Dias Aluminium Products Pty Ltd v Ullrich Aluminium Pty Ltd

[2005] FCA 1297

FEDERAL COURT OF AUSTRALIA

Dias Aluminium Products Pty Ltd v Ullrich Aluminium Pty Ltd
[2005] FCA 1297

INTELLECTUAL PROPERTY – registered designs – components for wardrobe doors – whether registered designs invalid by reason of prior art or because not distinctive over fundamental form – whether registered designs novel or original – whether registered designs infringed.

DESIGNS – infringement alleged in respect of components for wardrobe door – issues of obvious or fraudulent imitation.

EVIDENCE – whether evidence of prior publication and prior use admissible.

Designs Act 1906 (Cth) ss 4(1), 18 (1), 17(1), 30(1)
Designs Act 2003 (Cth) ss 151(3), 156(3)
Evidence Act 1995 (Cth) s 65

A C Components Pty Ltd v Jadon Investments Pty Ltd & Ors (1992) 23 IPR 594 referred to
Allen Manufacturing Co Pty Ltd v McCallum & Co Pty Ltd (2001) 53 IPR 400 referred to
Allen West & Co Ltd v British Westinghouse Electric and Manufacturing Co Ltd [1916] 33 RPC 157 referred to
Aspro-Nicholas Ltd’s Design Application [1974] 91 RPC 645 referred to
Australian Building Industries Pty Ltd v Woodman McDonald (Glass) Pty Ltd (1986) 84 FLR 454 referred to
Autocaps (Aust) Pty Ltd v Pro-Kit Pty Ltd (1999) 46 IPR 339 cited
Barker v Associated Manufacturers (Gowns and Mantles) Ltd [1933] 50 RPC 332 referred to
Conrol Pty Ltd v Meco McCallum Pty Ltd & Ors (1996) 34 IPR 517 followed
Conrol Pty Ltd v Meco McCallum Pty Ltd & Anor (1997) 80 FCR 264 followed
Dalgety Australia Operations Ltd v F F Seeley Nominees Pty Ltd (1986) 10 FCR 403 followed
Dart Industries Inc & Anor v Décor Corporation Pty Ltd (1989) 15 IPR 403 applied
D Sebel & Co Ltd v National Art Metal Co Pty Ltd (1965) 10 FLR 224 followed
Dunlop Rubber Co Ltd v Golf Ball Developments Ltd [1931] 48 RPC 268 followed
General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] 89 RPC 457 referred to
Firmagroup Australia Pty Ltd v Byrne & Davidson Doors (Vic) Pty Ltd (1987) 180 CLR 483 followed
Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 22 IPR 1 followed
Foggin v Lacey (2003) 57 IPR 225 followed
Hill v Evans (1862) 31 LJ (Ch) 457 referred to

Household Articles Ltd’s Registered Design [1998] FSR 676 followed

Jones v Dunkel (1959) 101 CLR 298 referred to

Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd (1999) 91 FCR 167 followed

Le May v Welch (1883) 28 Ch D 24 followed
Lewis Falk Ltd v Jacobwitz [1944] 61 RPC 116 referred to
L J Fisher & Co Ltd v Fabtile Industries Pty Ltd (1979) 1A IPR 565 followed
Macrae Knitting Mills Ltd v Lowes Ltd (1936) 55 CLR 725 followed
Malleys Ltd v J W Tomlin Pty Ltd (1961) 180 CLR 120 applied
Mangraviti v Vardi (1976) 28 FLR 173 followed
Phillips v Harbro Rubber Co [1920] 37 RPC 233 followed
Polyaire Pty Ltd v K-Aire Pty Ltd (2005) 79 ALJR 1205 followed
Pressler & Co Ltd v Gartside & Co (of Manchester) Ltd & Widd Owen Ltd [1933] 50 RPC 240 referred to
Rapee (J) & Co Pty Ltd v Kas Cushions Pty Ltd& Anor (1989) 15 IPR 577 followed
Re Plackett’s Registered Design [1892] 9 RPC 436 referred to
Re Wolanski’s Registered Design (1953) 88 CLR 278 applied
Richsell Pty Ltd v Khoury (1994) 30 IPR 129 followed
Rosedale Associated Manufacturers Ltd v Airfix Products Ltd [1957] 74 RPC 239 followed
Simmons v Mathieson & Co Ltd [1911] 28 RPC 486 followed
Tu v Pakway Australia Pty Ltd (t/as Pakway Plastics) (2004) 62 IPR 637 referred to
Turbo Tek Enterprises Inc & Anor v Sperling Enterprises Pty Ltd (1989) 23 FCR 331 followed
Wanem Pty Ltd v Tekiela (1990) 19 IPR 435 followed
Wingate’s Registered Design [1935] 52 RPC 126 followed

DIAS ALUMINIUM PRODUCTS PTY LTD v ULLRICH ALUMINIUM PRODUCTS PTY LTD
VID 123 of 2003

CRENNAN J
14 SEPTEMBER 2005
MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	V123 OF 2002

BETWEEN:	DIAS ALUMINIUM PRODUCTS PTY LTD APPLICANT
AND:	ULLRICH ALUMINIUM PTY LTD RESPONDENT
BETWEEN:	ULLRICH ALUMINIUM PTY LTD CROSS-CLAIMANT
AND:	DIAS ALUMINIUM PRODUCTS PTY LTD CROSS-RESPONDENT
JUDGE:	CRENNAN J
DATE OF ORDER:	14 SEPTEMBER 2005
WHERE MADE:	MELBOURNE

THE COURT ORDERS THAT:

1.On or before 23 September 2005, the parties file and serve submissions concerning the orders which should be made to give effect to the reasons for judgment delivered today, including orders as to costs.

2.        The proceeding be adjourned to a date to be fixed.

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

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	V123 OF 2002

BETWEEN:	DIAS ALUMINIUM PRODUCTS PTY LTD APPLICANT
AND:	ULLRICH ALUMINIUM PTY LTD RESPONDENT
BETWEEN:	ULLRICH ALUMINIUM PTY LTD CROSS-CLAIMANT
AND:	DIAS ALUMINIUM PRODUCTS PTY LTD CROSS-RESPONDENT

JUDGE:	CRENNAN J
DATE:	14 SEPTEMBER 2005
PLACE:	MELBOURNE

REASONS FOR JUDGMENT

1. This proceeding concerns the alleged infringement of four registered designs for parts or components used in a sliding wardrobe door system on the basis of lack of novelty or originality.  There is also a cross-claim by the respondent to expunge three of the registered designs in suit from the Register of Designs.

2. The registered owner of the four registered designs is the applicant, Dias Aluminium Products Pty Ltd.

3. It is noted that although the Designs Act 1906 (Cth) (‘the Act’) was repealed with effect from 17 June 2004 by the current Designs Act 2003 (Cth) (‘the new Act’), by virtue of transitional provisions (s 151(3) and s 156(3)) of the new Act, the earlier Act applies here as this proceeding was pending immediately before the commencement of the new Act and pursuant to the transitional provisions this matter is to be decided as if the earlier Act were not repealed.

4. The statements of monopoly (s 20(5)) are as follows: 

   (1)Registered Design No. 115996 (registered 16 December 1992, with a priority date of 13 April 1992); ‘Monopoly is claimed in the features of shape and configuration of a wardrobe door panel stile of indefinite length and constant cross-section’ (the ‘applicant’s door panel stile’);

   (2)Registered Design No. 116380 (registered 22 February 1993, with a priority date of 13 July 1992); ‘Monopoly is claimed in the features of shape and configuration of a wardrobe door return jamb of indefinite length and constant cross section’ (the ‘applicant’s door return jamb’);

   (3)Registered Design No. 117096 (registered 19 May 1993, with a priority date of 17 June 1992); ‘Monopoly is claimed in the shape and configuration of a pair of guidance anti-jump tracking devices for sliding wardrobe doors as illustrated’ (the ‘applicant’s tracking device’); and

   (4)Registered Design No. 123036 (registered 23 March 1995, with a priority date of 27 July 1994); ‘Monopoly is claimed in the features of shape and configuration of a wardrobe door flush mirror stile of indefinite length’ (the ‘applicant’s flush mirror stile’),

   (collectively ‘the registered designs’).

5. The registered designs cover parts of a sliding wardrobe door system, whereby the vertical edges of the panel would be comprised of metal extrusions of either the applicant’s door panel stile, or the applicant’s flush mirror style if the panel of the door is a mirror. The applicant’s tracking device is affixed to the top horizontal edge of the door panel, ensuring the panel slides within its horizontal track in the top of the frame. The applicant’s door return jamb is the vertical edge of the doorframe, against which the sliding panels of the door are ‘returned’ or closed. All these parts are made separately and it can be noted that s 4(1) of the Act defines ‘article’ to include such parts.

6. The cross-claim in the proceeding seeks revocation of three of the above registered designs being the applicant’s door panel stile (Registered Design No. 115996), the applicant’s flush mirror stile (Registered Design No. 123036) and the applicant’s door return jamb (Registered Design No. 116380), on the grounds that they are not new or original.

7. The registered designs are used by the applicant in respect of a number of sliding wardrobe door systems.  The first such system was the ‘Space Maker’ wardrobe door system made and sold in 1987, which was followed by the ‘Space Maker Softline Sliding Wardrobe’, called the ‘Softline’ system and then the ‘Mirrorline’ system.  The Softline system was introduced in July 1992 and was awarded an Australian Design Award on 1 December 1993.  It introduced a grip stile. The Mirrorline system was introduced in January 1995.  It was adapted to include mirrored panel board.

8. It is relevant to note also that in approximately June 1992 a sliding wardrobe door system known as the ‘Magic Touch’ was introduced into Australia, being produced at the time by Aluminium Building Products (‘ABP’), a competitor of the applicant.

