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DTA Australia Pty Ltd – Design Registration & Trademark

Janice Yew | October 21st, 2015

mdp helped Australian tiling manufacturer and distributor DTA prevent a US-based multinational competitor from infringing its registered design and force a product recall of its competitor’s products.

Background

Established in 1976, DTA is an Australian family business, engaged in the manufacture, importation and distribution of tiling tools and trims. DTA is Australia’s leading distributor of quality tools and trims. DTA’s success has enabled it to expand its business Australia-wide and into China and the United States.

The Challenge

DTA had a registered design for its tiling trims, which had diamond shaped perforation holes. The holes were functional because the adhesive would penetrate the holes so that the tiling trim and the tile would adhere to the wall or floor. The diamond shaped holes were also DTA’s brand identity because the trims were sold in hardware stores without packaging. Accordingly, the perforations were the only way in which consumers could identify the brand of the product.

One of DTA’s main international competitors commenced importing into Australia its own tiling trims which contained diamond shaped perforations. Fortunately, our client was able to rely on its design registration in its claim against its competitor.

The Solution

We were promptly able to resolve this matter with the competitor before it proceeded to trial because the competitor realised that it was legally in the wrong.

The Results

We were able to achieve an outstanding outcome for our client. The competitor agreed to recall its products and pay our client an account of profits on its sales in Australia. The competitor was then forced change its product so that it had difference shaped perforations in order distinguish its tiling trims from those of our client.

We have also registered our client’s diamond shaped pattern as a trade mark. The benefit of this is that a trade mark is perpetually renewable, whereas a design registration will provide protection for a maximum period of 10 years.

Janice Yew

Janice Yew

Lawyer, BCom JD at mdp
Janice joined mdp in 2013 as a law clerk while completing her Juris Doctor at the University of Melbourne. In 2015, she came onboard full-time as a law graduate, and started working in the firm’s property, commercial and intellectual property practices.
Janice Yew

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