Hansly

[1987] ADO 2

In the Matter of the Designs Act 1906

‑ and ‑

In the Matter of Application No. 1922/85 in the Name of CHRISTOPHER RUSSEL JOHN HANSLY to Register a Design.

DECISION OF AN ASSISTANT REGISTRAR OF DESIGNS:
Background
         The application was lodged on 23 July, 1985 and seeks registration of a design applicable to an article entitled "Australian Colonial Courtyard Home (Modern Macquarie)".
         The Office issued a first regulation 14 notice on 19 September, 1985 which stated that the design was unregistrable pursuant to regulation 11(1) which excludes from registration plans, being articles that are primarily literary or artistic in character.  The applicant replied with submissions indicating that he seeks registration of a house design of itself rather than a set of plans for the house.  The Office issued a second notice on 23 June, 1986 reiterating the contents of the first notice and including a statement that it is "possible to register portable houses which are delivered complete to the site in one or two parts and bolted together on the site".
         In due course the applicant requested a hearing under the provisions of regulation 17; the hearing took place in Sydney on 30 October, 1987, the applicant appearing on his own behalf.

The Application
         The representation accompanying the application includes a typical working plan as a builder might use in housing construction.  In addition, there is a drawing of the front elevation of a house as the finished construction might appear to the eye.  I note at this stage that there is a statement at the foot of the representation to the effect that the house design is commercially protected by copyright, that a patent has been applied for, and that ownership rests with the applicant, Mr. Hansly.  The design of the house is such that there is an internal courtyard open to the sky and various surrounding rooms each of which has views externally of the house through glass windows and/or doors.
         Mr. Hansly submitted at the hearing that his house design was a new concept, as it provided a colonial style having a distinctive, commercial and unique shape perceivable from the arrangement of the courtyard.  Thus his house design possesses various features which serve some functional purpose:

.the courtyard allows natural light, and ventilation to enter the interior of the house;

.the courtyard is positioned so as to provide a wind free area;

.the courtyard being centrally positioned, provides a quiet private area;

.privacy and ease of access is provided for each room by reason of double entry and exit doors.

He concluded that registration should not be refused, pursuant to section 18 of the Act which provides (inter alia) that registration shall not be refused by reason only that a design consists of or includes features of shape or configuration that serve, or serve only, a functional purpose. As far as the examiner's objections are concerned, Mr. Hansly said that regulation 11(1) was not relevant as he sought to register the design of his house and not the house plans. Finally, he made brief submissions about the judgements in two cases to which the Office had earlier referred him. The first of these is an Australian case which came before the Supreme Court of N.S.W. ‑ Tefex Pty. Ltd. v. Bowler and Another 40 ALR 326. Mr. Hansly said that this case dealt with ownership of a Registered Design and as he is the legal owner of the present application, Tefex was not relevant. The second case was one decided in the U.K. by Morton J. ‑ Re Concrete Ltd.'s Application (1940) 57 RPC 121. In particular, Mr. Hansly drew my attention to the statement by Morton J. that:

"I do not, however, decide that a building or a structure can never be an "article" ..."

Finally, Mr. Hansly said that he is actively seeking design registration because he believes that such registration, will, in the real commercial world, afford him greater protection than that available under the Copyright Act.
Registrability
         In view of the applicant's submissions it seems clear that the examiner's objection about exclusion of plans under regulation 11(1) is no longer relevant.  Thus although the representation accompanying the application does depict a house plan I am satisfied that the applicant seeks to register the actual design of his house, and not the plan per se.
         Mr. Hansly's other submissions require consideration in terms of the Act, and of the established law.  Section 4 of the Act defines "design" and "article" as follows:

"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;

"article" means any article of manufacture and includes a part of such an article if made separately.

How far buildings and structures can be articles within the meaning of the Act has been considered in Re Concrete Ltd.'s Application (supra).  In that action the applicant had sought to register a design applicable to "... an air‑raid shelter, the predominating material being concrete", and had refused to alter the words "an air‑raid shelter" to a "portable air‑raid shelter".  While it is true that Morton J. did make the statement in his judgement that:

"I do not, however decide that a building or a structure can never be an "article" within the meaning of Section 93.",

he also stated that:

"There are, in my view, certain indications in the Acts and the Rules that the article to which the design is to be applied must be something which is to be delivered to the purchaser as a finished article."

Thus the situation appears to be that Morton J. was of the opinion that whereas a fixed building structure did not constitute an "article" to which a design could be applied in terms of the Act, a portable structure might well do so.
         The Tefex case (supra) does, in my view, confirm such an approach.  In that case Rath J. made the following statements in his judgement:

"Another submission in regard to validity was that the design is required to be registered in respect of an article (s.17(1) and definition in s.4 of "design"), and the swimming pool in this case is not an "article" .....

..... The essence of the submission was that although the plaintiff's pool was made, and sold, in a transportable form, and was in fact transported to the site where it was to be installed, none the less it was when installed permanently in the ground as a fixture connected to a filtration system and to the electricity and water supply.

.......................

..... There are English decisions on comparable legislation to the effect that a unit erected on site from basic building materials is not an "article" in the sense of the definition in the Australian Act (see: Re Concrete Ltd. (1939)* 57 RPC 121). In this regard counsel for the defendants pointed out that once the pool was installed, some of the design features were no longer directly visible.

In my opinion the plaintiff's pool is an "article" within the meaning of the Designs Act.  Unlike the air raid shelter that was the subject of the decision in Re Concrete Ltd., supra, it is manufactured away from the site of installation, and is transported to that site for connection to its ancillary equipment.  Except in size it does not relevantly differ as an entity of commerce from many things, commonly referred to as "articles", such as baths, wash tubs and kitchen sinks."

*  The correct year is 1940.
         Finally, I refer to the Report of the Designs Law Review Committee on the Law Relating to Designs (First Term of Reference, February 1973, Parliamentary Paper No. 1), at page 17:

"84.The present practice of the Designs Office with respect to buildings and structures is to grant registration for structures that are portable and delivered to purchasers either as finished articles, or in the form of parts to be delivered and assembled into the finished articles.  'Buildings' in the ordinary meaning of the word or permanent structures (for example, service stations) analogous to buildings do not appear to be registrable.

85.We have received no representations on this subject and do not recommend that any special provision be made with respect to buildings or structures in any new designs legislation."

This report post dates, of course, the judgement in Re Concrete Ltd.'s Application, but predates the judgement in the Tefex case.  Consequently it appears to me that the law on this matter as it stands is aptly expressed by the judgements of Morton J. and Rath J. in those cases.
         As the design sought to be registered is applicable to a fixed building structure and not to a portable structure ‑ and Mr. Hansly confirmed this at the hearing ‑ I find that his design is not applicable to an "article" in terms of the Act, and is consequently inherently not registrable.
         I therefore refuse to register the subject design.

(J.L. ROVETA)