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.

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…

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.

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Details

Case: [1991] FCA 428
Decision Date: 30 JULY 1991

CaseChat Overview and Summary

Bondor Pty Ltd sued National Panels Pty Ltd for infringing its registered design for a panel. The dispute reached the Federal Court of Australia, which was tasked with determining whether the design registration granted a monopoly over panels of indefinite length and whether the design was an attempt to obtain a monopoly over a method or principle of construction. The central issue was whether the design registration covered a panel without specific proportions and if it extended to panels of any length. Additionally, the court examined whether the design was an attempt to monopolise a method or principle of construction rather than a specific design.

The court held that the design registration did not cover panels of indefinite length. It found that the design specified particular proportions and did not extend to panels of any length. Furthermore, the court determined that the design was not an attempt to obtain a monopoly in respect of a method or principle of construction. The design was specific to a particular type of panel with defined dimensions, and the registration was valid within those limits. The appeal was dismissed, and costs were awarded to the respondent.

The court's decision clarified the scope of design registrations and reinforced the principle that design protection is limited to specific designs and does not extend to methods or principles of construction. The court's ruling provided clarity for businesses and designers regarding the boundaries of design protection and the limitations of design monopolies. The appeal was dismissed, and costs were awarded to National Panels Pty Ltd.

Orders

Orders of the court

The appeal be dismissed with costs.

Note: Settlement and entry of Orders is dealt with by 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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