Conrol Pty Ltd v Meco McCallum Pty Ltd
[1997] FCA 1407
•9 DECEMBER 1997
FEDERAL COURT OF AUSTRALIA
DESIGNS - registered design of mining conveyor module - infringement proceeding - cross-claim for expungement of registration of the design - appeal from trial Judge’s holding that registration of design prohibited because not new or original, and order for rectification of Register of Designs - whether design novel or original - whether substantial difference in appearance from prior art - design to be looked at as a whole - whether common trade variant - whether design to be compared with one particular earlier design, or with “‘fundamental form’ of conveyor structures well-known in the industry” - whether trial Judge impermissibly “made a mosaic” of items of prior art.
Designs Act 1906 (Cth), ss 4(1), 17(1)(a), 18(1), 30(1)
Macrae Knitting Mills Ltd v Lowes Ltd (1936) 55 CRL 725 - applied
British Franco Electric Pty Ltd v Dowling Plastics Pty Ltd [1981] 1 NSWLR 448 - followed
Interlego AG v CronerTrading Pty Ltd (1992) 39 FCR 348 (FC) - distinguished
Firmagroup Australia Pty Ltd v Byrne & Davidson Doors (Vic) Pty Ltd (1987) 180 CLR 483 - distinguished
CONROL PTY LIMITED v MECO McCALLUM PTY LIMITED & ANOR
NG 626 of 1996
BURCHETT, LINDGREN & LEHANE JJ
SYDNEY
9 DECEMBER 1997
| IN THE FEDERAL COURT OF AUSTRALIA | |
| NEW SOUTH WALES DISTRICT REGISTRY | NG 626 of 1996 |
ON APPEAL FROM A JUDGE OF THE FEDERAL COURT OF AUSTRALIA
BETWEEN: | CONROL PTY LIMITED (ACN 003 622 795) | |
AND: | MECO McCALLUM PTY LIMITED (ACN 001 408 368) STRATFORD HALL PTY LIMITED (ACN 000 227 190) | |
JUDGES: | BURCHETT, LINDGREN, LEHANE JJ | |
DATE OF ORDER: | 9 DECEMBER 1997 | |
WHERE MADE: | SYDNEY | |
THE COURT ORDERS THAT:
The appeal be dismissed.
The appellant pay the respondents’ costs.
| IN THE FEDERAL COURT OF AUSTRALIA | |
| NEW SOUTH WALES DISTRICT REGISTRY | NG 626 of 1996 |
ON APPEAL FROM A JUDGE OF THE FEDERAL COURT OF AUSTRALIA
BETWEEN: | CONROL PTY LIMITED (ACN 003 622 795) |
AND: | MECO McCALLUM PTY LIMITED (ACN 001 408 368) STRATFORD HALL PTY LIMITED (ACN 000 227 190) |
JUDGES: | BURCHETT, LINDGREN, LEHANE JJ |
DATE: | 9 DECEMBER 1997 |
PLACE: | SYDNEY |
REASONS FOR JUDGMENT
THE COURT:
INTRODUCTION
The appellant, Conrol Pty Limited (“Conrol”) is registered as the owner of design number 111016 under the Designs Act 1906 (Cth) (“the Act”) in respect of a “conveyor module” used for conveying bulk materials from mineral extraction sites (in this case coal mines) to processing or treatment plants and other destinations, sometimes over long distances (“the Design”).
The first respondent, Meco McCallum Pty Limited (“Meco”) sold to Kembla Coal & Coke Pty Limited (“KCC”), in July 1993 and subsequently, quantities of conveyor modules and of belt conveyor transoms made by Meco itself, or made for Meco by the second respondent, Stratford Hall Pty Limited (“Stratford”). In the proceeding below, Conrol pleaded that Meco had infringed Conrol’s monopoly in the Design by applying it or an obvious or fraudulent imitation of it to articles in respect of which it had been registered, and by offering for sale and selling such articles to KCC (see s 30(1) (a) and (c) (i), respectively of the Act). In the case of Stratford, the pleading was similar except that instead of the offering for sale and selling to KCC, there were substituted the manufacture and selling to Meco (cf s 30(1) (c) (i) of the Act).
