Firmagroup Australia Pty Ltd v Byrne & Davidson Doors (Vic) Pty Ltd
[1986] FCA 242
•11 JUNE 1986
Re: FIRMAGROUP AUSTRALIA PROPRIETARY LIMITED
And: BYRNE & DAVIDSON DOORS (VIC.) PROPRIETARY LIMITED; BYRNE & DAVIDSON
INDUSTRIES and BYRNE & DAVIDSON (N.S.W.) PROPRIETARY LIMITED
No. VG174 of 1985
Designs
COURT
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
Fox J.
Lockhart J.
Jenkinson J.
CATCHWORDS
Designs - design for centre lift lock incorporating recessed handle for garage shutter doors registered by appellant - production by respondents of product with similar feature - points of difference between designs apparent to the eye - whether obvious imitation - whether fraudulent imitation - whether different design created by respondents - test for fraudulent imitation - importance of impressions formed by primary judge.
Designs Act 1906 s.30
Re Wolanski's Registered Design (1953) 88 C.L.R. 278 cons.
Malleys Ltd. v. J.W.Tomlin Pty.Ltd. (1961) 35 A.L.J.R. 352 foll.
Grafton v. Watson (1884) 51 L.T. (N.S.) 141 ref'd to
Sherwood and Cotton v. Decorative Art Tile Co. (1887) 4 R.P.C. 207 ref'd to
Rose v. J.W. Pickavant & Co. Ltd. (1923) 40 R.P.C. 320 ref'd to L.J. Fisher & Co. v. Fabtile Industries Pty. Limited (1979) Official Journal of Patents 3611 ref'd to
S.W.Hart & Co.Pty. Ltd. v. Edwards Hot Water Systems (1985) 59 A.L.J.R. 729 ref'd to
AMP Incorporated v. Utilux Pty. Limited (1972) R.P.C. 103 ref'd to Dalgety Australia Operations Limited v. F.F. Seeley Nominees Pty. Limited (Full Federal Court, unreported, 25 February 1986) ref'd to
HEARING
MELBOURNE
#DATE 11:6:1986
ORDER
The appeal be dismissed.
The appellant pay the respondents' costs of the appeal.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
JUDGE1
This is an appeal from a judgment of the Supreme Court of Victoria (King J) dismissing an action by the plaintiff, the present appellant, in which it claimed relief in respect of an alleged infringement of a registered design.
The design was registered in class 1 in respect of "a combination handle and lock for shutter doors". The statement of the nature of the design was as follows:
"The design resides in the application of the particular shape and configuration to a combination handle and lock for a shutter door as illustrated. The rear face of the handle and lock does not form part of the design. The design may be applied in any suitable manner and by any suitable means."
It was registered on 21 December 1976 with effective date 12 May 1976. The initial period of registration was 5 years, but this period has been extended. The respondents entered the steel shutter door market in 1956 and the appellant in 1965. The case has proceeded on the footing that the law to be applied (leaving aside questions of relief) is that in force at the time of the alleged infringement, and of the issue of the writ. The appellant did not see the allegedly infringing product until May 1981, and the action was commenced on l5 March 1982. Amendments to the Designs Act 1906 ("the Act") (Act No.42 of 1981) came into effect on 1 April 1982.
The cause of action is that the respondents applied the design or a fraudulent or obvious imitation of it. (Section 30(1)(a) of the Act.)
The parties were in competition in the supply of shutter doors and the provision of combination handle and locks therefor, and there is no question that if there was an imitation it took the form of an article in respect of which the design was registered.
I agree with the learned trial Judge that there was no application of the design or obvious imitation of it. The substantial question is whether there was a "fraudulent" imitation within the meaning of s.30(1)(a). Matters touching upon obviousness are wrapped up in the consideration of this question.
The concept of fraudulent imitation is not an easy one. The term itself is misleading, because there can be a fraudulent imitation notwithstanding an honest belief that a different design is being produced, which will not infringe. The special ingredient that is required is that the alleged infringer should be aware of the registration of the design in question, and should make some use of it. If this is so the degree of similarity between the registered design and the offending article need not be as great as is the case with what the Act calls an "obvious" imitation. It has been said that there can be fraudulent imitation although there are changes which are "not... insubstantial" (Malleys Ltd. v. J.W. Tomlin Pty. Ltd. (1961) 35 ALJR 352 at p 354).
To say, as is sometimes done, that the design of the infringing article must be "based" on the registered design is vague and can be quite misleading. The Act deals with design, in this case the shape and configuration of the article to which it is to be applied (see Re Wolanski's Registered Design (1953) 88 CLR 278 at pp 279,280), and there is no infringement unless it appears to the "instructed eye" that the offending article is an imitation, - an imitation, that is, of what appears in the registered design. What happens in the case of fraudulent imitation as distinct from obvious imitation is that the article can be looked at more closely to see how its design relates to that which has been registered and some differences which are greater in degree can be ignored. Prior art is to be taken into account with the result that if the registered design has shown a marked departure from previous designs the fact that the challenged article is a fraudulent imitation may the more readily be reached. In my view, however, it remains a mistake simply to ask the question whether the article has in some measure used the design unless one is able finally to say that the product is a imitation visually recognizable as such.
