Bondor Pty Ltd v National Panels Pty Ltd

[1991] FCA 428

Re: BONDOR PTY LIMITED; GEORGE RASPOPIN; OLGA MURATIDIS; BONDOR MANUFACTURING
PTY LIMITED and McCONNELL DOWELL GROUP LIMITED
And: NATIONAL PANELS PTY LIMITED
No. G152 of 1990
FED No. 428
Designs
(1991) AIPC 90=827/102 ALR 65
(1991) 23 IPR 289

COURT

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY
GENERAL DIVISION
Black C.J.(1), Spender(1) and Gummow(1) JJ.

CATCHWORDS

Designs - infringement - registration in respect of a "panel" with no specification of proportions - whether monopoly covered panels of indefinite length - whether design was an attempt to obtain a monopoly in respect of a method or principle of construction.

Designs Act 1906

Designs Amendment Act 1981

Designs Regulations

Patents and Designs Act 1919 (U.K.)

Macrae Knitting Mills Limited v Lowes Limited (1936) 55 CLR 725

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

Re Bayer's Design (1907) 24 RPC 65

Hosokawa Micron International Inc. v Fortune (1990) 26 FCR 393

Firmagroup Australia Pty Ltd v Byrne and Davidson Doors (Vic.) Pty Ltd (1987) 61 ALJR 495

Pugh v Riley Cycle Company (1912) 1 Ch 613

Moody v Tree (1892) 9 RPC 333

Dalgety Australia Operations Ltd v F F Seeley Nominees Pty Ltd (1986) 10 FCR 403

HEARING

BRISBANE

#DATE 30:7:1991

Counsel and solicitors for Mr J.J. Garnsey QC and
the appellants: Mr R.G. Bain instructed by

Messrs Flower and Hart

Counsel and solicitors for Mr G.L. Davies QC and
the respondent: Mr G.A. Thompson instructed

by Messrs Seymour Nulty.

ORDER

The appeal be dismissed with costs.

Note: Settlement and entry of Orders is dealt with by Order 36 of the Federal Court Rules.

JUDGE1

This is an appeal from a decision of a Judge of this Court (Pincus J.) dismissing an action for infringement of design No. 78529 ("the Design"), registered under the provisions of the Designs Act 1906 ("the Act"). His Honour's judgment is reported, (1991) 98 ALR 114, 19 IPR 101. Claims also were made of infringement of copyright in certain drawings, but during the course of the trial the proceeding insofar as it related to those claims was adjourned. Various defences were raised to the allegation of infringement of the Design. They included the assertion that there was no design within the meaning of the Act which had been capable of registration thereunder. It is open in infringement proceedings for the defendant to claim, by way of defence, that the registration was invalid: Macrae Knitting Mills Limited v Lowes Limited (1936) 55 CLR 725. Further, an order was sought on a cross-claim for rectification of the Register of Designs, maintained pursuant to the Act, by the expungement of the entry of registration of the Design. No order was made on that cross-claim.

1. As we have said, this appeal is brought from the dismissal of the claim for infringement of the Design. Pincus J. had before him two applications, the second having been instituted to remove any doubts that might otherwise have arisen as to the timely acquisition by the necessary parties of title to the Design.

2. In addition to resisting the claim of infringement, by asserting a want of registrable subject matter in the Design, the respondent submitted that it had not applied the Design or any fraudulent or obvious imitation of it to any article in respect of which the Design was registered. The primary judge accepted the latter submission holding, in substance, that although in one particular and very important practical respect the allegedly infringing articles had the same or a very similar appearance to the Design, the articles were quite different in overall shape to the Design. Underlying his Honour's judgment, however, was an acceptance of the earlier submission that, properly construed, the Design had been granted in respect of non-registrable subject matter. It was with this issue that the hearing of the appeal was principally concerned.

3. The first appellant manufactures, designs, constructs, installs and supplies laminated building panels. These panels are used in the construction of cold rooms and other buildings. The respondent is a competitor. The Design was registered with effect from 27 July 1979 in respect of a panel. The question of the registrability of the Design thus falls for decision under the Act as it stood before the Designs Amendment Act 1981.

4. Regulation 16 of the Designs Regulations, prior to the 1981 amendments, required the application for registration, in describing the nature of the design, to state whether the design is to be applied to the purpose of the ornamentation, pattern, shape or configuration of the articles to which it is to be applied and the way in, or the means by which it is to be applied. (Section 20 of the Act, as amended in 1981, provides that an application may be accompanied by a statement of monopoly, and that the Registrar may request the applicant to furnish a statement of novelty and a statement of monopoly (if not already supplied) in respect of the Design to which the application relates.) The certificate of registration of the Design, which was issued 21 May 1981, included under the heading "Statement of the Nature of the Design" the following:
   

"A panel as illustrated applicable to the shape and configuration of the panel in any way and by any means. The panel is of indefinite length and is of constant cross-section throughout that length."