Meco and Stratford cross-claimed for an order revoking the Design. Section 32 of the Act provides that a defendant in an action or proceeding for infringement of the monopoly in a registered design may apply, by way of counter-claim, for the rectification of the Register by the expunging of the entry of the registration of the design.
His Honour held that s 17 of the Act (see below) had prohibited registration of the Design. Although it was therefore not necessary for him to consider the question of infringement, he did so, and found that if the Design had been validly registered, Conrol’s monopoly in it would have been infringed by Meco and Stratford on the basis that the design of the articles manufactured by Stratford and sold by it to Meco and on-sold by Meco to KCC was an “obvious”, though not “fraudulent” imitation of the Design.
Conrol appeals against the learned trial Judge’s dismissal of its application and his orders that the Design was invalid and that the Register of Designs be rectified by the expunging of the entry of the registration of the Design (see (1996) 34 IPR 517). On the appeal, neither Meco nor Stratford sought to challenge, such as by filing a notice of contention, his Honour’s “contingent” finding of infringement.
THE DESIGN
The article in respect of which the Design was registered is described in the certificate of registration as “conveyor module”. The statement of monopoly is:
“Monopoly is claimed in the shape and configuration of a conveyor module with inclinable transoms as illustrated in the accompanying photographs.”
The following is the photograph (there is in fact only one) referred to in the statement of monopoly:
There is no statement of novelty. Accordingly, the entirety of the Design must be considered.
BACKGROUND FACTS
The following account of the background facts is based on the Reasons for Judgment of the learned trial Judge.
On or about 16 June 1993, KCC invited Conrol and Meco to submit tenders for the supply of conveyors for use in KCC’s Westcliff and Tahmoor collieries. Meco understood that KCC would require a conveyor identical to that already in use at its Tahmoor colliery, in accordance with the usual desire of collieries to ensure interchangeability of structures. Mr J M McCallum, the managing director of Meco, was aware that the conveyor structure installed at KCC’s Tahmoor colliery had been manufactured and supplied by Conrol, but not that Conrol was the proprietor of any relevant patent or design registration or other monopoly right in respect of it.
Conrol and Meco submitted their respective tenders. Meco’s tender was accepted.
Subsequently, on or about, but not before, 12 August, Mr McCallum came to understand that Conrol was the proprietor of a patent or owner of a registered design in respect of the conveyor structure in use at KCC’s Tahmoor colliery.
Mr McCallum instructed A & A Industries (of which Stratford is the proprietor) to manufacture the structures to be supplied by Meco to KCC pursuant to Meco’s accepted tender. On or about 26 August, Stratford manufactured the conveyor module for Meco which was said to be the infringing module. A photograph of the module was taken at Stratford’s factory on that date.
On 30 August, Conrol’s patent attorneys wrote to Meco’s patent attorneys threatening proceedings for infringement of the Design unless satisfactory explanations and undertakings were received.
On 3 September, Stratford delivered to Meco the first allegedly infringing module. Stratford continued to manufacture further similar modules for Meco.
After demand by or on behalf of Conrol for an undertaking, Meco and Stratford, on 7 September, through their patent attorneys, gave, without admissions, an undertaking to Conrol that they would:
“forthwith refrain from making or causing to be made any conveyor belts or transoms in the form of those depicted in the photographs enclosed with your letter of 30 August 1993 [the photographs were those taken at Stratford’s factory on 26 August] and ... not ... supply or deliver or cause to be supplied or delivered to [KCC] a conveyor belt module as depicted in the photographs accompanying your letter of 30 August 1993.”
Meco and Stratford intended to manufacture and supply a modified version of the conveyor modules. They declined, however, to undertake to deliver up for destruction those already manufactured.
On 23 September, conveyor modules incorporating modifications, manufactured by Stratford, were delivered by Meco to KCC.