Mr. Lyons Q.C., for the appellant, relied upon passages in which it is said that what is protected is the idea, or the concept, of the shape, and he referred in particular to language used by Kitto J. in Wolanski (supra), a case dealing with alleged prior publication. The purpose was, I think, to show how wide is the protection given by registration. Leaving aside the different nature of the application in that case, it is nevertheless clear that Kitto J. did not regard the language he used as providing that greater width. At p.280, for example, he refers to "the identical conception of shape", and he looks to details. What the notion of "idea of the shape" does do is to emphasise that the answer to an infringement action does not necessarily turn on there being a difference, even a "not...insubstantial" difference, to use the phrase employed in Malleys Ltd. v. J.W.Tomlin Pty.Ltd. (supra). Thus, Kitto J. says, at p 281:
"Of course, they have points of resemblance, and yet I find it impossible to suppose that anyone who considered his idea of a shape to be expressed in the respondent's drawings would be prepared to accept the drawings in the French specification as being another reflection of the same idea."
From relevant decisions I first cite the three passages selected in the first edition of Russell-Clarke "Copyright in Industrial Design" (1930, pp.72,73), as he sets them out. (English law was altered in relevant respects in 1949 before the 2nd ed. was published).
"In Grafton v. Watson (51 LTNS 141), Cotton, L.J., said (at p 144): 'Fraudulent imitation, to my mind, must mean this: If a man, knowing that the pattern is a registered design, goes and imitates it, and does that without any sufficient invention on his own part, that would be a fraudulent imitation...'
In Sherwood and Cotton v. Decorative Art Tile Co. (4 RPC 207), Manisty, J., said (at page 210): 'I think the word was introduced for the very purpose of meeting the case of an imitation, not an obvious imitation, but an imitation varied for the purpose really of perpetrating what is a legal fraud; for instance, having before your mind and before your eye the design of another, and introducing into your design some differences in order if possible to avoid coming within the Act of Parliament.'
And, in the more recent case of Rose v. J.W. Pickavant & Co., Ltd. (42 RPC 332) (scil 40 RPC 320), Romer, J., said (at page 332): 'It seems to be clear that the legislature, in using the phrase 'fraudulent imitation' is contemplating an imitation that is fraudulent without being obvious. It would, therefore seem to be contemplating a case in which the differences between the article and the design are obvious, and in which recourse must be had to extrinsic evidence to establish the fact of deliberate copying. In such a case, the existence of comparatively unimportant differences from the design sufficient to prevent the imitation being obvious is not a fact of which the imitator can avail himself, and may, indeed, be one of the elements of the imitator's fraud.'"
Russell-Clarke (p.73), citing Grafton v. Watson, deals with onus of proof as follows:
"If it is shown that the defendant had knowledge of the registered design and what it looked like at the time he was making the alleged infringement, then the burden of proof will be upon him to show that he did not, in fact, copy the registered design."
In Malleys (supra) at p.354 the High Court in a joint judgment (Taylor, Menzies & Owen JJ.) said of our section -
"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., a copy with differences which are both apparent and not to slight as to be insubstantial but which have been made merely to disguise the copying).
(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."
There has been a useful recent discussion of cases by Fullagar J. in L.J. Fisher & Company v. Fabtile Industries Pty. Limited (1979 Official Journal of Patents Trade Marks and Designs p 3611).
The decision in Malleys was that, notwithstanding that the bottom of the subject toilet pan was deliberately based on the registered design, there was no imitation, because what had been produced was a different design, which embodied some of the features of the registered design:
"To adopt a design which differs from a registered design by the substitution of what we may call a workable for an unworkable feature resulting in a different appearance may well be, and in this case is, in our view, not to imitate the registered design but to use its creator's ideas in devising a different design." (p.355)
In Fabtile, Fullagar J. said (p.3619):
"In the present case I am clearly of opinion that the infringing article is not an obvious imitation, but I have no hesitation in finding, and I do find, that the Gerrard company knew of the registered design and of the Decromastic tile of the plaintiff, and based its design of the Gerrard tile upon the plaintiff's design. More than this, I am of opinion that in a real sense every difference in the infringing article was adopted merely to disguise the taking of the plaintiff's design as a basis. It may be said that in a real sense all that the Gerrard Company has done is to put a small and not very distinct convex ridge in the centre of the main concave trough of each module of the plaintiff's design." (emphasis in original)
Fullagar, J. nevertheless found that there was not a fraudulent imitation. He said:
"To put the matter very shortly, I consider that what gives the plaintiff's design novelty and originality over the prior art, and in particular over the Martile and the Martile design and the Harvey tile, is the use of sweeping curves, carried over into the leading edge and also into both the horizontal and vertical surfaces of the trailing end of the tile." (p.3619)
In the present case relevant findings of his Honour, which are not challenged, are as follows:
1. "...the defendants and their designer were at all times aware of the appearance of the plaintiff's product."