1. A copy of the representation of the Design is annexed to these Reasons (figure one). The representation includes breaks in two lines across the thickness and the width at the end of the panel which is furthest from the viewer. His Honour held that those indications were intended to convey that the length of the panel as drawn is indefinite, that being in accordance with the statement of the nature of the Design. His Honour held that the representation itself did not indicate that all three dimensions were indefinite. However, on the appeal, counsel for the appellants put his case on the basis that the design in question was indefinite, not only as to length but also as to the other two dimensions; the submission was that this followed from the description of the article to which the Design was to be applied as a "panel". But counsel for the respondent took up that submission as, in effect, assisting the respondent's case in showing that the Design was bad for want of registrable subject matter.

2. As it stood at the relevant time, the definition of "design" in s. 4 of the Act was as follows:
   

"'Design' means 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."

Copyright in a design meant the exclusive right to apply the design, or to authorise another person to apply the design, to the articles in respect of which it is registered: s. 12.

1. The primary Judge said that if it had been possible to register, as applicable to the purpose of the shape or configuration of an article, a design which was indefinite as to proportions in all three dimensions, the result would have been to give a monopoly of what might be described as a category or family of designs, of quite different appearance, which had in common that they might all be reduced to one by appropriate expansions or shrinkings of relative dimensions.

2. Counsel for the respondent, in supporting that reasoning, submitted that the appellants were on the horns of a dilemma. On the one hand if, in accordance with authority, the monopoly which they might obtain by registration under the Act was for one particular individual and specific appearance (as was said by Kitto J. in Re Wolanski's Registered Design (1953) 88 CLR 278 at 279), then, on the facts of the present case, there was no infringement, and the primary Judge had so found correctly. On the other hand, if the Design was indefinite as to proportions in one or more dimensions, then it was not susceptible of registration under the Act. This was because otherwise the owner of the Design would obtain by the one registration a monopoly in respect of a multiplicity of different shapes and appearances, leading to the conclusion that that for which the monopoly was sought was, in truth, features amounting to a method or principle of construction.

3. In that regard, it may be noted that the primary Judge found that the features of the Design with functional significance were the protuberances on each of the two opposite faces which were intended to connect with each other in such a way as to enable two or more panels to be joined together. His Honour also found, and there was abundant evidence to support the conclusion, that what the appellants had been anxious to protect, as a matter of commercial reality, was the design of the joining integers or parts. But the registration was not confined to these joining parts.

4. After the amendments effected by the Designs Amendment Act 1981, the definition of "design" in sub-s. 4 (1) of the Act reads:
   

"'design' means 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

. . .".

The specific exclusion of methods or principles of construction was first included in the British legislation in the Patents and Designs Act 1919 (U.K.). The earlier British legislation treated the definition of "design" in terms closer to those of the Australian legislation in its original form, that is to say the form which the Act still took in 1979. However, the specific exclusion of methods or principles of construction reflected earlier judicial decisions upon the definition in its primary and shorter form. The matter is explained as follows by Messrs Morris and Quest in their work "Design: The Modern Law and Practice", 1987, p 25:

"The 'method or principle of construction' exclusion is now largely redundant. At one time there was much doubt as to the scope of a design registration and it was possible for a registration to be accompanied by a statement having more in common with a patent claim than the kind of statement of novelty with which we are now familiar. In Moody v Tree (1892) 9 RPC 333 and Re Bayer's Design (1907) 24 RPC 65 attempts to monopolise a method of construction by use of a broad statement were held not to be valid, and in Pugh v Riley Cycle Co Ltd (1912) 1 Ch 613, 29 RPC 196 a registration not accompanied by a statement of novelty was interpreted by the court as being restricted to the design shown in the representations. A specific statement of novelty is now a requirement, and the courts routinely interpret registrations narrowly. Accordingly, it is usual practice for a design to be considered in the restricted sense as being the appearance of a feature of an article rather than more broadly as a method or principle of construction exemplified by the feature in question, and, accordingly, in most cases the exclusion does no more than provide a statutory basis for this practice."

1. In Re Bayer's Design, supra, the application for registration had included the following passage:
   

"'Statement of nature of design, shape, or configuration of corset. The novelty consists in a corset having the gores or gussets cut horizontally and from the front of the busk towards the back of the corset, as shown in the representations.'"