BACKGROUND AND EVIDENCE BEFORE THE TRIAL JUDGE ON VALIDITY
His Honour accepted as truthful and reliable the evidence of Mr McCallum and that of Mr A W Frazer, the marketing manager of Meco. Mr McCallum gave evidence that he had been involved in the manufacture of conveyor equipment in Australia for over thirty-four years and had been involved in the manufacture and sale of all conveyor equipment sold by Meco and its predecessor, McCallum Engineering Co-Operations Pty Limited. He stated that he had visited mines operated by the customers of both companies and had seen conveyors used in mines during the preceding thirty years; that he regularly read trade journals published in Australia and overseas in the relevant field; that he regularly attended conferences and exhibitions in Australia and overseas at which conveyor equipment was exhibited or discussed; and that he had a thorough knowledge of the conveyor equipment in use in Australia and overseas since at least 1960.
He said that in his opinion the appearance of the Conrol module depicted in the photograph attached to the Design was not, as a whole, substantially different from the appearance of the conveyor sections which had been in use for many years. In relation to those conveyors, his affidavit included the following:
“7.1The conveyor has a series of support stands each consisting of two uprights joined by a cross bar. Conveyors can be placed on the ground or suspended from the mine roof. The stand uprights of ground conveyors have plates or feet at the bottom to secure the conveyor structure and a ‘cup’ at the top.
7.2Longitudinal supports, which are called stringers, are connected to the stand uprights by means of the ‘cup’ secured by a bolt and nut, U-pin or a cloven pin.
7.3The support stands have roller brackets on the uprights and sometimes on the crossbars for the conveyor belt return rollers.
7.4The top run of the conveyor belt is supported either by a fixed trough structure or a suspended trough structure.
7.4.1A fixed trough structure, of which the Conrol Module is an example, has transoms connected to the stringers, again, usually by means of bolts, U-pins or cloven pins. Each transom has two uprights supported by a cross bar, usually with gussets or braces for strength. The rollers or idlers which support the conveyor belt are slotted individually into roller brackets which are joined either to the transom crossbar or sometimes to the braces.
7.4.2A suspended trough structure has idler or roller sets which are slung from the stringers.”
Mr McCallum said that the structure and overall appearance of conventional conveyor sections, comprising support stands with transoms or suspended idler sets as described above, had not changed since 1960, and that these features and no others were present in the Conrol module as depicted in the Design. However, he said that the detail of conveyor sections might differ according to the requirements of particular mines. He gave examples in his affidavit. Exhibited to his affidavit were photographs and drawings of conveyor structures, illustrating the features which he described. In his affidavit, he analysed them to support the general assertions which he made.
Mr Frazer gave evidence that he had been marketing manager of Meco since April 1994 and had previously been employed in the coal industry for more than thirty-four years. He said that he had been involved in the installation, maintenance and operation of conveyors in coal mines throughout his working life. He said that the basic structure and appearance of long distance conveyors used to transport bulk materials had not changed in the preceding thirty years. His affidavit evidence included the following:
“6.The basic structure and appearance of long distance conveyors used to transport bulk materials have not changed in the thirty years I have been involved in coal mining. A long distance conveyor is installed in sections and consists of a series of "H" shaped stands supporting a series of parallel horizontal beams or stringers. The conveyor belt carrying the bulk material is supported usually by troughing idlers which are mounted on the stringers by means of a transom. Return idlers, usually a single flat roller or two rollers in a V-form, mounted at the bottom of the stands support the belt return. Because many long distance conveyors are required to last for the life of the mine these conveyors usually have fixed transom structures which permit the replacement of individual rollers. Suspended conveyors on the other hand usually have fixed idler sets and the whole set must be replaced if one of the rollers wears. Suspended structures are easier to transport, erect and dismantle and they are used on the development road in longwall mining where the conveyor is constantly relocated.
7.Because the line of a conveyor belt must remain constant it is essential that the conveyor sections be interchangeable. It is not good practice to "mix and match" conveyor sections. It is important that, for example, the roller brackets and transom stiffeners are the same or at least as close as possible in each section of the conveyor. Because of this requirement the manufacturers of conveyor structures in Australia each use the same basic configuration for conveyor sections. Variations to that basic construction are usually made at the direction of the colliery installing the conveyor.
