Acton Engineering Pty Ltd v Campbell

Re: VINIDEX TUBEMAKERS PTY LIMITED
And: GRIFFEN BROOK PTY LIMITED
No. G99 of 1991
FED No. 469
Intellectual Property
(1991) AIPC 90-839

COURT

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
Foster J.(1)

CATCHWORDS

Intellectual Property - Designs - infringement of monopoly - obvious imitation - the process of visual comparison - notion of "imperfect recollection".

Designs Act 1906 (Cth) s 4, s 18, s 30.

Firmagroup Australia Pty Ltd v Byrne and Davidson Doors (Vic) Pty Ltd (1986) 11 FCR 415

Re Wolanski's Registered Design (1953) 88 CLR 278

Dunlop Rubber Co Limited v Golf Ball Development Limited (1931) 48 RPC 268

Valor Heating Co Limited v Main Gas Appliances Limited (1973) RPC 871

HEARING

SYDNEY

#DATE 7:8:1991

Counsel for the Applicant : J.L.B. Allsop

Instructed by : Michell Sillar McPhee Meyer

Counsel for the Respondent : J.V. Nicholas

Instructed by : Mallesons Stephen Jaques

ORDER

The application be dismissed.

The applicant pay the respondent's costs.

NOTE: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

JUDGE1

I am indebted to counsel for the comprehensive submissions that have been made in this case. I have been taken to all relevant authorities, both yesterday and today. I have had the opportunity of considering the facts of the matter in relation to the authorities and the statutory provisions overnight. In the course of counsel's submissions I have come to a clear view of what my decision should be in this matter. Accordingly, I propose to give that decision and the reasons for it forthwith.

The applicant company, Vinidex Tubemakers Pty Limited, is a manufacturer and seller of plastic fittings for use in the building industry. The respondent company is in a similar line of business. The applicant is the owner of Registered Design Number 109116 under the Designs Act 1906 (Cth) (the "Act"), which is the design in suit in this case. By its Statement of Claim, the applicant alleges that the respondent, since the date of the applicant's obtaining of registration of that design, namely 17 November 1989, has been guilty of infringing the monopoly given to the applicant by that registration.
The design in question is before the court in Exhibit A, which exhibit consists of the Certificate of Registration of the design, to which I shall make reference later, and accompanying diagrams which are the representations of the design within the meaning of the Act. The infringing article relied upon by the applicant is Exhibit B, which is an example of the article produced by the respondent.
The Certificate of Registration of the applicant's design indicates that the design is registered in respect of an article referred to as a "toilet pan connector". The statement of monopoly, as required by the Act, claims monopoly in "the features of shape and/or configuration of a toilet pan connector as illustrated in the accompanying representations". No novelty is claimed in the "statement of novelty" required by the legislation.
The toilet pan connector in respect of which the monopoly of design is claimed was clearly enough, on the evidence, developed by an expert employee of the applicant to answer a particular need of the building industry, particularly of plumbers engaged in that industry. It is clear that exit pipes for plumbing from toilet facilities in bathrooms are commonly laid before a concrete floor is poured with the result that the exit pipe is in a fixed position at the time when the plumber comes to make the connection for the toilet pan. The evidence indicates that problems can occur in the connecting of the toilet pan to this exit pipe because of the need to locate the toilet in a particular position in the bathroom under construction. It is clear that this has led in the past to difficulties in manoeuvring the hardware into a position appropriate for the connection to be made. The particular connector which was developed by the applicant had features which made this task considerably easier. The significant feature was the eccentric structure of the connector article. This eccentricity was in a portion of the article referred to as the spigot which was the portion which connected with the exit pipe which was in situ. The eccentricity of the location of the spigot in the connector article enabled greater manoeuvrability to take place.
No novelty is claimed for the eccentric location of the spigot component of the connector article in the application for registration of the design. Nor was any claim made for a patent. It is clear on the evidence that relevant novelty was lacking in relation to the idea for eccentric location of the spigot in the article. Indeed the relevant portion of Australian Standard 145, which is Exhibit 2 in these proceedings, contemplates the production of connectors having or embodying this concept of eccentric location of the spigot. It is apparent, however, that although it was contemplated that such articles might well be used in the industry and were in fact used overseas, no prior registration of a design for such an article had taken place in Australia prior to the registration of the design in suit.
It is convenient at this stage to make brief reference to provisions of the Designs Act 1906 (Cth), as amended, which have bearing upon the matter that falls for decision in this case. Section 4 of that Act contains a number of definitions. "Design" is defined as meaning:

"features of shape, configuration, pattern or ornamentation applicable to an article, being features that, in the finished article, can be judged by the eye, but does not include a method or principle of construction."

