Conrol Pty Ltd v Meco McCallum Pty Ltd
[1996] FCA 475
•21 JUNE 1996
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 of the applicant's monopoly in the design by applying an obvious or fraudulent imitation of it to articles in respect of which the design is registered.
Stratford is joined as a respondent because it is the proprietor of a firm, A & A Industries, a business which has manufactured conveyor structures for Meco for many years and manufactured for Meco the conveyor modules sold by Meco to KCC with which this case is concerned.
Initially, Conrol sued Meco and Stratford, not only for infringement of the design in suit, but also for infringement of a second registered design of Conrol and of a patent of which Conrol is the registered proprietor. However, at the commencement of the hearing Conrol abandoned all claims except its claim for infringement of the design in suit.
Meco and Stratford have cross-claimed against Conrol seeking revocation of the registration of the design in suit on the ground that it was not new or original at the date of the application and therefore should not have been registered (s. 31 of the Designs Act 1906 ('the Act')). They assert that the design in suit (a) differs only in immaterial details, or in features commonly used in the trade, from designs that were published or used in Australia in respect of the same article before 14 May 1990, being the date on which the application for registration was lodged; and (b) is an obvious adaptation of those earlier designs. They also assert that articles to which the design was applied were manufactured and sold or offered for sale by Conrol to KCC before 14 May 1990.
None of the material facts are in dispute and they may be briefly stated.
Since 1989 Conrol has carried on the business of manufacturing and selling conveyor structures and conveyor rollers or idlers to mining ventures in Australia. It is the successor to the company called Fox Manufacturing Pty Limited, which carried on the same business as Conrol does for approximately 30 years before it was acquired by Conrol.
The business now carried on by Meco was started by the father of Mr McCallum (the present managing director of Meco) in 1944 and was then conducted by a company, McCallum Engineering Co Operations Pty Limited. From its inception the business was one of a repetition engineer, manufacturing a range of products including railway bushes and pins, conveyor structures and rollers. The conveyor equipment manufactured by the companies was supplied to most collieries in New South Wales at one time or another.
On 16 June 1993 Conrol received from KCC an invitation to tender for conveyor structures for use in KCC's Westcliff and Tahmoor collieries. Meco also received a similar invitation at about the same time.
When Meco received its invitation to tender it was its understanding that KCC required a conveyor structure identical to the structure then used by it at its Tahmoor colliery, in accordance with the usual practice of collieries to ensure interchangeability of structure. Mr McCallum was aware that the conveyor structure installed at the Tahmoor colliery had been manufactured and supplied by Conrol ('the Conrol module'). Neither at the time Meco received the invitation to tender from KCC, nor at the time when it submitted its tender, was Mr McCallum aware that Conrol was the proprietor of any patent or design registrations concerning the Conrol module or of any other monopoly rights with respect to it.
On 28 June 1993 Conrol submitted its tender to KCC to cover the supply of conveyor structures for both the Westcliff and Tahmoor collieries. Meco also submitted a tender to KCC.
On 20 July 1993 KCC informed Conrol that its tender was unsuccessful and notified Meco that its tender was successful.
On 6 August 1993 Conrol's patent attorneys wrote to Meco alerting it to the existence of the Australian patent for a conveyor module of which Conrol was the proprietor and of the two registered designs: one for the conveyor module which is the design in suit, and one for a conveyor belt transom. The letter gave notice that any production of conveyor equipment which contravened the rights of Conrol would lead to Conrol taking action to protect its rights.
The letter was received by Meco on about 13 August 1993; it was preceded the previous day by a conversation between Mr McCallum and Mr N McInnis (the Purchasing Officer of KCC), in the course of which Mr McInnis told Mr McCallum that KCC had received a letter from Conrol's patent attorneys 'about Conrol's patent on the structure'. Mr McCallum said that it was not until he had that conversation that he had any idea that Conrol had a patent or design registration for the Conrol module.
On 18 August 1993 Meco's patent attorneys replied to the letter of 6 August 1993 from Conrol's patent attorneys, stating that 'our client will not be giving any confirmation regarding your client's rights'. The letter then made reference to certain of the features of the patent specification of which Conrol was the proprietor and said that Meco's proposed conveyor module did not employ the relevant features of the patent and therefore did not fall within the scope of the patent. No reference was made to the registered design of Conrol.
Mr McCallum instructed A & A Industries to manufacture the structures to be supplied by Meco to KCC.
On about 26 August 1993 Stratford manufactured the module for Meco which is said to be the infringing module.
On 30 August 1993 Conrol's patent attorneys wrote to the patent attorneys for Meco giving notice that proceedings would be commenced for alleged infringement of the patent and design rights of Conrol unless satisfactory explanations and undertakings were received.
On 3 September 1993 Stratford delivered to Meco the first alleged infringing module and continued to manufacture further such modules.
On 6 September 1993 demand was made by Conrol in writing, through its patent attorneys, to Stratford and to Meco, again requesting suitable undertakings and saying that in the event of them not being received, legal proceedings would be commenced immediately.
