Conrol Pty Ltd v Meco McCallum Pty Ltd - [1996] FCA 475

CATCHWORDS

DESIGNS - validity of registration - consideration of prior art - whether design new or original - must be substantially so - to be determined by the eye alone - design must be looked at as a whole - whether mere difference in immaterial detail - difference determined by facts of each case - whether common trade variant - mere workshop variation which a competent workman might be expected to achieve in the ordinary course of business does not cause a design to be new or original - registered design for module of mining conveyor invalid - infringement - whether fraudulent imitation.

Designs Act 1906: ss. 17(1), 31

CONROL PTY LIMITED v MECO McCALLUM PTY LIMITED, STRATFORD HALL PTY LIMITED
G273 of 1994

LOCKHART J.
21 JUNE 1996
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA )
NEW SOUTH WALES DISTRICT REGISTRY ) No. G273 of 1994
GENERAL DIVISION )

BETWEEN:CONROL PTY LIMITED
Applicant

AND:MECO McCALLUM PTY LIMITED
First Respondent
STRATFORD HALL PTY LIMITED
Second Respondent
MECO McCALLUM PTY LIMITED
First Cross Claimant
STRATFORD HALL PTY LIMITED
Second Cross Claimant
CONROL PTY LIMITED
Cross Respondent

JUDGE MAKING ORDER:     LOCKHART J.
             WHERE ORDER MADE:      SYDNEY
             DATE ORDER MADE:       21 JUNE 1996

MINUTE OF ORDER
THE COURT ORDERS THAT:

The application is dismissed.

Registered design no. 111016 is invalid, and the Register of Designs be rectified by expunging the entry of design no. 111016.
The costs of the respondents of the proceeding including the costs of the cross-claim be paid by the applicant.

NOTE: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA )
       )
NEW SOUTH WALES DISTRICT REGISTRY )    No. G273 of 1994
  )
GENERAL DIVISION                 )

BETWEEN:CONROL PTY LIMITED
Applicant

AND:MECO McCALLUM PTY LIMITED
First Respondent

STRATFORD HALL PTY LIMITED
Second Respondent

MECO McCALLUM PTY LIMITED
First Cross Claimant

STRATFORD HALL PTY LIMITED
Second Cross Claimant

CONROL PTY LIMITED
Cross Respondent

21 June 1996

REASONS FOR JUDGMENT
LOCKHART J.
This case concerns a registered design for a 'conveyor module' (design no. 111016) 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 registered owner of the design is the applicant, Conrol Pty Limited ('Conrol'). The statement of the monopoly reads as follows:
'Monopoly is claimed in the shape and configuration of a conveyor module with inclinable transoms as illustrated in the accompanying photographs.'

There is in fact only one accompanying photograph; but nothing turns on this.

Conrol asserts that the first respondent, Meco McCallum Pty Limited ('Meco'), infringed its monopoly in the registered design by having sold to Kembla Coal & Coke Pty Limited ('KCC') in July 1993 and thereafter, quantities of conveyor modules and of belt conveyor transoms made by it or by the second respondent, Stratford Hall Pty Limited ('Stratford'), for it. The actions of Meco are said to constitute infringement…

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: [1996] FCA 475
Decision Date: 21 JUNE 1996

CaseChat Overview and Summary

This case concerns the validity of a registered design for a conveyor module used in coal mines. The registered design, owned by Conrol Pty Limited, was challenged by Meco McCallum Pty Limited and Stratford Hall Pty Limited on the grounds that it was not new or original. The court held that the design was not substantially different from prior art and therefore not new or original. The court noted that the basic configuration of conveyor structures had not changed for over 30 years and that the design in question was a common trade variant. The court also held that even if the design was valid, the modules manufactured by Meco were obvious imitations of the design, but not fraudulent imitations as Meco was not aware of the design at the time of manufacture. The court dismissed Conrol's application and declared the registered design invalid. The court also ordered Conrol to pay the costs of the proceeding.

Orders