The accompanying drawing showed a straight-fronted corset in which the seams were not exactly horizontal, but the gussets tapered towards the front. In his judgment, Fletcher Moulton L.J. said, supra at 76-77:

"The distinction between a Design and an invention, the subject of Letters Patent, is very wide. If you want to realise how wide it is, it is well to keep in mind that in all these cases the basis of the legislation is that persons who do anything original either in the way of designing or making an invention are allowed a monopoly for a time, but only on terms that they so publish to the public their original work that at the end of the time the public may have the full benefit of it. That applies as well to Designs as it does to Letters Patent. In the case of Letters Patent you have precisely to define what it is you claim, and you have to give to the public full instructions as to how to use it in order that when it becomes publici juris they may be able to reap the benefit of it. You do not find any such obligations with regard to Designs. Why is that? It is because Designs apply to nothing but that which the eye can tell entirely. Nothing in my opinion is a good Design but that of which full knowledge is given when you have once shown to the eye what your Design is. It may be shape or configuration; that is given by a specimen or by a proper drawing, and the eye can see it, and the eye can recognise whether it has been imitated. It may be by a pattern, to which the same applies. It may be by an ornament, to which the same applies. But in my opinion nothing beyond that can rightly be called a Design within the meaning of this Statute."

1. That decision and the other early English cases to which we have referred have been relied upon frequently in construing the Australian legislation of 1906; see, for a recent example in this Court, the judgments in Hosokawa Micron International Inc. v Fortune (1990) 26 FCR 393. Moreover, in Firmagroup Australia Pty Ltd v Byrne and Davidson Doors (Vic.) Pty Ltd (1987) 61 ALJR 495 at 497, the High Court, in a joint judgment, set out, with approval, the following passage from the judgment of Parker J. in Pugh v Riley Cycle Company, supra at 619-620:
   

"The difficulty arises where the conception thus arrived at is not a definite conception as to shape or configuration, but a conception only as to some general characteristic of shape or configuration necessitated by the mode or principle of construction, the definite shape or configuration being, consistently with such mode or principle of construction, capable of variation within wide limits. To allow the registration of a conception of such general characteristic of shape or configuration might well be equivalent to allowing the registration of a conception relating to the mode or principle of construction."

After that passage, Parker J. went on to refer to the design in Moody v Tree, supra as having been for the pattern of a basket consisting in the osiers being worked in singly and all the butt ends being outwards, with the result that there could be made by this method of construction any number of baskets differing in pattern, except that all would have a certain common characteristic due to the method of construction and visible to the eye; the registration was bad as being an attempt to register not a conception as to shape, configuration, pattern or ornament, but a conception as to a method of construction.

1. In our view, the principles expounded in these decisions are fatal to the appellants' case. Their counsel submitted that in any of the possible permutations of shape (or as he preferred sizes) within the ambit of the monopoly conferred by the design registration, there would be a panel with common features. These were said to be:
   

(a) the configuration of the male slip joint at one end;

(b) the configuration of the female slip joint at the other end;

(c) being joints formed by the skins of the panel;

(d) and being with the skins symmetrically distanced about a vertical axis through the centre of the thickness of the panel;

(e) with a core (the shaded portion in the Design drawing, figure one) situated from the bottom of the female joint rising to the top of the male joint.

It was then submitted that because no prior art panel showed a panel with such a combination of features, the scope of the monopoly should not be construed narrowly. It was sufficient to provide registrable subject matter under the Act that in all its applications that to which the Design was applied answered the description of a "panel".

1. However, in our opinion, in asserting a monopoly under the Act in respect of a panel of indefinite length but with the particular slip joint configurations at each end, the applicant was seeking to obtain more than the Act permitted, namely protection for one particular individual and specific appearance. It is not a question of the one design being applicable (as undoubtedly may be the case) to articles of the same appearance and shape but of different sizes. Nor is it a question of imposing a requirement of such precision in definition as might be found in, say, a working drawing. Various examples of proper user of designs in this way were discussed in argument.

2. But the retreat by the appellants to rely upon the common characteristics of panels with different appearances, given the indefinite length of the panels encompassed by the registration, served to emphasise the applicability against their case of the reasoning in the authorities to which we have referred. It would have been no answer for the unsuccessful party in Re Bayer's Design, supra, to say that in all its applications, the design had to be in respect of an article being a corset, constructed with gores or gussets cut in a particular way, or in Moody v Tree, supra, that the design would be applied only in relation to baskets worked in a particular fashion. It was that range of the purported monopoly which led the Courts to speak of that for which registration was sought as something other than a design in the statutory sense. The designs were so defined as necessarily to permit differences of shape and this spelled invalidity, as Beaumont J. pointed out in Dalgety Australia Operations Ltd v F F Seeley Nominees Pty Ltd (1986) 10 FCR 403 at 414-415.

3. That adverse conclusion to the appellants is only fortified if one accepts their submission that not only length but the other dimensions are indefinite.

4. The appeal should be dismissed, with costs.