

Additional Damages

On top of standard remedies, courts may also award additional damages under section 75(3).

This applies in cases where the infringement was flagrant or involved particularly bad conduct. Factors courts may consider include-

• Whether the infringement was deliberate or reckless,
• The scale and duration of the infringement,
• Whether the defendant attempted to conceal their actions,
• The need to deter similar conduct in the future.

Additional damages are designed to punish wrongdoers and deter blatant copying. They go beyond compensating the design owner, recognizing the seriousness of intentional infringement.

The role of product marking

A practical detail under section 75(4) is that if a product (or its packaging) is marked to indicate the design is registered, this serves as prima facie evidence that the defendant was aware of the registration. This means that marking products with “Registered Design” or similar wording strengthens enforcement options, as defendants will struggle to argue they were unaware of the registration.

For businesses, proper marking is a simple yet powerful step to reinforce design rights and make remedies easier to obtain.

How Courts Balance Remedies?

Courts have wide discretion under the Designs Act. Their aim is to strike a balance between compensating the design owner, deterring infringement, and ensuring fairness for defendants. This means that injunctions are almost always granted once infringement is proven, as they directly prevent ongoing harm. Also, damages or profits will be carefully assessed, with reductions possible if the defendant genuinely lacked knowledge of the registration. That said, additional damages are also reserved for serious cases of deliberate or reckless copying.

The outcome depends heavily on the evidence presented, i.e. particularly whether the infringer can show they acted innocently, and whether the design owner can prove the scale of harm suffered.

Imagine an Australian fashion brand successfully registers a new handbag design. Shortly after, a competitor begins manufacturing and selling bags that are nearly identical in appearance. In response, the brand initiates legal proceedings, seeking an injunction to immediately halt the competitor’s sales and prevent further infringement.

Recognizing the commercial success of the infringing products, the brand opts to pursue an account of profits. This remedy allows them to claim the financial gains the competitor made from selling the copied designs. During the proceedings, the competitor attempts to defend their actions by claiming they were unaware that the design was registered. However, the handbags in question were clearly marked with “Registered Design,” making the court dismiss this argument as unconvincing.

Given the deliberate and widespread nature of the copying, the court goes further by awarding additional damages. These punitive damages are intended not only to penalize the infringer but also to send a strong deterrent message to others who might consider similar conduct. The case underscores the importance of clear design marking and the legal weight carried by registered design rights in protecting original creations.

This scenario illustrates how remedies work together, i.e. injunctions to stop harm, financial recovery for losses or profits, and additional damages for serious misconduct.

Work with us

For design owners, the key takeaway is this, i.e. registration and proper marking of products put you in the strongest position to obtain remedies if infringement occurs. And because the choice between damages and profits can significantly affect recovery, professional advice is essential to maximize outcomes.

At LexGeneris, we not only assist clients in registering and certifying their designs but also help enforce those rights effectively when infringements arise. If you believe your design has been copied, the first step is to understand the remedies available and plan the best path forward.

So, contact us now for a free consultation.