9. Later, the respondent and cross‑claimant (hereafter simply ‘respondent’) became involved in the distribution and sale of a wardrobe door system called the ‘V-Glide Wardrobe Door Suite’, receiving its components from a manufacturing company described in the evidence as Betta Glass (‘Betta’).  From about the time of the cessation of the agreement for supply with Betta, the respondent manufactured its own ‘V-Glide’ system.  It is in relation to the component parts of the V-Glide system, including the corresponding mirrored door panel version, that the applicant raises its claim for infringement of its abovementioned registered designs.

   The registered designs

10. Registered Design No. 115996 for the wardrobe door panel stile was described in some detail by Mr Brown (giving evidence for the applicant) as follows:

    ‘The shape described in the isometric view attached to the registration is complicated.

    On the left hand side there is a vertical blade which curves inward at the top and curves outward at its lower end.

    Slightly below the inward curving top edge is a horizontal blade which terminates on the right hand side with what appears to be a mirror image of the top third (approximately) of the left hand side vertical blade.  The right hand side blade is also curved inward.  It mirrors the shape of the top portion of the left hand side vertical member.

    On the centre line of the horizontal blade there is an additional vertical blade at right angles to the horizontal blade on the centre line of the horizontal blade.  This blade is not curved.

    The outward curving portion of the left hand side vertical member is likely to be intended to be a finger grip or finger pull panel.

    On both the left hand side vertical member and the centre line vertical member there is a small nib located on both members to the inward side.  This nib would appear to be a spacer or location feature.

    There is a similar nib on the lower edge on the right hand side curved vertical member . . .’

11. Registered Design No. 116380 for the wardrobe door return jamb was described by Mr Brown in some detail as follows:

    ‘[This] . . . shows an isometric view where the main part is a vertical blade.  At the top of the vertical blade is a t-section, which on its left hand side incorporates a radius curve which extends vertically in parallel with the vertical member for slightly less than one third of the vertical member’s length.  The inside surface of the short vertical member at the end of the radius curve incorporates some fine lines or fine ribbed details within the extrusion.  Directly opposite these fine lines is a small lip or rounded lip on the inside surface of the vertical member facing the ribs on the short member.

    On the isometric view . . . at the point where the vertical member meets the t‑section, the right hand part of the t‑section appears to gently slope upwards by a dimension no more than the thickness of the extruded blade. 

    At the bottom edge of the vertical blade at right angles to the vertical blade projecting towards the right hand side.  The length of this blade appears to be identical to the length of the slightly upward sloping top blade.’

12. Registered Design No. 117096 for the pair of guidance, anti‑jump tracking devices for sliding wardrobe doors was also described by Mr Brown as follows:

    ‘The design . . . consists of a central panel or bar from the top side of which extend two arms in a curved form.  There are two similar arms on the bottom edge of the central bar making four arms in total.  The arms are integral with the central bar.

    One side of the central bar is extended to the side, so as to provide a stop or spacer feature.

    On a transecting notional centre line of the central bar there is a circular moulded boss formed integrally with the central bar shaped so as to receive and locate a screw.  This boss extends above one edge of the central bar and sits neatly under the two extended curved arms on the edge or top side of the central bar.’

    In addition to the central bar and its various details, a small cap is provided to fit to the end of an assembly pin or screw.  This appears to cap or protect the end of the screw.  Whilst generally the respondent’s counsel did not challenge these detailed descriptions, complaint was made that the reference in this description to the ‘stop or spacer feature’ insufficiently emphasised that feature, which was conceded by Mr Brown, under cross‑examination, to be a distinct ‘leg’ on the applicant’s design.

13. Registered Design No. 123036 for the wardrobe door flush mirror stile was described in some detail by Mr Brown as follows:

    ‘The design registration 123036 shows an isometric view. 

    The isometric view shows a complex form consisting of a number of straight vertical and horizontal blades and one curved shape.

    The main shape is seen as a horizontal blade from the centreline of which extends in a downward direction a vertical blade. The blades meet at a right angle.  At the Left had (sic) end of the horizontal blade is a second downward vertical blade which appears to be the same length as the centreline vertical blade.  This blade also meets the horizontal blade at a right angle.  The two vertical blades have similar features found on their inside faces in the same position on each blade.

    The features are a grooved section at the bottom of each blade, extending approximately for one third the length of the blade.

    The second feature is a short rib or nib located on each inside face approximately one quarter of the length of the blade down from where the vertical blade meets with the horizontal blade.  There are two additional major deign elements to the isometric view.  To the left hand side of the top of the horizontal blade is a further horizontal blade approximately half the length of the previously described horizontal blade.

    The short horizontal blade is parallel to and joined to the longer horizontal blade.  The joining part is a short blade which extends between the two parallel horizontal blades at an angle of approximately 45 degrees.  The angled blade joins the longer horizontal blade on its top surface inboard from its left hand edge.

    The second major feature is a curved blade which is attached to the horizontal blade at its right hand end.  A part of the curved blade extends above the top surface of the horizontal blade.  It extends to the same height and appears to align with the short horizontal blade.

    On the underside of the horizontal blade there is a small nib extending downwards and there is a small corner block or nib where the underside of the curved blade joins with the underside of the horizontal blade.

    A further short rib extends from the inside face of the curved blade and it appears to be positioned to be in line with the two inward facing nibs on the inside faces of the vertical blades.

    A further short rib extends from the inside face of the curved blade and it appears to be positioned to be in line with the two inward facing nibs on the inside faces of the vertical blades.

    From the above it can be deduced that the isometric view of registered design 123036 is a most complex design, the main parts of which I have described as:

    -the main horizontal blade

    -the left hand vertical blade

    -the centreline vertical blade

    -the short parallel horizontal blade

    -the right hand side curved blade

    A number of small features are also present in the form of nibs or small ribs.’

    The drawings illustrating the shape and configuration of the registered designs as they appear in the Register of Designs are included in Annexures A, B, C and D to this judgment.

14. For the purposes of determining infringement, whether by obvious or fraudulent imitation, it will be necessary to compare each of the four registered designs (and their representations) with articles alleged to infringe.

15. The applicant alleges that Registered Design No. 115996 is infringed by the respondent’s product part AS9530 (the ‘respondent’s door panel stile’).  The respondent admits it has offered for sale and sold this product since June 2001.

16. The applicant alleges that Registered Design No. 116380 is infringed by the respondent’s part AS9534 (‘the respondent’s door jamb return’).  The respondent admits it has offered for sale and sold this product since June 2001.

17. The applicant alleges that Registered Design No. 117096 is infringed by the respondent’s product which was known under the respondent’s product code as VGHG, and known also as the ‘K guide’ or ‘Head Guide’ (the ‘respondent’s tracking device’).  The respondent admits it has offered and sold this product since October 2000.

18. The applicant alleges that Registered Design No. 123036 is infringed by the respondent’s part AS31739 (the ‘respondent’s frameless stile’).  The respondent admits it has offered for sale and sold this product since June 2001.

19. The drawings illustrating the shape and configuration of the respondent’s allegedly infringing articles are included in Annexures E, F, G and H to this judgment.

    The provisions of the Act

20. To appreciate the bases upon which infringement is alleged and invalidity is asserted it is necessary to set out applicable provisions of the Act. Section 4(1) includes the following definition:

    ‘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.’

21. Section 18(1) provides that an application for registration 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.’

22. Section 17(1) relevantly provides:

    ‘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;’

23. The registered proprietor of a registered design has a monopoly in a design.  Section 30(1) deals with infringement of the registered proprietor’s monopoly and relevantly provides:

    ‘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; . . .’

24. Here the applicant accepts that to succeed it must show that the respondent has applied, to the relevant articles, designs which are obvious or fraudulent imitations of each of the four registered designs. 

25. The legislative provisions make it clear that a registered design protects the appearance (of an article) or as it was put in Russell‑Clarke on Copyright in Industrial Designs (1930) p 17, ‘one particular individual and specific appearance’, as quoted by Kitto J in Re Wolanski’s Registered Design (1953) 88 CLR 278 at 279 (‘Wolanski’) and quoted in turn by Gummow J in Rapee (J) & Co Pty Ltd v Kas Cushions Pty Ltd & Anor (1989) 15 IPR 577 at 582 (‘Rapee’).  The appearance must be ‘special or distinctive’: Dart Industries Inc & Anor v Décor Corporation Pty Ltd (1989) 15 IPR 403 at 408 per Lockhart J (with whom Jenkinson and Gummow JJ agreed) (‘Dart v Décor’).

1. Whether an individual ‘appearance’ is new or original over prior art and whether or not an allegedly infringing article infringes the registered proprietor’s monopoly are matters to be determined by the eye: Malleys Ltd v J W Tomlin Pty Ltd (1961) 180 CLR 120 at 123 (‘Malleys’).  The same point was made earlier, aphoristically, by Kitto J in Wolanski at 281:

   ‘. . . the eye, like the heart according to Pascal, has its reasons that reason does not know.’

2. There was extensive expert evidence filed by both parties in relation to the issues.  As observed by Lockhart J in Dart v Décor at 408-409:

   ‘ . . . in my view, the law in Australia . . . was that it is for the court to determine the meaning of a design in proceedings under the Act, whether the central question be the meaning of the design, novelty or infringement. I observed that, while some designs are simple so that the court needs no expert evidence to interpret them, other designs are complex and judges require technical assistance in order to understand them. Such evidence is plainly admissible, but ultimately it is for the court to rule on the meaning of a design. Similarly, prior art may be a fairly simple matter in a particular case, requiring little or no technical evidence. On the other hand, the understanding and interpretation of prior art may call for expert assistance to be provided to the court for similar reasons. I see no objection in an appropriate case to evidence being received from persons in the relevant trade or industry or members of the public directed to the question of infringement; but it is for the court to determine that question with or without such evidence.’

3. To the extent that it remains the ‘court’s eye’ which must assess novelty or originality, expert evidence enables the court’s eye to be an ‘instructed eye’: L J Fisher & Co Ltd v Fabtile Industries Pty Ltd (1979) 1A IPR 565 at 572 per Fullagar J.

4. The applicant submitted that ‘the shapes under review are not so complex or intricate that they require considerable interpretative intervention from experts.’