8.It has been the common practice of coal mines in my experience for many years in inviting tenders for supply of conveyor structures to specify the exact structure required by the coal mine, which for the reasons discussed in paragraph 7 usually corresponds to its existing structures. In my experience the mine either provides samples of a section of the structure required to be supplied or it provides detailed drawings when calling for tenders. It was very rare for any approval to be given to vary the specifications and samples provided. ...”
In relation to the module (“the Conrol Module”) in use at KCC’s Tahmoor colliery, Mr Frazer’s affidavit included the following:
“The Conrol Module consists of two stands, stringers and a transom. In my opinion the appearance of the Conrol Module does not vary in any material way from conveyor structures which I have seen used in coal mines for the last thirty five years.”
In cross-examination, Mr Frazer said that what he was seeking to convey in that paragraph was that the Conrol Module was a conveyor structure designed to support conveyor belting and that it did the same job as other conveyor structures because it included stands, stringers and transoms.
REASONING OF THE TRIAL JUDGE ON VALIDITY
His Honour began by noting s 17(1) of the Act which is set out later in these Reasons. After referring to authorities and the principles for which they stand, his Honour stated that he accepted the evidence of Messrs McCallum and Frazer:
“ ... that the basic configuration of conveyor structures has not changed for 30 years; and that there is nothing new or original in the configuration of the support stands, stringers or the means by which they are interconnected as depicted in the registered design.” ((1996) 34 IPR 517 at 530)
His Honour then turned to particular features of the Design: the use of a U-pin to connect the support stands to the stringers; the way in which the outside vertical arms of the transoms come down over the outside of the stringer; and partial disconnection of one of the transom assemblies and of the U-pins, causing the assembly to tilt. He did not think that these matters distinguished the Design from the design of other conveyor modules commonly in use in the industry.
In a “summary” paragraph, which Conrol attacks on the appeal, his Honour said:
“To give the design in suit the protection of the Act as a new or original design would be tantamount to conferring a monopoly upon Conrol of what is fundamentally a well-known design of conveyor structures used in the mining industry for many years. This it cannot achieve. Having regard to the nature of the article to which it is to be applied, there is no substantial difference in the design in suit from the prior art, namely, conveyor structures in the mining industry. Applying my eye to the design in suit and having in mind the nature of the article to which it is to be applied, I do not see any substantial novelty or originality in appearance. Accordingly, it should not have been registered. The design is invalid.” ((1996) 34 IPR 517 at 531- emphasis supplied)
OUTLINE OF PARTIES’ SUBMISSIONS ON THE APPEAL
It was common ground that the only question on the appeal was whether his Honour had erred in holding that s 17(1) (a) of the Act had prohibited registration of the Design.
Outline of Conrol’s submissions on the appeal
Conrol submits that his Honour made errors which were interrelated, and, in particular, that he erroneously compared the Design with an amalgam of features which could be commonly found in conveyor modules, rather than with a particular existing design or, successively and separately, with each of the particular designs which were in evidence. In support, Conrol relied on the following passage from the judgment of Gummow J (with whom Black CJ and Lockhart J agreed) in Interlego AG v Croner Trading Pty Ltd (1992) 39 FCR 348 (“Interlego”) (at 373):
“There is no suggestion in the authorities that there is a need to examine the prior art, identify common features, construct an imaginary article, and then determine the extent to which the shape put forward as a design differs from that mental construction. At most, the High Court requires that the shape be sufficiently certain and identifiable before it can be treated as a design.”