2. "The defendants were also aware at all times of the possibility, and from 17th May 1978 at the latest of the actuality, that the plaintiff had registered its design."
3. "I think also that from the first the defendants assessed the plaintiff's product as aesthetically superior to their own earlier product, and as a formidable competitor in the market."
4. "They thought in particular that the insert handle was an excellent feature and wished to incorporate some form of it in their own face plate."
5. "However, they also wished to have a distinctively different face plate from that of the plaintiff, and at one point Mr. Day thought that they could not have both. At that point he preferred to dispense with the pocket, and work was done on designs which did not incorporate it. However, the defendants returned to a design incorporating a pocket for the same reasons as they had originally considered it. They considered placing the pocket in a different position in the face plate from that chosen by the plaintiff, but concluded that this also was a feature that they should adopt. However, they believed that their final design was distinctively different from that of the defendants (scil. plaintiff). I think that this meant that they believed it not to be an infringement of any registered design relating to the plaintiff's product."
6. "I think that in the present case the adoption by the defendants of the features of the pocket and its location alongside the lock and the area surrounding the lock could fairly be described as deliberately basing their design on the plaintiff's product, even though the defendants and their designer were anxious to distance their design from the plaintiff's design. Thus they did in the end consciously adopt salient features of that design, namely, the recessed handle and a face plate lengthened laterally to accommodate the recess and the lock side by side."
It was submitted for the appellant that his Honour did not give any, or sufficient, weight to several matters. One of these was evidence concerning the lengthening of the article, which was put as a typical matter of "disguise". Another was the urgency of the respondents' need for a new product which led them more readily to copy. In my view his Honour sufficiently considered these matters, and indeed treated the former, not as a "subtle" difference, but as a feature helping to produce a different design. Although there was no separate treatment of "urgency" the judgment discloses that his Honour was aware of events leading up to the adoption by the respondents of the disputed design.
The challenge to his Honour's ultimate findings has been largely on the footing that in several respects he misdirected himself as to the tests to be applied, or, having correctly stated a test, misapplied it. The assiduous argument directed to this end did I feel at times invite us to turn the statutory concept into an arcane science in which different forms of judicial expression in the cases were to be regarded as rigid formulae.
The combination handle and lock registered by the appellant was novel in some important respects. The principal novel features were the incorporation of the recessed handle with the centre lift lock and an elongation of the face plate to accommodate the recessed handle beside the locking mechanism.
The comparison which is to be made is of course with the registered design. While this must firmly be borne in mind, the task is facilitated by having an article in three dimensions made in accordance with the design. This we had in the present case except for a small matter. While the illustrations in the design registration document show the appellant's lock as having the key on the left-hand side, the specimen it produced, which may be representative of all that were made, has the lock part of the combination on the right-hand side with the name "Firmaglide" underneath it. This right-for-left arrangement of the lock is not by itself of significance. While measurement was not part of the design, shape and proportion necessarily were.
The respondents' article has the keyhole on the left with the name "Roll-A-Door" to the left of that again. The "Firmaglide" product could be more readily compared with the respondents' product when the former was turned upside down so that the position for the key was on the left. Looking at the products without any attempt to make a detailed examination, they do not at all appear to me to be of the same design and the "Roll-A-Door" article does not suggest to me an imitation of the "Firmaglide" article. The designs to my mind are different and have a different aesthetic effect. The article made in accordance with the registered design is relatively short and stubby and heavy-looking, while the other article is longer, and narrower. With a measure of hyperbole, no doubt, counsel described it as "conveying to the eye a design and impression of slenderness, slimness, elegance, crispness and lightness....".
A closer examination discloses that the lock section of the Roll-A-Door is much longer than that of the Firmaglide and is only about two-thirds of the width. In addition, the keyhole of the Roll-A-Door is almost twice as far from the recessed portion as it is from the Firmaglide. These differences no doubt flow from the desire to produce a slimmer product. So far as concerns the recessed portion, it is slightly longer in the Roll-A-Door product than in the Firmaglide. A feature readily discernible (on the design as well as the article) is that the sides of the recessed handle in the Roll-A-Door are vertical whereas in the Firmaglide they slope inwards. The end view of the Roll-A-Door product is different from that in the registered design, and that of the Firmaglide product, in that the former presents a rectangular appearance and has lugs at one end, as against a pronounced inwards sloping appearance in the latter. This is, I think, a significant feature, although the difference flows from the different methods of attachment to the doors. The outside edge of the former product comprises metal and plastic which meet virtually on the one level whereas on the Firmaglide design and product there is a distinct lip, all around. The width of this lip is noticeably less than the top outside edge (metal and plastic) of the Roll-A-Door product.
The two articles in a number of ways present a similar appearance from the front and would doubtless be seen to be of similar arrangement so far as concerns lock and recessed handle. It would be seen that the top of the slot and the keyhole were integral and in the same plane. There are, in other words, distinct similarities. It would on the other hand not be correct in my view to conclude that the respondents had set about to copy the registered design, making only "subtle" alterations. The evidence is that the designers wanted to design something different and this to my mind they did. The most that can be said about the general arrangement and the common features is that they were concepts borrowed from the design but what was designed was something which was visually different.