On 7 September 1993 Meco and Stratford, through their patent attorneys, replied to the letter of 6 September 1993 saying that, without admissions, both Meco and 'A&A' (which has been treated by the parties as a reference to Stratford) undertook to:
'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 and ... not to 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.'
The photographs referred to in the letter are photographs of the alleged infringing module, the photograph having been taken at Stratford's factory on 26 August 1993.
Meco and Stratford declined to offer any undertakings and to deliver up for destruction any conveyor belt modules.
On 23 September 1993 conveyor modules with modifications were delivered by Meco to KCC (exhibit 2).
Subsequently, this proceeding was commenced by Conrol. Evidence was given principally by affidavit. The evidence adduced by Conrol consisted of the affidavits of Mr M W Cummins (Production Manager of Conrol), Mr J C Van Der Horst (Director of Conrol) and Professor R B Frost (an expert witness), to whose evidence I shall refer later. None of the evidence adduced in the affidavits of the deponents who gave evidence on behalf of Conrol touched on the question of validity of the registered design. It was mainly background evidence and evidence concerning the question of infringement.
Evidence was given on behalf of the respondents by Mr McCallum (who, as mentioned earlier, is the Managing Director of Meco) and Mr A W Frazer (Marketing Manager of Meco). Both Mr McCallum and Mr Frazer were cross-examined. I should say at this point that I accept the evidence of both gentlemen as truthful and reliable. Their credibility was not seriously challenged by counsel for Conrol except to a limited extent on one question to which I shall refer later and which is important on the issue of validity.
The Registered Design
The conveyor module depicted in the registered design depicts the following:
'(a)A framework comprising two support stands, one at each end of the module, located transversely across the module to provide and support for the adjacent ends of two adjacent modules.
(b)Two longitudinal stringer members, located one at each side of the module with each stringer end occupying half the available space in a bracket at the top of a support stand leg.
(c)Two transom assemblies, each consisting of:
(i)two outer brackets, each joined to,
(ii)a square hollow tube which is oriented in the diamond configuration in a vertical cross section which is parallel to the stringers, and which forms the main member of the transom by spanning across the two stringers,
(iii)two inclined angle bars, and
(iv)four roller support plates.'
Professor Frost described the design in some detail in the following terms:
'(a)Each support stand consists of two vertical legs made of rectangular hollow section tube, with the long dimension of the rectangle aligned longitudinally. A transverse horizontal member, also of the same rectangular hollow section tube as the legs, with the long dimension of the rectangular aligned vertically, is located between the legs. Each leg is welded to this member. At the bottom of each leg of each H frame is a square or nearly square flat steel plate foot which projects predominantly outwardly horizontally from the bottom of each leg and which contains a single bolt hole near the centre of its outer edge. Each leg of each support stand provides a flat vertical plate at its inner face; this plate contains three slots. Below each such slot is a hole. The long horizontal bar of each support stand provides a roller support feature at its mid point, below the top level of the horizontal bar.
At the top of each vertical leg of each support stand is a folded plate steel U-bracket which is oriented so that the tops of the legs of the U point upwardly. Each upward facing leg of the U provides a plate face in the vertical longitudinal plane, through which two holes have been drilled in horizontal alignment. The two holes in one such plate face align with the two holes in the other such plate face in each such U-bracket. The bracket is slightly longer than the longer, longitudinal dimension of the rectangle representing the cross section of the rectangular hollow tube from which the support stand leg is made and is slightly wider than the smaller cross sectional dimension of this rectangular hollow section tube. Each of the four upper corners of each U-bracket contains a 45 degree chamfer.
(b)Each stringer provides a pattern of four holes at the point where one end of a transom will be located. These holes are arranged at the corners of a rectangle which is longer horizontally and shorter vertically. Each stringer thereby contains two such hole patterns and each hole in each pattern penetrates through both vertical walls of the rectangular hollow section tube of the stringer containing it.
(c)Each transom outer bracket provides one folded up edge and, over approximately the top one quarter of its total length, it is bent in at an angle of approximately 45 degrees towards the centre of the module. At the top end of each outer bracket is a large chamfer on the side of the outer bracket without the folded up edge, a small chamfer on the side of the angle bracket containing the folded up edge and, closer to this edge, is a slot with a hole beneath it.
Each inclined angle bar is welded at its outer end to the outer bracket, at a point below where the outer bracket is bent in, and is welded at its inner end to the square tube which is the main member of the transom. Each end of each inclined angle bar has been cut to an angle to facilitate such fixing and subsequent galvanising and/or painting. Each angle is oriented in cross section in the upward pointing (watershed) direction.
At approximately the mid point of each inclined angle bar is a roller support plate, welded squarely to the angle bar. Close by the inner end of each sloping angle bar, and welded squarely to the square hollow tube forming the main member of the transom, is a further roller support plate. Each roller support plate is in the shape of a shallow, squared out U and, at the top of each leg of the U, is a slot to locate a roller shaft, below which is a hole. These slots and holes are similar or identical to those in the top ends of the transom outer brackets.