Similarly, Conrol relies on the following passage from the High Court’s judgment in Firmagroup Australia Pty Ltd v Byrne & Davidson Doors (Vic) Pty Ltd (1987) 180 CLR 483 (at 488):
“The only design features that are susceptible of protection are those features which convey the idea of ‘one particular individual and specific appearance’, to repeat the phrase from Russell-Clarke [Russell-Clarke on Copyright in Industrial Designs (5th ed, 1974) at 27]. No design should be so construed as to give to its proprietor a monopoly in a method or principle of construction. The registration of the appellant’s design thus gives no monopoly for the making of an article combining a plate in which a keyhole is set and a recessed handgrip; nor in our opinion does it give a monopoly for the making of an article combining a rectangular plate in which a keyhole is set and a recessed rectangular handgrip placed alongside horizontally. The idea of shape or configuration conveyed by those features is altogether too general to attract statutory protection. If the appellant’s design was no more precisely specified than that, registration ought to have been refused.
But the appellant’s registered design does convey a particular idea of the shape of a particular combination unit ...”
Putting its submission in another way, Conrol contends that the trial Judge erred by approaching the question for decision in a way analogous to that which is impermissible in patent law, that is to say, by “making a mosaic” of items of prior art; see Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 (at 292-3 per Aickin J).
Outline of Meco’s and Stratford’s submissions on the appeal
For their part, Meco and Stratford submit that his Honour instructed himself correctly and thoroughly for the purpose of determining the question whether the Design met the requirements of s 17(1) of the Act. They emphasise that he accepted the evidence of Messrs McCallum and Frazer, the only two witnesses who gave evidence at the trial on the issue of validity. They submit that the two sentences highlighted in bold print in the summary passage from his Honour’s judgment set out earlier reflected what he had previously said in Hosokawa Micron International Inc v Fortune (1990) 26 FCR 393 (FC) (at 408):
“The essence of the registrability of a design is that it has an element of novelty having regard to the nature of the article and the state of the prior art.”
They rely on what they submit (perhaps not with complete accuracy) was the approval of those words by Gummow J (with whom Black CJ and Lockhart J agreed) in Interlego (at 372).
Meco and Stratford emphasise that the trial Judge was assisted by expert evidence and that his own impressions of the Design in suit and the prior art should command particular respect.
Finally, they submit that, read in context, what Gummow J said in Interlego (at 373) was not that the registered design must be compared with one particular earlier design. Rather, they submit that what his Honour said was directed, not to trade variants, but to answering a particular submission, namely, that the appellant’s building blocks did not differ in appearance from their fundamental form and that therefore the design of the building blocks was not registrable. The proposition for which Conrol contends is, according to the submission of Meco and Stratford, contrary to the authorities concerned with trade variants which were referred to by the primary Judge in the present case and by Gummow J in J Rapee & Co Pty Ltd v KAS Cushions Pty Ltd (1989) 15 IPR 577 (FCA).
RELEVANT PROVISIONS OF THE ACT
Subsections 17(1) and 18(1) of the Act provide as follows:
“17.(1) Subject to this Act, a design shall not be registered unless it is a new or original design and, in particular, shall not be registered in respect of an article if the design:
(a)differs only in immaterial details or in features commonly used in the relevant trade from a design that, before the priority date in respect of the application for registration, was registered, published or used in Australia in respect of the same article; or
(b)is an obvious adaptation of a design that, before the priority date in respect of the application for registration, was registered, published or used in Australia in respect of any other article.”
“18.(1) An application for registration of a design shall not be refused, and a registered design is not invalid, by reason only that the design consists of, or includes, features of shape or configuration that serve, or serve only, a functional purpose.”
The expressions “article” and “design” are defined in subs 4(1) as follows:
“‘article’ means any article of manufacture and includes a part of such an article if made separately, but does not include an integrated circuit, or part of an integrated circuit, within the meaning of the Circuit Layouts Act 1989, or a mask used to make such a circuit;”
“‘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”.
Section 30 provides, relevantly, 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;
(b) ...
(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; or
(ii)in respect of which the design is registered and to which the design or any fraudulent or obvious imitation of it has been applied outside Australia without the licence or authority of the person who was the owner of the registered design at the time when the design or imitation was so applied.”
The expression “monopoly” is defined in subs 4(1) as follows:
“‘monopoly’, in relation to a registered design, means the exclusive right to apply the design to an article in respect of which the design is so registered”.