After taking into account the width of protection flowing from the state of the prior art his Honour said:
"However, such width does not extend to a design in which the ideas taken by the defendants are incorporated in a form so different to the eye that it is not an imitation of the registered design. Whether a design is or is not different in this way is a matter which depends on a comparison of the overall impressions given by the registered design on the one hand and the allegedly infringing article on the other hand; such impressions and resemblances of and differences between designs cannot be fully expressed in words."
I am respectfully unable to find any error in his Honour's reasoning. The finally critical matter is that the article looks distinctly different from the registered design, and, to my eye and mind at least, much more aesthetically pleasing. His Honour expressed his conclusion as follows:
"My conclusion is that although there are common features of construction in the compared designs, it 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."
He added:
"Thus the change in balance of the features and the lengthening of the article are not mere disguise but are themselves salient features of the defendants' design which are novel and unique in that design."
I respectfully agree with his Honour, and, contrary to the appellants' submissions, do not find error of law in what he said. One can in the cases find a variety of language used in an attempt to grasp or explain the concept of fraudulent imitation, but there can be no substitute for the statutory phrase, in which visual appearance comes to be the ultimate test. As I have said, I agree with the learned judge on this matter but were I to find it more doubtful, I would, consistently with S.W. Hart & Co.Pty.Ltd. v. Edwards Hot Water Systems (1985) 59 ALJR 729 (see also Dalgety Australia Operations Limited v. F.F.Seeley Nominees Pty. Limited unreported, Full Court, 25 February 1986) probably regard it as proper to defer to the impressions he formed. The strongly subjective element is emphasised by Kitto J. in Wolanski (at p.281):
"It is no doubt true, as, in Leatheries Ltd. v. Lycett Saddle & Motor Accessories Co. Ltd. (1909) RPC 166, at p 171, Eve J. rejoiced to find himself able to say on the authority of Lord Herschell, that when the judge has arrived at a conclusion upon such an issue of fact, it is not to be expected that he will be able, at any rate satisfactorily to the litigants or to one of the litigants, to indicate in detail the grounds which have led him to the conclusion. And I cannot say that the present case is any exception to the rule that the eye, like the heart according to Pascal, has its reasons that reason does not know."
In my view there was no imitation and I would dismiss the appeal with costs.
JUDGE2
On 21 December 1976 Design no. 69177 was registered in Class 1 in the name of the appellant in respect of "a combination handle and lock for shutter doors". The registration was for a period of five years from 12 May 1976, this being the date of application for registration and therefore the priority date. The registration was extended to 12 May 1986. The appellant has carried on the business of manufacturing and selling roller doors since April or May 1978 incorporating combination handles and locks in the form of the registered design under the trademark "Firmaglide". The respondents (no distinction was drawn between the three companies for any purpose in these proceedings) have been engaged in the business of selling roller doors since about 1956. The respondents' allegedly infringing product was released on the market in March 1981.
The appellant sued the respondents in the Supreme Court of Victoria for infringement of the registered design. The Supreme Court (King J.) held that the respondents had not infringed the appellant's registered design and dismissed the proceedings. His Honour found that the respondents' design was not the registered design of the appellant on the ground that the difference in appearance between them was too great and substantial and that the design of the respondents' product was not an obvious or fraudulent imitation of the registered design of the appellant. The appellant appealed to this Court from the Supreme Court's judgment.
The writ was issued on 15 March 1982, before the Designs Amendment Act 1981 (No. 42 of 1981) came into force. The amending Act made substantial changes to the Designs Act 1906 ("the Act") but it is common ground, as it was before the Supreme Court, that this case falls to be determined by the Act as it stood before the amending Act came into force and that none of the changes affect this case save one, namely, s. 32B which specifically entitles a successful plaintiff in an infringement action to elect for damages or an account of profits. Counsel for the appellant argued that s. 32B applied to this case and that, even if it did not, the appellant nevertheless would be entitled to an account of profits under the Act in its previous form on general principles. Counsel for all parties purported to reserve the rights of their respective clients to argue that the amending Act applied to this case if it should proceed to the High Court. I shall assume that the amending Act does not apply to this case save perhaps for the question of relief if we reach it. My references to the Act shall be to the Act in its form before the Amending Act came into operation.
An infringement of copyright in a registered design occurs when a person, without the licence or authority of the owner of the copyright, "applies the design or any fraudulent or obvious imitation of it to any article in respect of which the design is registered": para. 30(1)(a) of the Act. The High Court in Malleys Limited v. J.D. Tomlin Pty. Limited (1961) 35 ALJR 352 described the three categories of infringement in the following terms at p 354:
"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)."
