Acton Engineering Pty Ltd v Campbell - [1991] FCA 469

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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Acton Engineering Pty Ltd v Campbell

Details

AGLC: Vinidex Tubemakers Pty Ltd v Griffen Brook Pty Ltd [1991] FCA 469 ((1991) AIPC 90-839)
Case: [1991] FCA 469
Decision Date: 07 AUGUST 1991

CaseChat Overview and Summary

Acton Engineering Pty Ltd sought to restrain the Campbells from infringing its design monopoly. The applicants claimed that the respondents had manufactured and sold equipment that closely resembled the design protected by a registered design held by the applicants. The respondents argued that their product was a unique creation and not an obvious imitation of the applicants’ design. The case was heard by the Federal Court of Australia.

The central legal issue before the court was whether the respondents' product constituted an obvious imitation of the applicants' design, thereby infringing the monopoly granted by the design registration. The court had to consider whether the visual comparison of the two products revealed that the respondents' product was an obvious imitation, and if the notion of "imperfect recollection" could be applied in this context. Additionally, the court needed to determine whether the respondents' product was substantially similar to the design held by the applicants, which would indicate an infringement of the design monopoly.

The court held that upon visual comparison, the respondents' product did not constitute an obvious imitation of the applicants' design. The notion of "imperfect recollection" was not applicable in this instance, as the comparison showed that the differences between the two products were more significant than the similarities. The court further found that the respondents' product was not substantially similar to the applicants' design, and therefore, no infringement of the design monopoly had occurred. Consequently, the application was dismissed, and the applicants were ordered to pay the respondents' costs.

The court's final orders were that the application be dismissed and that the applicants pay the respondents' costs. The settlement and entry of orders were governed by Order 36 of the Federal Court Rules.

Orders

Orders of the court

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.

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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