"Article" is defined as meaning:

"any article of manufacture..."

"Monopoly" is defined "in relation to a registered design" as meaning:

"the exclusive right to apply the design to an article in respect of which the design is so registerd."

Consequently, the monopoly asserted by the applicant, pursuant to its obtaining registration of the design in suit, is the exclusive right to apply that design to the article in respect of which it was registered, namely, a toilet pan connector.

The validity of the registration of the applicant's design is not in question in these proceedings. The only matter that falls for the determination of the Court is whether or not the respondent, by its production and selling, or offering for sale, of the toilet pan connector, Exhibit B, has relatively infringed the applicant's monopoly. It is necessary therefore to have regard to the provisions of the Act dealing with the infringement of monopoly in designs. These provisions are found in Part V where the relevant provision is s 30. That section provides so far as relevant as follows:
"30(1) A person shall be deemed to infringe the

monopoly in a registered design if he, without the licence or authority of the owner of the design -

(a) applies the design or any fraudulent or obvious imitation of it to any article in respect of which the design is registered; ...

(c) sells, or offers or keeps for sale or hires, or offers or keeps for hire, any article -

(i) to which the design or any fraudulent or obvious imitation of it has been applied in infringement of the monopoly in the design; ..."

It is apparent from a consideration of this section that it contemplates infringement in a number of ways. These ways have been referred to in decided cases to which it is unnecessary for me to make any detailed reference in these reasons. I merely note that this is not a case where it is claimed that the respondent has infringed the monopoly by a direct application of the registered design to its article, nor is it claimed that it has applied a fraudulent imitation of the design to its article. The case is limited simply to an allegation that the respondent has infringed the monopoly of the applicant by applying an obvious imitation of the registered design in its production of Exhibit B.
I have been taken to a number of authorities which have dealt with similar problems to that which now comes before the Court for decision. In a large number of those authorities, the provisions of the Act to which I have made reference have been considered and their meaning expounded. Such authorities also deal with considerations that should be present to the mind of the Court when approaching the question of whether an infringement under s 30 has or has not been established. If I might say so, with great respect, there is a very useful exposition of relevant principle to be found in the judgment of Lockhart J in Firmagroup Australia Pty Ltd v Byrne and Davidson Doors (Vic) Pty Ltd (1986) 11 FCR 415 at 423. His Honour there says:

"An infringement of copyright in a registered design occurs when a person, without the licence or authority of the owner of the copyright, `applies the design or any fraudulent or obvious imitation of it to any article in respect of which the design is registered': s 3(1)(a) of the Act. The High Court in Malleys Ltd v J.D. Tomlin Pty Ltd (1961) 35 ALJR 352 described the three categories of infringement in the following terms (at 354):

`Turning to s 30 it is apparent that there is infringement in any one of three cases - that is, where the design which has been applied is:

(i) the registered design

(ii) an obvious imitation of the registered design (ie, not the same but a copy apparent to the eye notwithstanding slight differences) and

(iii) a fraudulent imitation (ie, a copy with differences which are both apparent and not so slight as to be insubstantial but which have been made merely to disguise the copying).'"

His Honour then went on:

"`Design' is defined as meaning `an industrial design applicable, in any way or by any means, to the purpose of the ornamentation, or pattern, or shape, or configuration, of an article, or to any two or more of those purposes'. A design to be registrable under the Act must be some conception, suggestion or idea of a pattern, shape, configuration or ornament which must be capable of being applied to an article in such a way that the article will show to the eye the particular pattern, shape, configuration or ornament, the conception, suggestion or idea of which constitutes the design. The registered proprietor of a design obtains by its registration a monopoly for a particular specific and individual appearance: Hecla Foundry Company v Walker Hunt and Company (1889) 14 App Cas 550; Dover, Ltd v Nurnberger Celluloidwaren Fabrik Gebruder Wolff (1910) 2 Ch 25; Simmons v Mathieson and Co Ltd (1911) 28 RPC 113; Pugh v Riley Cycle Company Ltd (1912) 29 RPC 196." "A conception or suggestion of a mode or principle of construction, though in some sense a design, is not registrable under the Act. The Act protects shape not function. If the shape exists solely to make the article work then it is not within the concept of a protected design. The definition deals entirely with the pattern, shape, configuration or ornament: AMP Incorporated v Utilux Pty Ltd (1972) RPC 103; Kevi A/S v Suspa-Verein UK Ltd (1982) RPC 173." "The design is the mental conception conveyed to the mind by the eye; it is the mental picture of the shape, configuration, pattern or ornament of the article to which the design has been applied: Pugh v Riley Cycle Company (supra)." "It is essential to distinguish a design from a mere shape: Malleys (supra) at 352. For a design to achieve protection there must be a special or distinctive appearance, something in the design which captures the eye and appeals to the eye. For a design to appeal to the eye it must be noticeable and have some perceptible appearance of an individual character: AMP Incorporated v Utilux Pty Ltd (supra)."

It is also appropriate to refer on the question of the concept of design to what was said by Kitto J in Re Wolanski's Registered Design (1953) 88 CLR 278 at 279 where his Honour quoted with approval what was said in Russell-Clarke, Copyright in Industrial Design, 1st edition, 1930 at page 17, namely that what the proprietor of a design obtains by registration is a monopoly for "one particular individual and specific appearance".
It is apparent that in determining the scope of a registered design a Court can have regard to what has been described as the "prior art" at the priority date of the design. This matter is referred to by Lockhart J in Firmagroup at p 425 where his Honour says:

"The scope of a registered design must be judged against the background of the prior art at the priority date. If the differences between the registered design and the prior art are only small then equally small differences between the registered design and the alleged infringing design will tend to lead to a finding of no infringement. On the other hand the greater the advance over the prior art in the registered design then, in general, the greater the scope of the protection afforded to the registered design: Kevi A/S v Suspa-Verein UK Ltd (supra); Russell-Clarke, Designs (5th ed, 1974) pp 85-87; Blanco White, Patents and Designs (4th ed), pp 326-327; Ricketson, Law of Industrial Property, p 493, par 20.9."

The claim made in this litigation is that the respondent's design, as embodied in the respondent's article, is an obvious imitation of the applicant's registered design. Much has been written in decided cases on the topic of what is or is not an obvious imitation in the meaning of this legislation. I obtain guidance once again from what his Honour Mr Justice Lockhart says on this matter in Firmagroup at p 427, where his Honour said:

"Whether imitations are obvious or fraudulent in one sense raises separate questions, but they overlap. An obvious imitation is one which is not the same as the registered design but is `a copy apparent to the eye notwithstanding slight differences': Malley's case (supra) at 354." "The matter must be looked at as one of substance and by examining the essential features of the design: Benchairs Ltd v Chair Centre Ltd (1974) RPC 429; see also Wallpaper Manufacturers Ltd v Derby Paper Staining Company

(1925) 42 RPC 443; Oliver and Co v Thornley and Co (1896) 13 RPC 490." "A closer correspondence between the registered design and the accused design is necessary to satisfy the test of obvious imitation than fraudulent imitation."

His Honour later says:

"Visual comparison will establish whether the offending design is the registered design or an obvious imitation of it but something more is required to establish whether there has been a fraudulent imitation.

A design may be an obvious imitation within the meaning of s 30 notwithstanding that the person who puts the obvious imitation on the market may not know of a registered design."

His Honour goes on to cite with approval from the judgment of Mr Justice Farwell, in Dunlop Rubber Co Limited v Golf Ball Development Limited (1931) 48 RPC 268 at 279 where it was said:

"Now with regard to the two words `fraudulent' or `obvious', in my judgment `obvious' means something which, as soon as you look at it, strikes one at once as being so like the original designer, the registered design, as to be almost unmistakable. I think an obvious imitation is something which is very close to the original design, the resemblance to the original design being immediately apparent to the eye looking at the two."