"Design" is defined as meaning:
"an industrial design applicable, in any way or by any means, to the purpose of the ornamentation, or pattern, or shape, or configuration, of an article, or to any two or more of those purposes"
A design to be registrable under the Act must be some conception, suggestion or idea of a pattern, shape, configuration or ornament which must be capable of being applied to an article in such a way that the article will show to the eye the particular pattern, shape, configuration or ornament, the conception, suggestion or idea of which constitutes the design. The registered proprietor of a design obtains by its registration a monopoly for a particular specific and individual appearance: Hecla Foundry Company v. Walker Hunt and Company (1889) 14 App Cas 550; Dover Limited v. Nurnberger Celluloidwaren Fabrik Gebruder Wolff (1910) 2 Ch 25; Simmons v. Mathieson and Co. Limited (1911) 28 RPC 113; Pugh v. Riley Cycle Company Limited (1912) 29 RPC 196.
A conception or suggestion of a mode or principle of construction, though in some sense a design, is not registrable under the Act. The Act protects shape not function. If the shape exists solely to make the article work then it is not within the concept of a protected design. The definition deals entirely with the pattern, shape, configuration or ornament: AMP Incorporated v. Utilux Pty. Limited (1972) RPC 103; Kevi A/S v. Suspa-Verein U.K. Limited (1982) RPC 173.
The design is the mental conception conveyed to the mind by the eye; it is the mental picture of the shape, configuration, pattern or ornament of the article to which the design has been applied: Pugh v. Riley Cycle Company (supra). It is essential to distinguish a design from a mere shape: Malleys at p 352. For a design to achieve protection there must be a special or distinctive appearance, something in the design which captures the eye and appeals to the eye. For a design to appeal to the eye it must be noticeable and have some perceptible appearance of an individual character: AMP Incorporated v. Utilux Pty. Limited (supra).
It is now necessary to construe the registered design and assess its scope. Questions of the meaning of a design and the effect of its infringement are matters to be judged by the eye: Cartwright v. Coventry Radiator Company (1925) 42 RPC 351; AMP Incorporated v. Utilux Pty. Limited (supra); Benchairs Limited v. Chair Centre Limited (1974) RPC 429. There is some divergence in the authorities as to whether these matters are to be judged by the eye of the Court or by the eye of someone else, such as expert witnesses or people in the trade or business which deals with the articles that are made from or by the application of the registered design, or the eye of the ultimate consumer of the product. In some cases it is said that the meaning of a design and the effect of its infringement are to be judged by the eye of the Court: L.J. Fisher and Company Limited v. Fabtile Industries Pty. Limited (1979) 49 AOJP 3611 and Ogden Industries Pty Limited v. Kis (Australia) Pty. Limited (1982) 2 NSWLR 283 at 292-294. The notion that the relevant eye is the eye of the trade or the consumer finds support from the speeches of the members of the House of Lords in AMP Incorporated v. Utilux Pty. Limited (supra). Sometimes it is said that the instructed eye must be the eye of the Court in the sense that the Court should know the views of experts or what is common trade knowledge and usage in relation to the class of articles to which the design applies: Cartwright v. Coventry Radiator Company (supra).
In my opinion the law in Australia concerning this question may be stated thus. It is for the Court to determine the meaning of a design in any proceedings under the Designs Act whether the central question be the meaning of the design, novelty or infringement. Some designs are simple so that the Court needs no expert assistance to interpret them. Other designs are complex and Judges require technical assistance to understand them. Such evidence is plainly admissible but ultimately it is for the Court to rule on the meaning of a design. Similarly, the understanding and interpretation of prior art may call for expert assistance to be provided to the Court for similar reasons. On the other hand, prior art may be a fairly simple matter in a particular case, requiring little or no technical evidence.
It goes, I think, too far to say that questions of infringement must be determined by reference to the eye of the consumer or of the relevant industry or trade because that comes perilously close to asserting that the determination of questions of infringement depends on the evidence of such persons and cannot be determined by the Court itself. On the other hand 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.
I do not see good purpose being served in the adoption of expressions or labels such as "the eye of the Court" or "the eye of the consumer" or "the eye of the trade". Labels tend to be misleading. I agree with the views of Lloyd-Jacob J. in R.B. Watson & Company Limited v. Smith Bros. (Wirewares) Limited (1963) RPC 147 at p 151:
"It is, of course, a commonplace that these matters of design have to be judged solely by the eye; and it has been pointed out over and over again that the eye which the Court applies in these cases must be an instructed eye, that is to say, the Court must be made aware of the characteristics of the article to which the design is applied, the manner in which such articles would normally be found in trade, commerce and in use, so as to secure that the proper basis of comparison is that which will present itself in the normal channels of trade."
See generally on this question Dalgety Australia Operations Limited v. F.F. Seeley Nominees Pty. Limited (Federal Court of Australia, 25 February 1986, unreported) per Fisher J. at pp 10-11; Ricketson, The Law of Intellectual Property paras. 17.17 and 17.18; Lahore, Garnsey and Dwyer, Intellectual Property in Australia, Vol. 1, paras. 2.2.014 and 2.2.015
The scope of a registered design must be judged against the background of the prior art at the priority date. If the differences between the registered design and the prior art are only small then equally small differences between the registered design and the alleged infringing design will tend to lead to a finding of no infringement. On the other hand the greater the advance over the prior art in the registered design then, in general, the greater the scope of the protection afforded to the registered design: Kevi A/S v. Suspa-Verein U.K. Limited (supra); Russell-Clarke Designs 5th Ed. pp 85-87; Blanco White on Patents and Designs 4th Ed. pp 326-7; Ricketson, Law of Industrial Property p 493 para. 20.9.