   Validity

5. It is convenient to deal first with questions of the validity of the registered designs.  It will be necessary to deal with each registered design separately, noting however that some of the prior art has been raised as relevant to both Registered Design No. 115996 and Registered Design No. 123036.

6. The applicant relied on four affidavits from Mr John Robert Brown, an independent designs consultant, and an affidavit from Mr Ian David Paterson, the general manager of the applicant.  The respondent relied upon affidavits from: Mr Ernest Edward Ullrich, the Managing Director of the respondent; Mr Louis Walter Davies, a director of a company which manufactured aluminium windows and doors; Mr Donald James Begley, Research and Development Manager of Stegbar Pty Limited; Mr Craig Brennan, manager of a manufacturer of windows and doors; Mr Ross Doonan, who worked in the aluminium extrusion industry for some years; Professor John Redmond, Professor of Industrial Design at Monash University; Mr Geoffrey Wright, Divisional Manager of ABP; Mr Peter Mark Tompkins, State Manager of the respondent; Mr Kevin David Goldman, Managing Director of Design Investments Pty Ltd; and Mr Anthony John Oakley, the respondent’s Tasmanian Manager; and an outline of evidence of Mr Jeff Rotin.

   A ‘new or original design’ (s 17(1))

7. The general principles governing novelty or originality are well known and it is unnecessary to make lengthy reference to them. The requirements for ‘novelty or originality’ are alternative requirements for registrability under s 17(1) of the Act: Malleys at 125, cf the position in the United Kingdom (at least until 1989) explained in Aspro-Nicholas Ltd’s Design Application [1974] 91 RPC 645 at 651. In 1989 the Registered Designs Act 1949 (UK) (the ‘UK Act’) was amended so that a design was only required to be ‘new’.  It seems this change is not thought to have effected any change in the law since the terms were treated interchangeably prior to 1989: see H Laddie, P Prescott and M Vitoria, The Modern Law of Copyright and Designs, Vol 2, 3^rd edn, Butterworths, United Kingdom, 2000, 44.3-44.4.

8. As explained in Malleys’ case at 123, a novel design must have ‘sufficient individuality of appearance’ to distinguish it from ‘the fundamental form of an article’. 

9. When dealing with a design for commonplace articles, subtle differences may be enough to achieve sufficient individuality of appearance to qualify for registration: D Sebel & Co Ltd v National Art Metal Co Pty Ltd (1965) 10 FLR 224 at 227 per Jacobs J (‘Sebel’); see also Dalgety Australia Operations Ltd v F F Seeley Nominees Pty Ltd (1986) 10 FCR 403 at 417 per Beaumont J (‘Dalgety’).  However, such subtle differences must be more than ‘trifling changes’ which would not justify registration: Le May v Welch (1883) 28 Ch D 24 at 33-34 per Baggally LJ (‘Le May v Welch’). 

10. What the Act protects is ‘pattern, shape, configuration or ornament’, not function: Dart v Décor at 408 per Lockhart J.  If the features of a design are so general as to encompass several different appearances, the features are too general to be registrable and amount to a method of construction: Firmagroup Australia Pty Ltd v Byrne & Davidson Doors (Vic) Pty Ltd (1987) 180 CLR 483 at 487; see also Foggin v Lacey (2003) 57 IPR 225 (‘Foggin’) at 236, at [50]-[51] per Emmett J.

11. With a sliding wardrobe door design, as with a chair, startling novelty or originality cannot be expected.  As Jacobs J stated in Sebel at 226:

    ‘I think that it is most important to bear in mind in relation to such an article as 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.’

12. Nevertheless a design needs a level of clear distinctiveness over any prior art to qualify for registration as ‘new or original’: Le May v Welch at 33-34 per Baggally J; Macrae Knitting Mills Ltd v Lowes Ltd (1936) 55 CLR 725 at 729-730 per Dixon J, as he was then; Sebel at 228; Conrol Pty Ltd v Meco McCallum Pty Ltd & Ors (1996) 34 IPR 517 at 528 per Lockhart J (‘Conrol’at first instance’), affirmed on appeal in Conrol Pty Ltd v Meco McCallum Pty Ltd & Anor (1997) 80 FCR 264 (‘Conrol on appeal’); Dalgety at 416-418 per Beaumont J; Tu v Pakway Australia Pty Ltd (t/as Pakway Plastics) (2004) 62 IPR 637 at 665, at [114] per Kenny J (‘Tu’).

13. In this context the connections between novelty and infringement becomes apparent.  Just as small differences in design may be sufficient to distinguish a design of a commonplace item from its fundamental form and also from what has gone before, especially where there is a volume of prior art, equally small differences will be sufficient to avoid infringement: M Howe, Russell‑Clarke and Howe on Industrial Designs, 7^th edn, Sweet & Maxwell, London, at 3-152 (‘Russell‑Clarke and Howe’); see also the Australian authorities Sebel at 229 and Dart v Décor at 409, as referred to by Gummow J in Wanem Pty Ltd v Tekiela (1990) 19 IPR 435 at 439 (‘Wanem’); see also Tu at 665, at [114].

14. Features which can be found in the prior art can be combined to produce a novel visual result: Conrol at first instance at 529; Sebel at 227; Dalgety at 409 per Fisher J; Australian Building Industries Pty Ltd v Woodman McDonald (Glass) Pty Ltd (1986) 84 FLR 454 at 459 per Kelly ACJ; for an example from the English cases see Lewis Falk Ltd v Jacobwitz [1944] 61 RPC 116 at 124 per Morton J. In making the same point in Household Articles Ltd’s Registered Design [1998] FSR 676 (‘Household Articles’), Laddie J observed at 686:

    ‘A design can be novel even if it is made up entirely by blending together a number of old designs provided the resulting combination itself has a sufficiently distinctive appearance. It is only where features have been used before, and used commonly (or are immaterial) that the Act deems them to be novelty‑destroying.’

    Further, a novel result can occur where a number of elements of similarity to earlier designs are combined with new elements, which are different: Rapee at 590; Sebel at 227.

15. Listing the differences (between an allegedly infringing article and a registered design) ‘tends to exaggerate them compared with the overall visual impression’ as observed by Gyles J in Allen Manufacturing Co Pty Ltd v McCallum & Co Pty Ltd  (2001) 53 IPR 400 at 404; see also Autocaps (Aust) Pty Ltd v Pro-Kit Pty Ltd (1999) 46 IPR 339 at 363 per Finkelstein J (‘Autocaps’).  However, with infringement, it is the overall appearance rather than the differences which are in issue.  By way of contrast, assessments of whether differences are immaterial or substantial or of whether features (including variants) are ‘commonly used’ in a trade, necessitate attention to differences, especially when dealing with commonplace articles for domestic use, where the differences between one design and another may be subtle. 

    ‘differs only in immaterial details’ (s 17(1)(a))

16. When comparing an article alleged to infringe with a registered design it is necessary to assess differences between them qualitatively.  The question to be asked is whether the differences are ‘immaterial’ (s 17(1)(a)) or are ‘differences of substance’ (Sebel at 228).

17. Unless a statement of monopoly constrains the monopoly in some way, a registered design’s monopoly is in respect of the whole of the design: Rapee at 590; Sebel at 227.

    ‘differs only in features commonly used in the . . . trade’ (s 17(1)(a))

18. Whether or not a design contains features ‘commonly used in the relevant trade’ as set out in the second limb of s 17(1)(a) obliges a different enquiry from the enquiry as to whether a difference is ‘immaterial’. Lockhart J deals with the principles and authorities relevant to this second limb of s 17(1)(a) in Conrol at first instance at 529-530 as follows:

    ‘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 Ltd v Dowling Plastics Pty Ltd; Macrae Knitting Mills Ltd; J Rapee & Co Pty Ltd at IPR 588 per Gummow J; Skedelski v Underwood (1990) 17 IPR 161 per Lockhart J at 169-70.

    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 Ltd v Ibis Building Products Pty Ltd (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 Ltd’s Application (1958) 68 RPC 255 at 258.’

19. A feature may not be an ‘immaterial detail’ but may still be a variant ‘commonly used in the relevant trade’: Rapee at 590.

20. English authorities which refer to ‘trade variants’ (per Lord Moulton in Phillips v Harbro Rubber Co [1920] 37 RPC 233 at 240) and to ‘workshop alteration such as one would expect any competent workman to make’ (per Astbury J in Allen West & Co Ltd v British Westinghouse Electric and Manufacturing Co Ltd [1916] 33 RPC 157 at 164) reflect the section equivalent to s 17(1)(a), in the pre‑1989 version of the UK Act (s1(1)), which referred to ‘variants commonly used in the trade’.

21. ‘Common use’ is obviously distinguishable from ‘prior use’.  Evidence of ‘common use’ in the trade would require more than a production of isolated examples: Household Articles at 686.

22. The need for caution in relying on oral recollections seems to me to apply to evidence of ‘common use’ just as it does to evidence of ‘prior use’: Wingate’s Registered Design [1935] 52 RPC 126 at 134 (Farwell J) (‘Wingate’); Rapee at 588; Richsell Pty Ltd v Khoury (1994) 30 IPR 129 at 134 (‘Richsell’).

    ‘Registered, published or used in Australia’ (s 17(1)(a))

    ‘Registered’

23. The respondent cites two registered designs in its submissions regarding invalidity and there is no controversy that these designs are, in fact, registered. 

    ‘published’

24. Given the lack of definition of ‘published’ and ‘used’ within the Act itself, the applicant submitted that the distinction between the terms, which is implied, is that:

    (a)‘published’ refers to disclosure of the alleged prior art design through a document, without restrictions based on confidentiality or secrecy; and

    (b)‘use’ refers to the application of the alleged prior art design to relevant articles which then enter the public sphere, without, as s 17(1A) explicitly states, regard to ‘secret’ use.