That particular passage is cited in other authorities with approval and I obtain considerable guidance from it in my approach to the decision in this case. I obtain guidance also from a passage in Ricketson, The Law of Intellectual Property (1984) at page 491 where the learned author, when considering the approach established by the authorities as appropriate for Courts to take in determining whether obvious imitation has occurred, says:

"For a start, it is clear that, as with the question of what constitutes a design, this is a matter to be judged by the eye alone, and, furthermore by the eye of the court, although this may be an eye which has been instructed by expert evidence. Thus, the two designs must be placed side by side and subjected to a process of close comparison as to their points of identity: `It is necessary to look at the two designs and to judge by the eye between them as to whether the one is an imitation of the other or not.'"

The learned author cites authority for those propositions to which I need not make reference. The learned author continues:

"However, as in trademark law, it appears that there is room here for the operation of a notion of `imperfect recollection', namely that infringement is not only to be considered upon the basis of a side by side comparison but also upon `the basis of having had a look at the registered design, then having gone away and come back and perhaps been put in the position of deciding whether some other article is the one you originally saw'."

For this latter statement, the learned author relies upon a passage from the judgment of Whitford J in Valor Heating Co Limited v Main Gas Appliances Limited, (1973) RPC 871 at 878.

I do not find it necessary to refer to any of the other authorities to which I was taken with considerable care and in considerable detail by counsel in their helpful submissions.
I turn, then, to the question of fact for the Court which is whether or not Exhibit B in its design constitutes an infringement of the applicant's Registered Design Number 109116. For the purpose of reaching decision, I make a comparison, in accordance with the principles to which I have just made reference, of the Registered Design, in its representations in Exhibit A, with what I see for myself in Exhibit B. I have received assistance in the task from expert evidence given by Mr Terry. I bear in mind that the case is, of course, not decided by an expert witness or witnesses. It is decided by the Court. In accordance with accepted doctrine, I therefore take Mr Terry's evidence as an aid to my decision, making such use of it as I consider appropriate.