I turn to an examination of the prior art in this case in order to determine the scope of protection to which the registered design is entitled. The primary Judge said that there was no dispute as to what the prior art comprised. His Honour said that the appellant did not enter the field of roller doors until April or May 1978 when it proceeded to sell such doors incorporating combination handles and locks in the form of the registered design under the trademark "Firmaglide". His Honour noted that the appellant had been working on the design, development and manufacture of a new design of roller door and on new machinery and equipment for its production. His Honour found that the appellant's design:
"was a substantial breakthrough in terms of novelty. In 1978 the defendants' (respondents') Series 1 roller door enjoyed about 90 per cent of the Australian market for residential roller doors, under the trade mark "Roll-a-Door". At this time the defendants' lock was a rectangular flat metal plate with a lock in the centre, mounted on a screen with flat horizontal faces in front separated by backwardly extending semi-circular corrugations. The plate was designed to sit on a flat face with upper and lower flanges extending into the corrugations of the screen. This gave to users a lower ledge which they could grip to move the door up and down. The only other products marketed before 12th May, 1976 with centre lift locks were a Wormald door and a Renlita door, both of the same general appearance as the contemporary "Roll-a-Door". By November, 1978 the "Gliderol" centre lift lock, which is also of the same general appearance, had taken the place of the Wormald door. The registered design has thus incorporated into it a new concept of design in products of its kind. Its new main features are a more elongated rectangular shape than was previously known and a recessed handle. In addition, unlike the "Roll-a-Door" face plate marketed in 1976, it has a back portion shaped to enable it to fit into a cavity with a flat bottom in the screen of a roller door."
No challenge was made before us to the findings of his Honour that the appellant's design was a substantial breakthrough in terms of novelty.
The first matter for consideration is whether his Honour correctly found that there was no direct infringement by the respondents of the appellant's registered design. The class in respect of which the registered design is registered comprises "articles composed wholly or chiefly of metal". The statement of the nature of the design is as follows:
"The design resides in the application of the particular shape and configuration to a combination handle and lock for a shutter door as illustrated. The rear face of the handle and lock does not form part of the design. The design may be applied in any suitable manner and by any suitable means."
The attached drawings depict what is described as a "perspective view", a "front view", "a view from above" and an "end view". It was common ground that the front view was the critical view for the purposes of this case, although some reliance was placed upon the end view by counsel for the respondents.
The primary Judge described the drawings as showing:
"a rectangular block with tapering sides and a flat back which engages with a flat face at the bottom of a laterally extending corrugation in a screen. More than one-half of the area of the surface of the block is occupied by a recess, which is placed on one side of the said surface, a lock being situated in the remaining part of the said surface."
Later his Honour furthered this description by saying that the drawing of the design incorporated in the registration shows "a combination recessed handle and lock attached to the outer face of the screen or curtain of a roller door". His Honour described the product of the respondents as:-
"a long rectangular faceplate (when the faceplate is viewed from the front) which is, however, narrower in proportion to length than is the registered design. It is longer in actual measurement than the plaintiff's product, but as there are no dimensions on the registered design, this is irrelevant, the plaintiff having monopoly rights over an article incorporating the registered design in any size. It is the proportions of the registered design on the one hand and of the defendants' product on the other hand which are important. The defendants' product also incorporates a recessed handle, which however occupies one half of the area of the defendants' faceplace instead of the larger part of it, as in the registered design. The margins of the recess are comparatively smaller in area than in the registered design. The lock is placed in the other half of the area of the defendants' faceplate rather than in the smaller part of it, as in the registered design."
It was in issue before the primary Judge whether the respondents' article is composed chiefly of metal, that is whether metal predominates in the composition of the article and so properly falls within Class 1. His Honour answered this question in the affirmative and that finding was not challenged before us.
His Honour held that there was too great and substantial a difference in appearance between the registered design and the design of the respondents' product to support a finding that the design of the respondents' product was the registered design in the sense of a direct infringement. He said that, in addition to the differences between them which are mentioned in the passage from his Honour's reasons for judgment last cited by me, it must be remembered that those differences could not be fully described in words and could be observed only by looking at the two designs. There is considerable authority for the proposition that it is not always necessary for the court to state reasons for differences between the registered design and the design of the offending product because so much depends upon visual impression: J. Harper and Company Limited v. The Wright and Butler Lamp Manufacturing Company Limited (1895) 12 RPC; R.B. Watson and Company Limited v. Smith Brothers Limited (1963) RPC 147.
To constitute direct infringement the essential features of the registered design must be applied to the accused design. It is not necessary that all features be taken; minor or inessential features need not be taken: Grafton v. Watson (1884) 51 LT (NS) 141 at p 144. The accused design must be in essence the same as the registered design and must have all its salient features.