25. ‘Published’ in the context of challenging the novelty of a design has a wider meaning than published in a document.  ‘Published’ means disclosed to the public and can occur in a printed publication, orally or through use involving disclosure to the public: Russell‑Clarke and Howe at 3-97.  It can be noted that jurisprudence in respect of publication under the UK Act developed in parallel with the pre‑1977 patent law in the United Kingdom and Australian jurisprudence followed suit.  As to the width of any relevant disclosure, publication will occur where the design is disclosed to, or made available to, the public without any restrictions as to secrecy or confidentiality: Pressler & Co Ltd v Gartside & Co (of Manchester) Ltd & Widd Owen Ltd [1933] 50 RPC 240 at 246 per Luxmore J; Rapee at 586.

26. As with patent law, the disclosure must be full and meaningful: Hill v Evans (1862) 31 LJ (Ch) 457 at 463 per Lord Westbury; General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] 89 RPC 457 at 484 (CA); and see also particularly Lord Evershed MR in Rosedale Associated Manufacturers Ltd v Airfix Products Ltd [1957] 74 RPC 239 (‘Rosedale’) at 244:

    ‘. . . if a document is to constitute prior publication then a reader of it, possessed of ordinary knowledge of the subject, must from his reading of the document be able at least to see the design in his mind’s eye and should not have to depend upon his own originality to construct the design from the ideas which the document may put into his head . . .

    The most that can, in my judgment, be said of Clarice Jones’ specification [allegedly constituting prior art disclosure] is that someone who read it with close attention and great patience might, if he had a certain amount of ingenuity, derive from it the idea that he could make, instead of the suggested two-piece mould, an object somewhat like a flower pot with a bottom similar to the bucket designed by the Respondents; and if he went on to add a handle, he would end by producing a toy bucket resembling fairly closely the bucket of the Respondents’ design.  But this falls short, in my view, of prior publication.’

27. In Rapee at 586 after referring the passage quoted above from Rosedale, Gummow J stated that the ‘design or something substantially the same as the design should be disclosed with reasonable clarity.’  Constructing a ‘mosaic’ of features of a number of published designs will not amount to prior publication of the registered design: Conrol on appeal the Full Court did not endorse ‘mosaicing’; see also Household Articles at 686, at [27].

    ‘used’

28. ‘Used’ prior to the relevant date means the design (or a design differing only in ‘immaterial details’) had been applied to articles before the priority date of the design and used in public without restrictions such as confidentiality.

29. Where prior use is alleged, there must be clear evidence of use upon which the court can safely rely and unsupported recollections of witnesses will rarely be enough: Wingate at 133. Prior use can be constituted by the display of a dress embodying a design in the stock room of a factory, which is open to sales representatives: Barker v Associated Manufacturers (Gowns and Mantles) Ltd [1933] 50 RPC 332. However, in Wolanski at 283, the wearing of a concealed item of apparel did not constitute prior use of the relevant design.  In Richsell at 135 Kiefel J stated use would be satisfied in circumstances where ‘one may reasonably infer that the public was able to take advantage of and become acquainted with the features of the design.’

    Registered Design No. 115996 - door panel stile – prior art

30. A detailed description of the applicant’s door panel stile is set out in paragraph 10 above.

31. In the course of oral argument the respondent refined its position in relation to the instances of prior art alleged by it to deprive the applicant’s door panel stile of novelty or originality. The respondent’s case was opened on the basis that there were fourteen pieces of relevant prior art. Ten of those pieces of prior art were no longer relied on by the close of the hearing, but four additional pieces had been added, requiring me to consider eight pieces of prior art. As the case was refined by the time closing submissions were made, the only question now to be determined under s 17(1)(a) is whether the applicant’s door panel stile differs only in immaterial details or in features commonly used in the wardrobe door trade, from the following designs alleged to have been registered (in the case of Registered Design No. 96859), published or used in Australia before the priority date:

    (1)  Dowell Australia Drawing 2630 (‘Dowell stile’) dated 11 August 1987;

    (2)Olympic Aluminium Drawing for Wardrobe Sash Stile (‘Olympic stile’) dated 1 June 1987;

    (3)  Alcan Australia Drawing U6113R (‘Alcan U6113R’) dated 28 August 1987;

    (4)  Comalco Drawing E34404 (‘Comalco E34404’) dated 23 May 1989;

    (5)the cushioned panel stile which is the extrusion WD-11 in a Dias catalogue (‘WD-11’) dated 1987, Exhibit IDP-7 to the affidavit of Mr Ian Paterson Australian Registered Design No. 104756) dated 1987;

    (6)Uzit Drawing WA 7647 (‘Uzit stile’) dated 14 May 1987 (Exhibit KDG-2 to the affidavit of Mr Kevin Goldman, managing director of Design Investments Pty Ltd);

    (7)Aluminium Extrusions Drawing AE 820 (‘AE 820’) dated 18 November 1986 (attached to a letter from the Marketing Services Manager of Aluminium Extrusions and forming part of Exhibit AO-1 to the affidavit of Mr Anthony Oakley, the Tasmanian branch manager of the respondent); and

    (8)Australian Registered Design No. 96859, corresponding to Drawing AE820 (‘Registered Design No. 96859’).  The application was lodged on 19 December 1986 and registration was granted on 18 June 1987 (Exhibit AO-2 to the affidavit of Mr Anthony Oakley).

32. The respondent submits that the basic features of a door panel stile are apparent in the diagram in WD-11 appearing in the Dias catalogue, being a u-shaped channel, arc-like arms to retain a rubber buffer, a roller wheel location section (nibs) and a finger grip.  There is no doubt that an everyday item of domestic furniture, namely a sliding door for a wardrobe, and parts therefore which are separately made, will have ‘obvious limitations that exist in the addition of new features’ as remarked by Jacobs J of a chair design in Sebel at 227. Novelty (and registration) is not to be denied because of functional or purposeful features, such as a channel, arms to retain a buffer, a roller wheel location section and a finger grip, if a design which incorporates those features also has features of style or configuration sufficient to give the design individual character or appearance. Aesthetic appeal is easily distinguishable from functional aspects and this is well understood by manufacturers of articles for purchase by consumers and is appreciated by such consumers.

1. The features of the u-shaped channel, arc-like arms, a roller wheel location section and a finger grip in the applicant’s door panel stile show sufficient individuality of appearance to distinguish the applicant’s design from the ‘fundamental form’.  In the applicant’s door panel stile, the central vertical blade effectively bisects the top horizontal blade, creating two ‘halves’, only one of which has both interior horizontal nibs, which would act as the u-shaped channel into which the panel of the door would be positioned.  Also, in the applicant’s door panel stile, the arms which hold the rubber buffer in place do not merely meet the top horizontal blade and continue in a straight line forming the sides of the u‑channel.  Instead, the right arm continues down past the top horizontal blade, maintaining the arc of the arm, is met with an inward facing short blade and then finishes in a nib.  The internal angle formed by the extension of the right arm is ‘blocked in’ by what could be called an ‘inverted corner’.

2. The left arm of the applicant’s door panel stile continues past the horizontal blade to meet the outward extending blade which forms the finger grip. The angle at which the outward blade extends is obtuse, rather than a right angle. The length of the extended arm is proportionally longer than the outward blade, giving the left side of the stile a more elongated appearance.  In contrast, the outward blade of the finger grip in WD-11 is of a similar length to the side of its u-shaped channel and they intersect at what appears to be a right angle, resulting in a squarish, or rectilinear appearance.  Because of the similarity in length of the blades in the finger grip in WD-11, the outward blade appears to ‘jut out’ more prominently from the body of the u-shaped channel than the finger grip of the applicant’s door panel stile.

3. Similar comparisons may be drawn between the applicant’s door panel stile and Dowell stile.  However, the arms of the Dowell stile are straighter, intersecting with the horizontal blade at an almost 90 degree angle, and tapered towards the top, rather than being curved or arc-like. The blades which form the u-shaped channel in the Dowell stile are not exactly vertical, but angle slightly inwards, until the interior serrated grips, at which point they angle slightly outwards. The resulting visual impression is that of a more angular and linear stile. There are no serrations on the applicant’s door panel stile finger grip, whereas serrations, presumably to provide better ‘grip’, are found on both surfaces of the outward jutting blade of the Dowell stile finger grip.

4. Comparable features in the Olympic stile are evident, including arms designed to hold a rubber buffer along the edge of the sliding door panel.  However, these arms are straight vertical blades, with inward facing horizontal blades protruding at right angles, instead of the curved arms which are an individual feature on the applicant’s door panel stile.

5. The finger grips on the Olympic stile and that of WD-11 are both obviously wider at the tip than the base, where they intersect with the remainder of the stile.  In the Olympic stile, the finger grip is essentially wedge-shaped; in WD-11, the tip of the finger grip is a bulbous nib. The finger grip of the applicant’s door panel stile appears to be relatively constant in width from the base of the blade to the edges of the rounded tip. 

6. In Alcan U6113R, like the applicant’s door panel stile, the central vertical blade appears to bisect the horizontal blade into two compartments. The design shown in Alcan U6113R, however, has no arms designed to hold a rubber buffer at the top of the main horizontal blade.  Inside one of the upside down u-shaped channels are two short downward curving arms, creating a ‘c’ shape, which, because of their closeness and rounded appearance, stand out against the rest of the longer, linear blades comprising the stile. The finger grip is angular, protruding at a right angle.  It is also short, with a triangular wedge at its base extending from the tip of the vertical blade.  The length of the vertical blade of the finger grip is the same as the central vertical blade bisecting the horizontal blade.  While some aspects of the Alcan U6113R are similar to those of the applicant’s door panel stile, the sweeping lines of the arms, the obtuse angle of the finger grip blade and the absence of the interior curving arms sufficiently distinguishes the two designs.

7. Many of the same observations of the differences and similarities between Alcan U6113R and the applicant’s door panel stile may also be made in relation to the design evidenced in Comalco E34404, especially with regards to the appearance of the finger grip and the internal circular arms.  However, Comalco E34404 accommodates a rubber buffer by having its thicker top horizontal blade recessed to create triangular wedges. While the function may be similar to the function of the curved arms of the applicant’s door panel stile, the visual impression is quite different.

