Gram Engineering Pty Ltd v Bluescope Steel Ltd

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FEDERAL COURT OF AUSTRALIA

Gram Engineering Pty Ltd v Bluescope Steel Ltd [2013] FCA 508

Citation: Gram Engineering Pty Ltd v Bluescope Steel Ltd [2013] FCA 508
Parties: GRAM ENGINEERING PTY LTD ACN 002 193 311 v BLUESCOPE STEEL LIMITED ACN 000 011 058
File number: NSD 474 of 2011
Judge: JACOBSON J
Date of judgment: 31 May 2013
Catchwords:

DESIGNS – validity – steel fencing panel – whether design “new or original” – essential features of design to be judged by “instructed eye” – whether design differed in immaterial details or in features commonly used in the relevant trade – whether obvious adaptation of analogous article

DESIGNS – infringement – whether fraudulent or obvious imitation of registered design – where evidence was led that respondent referred to creating a “lookalike” of applicant’s product – principles in determining infringement – whether applicant entitled to the design
Legislation: Designs Act 1906 (Cth) ss 17, 17(1)(a), 17(1)(b), 30(1)(a), 30(1)(c)
Designs Act 2003 (Cth) ss 20(1), 150, 151(3), 156(3)
Designs Amendment Act 1981 (Cth)
Evidence Act 1995 (NSW)
Cases cited:

Conrol Pty Ltd v Meco McCallum Pty Ltd (1997) 80 FCR 264
Conrol Pty Ltd v Meco McCallum Pty Ltd (1996) 34 IPR 517
D Sebel & Co Ltd v National Art Metal Co Pty Ltd (1965) 10 FLR 224
Dart Industries Inc v Décor Corporation Pty Ltd (1989) 15 IPR 403
Dover Ltd v NürnbergerCelluloidwaren Fabrik GebrüderWolff [1910] 2 Ch 25
Dunlop Rubber Co Ltd v Golf Ball Developments Ltd (1931) 48 RPC 268
Firmagroup Australia Pty Ltd v Byrne & Davidson Doors (Vic) Pty Ltd (1986) 11 FCR 415; 67 ALR 29
Foggin v Lacey (2003) 57 IPR 225
Gardex Limited v Sorata Limited [1986] RPC 623
In re Read & Greswell’s Design [1889] 42 Ch D 260
J W Tomlin Pty Ltd v Malleys Ltd (1960) 2 FLR 142; [1960] NSWR 454
LJ Fisher & Company Ltd v Fabtile Industries Pty Ltd (1978) 1A IPR 565
Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) (2007) 235 CLR 173
Macrae Knitting Mills Ltd v Lowes Ltd (1936) 55 CLR 725
Malleys Ltd v JW Tomlin Pty Ltd (1961) 180 CLR 120
Mining Equipment Pty Ltd v Mining Supplies Australia Pty Ltd (2001) 52 IPR 513
Minnesota Mining and Manufacturing Co & 3M Australia Pty Ltd v Beiersdorf (Aust) Ltd (1980) 144 CLR 253
Monier Ltd v Metalwork Tiling Co of Australia Ltd (1984) 73 FLR 105
Moody v Tree (1892) 9 RPC 333
Olin Corporation v Super Cartridge Co Pty Ltd (1977) 180 CLR 236
Polyaire Pty Ltd v K-Aire Pty Ltd (2005) 221 CLR 287
RB Watson & Co Ltd v Smith Bros (Wirewares) Ltd (1963) RPC 147
Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth [2011] FCAFC 132
Turbo Tek Enterprises Inc v Sperling Enterprises Pty Ltd (1989) 23 FCR 331
Ullrich Aluminium Pty Ltd v Dias Aluminium Products Pty Ltd (2006) 153 FCR 437
Wanem Pty Ltd v Tekiela (1990) 19…

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Details
Case
[2013] FCA 508
Decision Date

CaseChat Overview and Summary

Gram Engineering Pty Ltd brought proceedings against Bluescope Steel Ltd in the Federal Court of Australia, alleging infringement of its registered design for a roofing panel. The dispute centred on whether Bluescope's Smartascreen fencing panels infringed Gram's design. Gram contended that Bluescope's use of a symmetrical profile for their fencing panels constituted an obvious imitation of Gram's registered design, which featured a similar symmetrical profile and repeating uniform panels.

