Even Fruit Containers Deserve Protection: Multisteps Pty Ltd v Specialty Packaging Aust Pty Ltd [2018] FCA 587
- stevedavey4
- Jul 18
- 6 min read
Even Fruit Containers Deserve Protection: Multisteps Pty Ltd v Specialty Packaging Aust Pty Ltd [2018] FCA 587
There is a temptation to assume that intellectual property protection is for high-tech products, luxury goods, or iconic brands. Multisteps Pty Ltd v Specialty Packaging Aust Pty Ltd [2018] FCA 587 dismantles that assumption comprehensively. Justice Jagot's decision, handed down on 2 May 2018, confirms that a plastic produce container — the kind used to hold strawberries or cherry tomatoes on a supermarket shelf — can be the subject of valid innovation patents and registered designs, and that copying those containers will attract full Federal Court consequences including personal liability for directors.
Background: Protecting Produce Containers
Multisteps Pty Ltd had invested in developing distinctive plastic containers for fresh fruit and other produce sold at retail. These were not arbitrary shapes. The visual appearance and functional design of produce containers affects how products are displayed, how they stack, how they breathe, and how they attract consumers at point of sale. Multisteps had taken the step of protecting this investment through both innovation patents and registered designs.
Multisteps held two innovation patents — Innovation Patent No. AU 2010100641 B4 and Innovation Patent No. AU 2014101488 B4 — as well as registered designs for the containers under the Designs Act 2003 (Cth). Eight types of containers were in dispute.
Specialty Packaging Aust Pty Ltd, the first respondent, admitted supplying the containers in Australia between December 2013 and May 2016. Neil Alexander Ainslie, the second respondent, was Specialty Packaging's director. Rather than conceding liability, the respondents cross-claimed that both the patents and the designs were invalid — a standard defensive play in IP infringement litigation.
Key Legal Issues
Innovation Patent Validity: The Innovative Step
Innovation patents under the former Patents Act 1990 (Cth) regime were designed to provide lower-threshold patent protection for incremental innovations — improvements to existing products that would not meet the higher "inventive step" standard required for a standard patent. In place of an inventive step, innovation patents required an innovative step: the claimed invention must differ from the prior art in a way that makes a substantial contribution to the working of the invention.
This is a lower bar than inventive step but it is not nothing. The question is whether what is claimed actually changes how the product works in a meaningful way — not merely whether it is superficially different from what came before.
Justice Jagot examined the prior art base and the claims of each innovation patent. Her Honour dismissed the cross-claims for invalidity — the innovation patents were valid. The patents claimed genuine improvements to the containers that made a substantial contribution to the working of the invention, assessed against the prior art that existed at the time of filing.
Design Validity: New and Distinctive
The registered designs were separately challenged. Under the Designs Act 2003, a design must be new (not publicly disclosed before the priority date) and distinctive (sufficiently different from the prior art base that the informed user would not consider the designs to be substantially similar in overall impression). The respondents argued that Multisteps' designs failed to clear this bar.
Justice Jagot upheld the validity of the registered designs. The visual features of the Multisteps containers, as captured in the design registrations, were new and distinctive when compared with the prior art for produce containers. The cross-claim for invalidity was dismissed.
Design Infringement: Substantially Similar in Overall Impression
With validity established, the infringement question turned on whether the Specialty Packaging containers embodied designs substantially similar in overall impression to the Multisteps registered designs, assessed through the eyes of the informed user — a person familiar with produce containers and their design history who pays close but not unduly analytical attention to the overall appearance of each product.
Justice Jagot found infringement established against Specialty Packaging. The containers supplied by the first respondent, when assessed through the informed user standard, were substantially similar in overall impression to the registered designs held by Multisteps.
Patent Infringement
In parallel with the design infringement findings, Jagot J found that the first respondent had infringed both of the innovation patents. The containers fell within the scope of the patent claims, and the first respondent's conduct — supplying those containers in Australia — constituted infringement of the exclusive rights granted by the patents.
Director's Personal Liability for Authorising Infringement
Neil Ainslie, as director of Specialty Packaging, was found to have authorised the company's infringing conduct. Under both patent and design law, a person who authorises infringement — even if they did not personally make, sell, or supply the infringing product — can be held personally liable. A director who is the controlling mind of the infringing company, who makes the decisions about what products to stock and supply, and who directs the business's operations, authorises the company's infringing acts.
Jagot J found Ainslie personally liable. This is a consequence that follows individuals regardless of the corporate structure through which the infringing business operates.
Pecuniary Relief Reserved
The question of damages or account of profits — and costs — was reserved for later determination. This is not unusual in complex IP cases where liability is established first and the quantum of loss or gain is assessed separately. A finding on liability, as in this case, is itself enormously significant: it establishes the right to compensation and lays the foundation for the subsequent quantification hearing.
Why Seemingly Mundane Products Attract Strong IP Protection
The commercial logic of protecting produce containers is straightforward. If a competitor can freely copy the specific container design that a business has developed, invested in, and brought to market, the copier captures the benefits of that investment without bearing the cost. The originator is undercut in its own market by an entity that took none of the development risk.
IP rights are the mechanism by which the law prevents this outcome. Multisteps had registered designs and innovation patents, not because its lawyers told it to, but because it had recognised that the appearance and functionality of its containers had commercial value worth protecting.
The respondents' cross-claims — challenging the validity of both the patents and the designs — were the expected defensive response. In every IP infringement case, expect the defendant to challenge the validity of your rights. The answer is to ensure your rights are properly founded: filed with clear representations, supported by a prior art review, and genuinely novel and distinctive at the time of filing.
Strategic Takeaways
Protect products with multiple IP rights simultaneously. Multisteps deployed both innovation patents (for the functional aspects of the containers) and registered designs (for their visual appearance). Together, these rights gave much broader protection than either alone. When one path to liability is challenged, the other provides an alternative.
Innovation patents are abolished — but their lessons remain. Innovation patents were abolished for new applications from 26 August 2021. Existing granted innovation patents retain their force until expiry. The strategic principle they embodied — protecting incremental product improvements at lower cost and with faster examination — is still worth factoring into IP strategy discussions, particularly with the ongoing debate about what should replace them.
Even packaging is protectable. If your business designs packaging, containers, or other product components that have a distinctive visual appearance or functional novelty, those features can and should be assessed for IP protection. The barrier to protecting packaging is lower than many businesses assume.
Directors who authorise infringement face personal liability. Ainslie's personal liability in this case follows a consistent line of Australian authority. If you are a director of a business that copies competitors' designs or patents, you are personally at risk.
Expect validity cross-claims — and prepare for them. Any IP enforcement action will trigger a challenge to the validity of your rights. Conduct prior art searches before registration. Review the scope of your claims. Understand your vulnerability before your opponent identifies it in litigation.
Your Products Are Worth Protecting
The Multisteps case is a reminder that IP protection is not just for technology companies or fashion brands. Any business that designs products — however industrial, however utilitarian — can benefit from registered designs and patent protection if those products have visual or functional distinctiveness worth protecting.
At Stellar IP Law, we help businesses across all industries identify, register, and enforce their intellectual property rights. If you have developed a product you want to protect, the time to register is before your competitors have the opportunity to copy it.
Comments