REASONING ON THE APPEAL
Conrol submits that the “essential errors” made by his Honour are related and were:
“(a)... to assess the novelty of the design against the ‘fundamental form’ of conveyor structures well-known in the industry, rather than against each design particularised in para 7 of the Amended Cross-Claim, ... taken individually; and
(b)to conduct this inquiry into novelty by examining the presence or absence of each ‘integer’ of the design, described verbally rather than identified pictorially, against ‘a body of evidence’ as to the ‘basic configuration of conveyor structures’, rather than by comparing the design in suit against each such structure in evidence: ...” (emphasis supplied)
The reference to “each design particularised in para 7 of the Amended Cross-Claim” must be a reference to the designs to be found in the following particulars contained in par 7:
“Particulars
7.1Articles to which the design was applied were manufactured and sold and/or offered for sale by the applicant to Kembla Coal & Coke Pty Limited before 14 May 1990.
7.2The design differs only in immaterial details or in features commonly used in the relevant trade from, or is an obvious adaptation of, designs that were published or used in Australia in respect of the same article before 14 May 1990 namely:
(i)the transom of a modular conveyor structure manufactured by Reg.A.Bell Pty Limited illustrated at page 103 of the Bell ‘Idler & Pulley’ catalogue published prior to 1990 and the other modular conveyor structures and components first published and used prior to that date as referred to in the affidavit of John McCallum sworn 30 January 1995 and the exhibits thereto and the affidavit of Angus Frazer sworn 30 January 1995;
(ii)the manufacture and sale by the first respondent of conveyor module transoms in accordance with the first respondent’s Plan No. B05296-620 prior to 14 May 1990.”
Conrol does not submit that the case was decided against it on a ground that was not pleaded. The words emphasised above refer to modular conveyor structures and components that were referred to by Messrs McCallum and Frazer in their affidavits, both by means of descriptive words and exhibited photographs and diagrams.
The learned trial Judge’s reasoning may be analysed in the following form:
“[T]he basic configuration of conveyor structures has not changed for 30 years; and ... there is nothing new or original in the configuration of the support stands, stringers or the means by which they are inter connected as depicted in the registered design” ((1996) 34 IPR 517 at 530).
(a) The U-pin device for connecting the support stands to the stringers is common in the trade, does not reflect novelty and is no more than a trade variant;
(b) likewise, the configuration of the transom assembly;
(c)likewise, the fact that the transom assembly is connected to the outermost surface of the stringer;
(d) likewise, the tiltability of the transom.
In our opinion, proof that a design has been anticipated by a design applied to one particular identified earlier article is not the only means by which it may be shown that the design lacks novelty or originality: par (a) of s 17(1) is expressed as a particular application of the general proposition that a design is not to be registered unless it is new or original. In Macrae Knitting Mills Ltd v Lowes Ltd (1936) 55 CLR 725, in relation to the design of the back straps of a swimming costume, the High Court held that the design was neither novel nor original. Starke J said that the design was “a mere variation of a common shape or form in the trade” (at 728). Dixon J said:
“The part for which novelty is now claimed is the strapping at the back. Of the modes of strapping which were in practice many have been placed before the court by means of pictures put in evidence. As might be imagined, they exhibit a great variation in detail. Doubtless, form, configuration and appearance did not constitute the sole motive which led people to adopt one or the other of the various arrangements of straps. More substantial considerations played their part. But configuration and shape would not be disregarded.
In the present design the configuration is not an exact reproduction of any shown in the pictures. But the configuration does not, in my opinion, show any distinctiveness in its departure from prior models. The general appearance presented by many of the entire garments formerly in use is the same. Innumerable variations in the relative sizes and positions of back and shoulder straps are possible. However varied, in function they are a mere equivalent. In appearance also they are substantially equivalent. Originality or novelty are not qualities to be ascribed to the configuration produced by the variation. In my opinion the bathing garment is not a new or original design.” (at 731)
Evatt J said:
“ ... the design as registered is a mere trade variation from the previous designs of swimming costumes which were previously in use.” (at 732)
These passages show that it is not necessary to identify one particular earlier article which deprives the design in suit of novelty or originality.