On each roller support plate, approximately the top half of one leg of the U is bent while the other leg of the U is straight. In this way, each slotted end of a roller support plate is parallel to the aligned end of either the adjacent outer bracket or the adjacent roller support plate. Mounting positions for five rollers across the width of the module are thereby provided. The central roller will be horizontal. The two rollers next to it will be out of plane to the central roller by a distance equal to the slot-to-slot distance of a roller support plate, and they will slope upwardly towards their outer ends at an angle of approximately 22.5 degrees. The two outer rollers will be in plane with the central roller and will slope upwardly towards their outer ends at an angle of approximately 45 degrees. The central and two outer rollers are approximately in the plane of the folded up edges of the transom outer brackets, while the other two rollers are approximately in the plane of the other edges of the transom outer brackets.
(d)Further, the lower end of each transom outer bracket, below the square hollow tube, projects down alongside the outer wall of a stringer and contains a pattern of three kidney shaped holes, each of which is so oriented that the two ends of the hole are in horizontal alignment and are higher than the centre portion of the hole. These three kidney shaped holes are so positioned that, when the transom is in its operating position, they align with the two upper holes referred to above in relation to a pattern of four holes in the stringer, and with one of the two lower holes in the pattern of four holes in the stringer. The hole which is absent in the pattern of three kidney shaped holes in the outer bracket lower end, by comparison with the pattern of four holes in the stringer, referred to above, is the lower hole further from the folded up edge of the outer bracket.
Each transom end is fixed to a stringer by a clip made of round steel rod bent into a square out U shape. The clip is threadless, but provides a conical point at the end of each leg of the U shape. These U clips are positioned so that the straight bottom of the U shape is outside the outer bracket of the transom and so that conical pointed ends project inwardly beyond the inner wall of the stringer.
Each stringer contains a hole towards its bottom edge at each end. A single U clip passes through the outer wall of the U-bracket forming the top feature of each vertical leg of a support stand, and through the stringer and the inner wall of the U-bracket, to project inwardly beyond the inner wall of the U-bracket. Two adjacent stringer ends are thereby U clipped into position in the U-bracket at the top of each leg of each support stand.'
I append to these reasons for judgment a copy of the registered design.
Validity
I turn first to the question of the validity of the registered design.
It was submitted by counsel for the respondents that the registered design was invalid in that it was not new or original at the date of the application for registration and should not have been registered (s. 31). Counsel also drew attention to the fact that the application for registration was not accompanied by any statement of novelty, and that no evidence was called by Conrol with a view to identifying any particular feature or characteristic which would qualify the design as new or original. Counsel presented a detailed argument to support this submission.
Counsel for Conrol submitted that it takes very little for a registered design to be a valid registration in terms of an advance over the prior art. He relied on Russell-Clarke on Copyright in Industrial Designs, 5th edition, by Michael Fysh. He submitted that the registered design was different from anything that could be identified as prior art. He said the fact that the designer (Mr Cummins) did not give evidence touching the question of validity is of no significance because the test, ultimately for the Court to determine for itself, is whether the design is novel, having regard to the prior art. He said that Mr Cummins who swore an affidavit was not called for cross-examination by counsel for the respondents, but was available if required. And finally, counsel for Conrol argued that the prima facie presumption of validity of the design had not been displaced by any of the evidence adduced in the case.
Mr McCallum gave evidence that he has been involved in the manufacture of conveyor equipment in Australia for over 34 years and has been involved in the manufacture and sale of all conveyor equipment sold by Meco and its predecessor, McCallum Engineering Co-Operations Pty Limited ('McCallum'). He has visited mines operated by the customers of both companies and he has seen conveyors used in mines during the past 30 years. He regularly reads trade journals published in Australia and overseas in the relevant field and regularly attends conferences and exhibitions both in Australia and overseas at which conveyor equipment is exhibited or discussed. He has a thorough knowledge of the conveyor equipment used in Australia and overseas since at least 1960.
Mr McCallum gave evidence that, based on his knowledge of conveyors used in mines throughout Australia for the last 34 years, in his opinion the appearance of the Conrol module depicted in the photograph attached to the registered design as a whole is not substantially different from the appearance of the conveyor sections which have been used in the construction of conveyors for many years. He swore in his affidavit that for the last 30 years or so most conveyors have been constructed in sections and have the following features:
'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.'
He said that the structure and overall appearance of conveyor sections, comprising support stands with transoms or suspended idler sets described above, has not changed since 1960 and that these features and no others are present in the Conrol module as depicted in the registered design.