The primary legal issue before the court was whether Bluescope's Smartascreen panels constituted an obvious imitation of Gram's registered design. This required the court to examine the similarities and differences between the two designs, and whether an ordinary observer, with general knowledge of the industry, would consider the designs to be substantially the same or an obvious imitation.

The court found that the Smartascreen panels did indeed constitute an obvious imitation of Gram's design. The court held that an ordinary observer would consider the two designs to be substantially the same, given the similarities in the symmetrical profiles and repeating uniform panels. The court also found that the differences between the two designs, such as the angle between the main plane and the pitch, were not significant enough to distinguish the designs. Therefore, the court declared that Bluescope had infringed Gram's design by selling and offering for sale fencing panel sheets in the form of the Smartascreen panel.

The court ordered that Bluescope pay the costs of the application to date, and that the parties bring in short minutes of order to address the form of the declaration and the question of whether Gram sought an enquiry as to damages or an account of profits. The court proposed to refer the enquiry or account to a referee to be selected by the parties.

Orders

Orders of the court

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Background

Background to the litigation

The representations of Design 19, which was registered for a roofing panel, were as follows:III Factual BackgroundA The period before August 1995 As I said in the introduction, Lysaght began manufacturing and selling steel privacy fences in the early 1970s. The fences consisted of a single side, painted and roll formed metal sheet. The metal sheet consisted of roofing material called “Trimdek”. The system consisted of three sheets of Trimdek roll formed sheet held between two posts and an upper and lower rail. Bluescope contends that the Trimdek fences consisted of six pans. However, Mr Mann’s evidence was that the Trimdek sheet had five ribs protruding from one side of the panel sheet with four pans between each pair of ribs. The brochures referred to in evidence seem to support Mr Mann’s evidence rather the six pan contention asserted by Bluescope. The brochures on which Bluescope relied contain illustrations of roof and wall panels installed vertically and horizontally. The brochures are promotional material. They suggest the possibility of horizontal installation, but at best they indicate that horizontal fences were a secondary form of fencing with vertical fencing being the norm. The evidence tendered by Bluescope does support its submission that from at least the 1970s fencing profile designs were used interchangeably with roof and wall panel designs. The evidence also supports Bluescope’s submission that, from at least the same time, symmetrical profiles were used for fencing and roof and wall panels. It also supports a finding that repeating uniform pans were used on fencing products. However, the symmetrical profiles that were used before 1995 did not look the same from both sides. In 1993, Mr Seccombe’s design department at Lysaght came up with a design for a roofing product that was released under the names Multiline 600 and Multiline 900. A design drawing for this product was in evidence. The drawing is dated 15 December 1993. It has six repeating uniform panels with a Z-shaped profile. It also has an obtuse angle between the main plane and the pitch. The Multiline range of roofing material was launched by Lysaght in about 1995. Mr Seccombe’s evidence was that he had been interested in symmetrical fence designs, that is to say, fences that would look the same from both sides of the panel, since the mid-1990s. He said that his team at Lysaght designed several symmetrical profiles at around this time. He exhibited to his affidavit some concept drawings for a symmetrical fence profile that were drawn by Mr Seccombe or his team. The drawings are dated 2 June 1994. The concept drawings to which Mr Seccombe referred depict a paling-style fence rather than a sawtooth profile. They do indicate micro-fluting on the face of the panels. At around the same time, on 26 August 1994 Gram’s designs, including the Design the subject of this proceeding, were registered. As I said above, Gram’s applications for each of the designs were filed earlier, on 8 February 1994.

Evidence

Evidence Before The Court

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Decision

Reasons for decision

But quite apart from any question of where the onus lies, I am satisfied for the reasons set out above that Gram is the owner of the design.VI Conclusion and Orders I propose to make a declaration that in applying an obvious imitation of the Design to the Smartascreen panel, and by selling and offering for sale fencing panel sheets in the form of the Smartascreen panel, Bluescope has infringed Gram’s Design. The parties are to bring in short minutes of order which address the form of the declaration and the question of whether Gram seeks an enquiry as to damages or an account of profits. My present intention is to refer the enquiry or account to a referee to be selected by the parties. Bluescope should pay the costs of the application to date.

Ratio Decidendi

Legal Principle Established

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