8. The use of serrations on the inside of the u-shaped channel, to better grip the door panel’s rubber or vinyl edging inserted into the stile is apparent in the Dowell stile, the Olympic stile, Alcan U6113R, Comalco E34404, AE280, and Registered Design No. 96859, as well as in the applicant’s door panel stile. The use of that particular feature would not appear to be novel or original as it stems from a functional requirement to securely hold the door panel.

9. AE820, and its corresponding Registered Design No. 96859, share a u-shaped channel with the applicant’s door panel stile. However, the closed rectangular attachment extending with curved arms from the base of the u-shaped channel is quite distinctive and no comparable feature in the applicant’s door panel stile is readily identifiable.  AE820 and its corresponding Registered Design No. 96859 do not serve to diminish any aspects of novelty or originality in the form of the applicant’s door panel stile.

10. The Uzit stile is described in the affidavit of Mr Ken David Goldman dated 20 August 2004.  The respondent asserts in its closing submissions that the features of the Uzit stile were significant in accommodating the roller assembly components of the sliding door in the inside of the door through the stile, rather than, as previously described underneath the door in its bottom rail.

11. The Uzit stile possesses some features of the applicant’s door panel stile, in that it has a curved finger grip and inverted u-shaped channel to receive the panel or mirror of the sliding door.  However, the Uzit stile’s finger grip is differently proportioned, in that it sweeps longer and in a more obtuse angle and curves back in towards the centre of the stile.  The arms designed to hold the rubber buffer strip are absent in the Uzit stile, along with one of the nibs inside the u-channel.  Whilst there are some features shared by the Uzit stile and the applicant’s door panel stile the Uzit stile does not deprive the applicant’s of its novelty or originality because the dominant visual impression left by the Uzit stile results from the ‘hook’ formed by the elongated finger grip and the linear appearance of the straight u-shaped channel walls which sit in parallel.  In contrast, the applicant’s door panel stile is decidedly curvilinear, an impression which is reinforced by the almost ‘horn-like’ appearance of the symmetrical inward curving rubber buffer nibs.

12. The respondent submitted in closing submissions:

    ‘…the features of the registered design consist of no more than a collection of features commonly used in the trade, with only slight variations to the precise shape and configuration of known features. These are mere trade variants which any skilled workman might employ.’

13. The applicant submitted in its closing submissions:

    ‘. . . the respondent cannot prove prior use of designs that differ only in immaterial details or as to features commonly used in the relevant [trade] or that are obvious adaptations simply through the production of a design drawing bearing a date before the priority date.  It must be able to prove that articles made to the design were publicly available and used in Australia before this date.’

14. Having considered each piece of prior art relied on by the respondent and assuming for the moment that there was publication or use prior to the relevant date, I am not satisfied that Registered Design No. 115996 differs from the prior art examples only in immaterial details.  Whilst a u-shaped channel, arms to retain a buffer, a roller wheel location section and a grip are a common base, to which the applicant’s registered design and prior art designs were applied, in other respects the applicant’s registered design is visually distinct and sufficiently so to support novelty; the differences I have described between it and the prior art examples are ‘differences of substance’, as that phrase was used by Jacobs J in Sebel at 228, which is what renders the differences sufficient for novelty purposes.

15. Whilst the drawing for the Olympic stile was referred to by Professor Redmond in his report as a prior publication there was no proof of authorship of the drawing and it was not clearly admissible under the provisions of the Evidence Act 1995 (Cth) (s 65). The applicant objected to the admissibility of this evidence. As to the objections to evidence upon which I reserved my decision, which were still pressed by the time of closing submissions, I consider that all reserved objections should be overruled. As has been done before in numerous cases while the evidence has been treated by me as admissible, it falls to be assessed for probative purposes in respect of s 17(1)(a) requirements. Whilst I have found that the differences between this drawing and the registered design are differences of substance, I would not infer the information contained in that drawing was necessarily disclosed at the relevant time, applying the standard required for publication referred to in Rosedale, Rapee and Richsell (all cited above).

16. In relation to prior use, Mr Begley, a research and development manager at Stegbar Pty Limited, gave evidence for the respondent of personal recollection that there were sales of articles made in accordance with Comalco E314404 from 1989 to the present and sales of articles made in accordance with Alcan U6113R in the period 1987‑1989.  Mr Begley had experience in respect of windows and doors rather than wardrobes.  Under cross-examination, his evidence of sales was less certain than that contained in his affidavit.  Nevertheless, I accept his evidence as evidence of some use in respect of such articles.  However, I do not accept in as evidence, upon which I could safely rely, of features commonly used in the wardrobe door trade.  This is not in any way to impugn his credit.

17. Mr Wright, who was a divisional manager of ABP, gave evidence of sale of articles made in accordance with the Dowell stile, although there was an unresolved issue about the precise form of articles sold before the relevant date as a result of amendments to the relevant drawing.  This could not be relied upon as evidence of features in common use. 

18. There was other anecdotal evidence of prior use of cited designs, which were essentially recollections of sale of parts a significant time ago.  Prior use of the Uzit stile was proven but no part was produced.  There was no production of any parts on the market at any identifiable time or any photographs of them.  There was no documentary evidence of sales.  Although the applicant’s part WD‑11 was admitted to have been sold before the priority date there was no evidence that it contained features in ‘common use’ at the relevant time.  A number of witnesses were unable to distinguish between functional and visual similarity and it was not possible to reach safe conclusions when certain changes were made to certain drawings, which may have affected the recollections of those giving evidence of sale of parts.  None of this evidence enabled me to conclude there were features in ‘common use’ in the wardrobe door trade, which would bar the applicant’s claims to novelty. 

19. As I have already stated the articles in question have functional features and whilst these features were in common use, the design in question had significant and substantial visual appeal over and above both the functional form and the prior art.  I have already stated that, to my eye, there are differences of substance between each piece of prior art and the design in question.  It can be noted there were extensive submissions from the applicant criticising Mr Doonan for his partiality in giving evidence on behalf of the respondent. In addition he was criticised for not having any relevant trade experience at the relevant time.  Mr Davies was also criticised for partiality.  The criticisms have been considered when weighing evidence given by them.  The respondent has not established, on the evidence of prior publication and/or prior use, that the features which were materially different over the prior art examples were features commonly used in the wardrobe door trade.  The material differences were not demonstrated to be mere trade variants which any skilled workman might employ.

20. The case for invalidity of Registered Design No. 115996 was not made out. 

    Registered Design No. 123036 - flush mirror stile - prior art

21. A detailed description of the applicant’s flush mirror stile design is set out in paragraph 13 above.  It is convenient to deal with this design next because the two stiles were treated together in the course of the hearing.

22. The respondent asserts that the applicant’s flush mirror stile was designed in order to accommodate a mirrored door panel, giving a ‘frameless’ appearance, while still retaining many of the features of the applicant’s door panel stile. On this basis the respondent submits that, under s 17(1)(a), the applicant’s door panel stile represents a prior registration which deprives the applicant’s flush mirror stile of the requisite novelty, given the earlier priority date of the applicant’s door panel stile.

23. The question to be determined is whether the applicant’s flush mirror stile differs only in immaterial details or in features commonly used in the wardrobe door trade from the applicant’s prior registered design for its door panel stile. 

24. According to the respondent’s assessment of the two designs, the only features which differ between the applicant’s door panel stile and the applicant’s flush mirror stile are that the protruding finger grip is absent and as Professor Redmond put it:

    ‘. . . the smooth curve of the left-hand channel wall is replaced with a z-like configuration, together with a squaring off of the top left hand corner of the u‑channel which creates a disjointed effect.’

25. In addition to the applicant’s door panel stile, the respondent relies on the following pieces of prior art in relation to the applicant’s flush mirror stile, which were cited as instances of relevant prior art in respect of the applicant’s door panel stile, as described above:

    (1)WD-11;

    (2)the Dowell stile;

    (3)the Olympic stile;

    (4)Alcan U6113R; and

    (5)Comalco E34404.

26. The respondent also relies on the following alleged instances of prior art: 

    (6)Boral Drawing D7047, (‘Boral D7047’) dated 29 October 1991 (Exhibit RD-3(c) to the affidavit of Mr Ross Doonan);

    (7)Boral Drawing D7099C (‘Boral D7099C’) dated 12 December 1991 (Exhibit RD-3(d) to the affidavit of Mr Ross Doonan) – (It can be noted  that the corresponding Registered Design No. 116148 was lodged 13 May 1992 and registered on 18 January 1993); and

    (8)Comalco Drawing E53138 (‘Comalco E53138’) dated 8 April.

    Thus, when the applicant’s registration for its door panel stile is included, there were nine pieces of prior art relied on by the time of closing submissions although the case on invalidity in respect of this registered design had been originally put forward on the basis of some seventeen pieces of allegedly relevant prior art.

27. It is noted that all of these instances of alleged prior art now relied upon bear dates antecedent to the priority date of the applicant’s flush mirror stile, 27 July 1994. 

28. The question to be determined is whether the applicant’s flush mirror stile differs only in immaterial details or in features commonly used in the relevant trade from any of the above listed instances of alleged prior art, which have been registered, published or used before the priority date.

29. Although each drawing or article is examined separately and compared with the design of the applicant’s flush mirror stile in order to determine its value or weight as prior art, for convenience, those pieces of alleged prior art which exhibit certain similarities are dealt with in these reasons together.

30. With regards to the alleged prior art which is submitted by the respondents to be common to both the applicant’s door panel stile and the applicant’s flush mirror stile, any comments above regarding the finger grip or the curved flow of the left arm along the length of the left side of the u-shaped channel to the finger grip are not applicable as these are not features of the applicant’s flush mirror stile.

31. WD-11, the Dowell stile, the Olympic stile and Boral D7047 all feature a single u‑shaped channel, a finger grip which protrudes at an angle close to 90 degrees from the end of the left side of the u-shaped channel and arms which extend from the top horizontal blade to hold or grip a rubber buffer.  The applicant’s flush mirror stile exhibits the two channels formed by the central vertical blade bisecting the upper horizontal blade, rather than a single u-shaped channel.  The visual impressions created by the presence of one u-shaped channel, or two channels, is quite different.