Mr McCallum said that the detail of conveyor sections may be different according to the requirements of the particular mine, and in his affidavit he gave six examples of this in these terms:
'9.1The height of the conveyor and thus of the support stand may vary;
9.2The angles of the outer transom brackets (the top of each transom upright) and of the inner brackets depends on the trough angle required for the conveyor belt;
9.3The support stands, stringers and transoms of conveyor structures can be manufactured from different materials including pipe, angle iron, pressed bar or rectangular hollow section ("RHS"). I have seen conveyor sections made from each of these materials since 1960. The choice of material is dictated to some extent by the strength needed for the conveyor and by price;
9.4Some conveyors have five rollers on the top, others have three. There can be one or more bottom or return rollers. Of course the number of roller brackets will depend on the number of rollers required;
9.5The location of the roller brackets; and
9.6The means of connection of the suspended idler sets or transoms to the stringers, and of the stringers to the support stands, may differ from conveyor to conveyor and according to the requirements of the mine.'
He exhibited to his affidavit a number of photographs and drawings of conveyor structures, illustrating the features which he described above, and he analyzed them to support the statements which he made.
Mr Frazer (the marketing manager of Meco) gave evidence that he has held that position since April 1994. Before then Mr Frazer had been employed in the coal industry for over 34 years. He has been involved in the installation, maintenance and operation of conveyors in coal mines for all of his working life. He swore in his affidavit that the basic structure and appearance of long distance conveyors used to transport bulk materials have not changed in the 30 years since he became involved in coal mining. He said in his affidavit:
'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 paragraph 10.1, Mr Frazer swore 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.'
Mr Frazer was cross-examined about paragraph 10.1 and he said that what he was seeking to convey in that paragraph was that the Conrol module is a conveyor structure designed to support conveyor belting and that it does the same job as other conveyor structures because it includes stands, stringers and transoms.
Findings
Section 17(1) of the Designs Act 1906 ('the Act') provides relevantly 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.'
The 'priority date' is, of course, the date on which the application was lodged under the Act which, as mentioned earlier, was 14 May 1990 in the case of the design in suit.
The Act thus requires that a design must be new or original to qualify for registration. This requirement manifests the Parliament's intention to balance or reconcile two competing elements of public policy: first, the encouragement and protection of the intellectual activity which is put into the production of industrial designs; second, the concern not to impede or oppress the natural development of industry. In Le May v Welch (1884) 28 ChD 24 Bowen L.J. said at 34:
'We must not allow industry to be oppressed. It is not every mere difference of cut, every change of outline, every change of length, or breadth, or configuration, in a simple and most familiar article of dress like this [collars] which constitutes novelty of design. To hold that would be to paralyse industry and to make the Patents, Designs, and Trade-marks Act a trap to catch honest traders. ... There must be, not a mere novelty of outline, but a substantial novelty in the design having regard to the nature of the article.'
In Phillips v Harbro Rubber Co (1918) 35 RPC 276 Astbury J. said at 282-283:
'the design law, just as the patent law, is not intended, and ought not to be allowed, to paralyse or impede the ordinary natural and normal growth of industry.'
To similar effect were the observations of Swinfen Eady M.R. on appeal in the Court of Appeal (1919) 36 RPC 79 at 85, and
by the House of Lords in the same case (1920) 37 RPC 233; see also Caron International's Design Application (1981) RPC 179.
There is some division of judicial opinion over whether the word 'or' in the phrase 'new or original' in s. 17(1) is used disjunctively or conjunctively. On the one hand, Graham J. held in Aspro-Nicholas Limited's Design Application [1974] RPC 645 that a design to be registrable under the relevant English legislation must be both new and original and is used:
'so as to connect the words "new" and "original", which are intended in their context to denote the same or very similar qualifications' (at 651).
But on the other hand, compare Caron International's Design Application.
In Australia the law is as stated by the High Court in Malleys Limited v J W Tomlin Pty Limited (1961) 35 ALJR 352, namely, that the phrase 'new or original' should be construed conjunctively (at 353).
Determining whether a design is new or original must involve some comparison between the design and prior art. As Buckley L.J. said in Dover Limited v Nurnberger Celluloidwaren Fabrik Gebruder Wolff [1910] 2 Ch 25 at 29-30:
'The words "new or original" involve the idea of novelty either in the pattern, shape or ornament itself or in the way in which an old pattern, shape or ornament is to be applied to some special subject‑matter. There must be the exercise of intellectual activity so as to originate, that is to say suggest for the first time, something which had not occurred to anyone before as to applying by some manual, mechanical or chemical means some pattern, shape, or ornament to some special subject-matter to which it had not been applied before.'
This statement was cited with approval by Dixon J. in Macrae Knitting Mills Limited v Lowes Limited (1936) 55 CLR 725 at 730.
