Conrol Pty Ltd v Meco McCallum Pty Ltd

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)
APPELLANT

AND:

MECO McCALLUM PTY LIMITED (ACN 001 408 368)
FIRST RESPONDENT

STRATFORD HALL PTY LIMITED (ACN 000 227 190)
SECOND RESPONDENT

JUDGES:

BURCHETT, LINDGREN, LEHANE JJ

DATE OF ORDER:

9 DECEMBER 1997

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:

1. The appeal be dismissed.

1. 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)
APPELLANT

AND:

MECO McCALLUM PTY LIMITED (ACN 001 408 368)
FIRST RESPONDENT

STRATFORD HALL PTY LIMITED (ACN 000 227 190)
SECOND RESPONDENT

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…