32. The horizontal blade on the applicant’s flush mirror stile which would, practically, act as the edge of the frame of the door panel and therefore also as the part which would be gripped when sliding the door open or closed is the blade which extends in a ‘z’ formation from the top edge of the left arm that arcs to hold the rubber buffer. When compared separately with each of WD-11, the Dowell stile, the Olympic stile and Boral D7047, the positioning, length, width and appearance dictated by the presence or absence of serrations imbues the horizontal blade of the applicant’s flush mirror stile with individual character appealing to the eye. The ‘disjointed z’ formation is a striking feature.  Extending from the tip of the left arm, visually it acts as a straight-lined foil to the curved arc of the arm on the right side.  The ‘disjointed z’ formation makes the applicant’s flush mirror stile distinctive and novel over the applicant’s prior registration for its door panel stile.

33. As described above, Alcan U6113R and Comalco E34404 are complex stiles which have two channels, a finger grip extending from the left side of the u-shaped channel and two internal arms which arc inside the u-shaped channel to form a distinctive ‘c’ shape.  Comalco E34404 also features the recessed section in the main horizontal blade to accommodate a rubber buffer insert.  No such recessed section or arms are identifiable in Alcan U6113R.  By virtue of the differently placed and formed finger grip, the presence of the ‘c’ within the u‑shaped channel, and the difference in or lack of accommodation of a rubber buffer, the visual impression which results from a combination of the attributes of these stiles do not serve to detract from the novelty or originality in the applicant’s flush mirror stile.

34. The extrusions represented in Boral D7099C and Comalco E53138 exhibit many similar features and have a congruent visual impression: each has a central vertical blade which bisects the horizontal blade.  Each has arc-like arms which would accommodate a rubber buffer and each possess a finger grip in the form of a rounded nib or a short round-ended blade is located at the bottom of the left vertical blade. However, the top horizontal blade of Comalco E53138 extends further than where the blade intersects with the right arced arm.

1. When Boral D7099C and Comalco E53138 are each separately compared with the applicant’s registered design for the flush mirror stile a number of similarities emerge, including the general impression of the u-shaped channels.  However, again, the overall visual impression of the applicant’s registered design for its flush mirror stile is distinguishable in the relationship between its curved and straight horizontal blades and to the eye of the Court, the registered design shows differences of substance over each piece of prior art which are sufficient to give it an individual character of appearance.  As Beaumont J said in Dalgety at 415 in the ultimate analysis the question of originality or novelty is ‘one of fact and impression.’

2. The submissions made by the parties in respect of this registered design were similar to those made in respect of Registered Design No. 115996.  The respondent submitted that the registered design had features close to features commonly used in the trade.  The applicant relied on the fact that some key features such as, the straightening of the u‑channel, the form of the protruding arm and its connection to the buffer holding feature, were absent from the prior art.

3. In addition to the evidence and arguments in relation to prior publication and prior use which have already been dealt with when considering Registered Design No. 115996 the applicant noted there was little difference between the applicant’s prior registered design and the respondent’s part AS9530.  Comalco E53138, produced by Mr Begley, was described by the applicant as ‘essentially the same in its form as part 7099.’  It was accepted that a part made in accordance with Boral B7099C had been used prior to the relevant priority date as it was introduced in the Magic Touch product.

4. Having considered the prior art relied on by the respondent which was prior published and/or used prior to the relevant priority date, I am not satisfied that Registered Design No. 123036 differs from the prior art examples only in immaterial details.  Whilst the designs in question have a common base already noted above, the applicant’s registered design has sufficient visual distinctiveness to support novelty.  The differences between this registered design and the prior art examples are ‘substantial’ (Sebel at 228).

5. There was no evidence which would permit a safe conclusion that the features which were materially different from the examples in the prior used were features which were commonly used in the wardrobe door trade.  It was not demonstrated that they were mere trade variants.

6. The case for invalidity of Registered Design No. 123036 was not made out.

   Registered Design No. 116380 - door return jamb – prior art

7. Throughout the presentation of oral evidence the applicant’s door return jamb was described as having a profile similar to a ‘hospital bed’ shape, as viewed from a side perspective.  The applicant’s door return jamb’s profile is comprised, basically, of an upside‑down u-shape of two short vertical ‘legs’, joined by a horizontal ‘bed’.  At one end of the ‘bed’ the vertical leg extends upwards and curves back over the top of the ‘bed’, creating a ‘canopy’. 

8. A detailed description of the applicant’s door return jamb has been set out in paragraph 11 above.

9. In the course of the trial, the respondent amended its cross-claim such that challenges to the validity of the applicant’s door return jamb were only made under s 17(1)(a) and not under s 17(1)(b). The question to be determined is whether the applicant’s door return jamb differs only in immaterial details or in features commonly used in the wardrobe door trade from a design that was published or used in Australia in respect of a door return jamb.

10. The applicant’s door return jamb is described as a ‘simple’ geometric form.

11. The respondent identified a number of designs or drawings that were said to constitute the relevant prior art in respect of the applicant’s door return jamb.

12. Although six pieces of prior art were introduced into evidence, by closing submissions the respondent relied on the following five pieces of prior art:

    (1)Aluminium Extrusions Drawing (Metalex) NB6304 (‘NB6304’) dated 20 September 1982;

    (2)Aluminium Extrusions Drawing NB7630 (‘NB7630’) dated February 1985;

    (3)Alcan Australia Drawing SKC734 (‘SKC734 ‘) dated May 1985;

    (4)Aluminium Extrusions Drawing AE8030 (‘AE8030’) dated 18 January 1989; and

    (5)The return jamb which is the extrusion WD-6 in a Dias catalogue (‘WD‑6’) dated 1987 (Exhibit IDP-7 to the affidavit of Mr Ian Paterson).

13. Having regard to these incidences of alleged prior art, the respondent submits that the applicant’s door return jamb does not go far beyond the basic form of the article, noting that the bottom half of the profile of the door return jamb is a u-shaped channel.  The size of this channel is determined by the rectangular door jamb which it is designed to accommodate.  The respondent asserts that, when compared with the prior art, the only areas in which the registered design exhibits differences are in the curvature of the panel retaining section of the top portion of the design and in the concavity in the panel housing legs.

14. The respondent submits that the basic form is exemplified by WD-6, sold extensively by Dias from about 1987, and NB7630, which according to the evidence was sold throughout Tasmania and New South Wales from late 1986 or early 1987.  Similarly, it was submitted by the respondent that the drawings in SKC734, NB7630, AE8030 and the extrusion shown in the Dias catalogue listed above all exhibit the main features of the basic door return jamb, with variations on the slight rounding of right angles and the presence of nibs or rounded edges at the end of the legs and canopy. 

15. The top portion of the applicant’s door return jamb differs from the fundamental form, in that it is a curved canopy, to the point where the extension of the vertical leg assumes a significantly curvilinear appearance, rather than the continued vertical line of the above incidences of alleged prior art.

16. The respondent notes, however, that a curved canopy was utilised in NB6304, a drawing dated 1982, as embodied in an article which the evidence indicated was sold by Noyes Bros Pty Limited (‘Noyes’) since 1987.  Further, the respondent submits that the adoption of a more curvilinear design than that contained in NB6304 reflected a design trend apparent in the design environment at that time about which Mr Wright gave evidence.  On this basis, the respondent argues that the adoption of a tighter radial curve in top portion’s canopy in the applicant’s door return jamb cannot confer sufficient novelty to merit registration.

17. It needs to be mentioned that the applicant mounted numerous challenges to the adequacy of proof in respect of each piece of prior art upon which the respondent relied.  It was alleged that NB6304 was not properly proven by either Mr Doonan, or Mr Davies, each of whom produced a copy.  The source of the drawing was not identified.  However, Mr Davies, who was employed by Noyes at St Leonards in January 1987 as a manager, gave detailed and persuasive evidence about a Noyes suite he described as AS7630 and what he called ‘the even older AS6304’.

18. It was also alleged that each of NB7630, SKC734 and EA8030 was not properly proven.  Mr Ullrich produced NB7630 which he said was for a part in the Ullrich catalogue since 1985.  No catalogue was produced.  Mr Oakely also produced another version of NB7630.

19. However, more critically, Mr Davies gave evidence that parts made to drawing NB6304 were sold from 1987.  No part was produced in court.  This evidence of Mr Davies’ as to use was challenged by the applicant because he conceded in cross‑examination that he mistakenly thought NB7630 and NB6304 were identical.  In fact, they are visually similar.  The circumstances of his cross‑examination did not lead me to doubt his evidence of use by Noyes of profiles conforming to NB6304 since 1987.  The details of this evidence were both credible and persuasive given the totality of the evidence concerning NB6304.

20. It was admitted that articles made in accordance with WD‑6 were sold before the priority date, but the applicant submitted that there was no proof of sales in substantial quantities.  I am satisfied however that such articles were sold in substantial quantities before the priority date because the applicant’s witness, Mr Patterson, gave unchallenged evidence to that effect.  A copy of NB6304 is included as Annexure I to this judgment.

21. The appearance of NB6304 is visually very similar to the applicant’s door return jamb, in its basic form and in the inclusion of a curved canopy.  The curved canopy represents a stylistic difference over WD‑6.  Given the simplicity of the fundamental form in WD‑6 AND NB6304, which I am satisfied were both used prior to the relevant priority date, neither the alteration of the radius of the canopy’s curve, nor the slight concavity of the vertical legs, nor the addition of small ribs on the inside surface of the canopy in the applicant’s registered design appear to me to imbue the applicant’s door return jamb with sufficient individual character or appearance over NB6304.  The applicant’s registered design differs from NB6304 only in immaterial details.  To the extent that it matters given that finding, it can be noted that the curved canopy of NB6304 (referred to by counsel as an ‘intermediate’ form between WD-6 and the applicant’s registered design) was not demonstrated to be a feature commonly used in the wardrobe door trade.  It was not demonstrated to be a mere trade variant.