It is not possible to define with any degree of precision how much a design must differ from the prior art before it will be regarded as new or original. This question must be answered according to the facts of each case. In some cases it has been held that very little ingenuity is required (see Wells v Attache Case Manufacturing Co Limited (1931) 49 RPC 113 at 119). Yet in others the contrary view has been expressed (see for example Simmons v Mathieson & Co Limited (1911) 28 RPC 486 and Le May v Welch above at 34). As Gummow J. observed in J Rapee & Co Pty Limited v Kas Cushions Pty Limited (1989) 15 IPR 577 at 588:
'From the time of the early decisions construing the British Act of 1883, (which in s 47 authorised registration of new or original designs), the courts have required, initially as something of a gloss upon the statute, "substantial" novelty, having regard to the registerability of new combinations of old design elements: see Le May v Welch ... at 34-5 per Bowen LJ.'
To qualify as a new or original design it is not necessary that the design be entirely new or original, but substantially new or substantially original having regard to the nature and character of the subject matter to which the design must be applied: Le May v Welch; Simmons v Mathieson & Co Limited; Macrae Knitting Mills Limited v Lowes Limited; Dart Industries Inc v Decor Corp Pty Limited (1989) 15 IPR 403; and J Rapee & Co Pty Ltd v Kas Cushions Pty Limited; Richsell Pty Ltd v Khoury (1994) 30 IPR 129, and on appeal (1995) 32 IPR 289.
Sometimes in the cases the requisite elements of novelty or originality are described by saying that mere slight variations from articles already manufactured are not registrable, or they are described positively by saying that the variation from the prior art must not be trivial or infinitesimal (Wells v Attache Case Manufacturing Co at 119; and Re Rollason's Design (1898) 15 RPC 441).
These principles find statutory expression in s. 17(1) of the Act, which requires that no design shall be regarded as new or original if it differs from a previous design 'only in
immaterial details' (s. 17(1)(a)).
It is not sufficient to point to any difference between the design and the previously published designs to establish novelty or originality; there must be a substantial difference in regard to the nature of the article to which it is to be applied: British Franco Electic Pty Limited v Dowling Plastics Pty Limited [1981] 1 NSWLR 448 per Wootten J. at 459. In D Sebel & Co Limited v National Art Metal Co Pty Limited (1965) 10 FLR 224 Jacobs J. said at 226:
'I have examined each of the instances of earlier publication which have been tendered in evidence and I cannot be satisfied that the registered design is the same or is substantially similar to any of them, or that any differences are merely trade variants, or are explicable as methods of construction, or solely in relation to function. I think that it is most important to bear in mind in relation to such an article as a chair [the case involved a registered design for a chair], that one cannot and should not expect to find some startling novelty or originality. The element of novelty or originality will of necessity be likely to be within a small compass. I do not mean thereby that any difference of shape, outline, proportion or placement of components will thereby constitute novelty of design, but provided I can see a substantial difference from the fundamental form and from the development in the trade up to the time of the application for registration, then I do not think that it is sufficient to point to a number of elements of similarity to past design in order to show that the design is not new or original.'
In most cases a design which is a common trade variant will differ only in immaterial details from designs previously published or used. This is not always so, as Gummow J. observed in Rapee at 590. See also Sebel & Co Limited's Application (No 2) [1959] RPC 19 at 24.
Determining whether the design in suit and the earlier designs or articles are substantially the same or not, the designs must be looked at as a whole; the test is whether an article made according to the design in suit would be substantially similar in appearance to an article made according to the previous design: Re Clarke's Design (1896) 13 RPC 351 at 360; and Allen West & Co Limited v British Westinghouse Electric & Manufacturing Co Limited (1916) 33 RPC 157 at 165.
The whole of the design need not be new to qualify for registration. The design may be novel notwithstanding that all of its parts are old and were common general knowledge at the date of registration. If the combination of two or more old and well-known designs or parts of designs gives to the combination as a whole the appearance of a new design that design may be novel: Walker & Co v A G Scott & Co Limited (1892) 9 RPC 482 per Chitty J. at 485; Lewis Falk Limited v Jacobwitz (1944) 61 RPC 116 at 126; and Re Clarke's Design at 360.
Section 17(1) of the Act also states that no design shall be regarded as new or original if it differs from a previous design only 'in features commonly used in the relevant trade' (s. 17(1)(a)). The element of public policy that lies behind this requirement is that no trader should be entitled to gain a monopoly in a design which is merely a variant of standard designs in the trade; members of an industry should be free to employ any of the standard design variants in the relevant trade without the risk of suit for infringement of monopoly. As it was said by the House of Lords in Phillips v Harbro Rubber Co at 240 :
'The introduction of ordinary trade variants into an old design cannot make it new or original. ... The working world, as well as the trade world, is entitled at its will to take, in all cases, its choice of ordinary trade variants for use in any particular instance, and no patent and no registration of a design can prevent an ordinary workman from using or not using trade knowledge of this kind.'
Put another way, for a design to be registrable under the Act it must be more than a mere trade variant which any skilled workman might make: British Franco Electric Pty Limited v Dowling Plastics Pty Limited; Macrae Knitting Mills Limited; J Rapee & Co Pty Limited at 588 per Gummow J.; and Skedelski v Underwood (1990) 17 IPR 161 per Lockhart J. at 169-170.