Similarly, in British Franco Electric Pty Ltd v Dowling Plastics Pty Ltd [1981] 1 NSWLR 448, Wootten J held that a registered design of a device for retaining furniture castor wheels on the axle of the castor lacked novelty and originality, saying of it:
“Applying my eye to the registered design in this case, and bearing in mind the nature of the article to which the design relates, I do not think it has any substantial novelty or originality in appearance. It follows the general shape and configuration of castor wheels in previous use and differs from one of them only in the minute detail of the slit in the boss. However important this slit may be functionally, it cannot to my mind lead one to conclude that the design to which this feature has been added is novel or original in appearance in relation to earlier designs used on castors. An eye not concerned with function would pass over it, or dismiss it as of no interest or impact.” (at 460-1 - emphasis supplied)
With respect, Conrol’s reliance on what Gummow J said in the passage from Interlego (at 373) set out earlier is misplaced. His Honour had earlier distinguished between two things: “fundamental form” or “the simplest form of an article” on the one hand, and “other designs (the prior art)” on the other hand (both at 372). In the passage on which Conrol relies, his Honour was saying that when lack of novelty is sought to be shown by reference to the fundamental form of an article, there is “no ... need to examine the prior art, identify common features, construct an imaginary article, and then determine the extent to which the shape put forward as a design differs from the mental construction” (at 373). Indeed, in terms, the passage leaves open the possibility that when the prior art is relied on to establish lack of novelty, it may be appropriate to follow the course described by his Honour. Whether or not that is so, what is clear is that there is no substantial difference between the process of reasoning adopted by Gummow J in Rapee at 588-91 and that of the trial Judge in this case.
In the present case, the learned trial Judge relied on the fundamental form of conveyors (or, perhaps more accurately, long-standing common features of their design) as established by the evidence of Messrs McCallum and Frazer, and he described particular features of the Conrol module as mere “trade variants”.
Conrol relies heavily on what was said in Firmagroup Australia Pty Ltd v Byrne & Davidson Doors (Vic) Pty Ltd (1987) 180 CLR 483. Diagrammatic representations of the registered designs for a combination handle and lock for shutter doors, and of the allegedly infringing design, appear at (1987) 180 CLR 490. Importantly, there was no challenge to the validity of the registered design in that case. Accordingly, the Court was not concerned to discuss the concepts of novelty or originality. Rather, it was called upon to discuss the scope of the monopoly granted by the registration and to compare the registered design with the features of the allegedly infringing article. The Court set out with approval the following passage from Russell-Clarke on Copyright in Industrial Designs (5th ed, 1974) (at 27):
“What he gets a monopoly for is one particular individual and specific appearance. If it is possible to get several different appearances, which all embody the general features which he claims, then those features are too general, and amount to a method or principle of construction.” (set out at (1987) 180 CLR 487)
It seems to us that the learned trial Judge in the present case did not make the errors of law which Conrol identifies. He compared the Design with the features of shape and configuration of conveyor modules long since used in the trade as referred to in uncontradicted evidence before him. He posed for himself the correct ultimate test, namely, whether to the eye the Design was new or original by reference to the visible features of shape or configuration of such conveyor modules. His Honour was, as Conrol properly conceded, in an advantageous position in this respect.
CONCLUSION
The appeal should be dismissed with costs.
| I certify that this and the preceding fifteen (15) pages are a true copy of the Reasons for Judgment herein of the Court. |
Associate:
Dated: 9 December 1997
| Counsel for the Appellant: | Mr D K Catterns QC and Mr N R C Hamilton |
| Solicitors for the Appellant: | Holman Webb |
| Counsel for the Respondents: | Mr J V Nicholas |
| Solicitors for the Respondents: | Sprusons |
| Date of Hearing: | 26 May 1997 |
| Date of Judgment: | 9 December 1997 |
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