22. The case for invalidity of Registered Design No. 116380 was made out.

    Infringement

23. Turning then to claims of infringement, in Malleys at 127 the following observations were made in relation to infringement:

    ‘Turning to s. 30 it is apparent that there is infringement in any one of three cases - that is, where the design which has been applied is: - (i) the registered design (ii) an obvious imitation of the registered design (i.e., not the same but a copy apparent to the eye notwithstanding slight differences) and (iii) a fraudulent imitation (i.e., a copy with differences which are both apparent and not so slight as to be insubstantial but which have been made merely to disguise the copying). Visual comparison will establish (i) or (ii) but a finding of fraudulent imitation must require something more because in such a case visual comparison is not of itself sufficient to establish imitation; otherwise it would be an obvious imitation.’

24. In Polyaire Pty Ltd v K-Aire Pty Ltd (2005) 79 ALJR 1205 at 1211, at [28] (‘Polyaire’) McHugh, Gummow, Hayne, Callinan and Heydon JJ clarified that differences made to disguise copying can be a sufficient, but not essential, requirement for fraudulent imitation.

25. In Dart v Décor Lockhart J (with whom, as noted already, Jenkinson and Gummow JJ agreed) sets out principles established by the authorities at 408-412, which have since been summarised by Gummow J in Wanem at 440 as follows:

    ‘(i) first impressions are important in determining whether there is an infringement of a design,

    (ii)an obvious imitation is one which is not the same as the registered design but is a copy apparent to the eye notwithstanding slight differences,

    (iii)the question must be looked at as one of substance and by examining the essential features of the design,

    (iv)a closer correspondence between the registered design and the alleged infringing design is necessary to satisfy the test of obvious imitation than that of fraudulent imitation,

    (v)precise mathematical comparisons or matters of measurements or ratios, which form no part of the mental picture which the eye conveys to the brain of shape or configuration suggested by the design, are not to be applied as the test of infringement; appearance to the eye is the critical issue, and

    (vi)questions of infringement must not be determined by a narrow or overly technical approach in comparison between the design and the alleged infringement, lest the registration be sapped of its worth to the registered owner.’

26. As has already been mentioned in paragraph 38 above, small differences between the registered design and the prior art will generally lead to a finding of no infringement if there are equally small differences between the registered design and the alleged infringing article.  This approach was followed by a Full Court of the Federal Court in Allen Manufacturing Co Pty Ltd v McCallum & Co Pty Ltd (2001) 53 IPR 400 at 407 (‘Allen Manufacturing’).  See also Tu at 662, at [104] per Kenny J; Autocaps at 362 per Finkelstein J; Mangraviti v Vardi (1975) 28 FLR 173; and also Simmons v Mathieson & Co Ltd [1911] 28 RPC 486 and Re Plackett’s Registered Design [1892] 9 RPC 436.

27. The respondent submits that, based on the evidence filed regarding designs that were published or commonly used in the relevant trade prior to the relevant priority dates, the registered designs ‘can only have a very narrow or limited monopoly’: Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 22 IPR 1; A C Components Pty Ltd v Jadon Investments Pty Ltd & Ors (1992) 23 IPR 594.

28. The respondent also submitted that there are significant differences between the registered designs and the allegedly infringing articles and that ‘because the features of the registered designs do not differ materially from the features found in the prior art, then only small differences between the registered designs and the alleging infringing articles’ will support a finding of no infringement.

    ‘Obvious imitation’ (s 30(1)(a))

29. The applicant relies upon the statement in Malleys at 123 that:

    ‘If a design applied by another has the features that are characteristic of the registered design and are so arranged that to the eye the resulting shape is substantially the same, there is infringement, whereas if the same features are arranged so that to the eye the resulting shape is different, there is, in the absence of fraudulent imitation, no infringement.’

30. Farwell J in Dunlop Rubber Co Ltd v Golf Ball Developments Ltd [1931] 48 RPC 268 (‘Dunlop Rubber’) at 279 said:

    ‘. . . in my judgment, “obvious” means something which, as soon as you look at it, strikes one at once as being so like the original design, the registered design, as to be almost unmistakable.  I think an obvious imitation is something which is very close to the original design, the resemblance to the original design being immediately apparent to the eye looking at the two.’

    This passage was relied on by Moore and Bennett JJ in Foggin at 231, at [20] and earlier by Lockhart J in Dart v Décor at 411.

31. It is noted that for the purposes of obvious imitation, whether the maker of the allegedly infringing article deliberately sets out to copy the registered design is not relevant.

32. Finkelstein J set out the following approach in Autocaps at 363:

    ‘To determine whether there has been an obvious imitation (when there is not an exact replication) the question is whether, based on the overall impression to be gained from the design and the alleged infringing article, there is substantial similarity between them. While it might provide some limited assistance in arriving at a conclusion to list the similarities and differences between the design and the alleged infringing article (as I have done) such an approach has the potential to cause error. It is the overall appearance of the registered design and the alleged infringing article that must be compared, as it is not the differences that are in issue: Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 22 IPR 1 at 10. In the case of a fraudulent imitation (that is when there has been deliberate copying with knowledge that the design being copied is registered: see Elconnex Pty Ltd v Gerard Industries Pty Ltd (1991) 22 IPR 551 at 556) greater allowance is made where there are differences with the design: Fisher & Paykel at 12 and the cases there cited.’

    ‘Fraudulent imitation’ (s 30(1)(a))

33. A ‘fraudulent imitation’ presupposes the author of the allegedly infringing article has knowledge of the registered design and makes use of the infringing design’ per Lockhart J in Dart v Décor at 411, citing Dunlop Rubber. Farwell J at 279-280 there explained fraudulent imitation as follows:

    ‘It does not necessarily import deliberate intention to steal the property of the owner of the registered design. It does not import any intention to be fraudulent, because the person may be the author of a fraudulent imitation believing perfectly honestly that he has so altered the registered design as to make them two different designs, and so fas as his own mind and his own intention are concerned, he may be honest in that sense.  But fraudulent imitation seems to me to be an imitation which is based upon, and deliberately based upon, the registered design, and is an imitation which may be less apparent than an obvious imitation; that is to say, you may have a more subtle distinction between the registered design and a fraudulent imitation, and yet the fraudulent imitation, although it is different in some respects from the original, and in respects which render it not obviously an imitation may yet be an imitation perceptible when the two designs are closely scanned and accordingly an infringement.’

34. This passage was cited and approved by the High Court of Australia in Polyaire.  Also in Polyaire, at 1212 at [36] the Court endorsed the following passage from the judgment of Lehane J in Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd (1999) 91 FCR 167 at 200 (‘Phillips’):

    ‘[T]he essential questions are, first, whether the allegedly infringing design is based on or derived from the registered design and, then, whether the differences are so substantial that the result is not to be described as an imitation. Frequently, of course, probably usually, changes will have been introduced for the purpose of disguising copying or, perhaps, because of a conscious desire to come as close as possible to the registered design while avoiding infringement. But, as this case illustrates, particular changes may be introduced for other compelling reasons; and there is no obvious reason why that should defeat a claim of fraudulent infringement.’

    The High Court referred to Lehanne J’s observations in Philips at 200 that:

    ‘. . .  If, literally, it was a requirement of fraudulent imitation that any changes to the design be introduced merely to disguise copying, it would follow that, where there is a design based on a registered design, where the designer earnestly wishes to get as close to the registered design as possible but is, in some respect, prevented by some mechanical imperative and is forced to introduce a change on that account, the design is not a fraudulent imitation however clearly it may fall within the established tests of 'imitation'. I am not convinced that that conclusion, which does not strike me as particularly sensible, is required by authority.’

35. In Turbo Tek Enterprises Inc & Anor v Sperling Enterprises Pty Ltd (1989) 23 FCR 331 (‘Turbo Tek’) at 348 a Full Court of the Federal Court stated:

    ‘. . . it is open to a court to find that an imitation is fraudulent where the designer or manufacturer of an article, having reason to believe that another article is an embodiment of a design which is actually registered or in respect of which an application for registration is pending, imitates or copies the article.’

36. It was also explained at 347-348:

    ‘Fraud is a general concept with which the law is familiar and which it well understands. It has many aspects. There is no reason to think that the legislature, when it used the words, “fraudulent imitation”, in s 30(1)(b) of the Act, intended them to have any narrow or restricted operation. There is no apparent reason why the legislature should have intended the Act to apply in a restrictive way and, even then, only when the alleged infringer had actual knowledge of the fact of registration. To take any other view would give to would-be infringers the opportunity to avoid the consequences of the Act by a multiplicity of expedients. Deviousness would be encouraged. Opportunism and expediency would be rewarded. What is required is a realistic and practical approach which will allow for the fact that there will be an infinite variety of circumstances and that each case will depend on its own facts.’

1. In Firmagroup Australia Pty Ltd v Byrne & Davidson Doors (Vic) Pty Ltd (1987) 180 CLR 483 at 489, Wilson, Brennan, Deane, Dawson and Gaudron JJ approved the assessment of King J, who said at first instance:

   ‘. . . [I]t must appear, to find fraudulent imitation, that the overall distinctive appearance of the registered design has been taken.  In this case salient features of construction are taken, but the whole unit has been so redesigned to incorporate them that a different design has been produced.’

   Registered Design No. 116380 – door return jamb

2. In the light of the determination that the applicant’s door return jamb is wrongly registered, the applicant is not able to assert infringement in respect of it.  Perhaps however, I should state that had I found the registered design was novel, this would necessarily have been because to the Court’s eye the features which differed from the prior art, namely the alteration of the radius of the canopy’s curve, the slight concavity of the vertical legs and the addition of small ribs on the inside surface of the canopy were sufficient to give the design an individual character or appearance over NB6304.  The allegedly infringing article does not contain these features and accordingly infringement would not arise on the application of the principle referred to above in paragraphs 38 above and 117 above.