What constitutes a variant commonly used in the trade is a question of fact. The trade variant must be one commonly known and used in connection with a particular article or class of article: Aluminium Specialities Pty Limited v Ibis Building Products Pty Limited (1982) 42 ALR 127.
Mere workshop variations 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: Re S Travers Limited's Application (1951) 68 RPC 255 at 258.
It is well established that whether a design is novel is a matter of fact to be decided by the eye. It has been said in the cases that the eye alone is to be the judge of novelty of a design. There are numerous cases that say this, for example, Moody v Tree (1892) 9 RPC 333; Jones & Attwood Limited v National Radiator Co Limited (1928) 45 RPC 71; and Dart Industries v Decor Corp per Lockhart J. at 408-409.
With these principles in mind I return to the facts of the case.
I accept the evidence of Mr McCallum and Mr Frazer (which is supported by a body of other evidence) 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.
Looking first to the connection, I find that the use of the U-pin to connect the support stands to the stringers is common to the trade and does not reflect novelty or originality. U-pins, cloven pins and bolts are well-known methods of connecting components in conveyor structures. U-pins have been used for this purpose for over 30 years. There are work practices of long standing in the mining industry which have encouraged the use of U-pins in place of nuts and bolts as a means of connecting components in conveyor structures. Different methods of connecting components in conveyor structures are common trade variants.
Secondly, I note that counsel for Conrol attached particular significance to the way in which the outside vertical arms of the transoms come down over the outside of the stringer, a feature which, he submitted, led to tiltability of the transom.
The transom assembly itself, in my opinion, is neither new nor original. And the fact that the transom assembly is connected to the outermost surface of the stringer is a common trade variant. The evidence establishes, for example, that transom assemblies are not always connected to the top of the stringer. Mr Frazer gave evidence that he had seen a transom affixed to the outside of the stringer by means of bolts to ensure stability as long ago as 1965. He had not seen a U-pin used for this purpose, but only to attach the transom to the top of the stringer. He said that considerations which would lead a designer or tradesman to affix a transom assembly to the outside of the stringer, as opposed to the top or the inside of the stringer, are considerations of height and loading. He observed that there are quite a few height constraints in a coalmine.
It is true that no documentary material was produced in evidence to support the fact that transoms have been attached to stringers on the outside of the stringers; but there are photographs of structures in evidence in which the transom assemblies are connected to the stringers otherwise than on top.
Also, as I said earlier, I accept Mr Frazer as a truthful and reliable witness, and I accept his evidence to which I referred above.
According to Mr McCallum's evidence, which I have also said I accept, apart from the means of connection of the transom to the stringer, there is nothing new or original in the configuration of the transom assembly itself. Aspects of the transom assembly other than those mentioned are simply determined by the practical requirements of each case. For example, the choice of a 3 or a 5 roller configuration depends upon the width of the conveyor belt being used. And in any case, the transom assembly closely resembles transom assemblies which formed part of the prior art over some years before the priority date.
Finally, the registered design shows that one of the transom assemblies has been partially disconnected, and that the U-pins have been partially disconnected to cause the assembly to tilt. In spite of this, it is plain from the evidence that, when the conveyor belt is in operation, all transoms must be upright. The way in which the structure is depicted in the registered design does not reflect the natural condition of the structure as assembled or as used. The particular depiction of the structure of the transom assembly, incorporating tilting, is, in my opinion, a difference only (a) in an immaterial detail from designs of transoms and transom assemblies which were part of the prior art in Australia before the priority date and (b) in features commonly used in the relevant trade on earlier designs of transoms and transom assemblies. It is true that the design in suit shows the vertical arms of the transoms coming down over the outside of the stringer; that this may lead to tiltability of the transom; and that this produces a different outline from previous designs. But I cannot see this as a substantial difference from the fundamental form of conveyor structures or transom assemblies in the trade over many years before application was made to register the design in suit.
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.
There is no issue in the case about whether the registration of the design in suit is, to use the language of Wootton J. in British Franco Electric at 461, 'a mere colourable abuse of the Designs Act', so I express no view either way on that question.
Infringement
Although not strictly necessary to consider this question I shall do so because evidence was led and submissions were made about it.
Conrol's case is that the respondents infringed the registered design by applying an obvious or fraudulent imitation of it to relevant articles.
In addition to the evidence to which I referred earlier, the following evidence bears on the question of infringement.
When Meco received the invitation to tender for the supply of conveyor structures from KCC for use in its Westcliff and Tahmoor collieries, it was Mr McCallum's understanding that, in accordance with the usual practice of collieries to ensure interchangeability of structure, KCC required conveyor structures identical to the structure then used by it at the Tahmoor colliery.
Mr McCallum was aware that the conveyor structure installed at the Tahmoor colliery had been manufactured and supplied by Conrol. Neither at the time Meco received the invitation to tender from KCC, nor at the time Meco submitted its tender was Mr McCallum aware that Conrol was the proprietor of any patent or design registration concerning the Conrol module or of any other monopoly rights in the Conrol module.