I have carefully examined the drawings of the registered design and the design of the respondents' product both as embodied in the respondents' drawings and as may be seen from the respondents' product. I have also made this comparison at various intervals of time. The overall impression of the two designs to my mind is that they are very similar. The main point of difference between them is that the proportion of the length to the width of the respondents' product is greater than it is in the case of the registered design. The margins or surrounds of the recess in the design of the respondents' product are narrower than those in the registered design especially in the area of the end of the recess which is to the right as you look at it from the front view. It is true that the recess occupies one half of the area of the respondents' faceplate whereas the recess in the registered design occupies a slightly greater area. But this is not a difference to which I attach great significance because the impression conveyed to the eye is the critical impression and I must confess that it took me more than one examination to observe this difference. The differences in area are not, I think, great.
Another difference between the two is that the sides and ends of the recess in the registered design slope inwards whereas in the respondents' design the slope is barely observable to the human eye. It is useful to compare the registered design with the appellant's own product "Firmaglide" to observe this slope in the recess; but the essential comparison is, of course, between the registered design and the design of the respondents' product.
The primary Judge obviously regarded the principal difference between the two designs as being the difference in their respective proportions. To some extent this difference is accentuated by the fact that much of the face of the respondents' product consists of brown coloured plastic rather than metal of the same colour and texture as the surrounds and base component of the product. However, the registered design does not reside in colour and I do not accept the submission on behalf of counsel for the respondents that the use of plastic in brown colour with plastic as well as metal margins or beading and a central division on the face of the respondents' product creates its own independent and different design.
However, notwithstanding the close similarity between the two designs I agree with the primary Judge's conclusion that the respondents' design is not the registered design.
I turn next to the question whether the respondents' design is an obvious imitation of the registered design. Whether imitations are obvious or fraudulent in one sense raises separate questions, but they overlap. 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": Malleys Case at p. 354. The matter must be looked at as one of substance and by examining the essential features of the design: Benchairs Limited v. Chair Centre Limited (supra). See also Wallpaper Manufacturers Limited v. Derby Paper Staining Company (1925) 42 RPC 443; Oliver and Co. v. Thornley and Co. (1896) 13 RPC 490. A closer correspondence between the registered design and the accused design is necessary to satisfy the test of obvious imitation than fraudulent imitation. In using the phrase "fraudulent imitation" Parliament doubtless contemplated an imitation that is fraudulent without being obvious. In Malley's Case at p. 354 the High Court described a fraudulent imitation as being "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 whether the offending design is the registered design or an obvious imitation of it but something more is required to establish whether there has been a fraudulent imitation.
A design may be an obvious imitation within the meaning of s. 30 notwithstanding that the person who puts the obvious imitation on the market may not know of the registered design. A fraudulent imitation presupposes a knowledge of the registered design and making use of it: Dunlop Rubber Company Limited v. Golf Ball Developments Limited (1931) 48 RPC 268 at p 279 per Farwell J. and Lewis Falk Limited v. Jacobwitz (1944) 61 RPC 116. The use of the word fraudulent in the Act is perhaps somewhat unfortunate because fraudulent does not necessarily connote dishonesty; neither dishonest intent nor a deliberate or conscious intention to copy is a necessary element. The essence of fraudulent imitation is that the respondents' design has knowingly, consciously or deliberately been based on or derived from the registered design: Grafton v. Watson (1884) 50 LT (N.S.) 420; Pugh v. Riley Cycle Company (supra); Lewis Falk v. Jacobwitz (supra). In Dunlop Rubber Co. Limited v. Golf Ball Development Limited Farwell J. said at pp 279 and 280:
"Now with regard to the two words "fraudulent" or "obvious", 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. With regard to the word 'fraudulent', fraudulent I think does pre-suppose a knowledge of the registered design. I think it would be difficult for a Court to come to the conclusion that an imitation was fraudulent unless the Court was satisified that the registered design had been known to the author of the alleged infringing design, and further, it seems to me that 'fraudulent' imports something in the nature of making use of the registered design. 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 a 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 far 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."
The primary Judge found that the design of the respondents' product was not an obvious imitation of the registered design. There is I think some force in the argument of counsel for the appellant that when one compares the registered design with the design of the respondents' product the two are so alike as to be almost unmistakable. Ultimately, however, it is the difference in the proportion of the length to the width of the respondents' design when coupled with the difference in the margins that to my mind establishes the correctness of the primary Judge's finding that there is no obvious imitation.
The primary Judge concluded that the respondents' design was not a fraudulent imitation of the registered design. His Honour made extensive and detailed findings of fact on this branch of the case, some of which were challenged by counsel for the respondents. His Honour found that the respondents and their designer, a Mr. Schremmer, were at all times aware of the appearance of the appellant's product and that the respondents were at all times aware of the possibility, and from 17 May 1978 (at about the time the appellant's product was released to the market) at the latest of the fact, that the appellant had registered its design. He found that from the first the respondents assessed the appellant's product as being aesthetically superior to their own earlier product and that the appellant's product was a formidable competitor in the market. The respondents thought in particular that the recessed handle was an excellent feature and wished to incorporate some form of it in their own faceplate. He found that the respondents also wished to have a distinctively different faceplate from that of the appellant's product and at one point a Mr. Day, a senior officer of the respondents, thought that they could not have both and that he preferred to dispense with the recess and work was done on designs which did not incorporate it. His Honour found that the respondents returned to a design incorporating a recess, that they considered placing it in a different position in the faceplate from that chosen in the registered design but concluded that this was a feature that they should adopt. However, they believed that their final design was distinctively different from that of the registered design. His Honour found that this meant that the respondents believed it was not an infringement of any registered design relating to the appellant's product.