It is clear that one does not approach this task of comparison in any over-technical way. The authorities I have cited and others which I have not cited make this quite clear. The question is whether the image conveyed to the mind of the decider by his eyes, when he looks at the Registered Design representations and the alleged infringing article, produces to him the conclusion that the infringing article is substantially the same in appearance as the Registered Design. Obviously such matters are not intended to be decided, as it were, by a fleeting glance bestowed upon the plans or diagrams or the objects in question. Clearly a balanced consideration is required, one that focuses upon the total impression created by the respective material, but does not ignore matters of detail, particularly where those matters appear readily on inspection.
I have taken into account the question of the prior art. It does not, I find, provide me with a great deal of assistance. The prior art, except for the reference in the Australian Standard, does not embody toilet pan connector apparatus with the feature of the eccentric location of the spigot, which is a feature of both the design in suit and the alleged infringing article. In a sense, the design in suit and the alleged infringing articles are both examples of a genus of connector apparatus which has as a distinguishing feature the eccentric location of the spigot. Those designs which have been put before the Court as examples of prior art simply do not have that feature at all.
In a sense, the eccentric location is a basic element of the functional application of each of the connectors. However, the Act, particularly s 18, makes it clear that one does not simply disregard the essential functional feature in considering whether there has been obvious imitation of the applicant's design. It is an element in the overall consideration.
I have also adopted, for what benefit one can get from it in a case such as this, the procedure involved in the concept of imperfect recollection.
I turn then to the design in suit which is expounded in the representations, part of Exhibit A. It has been pointed out accurately that the diagrams which embody these representations do not purport to be to scale. Clearly however, they do purport to provide a sense of the relative proportions of various components, the one to the other, which make up the entire article which embodies the design.
Terminology has been adopted in the evidence in the case to which I shall endeavour to adhere in the balance of these reasons. The first page of diagrams in Exhibit A contains what is described as a Plan View of the design in question. Moving from the right to the left, one has firstly a portion referred to in evidence as the "spigot"; next, as an identifiable component, a portion referred to as the "skirt"; then, above the skirt and moving to the left of the Plan View, a portion which has been referred to as the "socket". I should add that the socket has been also referred to as a the "upper body" and as the "collar".
In the design in suit, the socket is separated very clearly into two portions, which are separated by a step or ridge, approximately halfway along it. If one looks to what is described as the Perspective View, on the third page of the diagrams, one can see the rim or ridge dividing the socket clearly depicted on the inside surface, as it is clearly depicted on the outside surface in the Plan View. This socket is repeated in Exhibit B, the alleged infringing article. This component of the accused article does not have as an external or internal feature the stepping or ridging to which I had just made reference. Its internal and external surfaces are both vertical and smooth.
The portion of the design in suit which I have referred to as the "skirt" is clearly enough to be found in the accused article. It is to be found immediately below the socket in the accused article. This component is quite obviously appropriately described as a skirt because behind it there is a noticeably uniform indentation or recess which is concentric with the skirt itself. The evidence makes it clear enough that this recess is a necessary feature for the use of the article as a connector as it is in this recess that sealing takes place between the connector and the exit pipe which is in situ in the concrete floor. I find it difficult to determine from the drawings in Exhibit A whether there is a clear calling for a skirt of the type that one sees clearly in Exhibit B. When Mr Terry was cross-examined, he expressed some agreement with the proposition that what is described as the Rear View on the second page of the diagram in Exhibit A, when examined, gave some indication of the existence of a skirt in the Registered Design. This was to be derived from the circles which were concentric to what are clearly the circles depicting the spigot.
The question must be one of impression. Even assisted by Mr Terry's evidence, I am unable to read this plan as indicating with any certainty that a skirt, having a clearly defined recess of some depth behind it, is called for. There is certainly nothing in the design plans themselves, in my view, which indicates with clarity the existence of what is a significant feature of Exhibit B.
The aspect of the design plans which is referred to as the Perspective View raises to my mind a very significant matter in this case. This view clearly depicts to my eye and mind a significant design feature of the design in suit. I have already made reference to the ridging which divides that part of the article which has been referred to as the socket in the internal view given by the Perspective View. The further feature to which I make reference is to be found farther into the diagram as it is there depicted. This diagram clearly calls for the provision of a surface between the wall of the socket and the wall of the spigot. The spigot is depicted as a cylinder. It is also a cylinder in Exhibit B. In the Perspective View diagram there is quite clearly shown a further wall between the wall of the socket and the wall of the spigot cylinder which is roughly at an angle of 45 degrees to those other two walls. It is, in my view, very noticeable as a feature of the design. This view was shared by Mr Terry who described the surface in technical terms as being "frusto-conical". Whatever be the technical term to be applied to it, it remains in my view a very distinctive feature. It is totally lacking in Exhibit B where there is an abrupt descent from the floor of the socket to the wall of the spigot cylinder, that descent being entirely vertical at an angle of 90 degrees.
The Perspective View also raises another matter of suggested significant difference between the design in suit and the accused article. The accused article has been described as having a squat appearance in comparison with a more elongated appearance of the article depicted in the design representations. Whilst I bear in mind the submissions on behalf of the applicant that the design plans do not purport to be to scale, I am nevertheless of the view that I properly must have regard to the overall sense of proportion which those plans convey to my eye. The Perspective View and, indeed, all other views which give an overall conspectus of the outer and inner appearance of the article in the design plans, convey to me a very distinct impression that the design calls for an article that is more elongated than the alleged infringing article actually is.
I think it correct to say that there is a distinct difference in the broad, immediate impression given to the eye by the two articles, where Exhibit B is squat and the Exhibit A diagrams indicate a longer and deeper connector.
Mr Terry referred in his evidence to other features of difference. He spoke of their being a more rounded appearance overall at the intersecting edges of the various components in the design representations as against a starker, more abrupt flowing of one component into the other in Exhibit B. I think there is a difference in what one might call the transitional edges of the components. For my part, I do not feel that that is a particularly striking, differentiating feature.
I have the same view of the differences that exist in the appearance of the lip at the top of each of the articles.
I have necessarily recited in some detail differences that appear to me from visual inspection and which have been referred to in some detail in the evidence. The question still remains, of course, as to whether on examination of these two items, that is the design drawings and the alleged infringing article, in accordance with the principles to which I have made reference, I, as the decision maker, feel that there is or is not an obvious imitation in Exhibit B of the design in Exhibit A. I bear in mind what was said particularly by Farwell J as to whether one would mistake one for the other.
I have clearly come to the view that no obvious imitation has been demonstrated on the evidence with the result that the infringements relied upon have not been made out. That finding will necessarily result in the dismissal of the application. In those circumstances, then, I dismiss the applicant's application and order the applicant to pay the respondent's costs.

[1991] FCA 469

07 AUGUST 1991