Freighter Australia Manufacturing Pty Ltd

[1988] ADO 4

In the Matter of the Designs Act 1906 - and - In the Matter of Registered Design No. 92315 in the Name of FREIGHTER AUSTRALIA MANUFACTURING PTY. LTD. - and - In the Matter of Refusal under Section 27A(9) to Grant Extension of the Term of Registration.

 

DECISION OF THE REGISTRAR OF DESIGNS:

This design was registered on 5 June, 1986, with a priority (i.e. lodgement) date of 9 August, 1984, in respect of a Vehicle Body Curtain.

By application dated 2 June, 1987 Freighter Australia Manufacturing Pty. Ltd., of Victoria ("the registered proprietor"), sought extension of the period of registration to a date 6 years from the lodgement date.

On 5 May, 1987, in accordance with the provisions of section 27A(4) of the Act, Road Runner Trailers Limited, of Rotorua, New Zealand, notified the Registrar of matter which, it was claimed, shows that, as at the priority date, the design was not new or original. Despite a reply from the registered proprietor to this material, the Registrar notified the proprietor that he did not intend to extend the period of the registration, and the matter was set down to be heard in Melbourne on 30 September, 1987. The registered proprietor was represented by Mr. Laurie Dyson of Edwd. Waters & Sons, Patent & Trade Mark Attorneys of Melbourne.

According to the statement of monopoly put in by the registered proprietor, monopoly is claimed in the shape and configuration of the vehicle body curtain as illustrated in the representations annexed to the application documents.

The representations annexed to the application documents are as follows:

The material put in by Road Runner Trailers Limited consists of copies of a magazine, Transport Engineer, published in 1982 and 1983 and copies of various New Zealand patent specification abridgements. These were accompanied by Statutory Declarations by Michael Howard Hawkins, registered New Zealand patent attorney, and Athol Le Vaillant, Chairman of the Sydney Centre of the Institute of Road Transport Engineers. Both Messrs. Hawkins and Le Vaillant state that the Transport Engineer is a publication which would have been available in Australia at the relevant time. Mr. Hawkins also states that some of the van bodies illustrated in these magazines were on sale in Australia prior to August 1984. The patent specification abridgements were put in, according to Mr. Hawkins, as being illustrative of concertina-type closures for openings of various types. Although he states that various libraries throughout Australia receive the New Zealand Patent Office Journal, in which, presumably, these abridgements are published, there is nothing before me to show that these particular abridgements would have been available to the public in Australia in the sense required by section 17 of the Act, and I take no further note of them.

At the hearing, Mr. Dyson did not contest the claim that the copies of the Transport Engineer were, for the purpose of these proceedings, published and available in Australia at the relevant time.

As I understood Mr. Dyson's submissions on behalf of the registered proprietor, the design was conceived as a result of problems experienced with the curtains previously available for the purpose of enclosing truck bodies. These problems included a tendency of the curtain to buckle or sag as it was opened, and a lack of selective access to the load when the curtain opened from one end only. By using a central pillar to divide the curtain these problems were overcome: the curtain does not sag or buckle, and it can be opened from either end, thus allowing several points of access to the load.

As I have already indicated, the registration claims monopoly in the shape and configuration of a vehicle body curtain as illustrated in the annexed representations. No claim is made as to the shape and configuration of the framework or opening which the curtain is intended to cover, and this forms no part of the design as registered. Therefore the features of shape and configuration in which monopoly is claimed, and for which newness or originality, as at 9 August, 1984, is now called into question, are, as judged by the eye, a rectangular shape with a flat, smooth surface, which assumes a concertina-type folded surface when the curtain is opened. Is this design anticipated or prior published by the material before me in these proceedings?

There are trucks of various types, with side curtains of various types enclosing their storage containers, illustrated in the copies of the Transport Engineer provided. For example, at pages 28, 29 and 37 of the November 1982 issue are shown trucks or truck bodies whose sides are enclosed with curtains which, according to the illustrations, may be folded back in much the same way as those the subject of this registration. However, the appearance of the curtains in these illustrations differs substantially from the registered design in that there are heavy straps and buckles attached to the outside of the curtain as part of the method of fastening it to the truck body.

At pages 57 and 21 of the May and June 1983 issues respectively, on the other hand, are shown curtain-sided trucks whose curtains appear, in all material details of shape and configuration, to be the same as those the subject of this design. When closed, they present a flat smooth surface of rectangular shape; when opened, they assume a concertina-type folded surface. There are no straps or buckles visible, the curtains appear to move along tracks at top and bottom of the container's side, and they may be opened from either end. Mr. Dyson sought to place considerable weight on this latter characteristic (i.e. the ability to open the curtain from either end) as it applies to the registered design, submitting that it contributes significantly to the newness or originality of the design. I believe that the curtains illustrated in the May and June magazines referred to above establish prior use of this concept, but in any case, I cannot agree with Mr. Dyson's submission that this sort of feature can contribute to a claim for newness in terms of shape and configuration. In MACRAE KNITTING MILLS LTD. v. LOWES LTD. 55 CLR 725 and 730, Dixon J. said:

"In the present case the object of the design, considered independently of the Act, is plainly to produce a bathing garment which not only will have a particular appearance but in fit and fastening will have also a particular practical effect. The latter element is, of course, to be disregarded in considering the questions of novelty and infringement which we are to decide. The Designs Act is concerned with shape and configuration, not function."

These comments apply with equal force, I think, to the present design : the particular practical effect of being able to open the side curtain from either end is of no significance in assessing the novelty of its shape and configuration. The amendments made to the Designs Act since the MACRAE case was decided do not affect the relevance of this decision as a precedent, as the discussion on "Functionality" at pp.459-461 of Ricketson's The Law of Intellectual Property shows.

I am satisfied that the material put in by Road Runner Trailers Limited has established that, as at 9 August, 1984, the design the subject of this registration was not new or original in that it is not materially different from designs published at an earlier date in Australia in respect of the same article. This material, in my opinion, meets the requirements for publication discussed at p.469 of Ricketson. I must conclude, therefore, that the provisions of section 27A(9) must be applied adversely to the registered proprietor, and the application for extension of the term of the registration is refused.

(S. FARQUHAR)

Chief Assistant Registrar

31 MAR 1988