   Registered Design No. 115996 – the door panel stile

3. By way of a defence to claims of infringement, it was asserted by Mr Davies that the components of the respondent’s V-glide system had been declared ‘industry standards’ by an extruder in or about August 1993. He gave evidence that an extruder who discovers that an exclusive arrangement with a fabricator has been breached can retaliate by declaring that a particular part is an ‘industry standard’ which declaration then allows the extruder to make such a part for persons other than the person with whom the extruder originally had an exclusive supply agreement. When cross‑examined Mr Davies said he was ‘just repeating what I was told in the early 90’s.’ Even if it were safe for the court to conclude the extruder in question renounced its exclusive supply agreement with the proprietor of the V-glide system (which it is not) this in no way exonerates an infringer from infringing any statutory monopoly conferred under the Act.

4. The respondent emphasised differences between its product and the registered design.  Reference was made particularly to the fact that the respondent’s article had an s‑shaped flow described as ‘visually strong’ and the respondent’s finger grip was detailed with a series of rebates and the nib arrangement was different.  However, as the abovementioned authorities make clear, it is the overall appearances not the differences which are in issue with a determination of infringement.  I find the respondent’s article is a copy apparent to the eye despite differences which I regard as slight.  The differences referred to by the respondent do however preclude a finding that the applicant’s design has been applied.

5. In reliance on the principles established by the authorities and acting upon first overall impressions (and later ones also) and comparing the applicant’s registered design for its door panel stile and the respondent’s article alleged to infringe, I find there has been no application of the registered design, but there has been an obvious imitation of the applicant’s design.  The similarities are so close and the differences so insubstantial as to render it unnecessary to consider alternative submissions concerning fraudulent imitation, which would depend on facts different from those which I have found, namely there would be less apparent imitation than the imitation I have found to exist.  Differentia which protect a design from being called an obvious imitation can be the same one which stamp a design as a fraudulent imitation, per Zelling AJ in A C Components Pty Ltd v Jadon Investments Pty Ltd & Ors (1991-1992) 23 IPR 594 at 605.

   Registered Design No. 123036 – flush mirror stile

6. The respondent relied on differences particularly between the z-like configuration on the two stiles to be compared.  However, the respondent’s article seems to me to be a copy apparent to the eye despite these differences which I regard as slight.

7. In reliance on the relevant authorities, acting on first overall impressions (and later ones also) and comparing the applicant’s registered design for its flush mirror stile and the respondent’s article alleged to infringe, I find there has been no application of the registered design, but there has been obvious imitation of the applicant’s registered design.  The similarities are so close and the differences so insubstantial as to render it unnecessary to consider alternative submissions concerning fraudulent imitation which would depend on different facts from those found.

   Registered Design No. 117096 - tracking device

8. The applicant’s tracking device design is described in Mr Brown’s first affidavit as follows:

   ‘The design…consists of a central panel or bar form the top slide of which extend two arms in a curved form.  There are two similar arms at the bottom edge of the central bar making four arms in total.  The arms are integral with the central bar.

   Within the central bar there are 2 holes which are close to what I have called the top side each hole being positioned close to where the top slide curved arms join the central bar. 
   One side of the central bar is extended to the side, so as to provide a stop or spacer feature.
   On a transecting notional centre line of the central bar there is a circular moulded boss formed integrally with the central bar shaped so as to receive and locate a screw.  This boss extends above one edge of the central bar and sits neatly under the two extended curved arms on that edge or top side of the central bar. 
   In addition to the central bar and its various details, a small cap is provided to fit to the end of an assembly pin or screw. This appears to cap or protect the end of the screw.’

9. The applicant’s tracking device is allegedly infringed by the respondent’s tracking device.  The applicant asserts that the respondent’s tracking device shares the following features with the applicant’s tracking device:

   ‘(a)     . . . a central bar and four extended curved arms;

   (b). . . two holes in the central bar… in the same position as in the [applicant’s] design; and

   (c)       . . . a location boss on the centre line in the same location . . .’

10. The applicant noted the following differences:

    ‘(a)There is no extension of the central bar on [the Respondent’s Tracking Device whereas the Applicant’s Tracking Device] . . . has an extension with a spacer or downward tab at the end (a left and right hand tab).

    (b)There are four small raised bosses at the junction point of each of the curved arms in [the Respondent’s Tracking Device], which do not appear in the [Applicant’s Tracking Device].

    (c)There is a small boss or cap attached to the central bar of [the Respondent’s Tracking Device].’

11. The applicant submitted that:

    (i)any differences may be characterised as ‘slight’ within the meaning of the Malleys test, to the extent that the respondent’s tracking device is a ‘copy apparent to the eye notwithstanding slight differences’; or

    (ii)alternatively, that any differences may be characterised as mere ‘disguises’ in an attempt by the respondent to fraudulently imitate the applicant’s tracking device.

12. In Mr Brown’s first affidavit, he stated:

    ‘The main shape of the design (being the central bar and the extending curved arm plus the central line screw boss) are to be found in both the Ullrich sample and are clearly illustrated in the registration document… As a designer I consider the complexity of the central bar with the boss and four curved arms to be the most eye catching and unique part of the registered design.  These features are all present in the Ullrich sample.’

    He then further characterised the differences between the two tracking device designs as ‘secondary’.

13. The applicant also relied on the fact that the applicant’s tracking device is registered with respect to a ‘pair’ of guides.  It seems from the evidence given at trial that the respondent’s tracking device is also utilised in pairs although the respondent submitted its tracking device was nevertheless different.

14. In examining the two tracking devices, save for the differences identified by the applicant above, which were relied on by the respondent, the overall visual impressions identify similarities.  The arms extending from the central bar are almost exactly congruent in their length, shape and in the angles at which they project and curve inwards.  Any differences discernable between the central bars and arms of each tracking device would need to be determined by the use of exact measurements.  Similarly the two holes and location boss which extends from the central bar in the respondent’s tracking device are parallel in position and approximate size to those featured on the applicant’s tracking device.

15. However, the leg and foot which extend from the central bar in the applicant’s tracking device constitutes a prominent feature which is quite distinctive and the small cap or locating boss which protrudes by a short plastic tab cannot be understood by the eye as a corresponding trait of the respondent’s tracking device.  Further, the four small locator nibs which project from the corners of the central bar in the respondent’s tracking device do not have parallel forms in the applicant’s tracking device.  As a result I consider that there has been no application of the design to the article and no obvious imitation of the design.

16. The next question then, with regard to those features, is whether or not the accused article is a copy or imitation which is fraudulent.  Further to this, as Lehane J noted in Philips at 200 a finding of fraudulent imitation may be open, despite any other ‘compelling reasons’ for including apparent differences, such as mechanical or logistical requirements.

17. In the applicant’s submissions it was asserted that the design of the respondent’s tracking device was ‘clearly’ based on the design of a component in the Betta wardrobe door system, about which Mr Davies gave evidence.  He gave somewhat ambiguous evidence overall as to the extended leg and foot features being ‘abandoned’ in the light of the different method of attachment used for the respondent’s tracking device. In his affidavit he referred to the ‘leg’ being abandoned by Betta but appeared to retreat from this position when giving his oral evidence.  From this, and the retention of other features of the applicant’s tracking device, the applicant submits that an inference of ‘disguise’ is open, especially as no other evidence was provided as to an explanation of the design of the allegedly infringing article.

18. The applicant relied on Allen Manufacturing Co at 408, at [31] and Turbo Tek at 344, and the applicant particularly noted the Full Court’s consideration in Turbo Tek of Jones v Dunkel (1959) 101 CLR 298, in the context of the failure by a (respondent) to call evidence. It was this circumstance which enabled the Court in that case to ‘more confidently’ draw an inference of knowledge of the registered design and to infer changes employed were to disguise copying. Mr Davies gave evidence that the product was created on his instructions in the late 1990’s but was not copied from the applicant’s product. No-one from Betta involved in the physical creation of the design or in any decisions to ‘abandon’ the ‘leg’ was called to give evidence. The evidence in respect of the creation of the respondent’s product and the inferences which the applicant seeks to draw from the failure to call the creator of the design would have been of greater prominence, if the respondent’s product was in fact an imitation.

19. Here, in addition to screws through the central holes, the respondent’s tracking device is held in place by the four protruding nibs and secured by a screw inserted into the cap boss.  These differences appear to have been made in an effort to distract from the almost exactly congruent dimensions of other features of the two devices, but that would not justify a finding of fraudulent imitation unless the accused article is in fact an imitation.

20. In my view, the overall distinctive appearance of the registered design has not been taken.  Whilst many features of the respondent’s article are close, a design without a leg and foot extending from the central bar results in the production of a different design.  That absence of a leg or foot seems to me to be visually crucial and is the basis of my finding that the respondent’s article is not an imitation.  Accordingly, there is no fraudulent imitation.

    Conclusions

    Registered Design No. 115996

21. Registered Design No. 115996 for the applicant’s door panel stile and Registered Design No. 123036 for the applicant’s flush mirror stile are each validly registered.  Each design registration has been infringed respectively by the respondent’s door panel stile and the respondent’s frameless stile.

    Registered Design No. 116380

22. Registered Design No. 116380 for applicant’s door return jamb is not valid which makes it unnecessary to form a conclusion on infringement.

    Registered Design No. 117096

23. Registered Design No. 117096 for the applicant’s tracking device is not infringed by the respondent’s tracking device.

24. In the light of these reasons for judgment, it seems appropriate to afford the parties an opportunity to bring in agreed short minutes or alternatively to file and serve submissions concerning the orders that should be made to give effect to these reasons for judgment including orders for costs on or before 23 September 2005 and the proceeding should be adjourned to a date to be fixed.

I certify that the preceding one hundred and fifty-one (151) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Crennan.

Associate:

Dated:            14 September 2005

Counsel for the Applicant:

C D Golvan SC

Dr S Ricketson

Solicitor for the Applicant:

Hunt & Hunt

Counsel for the Respondent:

B N Caine SC

M S Goldblatt

Solicitor for the Respondent:

Middletons Lawyers as agents for Geoff Bartels Lawyers

Dates of Hearing:

19, 20, 21, 22 and 23 July 2004

24, 25 and 27 August 2004

9 and 14 September 2004

Date of Judgment:

14 September 2005

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