Following a meeting between Mr McCallum and engineers of KCC in September 1993, improvements were made to the structure to be supplied to KCC by Meco, namely:
'(1)a rip bar was installed from the top of the return roller bracket angled down and attached to the cross bar of the leg giving added protection to the belt from the edge of the bracket if a roller comes out;
(2)the return roller brackets were placed below the cross bar instead of protruding above the bar again to protect the belt from rips; and
(3)the brace on the transom was made from angle iron instead of pressed bar so that the structure could be fully welded instead of fitted by means of notches, to provide more strength.'
KCC approved the use by Meco of its cloven pins to connect the transoms to the stringers. KCC made it clear that it would like to use them to join the stringers to the stands as well as the transoms.
Professor Frost gave evidence. He is an Associate Professor in the School of Mechanical and Manufacturing Engineering at the University of New South Wales and has held that position since 1 January 1994. Before then he was a lecturer and later senior lecturer in that school. He was appointed a lecturer in February 1978 and has taught primarily in the area of mechanical design and in the engineering science areas of statics, dynamics and mechanics of solids.
Professor Frost examined the registered design, drawings of the conveyor module from which the prototype was manufactured by Stratford for Meco for presentation to KCC,
and later drawings that were prepared after the threat of litigation by Conrol to Meco and Stratford. It will be remembered that Meco and Stratford, by letter from their patent attorneys of 7 September 1993 to the patent attorneys of Conrol said, without admissions, that they would refrain from making or causing to be made conveyor belts or transoms in the form of those depicted in the registered design. The drawings of the conveyor module as ultimately produced by Stratford for Meco and sold to KCC differed from the earlier drawings.
Professor Frost gave evidence in some detail in his affidavit (he was not cross-examined) which in substance was to the effect that the prototype produced initially by Stratford for Meco for supply to KCC was to a design which was overwhelmingly similar to the registered design, and that modifications made thereafter to the design employed in the production of the articles that were in fact supplied by Meco to KCC possessed no material differences to the earlier design. It is necessary to examine the Professor's affidavit evidence in some detail.
Professor Frost was shown drawings of the conveyor module manufactured by Stratford for Meco. He was also shown a perspective drawing prepared by a commercial artist, on the basis of the information contained in the drawings. He checked the perspective drawing against the drawings of the alleged infringing article which he had before him and was satisfied that it faithfully represented their contents, with the exception that it shows pairs of straight pins used to connect the components which are joined by a short length of chain; the detail of the pins and chains is absent from the actual four drawings of the respondent's article. He said that, when he compared the perspective drawing with the illustration shown in the registered design, he was 'immediately conscious of an overwhelming similarity between the two devices'. This similarity arose because:
'(a)In each depiction, the overall device is of the same proportions.
(b)In each depiction, the device consists of the same group of major components.
(c)In each depiction, corresponding components are of the same configuration in all but a few details.
(d)In each depiction, corresponding components are of the same proportions, in all but a few details.
(e)In each depiction, corresponding components are assembled into the same relative positions and configurations.'
He said that the detailed differences referred to in (c) and (d) above are those which he previously mentioned (which I set out earlier), and that, compared to the similarities, the differences are few and minor. He said:
'They do little, if anything, to reduce the immediate impression of an overwhelming similarity between the two devices.'
The Professor said that the four drawings which he had before him were as follows:
'(a)Westcliff drawing No. B05464-620 issue 2, entitled "1500mm 45 degree 5 Roll Fixtrough 4 Roll Return Structure" dated 10.9.93.
(b)Westcliff drawing No. B05469-820 issue 5, entitled "1500mm 45 degree 5 Roll Transom Details", dated 28.4.94.
(c)Westcliff drawing No. B05470-820 issue 4, entitled "1500mm 4 Roll Support Stand Details", dated 28.10.93.
(d)Westcliff drawing No. B05414-820 issue 3, entitled "1500mm Stringer Details", dated 7.12.93.'
The Professor said that he had been shown all the prior issues of each of the two Westcliff drawings referred to in (a) and (b) above. He said that it is apparently the case (and this was not disputed) that each new drawing was effectively issue O and it became re-issue 1 after the first change and so on. He said in relation to the Westcliff drawing No. B05464-620:
'(0)The original drawing, dated 27.7.93, shows:
(a)three kidney shaped holes at the bottom of each end of each transom outer bracket,
(b)no hole below the slot in the top end of each transom outer bracket,
(c)four return rollers, and
(d)a "U" type pin is called up.
(i)Issue 1 of this drawing, dated 26.8.93, shows:
(a)two short angle brackets at each end of the square hollow tube forming the main member of each transom have been added,
(b)the height of the return belt has been changed,
(c)the return roller angles have been changed for the outer rollers from 7.5 degrees to 5 degrees, and
(d)rip protection bars for the return belt have been added.