His Honour found that the adoption by the respondents of the features of the recessed handle and its location alongside the lock and the area surrounding the lock could fairly be described as deliberately basing their design on the appellant's product notwithstanding that the respondents and their designer, Mr. Schremmer, were anxious to distance their design from the appellant's design. His Honour found that they did in the end consciously adopt salient features of the registered design, namely, the recessed handle and a faceplate lengthened laterally to accommodate the recess and the lock side by side.
His Honour concluded that although there were common features of construction in the two designs:-
"it 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. Thus the change in balance of the features and the lengthening of the article are not mere disguise but are themselves salient features of the defendants' design which are novel and unique in that design. My finding is therefore that there has been no fraudulent imitation in this case, and that the plaintiff's action fails."
Counsel for the respondents submitted that the primary Judge incorrectly concluded that the respondents consciously adopted salient features of the registered design. Counsel submitted that, in particular, his Honour mistook the embodiment in the respondents' design of the functional feature of a recess for the adoption of an aspect of the registered design, namely, the particular configuration; that his Honour failed to give any or any sufficient weight to the evidence of the historical evolution of the respondents' design, that he failed to give any or any sufficient weight to what was asserted to be the clear evidence that the respondents were consciously seeking to differentiate their design from the design of the appellant and that he failed to give any or any sufficient weight to the uncontraverted evidence that neither Mr. Schremmer nor Mr. Day intended to copy the registered design or believed that there had been any copying of it.
This challenge of the respondents to the correctness of his Honour's findings of fact has not, in my opinion, been established. They were findings made by his Honour after carefully considering all the evidence and based at least in part on his assessment of the various witnesses who gave evidence before him. In my opinion no ground has been established for interfering with these findings of fact by his Honour.
With respect, however, to his Honour's finding that there was no fraudulent imitation of the registered design, I find myself unable to agree. It is true that a fraudulent imitation may be less apparent than an obvious imitation in that there may be more subtle distinctions between the two; but the respondents' design, although different in some respects from the registered design and in respects which render it not obviously an imitation, is nevertheless an imitation which is apparent when the two designs are closely examined. The design of the respondents' product was based upon, and deliberately based upon, the registered design notwithstanding that the respondents and their designer were apparently concerned to emerge with a design that was not an infringement of the registered design. They adopted the essential or salient features of the registered design, in particular the recess and a faceplate lengthened laterally to accommodate the recess and the lock side by side in areas not appreciably different. I have already referred to the differences between the two designs and I need not repeat them.
I respectfully disagree with the finding of the primary Judge that the respondents' design contains salient features which are novel and unique and that a different design has been produced. The features of the respondents' design are not novel and unique. The respondents' design is, in my view, essentially a copy of the registered design with differences, some of which are apparent and not so slight as to be insubstantial but which do not affect the overall impression that the respondents' design is nevertheless an imitation of the registered design.
I give, of course, due weight to the findings made by the primary Judge; but this Court on appeal is in a position where it may and should, if necessary, substitute its own assessment on the finding of fraudulent imitation for the finding of the primary Judge.
Certainly the work done by the respondents and their designer, Mr. Schremmer, produced a design with certain differences from the registered design; but they adopted the principal features of the registered design rather than devise a different design.
In my opinion the appeal should be allowed with costs. The respondents should also pay the appellant's costs of the proceedings before the Supreme Court.
In its notice of appeal the appellant seeks injunctive relief and either an inquiry as to damages or, at the election of the appellant, the taking of an account of profits. The appellant also seeks orders for the delivery up by the respondents of alleged offending articles. We were informed by counsel that the case was conducted before the Supreme Court essentially on the question of whether infringement was established or not and that the question of what relief should be granted in the event of the appellant's success was not really considered, the intent being that if the appellant were to succeed then the question of relief would be dealt with later by the Supreme Court. In all the circumstances I do not think that this Court should itself mould the appropriate relief. This may depend on further evidence. For example, counsel informed us that the evidence did not disclose whether the appellant had sought a further extension of the term of the registration of the design beyond 12 May 1986; this question obviously may have a bearing on injunctive relief as well as questions of damages and account of profits. It is preferable that the matter be referred back to the Supreme Court for it to determine the appropriate relief to be granted.
JUDGE3
The circumstances relevant to a determination of this
appeal are disclosed by the reasons for judgment of the other two members of the court, which I have had the advantage of reading. I am of the opinion that the appeal should be dismissed, for the reasons given by Fox J.
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