(ii)Issue 2 of this drawing, dated 10.9.93, shows:
(a)the "cloven" style of pin is called up,
(b)the kidney shaped holes have been replaced by round hole pairs,
(c)the bottom such hole pair in each pattern of three such hole pairs has been moved across to the other side of the centreline of the square hollow tube forming the main cross member of the transom and is now shown with less offset from the centreline so that it is no longer below the centreline of an upper hole pair in the pattern of the hole pairs, and
(d)the short angle brackets referred to in (i)(a) above have been deleted.'
In relation to Westcliff drawing No. B05469-820, the Professor said:
'(i)Issue 1 of this drawing, dated 27.7.93, shows:
(a)three kidney shaped holes in the outer brackets,
(b)details of the kidney shaped holes, detail B, and
(c)two short lengths of angle at each end of the transom cross member.
(ii)Issue 2 of this drawing, dated 31.8.93, shows:
(a)changes to welding details and symbols only.
(iii)Issue 3 of this drawing, dated 3.9.93, shows:
(a)the kidney shaped slots have been replaced by round hole pairs,
(b)the short angle pieces at the ends of the transom cross member have been deleted, and
(c)the bottom such hole pair in each pattern of three such hole pairs has been moved across to the other side of the centreline of the square hollow tube forming the main member of the transom and is now shown with less offset from the centreline so that it is no longer below the centreline of an upper hole pair in the pattern of hole pairs.
(iv)Issue 4 of this drawing, dated 28.10.93, shows:
(a)weld changes only.
(v)Issue 5 of this drawing, dated 28.4.94, shows:
(a)roller support bracket detail has been changed to widen the bracket.'
Professor Frost said that, on the basis of the information contained in the earlier issues of the two Westcliff drawings, it was his opinion that the first issue of those drawings was a depiction of an article substantially identical to that depicted in the registered design, and that the subsequent issues had been prepared to incorporate changes which would distinguish the article made in accordance with them from that depicted in the registered design.
It was conceded by the respondents that, if the registered design is valid, then the prototype assembled by the respondents constitutes an obvious imitation of that design. Fraudulent imitation was in dispute.
In my view, although there was plainly copying, there can be no question of fraudulent imitation in relation to the prototype. The copying occurred because in essence it had to occur in view of the requirement of KCC that the conveyor structures to be produced pursuant to the tender were identical to the structure then used by it at the Tahmoor colliery, a structure which had been produced by Conrol based on the registered design.
I accept Mr McCallum's evidence that neither at the time Meco received the invitation to tender from KCC, nor at the time Meco submitted its tender, was he aware that Conrol was the proprietor of the registered design or indeed of any other monopoly rights in the Conrol module.
Fraudulent imitation requires that the alleged infringement is knowingly, consciously or deliberately based on or derived from the registration. Dishonesty, or fraud in its ordinary meaning, are not, however, necessary elements: Dart Industries Inc v Decor Corp per Lockhart J. at 411-412; and Turbo Tek Enterprises Inc v Sperling Enterprises Pty Limited (1989) 23 FCR 331.
At the time of copying for the purposes of the fabrication of the prototype, the respondents had no notice of Conrol's registered design. Accordingly, there was no knowing, conscious or deliberate intent to copy the design at this point, whether dishonest or otherwise.
The articles produced by Stratford for Meco and sold to KCC after the modifications to the design which founded the prototype are in my opinion obvious imitations of the registered design. Professor Frost stated (as mentioned earlier) the differences between the registered design and the alleged infringing articles. All but two of the differences are differences in detail only which, in my opinion, amount to trade variants. The two differences beyond variations of the trade are: first, the name 'Meco' which appears on the alleged infringing articles, along with the two companion keyhole slots appearing on each of the transoms; and second, the point at which each of the transom arms commences to bend inward. Notwithstanding those differences the articles sold to KCC are obvious imitations of the registered design.
It is true that the articles were produced after Meco had given an undertaking not to supply or deliver, or cause to be supplied, articles in the form of the prototype. However, it was intended that the modifications would overcome the problems associated with the registered design. In the light of the evidence of Mr McCallum it cannot be concluded that there was a fraudulent imitation.
If I had been of the view that the registered design were valid, I would have concluded that the prototype was an obvious imitation of the registered design, that the article as delivered to KCC was an obvious imitation, but that neither article was a fraudulent imitation.
In the result the Court makes the following orders:
That the application is dismissed.
That registered design no. 111016 is invalid, and the Register of Designs be rectified by expunging the entry of design no. 111016.
That the costs of the respondents of the proceeding including the costs of the cross-claim be paid by the applicant.
I certify that this and the preceding forty-two (42) pages are a true copy of the reasons for judgment herein of the Honourable Justice Lockhart.
Associate
Dated: 21 June 1996
Counsel for the Applicant : Mr R J Webb
Solicitors for the Applicant : Holman Webb
Counsel for the Respondents : Mr J V Nicholas
Solicitors for the Respondents: Sprusons
Date of Hearing : 25, 26 March 1996
Date of Judgment : 21 June 1996
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