International Chemical Engineering A.G.

[1988] ADO 1

In the Matter of the Designs Act 1906

‑ and ‑

In the Matter of Design Application No. 5401/83 in the Name of INTERNATIONAL CHEMICAL ENGINEERING A.G.

DECISION OF THE REGISTRAR OF DESIGNS:
         International Chemical Engineering A.G., of Vaduz, Liechtenstein, made application on 21 October, 1983 for registration of a design applicable to a sausage casing.  Objections to registration of the design were maintained in terms exemplified by the second Official Notice dated 21 August, 1986:

"The Attorney claims in the letter of 10 January 1986 that "the novelty of the design resides in the irregular surface configuration ...

The Designs Act requires that the features of shape, configuration and pattern be shown in the finished article such that it can be judged by the eye.

Features that are irregular, random and indefinite do not fall within the requirements of the Act.  It would be impossible to determine what was being infringed if the representations and the monopoly statement did not indicate a static fixed design.

If it were possible to depict a casing on which the configuration and pattern were shown to repeat, then the objection may be able to be reconsidered."

A fresh drawing which purported to illustrate that the design does consist of a series of pattern repeats was lodged on 24 November, 1986.  The objections were maintained, however, and at the request of the applicant's attorneys, Davies & Collison, of Melbourne, the matter was set down for a hearing on 29 September, 1987.  Mr. Peter Huntsman of Davies & Collison represented the applicant.

Mr. Huntsman referred to the drawing submitted in November, 1986 and argued that this clearly shows a design consisting of a repeating pattern of a circular nature on the surface of the sausage casing.  He also submitted that this regular repeating pattern is clearly shown in the original photograph lodged with the application, and that therefore the drawing, if formally submitted, could be substituted for the photographic representation.
         I advised Mr. Huntsman that I could not agree that the repeating pattern illustrated in the drawing was in substance disclosed in the photograph lodged with the application.  Formal substitution of the drawing for the original photograph would not, therefore, be allowable within the terms of section 22B(1A).
         Since this objection was not made explicit in the Official notice in which the objection to registration was maintained I agreed that the applicant should have the opportunity to submit a further drawing which, if it avoided the objection taken in respect of the first substitute, would enable the application to proceed to registration.  A final decision on the matter would obviously have to await provision of the drawing and its assessment.  As a result, on 16 October, 1987, a fresh representation was lodged.  In the accompanying letter Mr. Huntsman submitted that the fresh representation shows a repeating pattern, such pattern being taken from the left hand end of the unfilled skin in the original photograph.  A print on tracing paper of one of the pattern repeats was included, which, Mr. Huntsman suggested, could be overlayed onto the original photograph and the patterns compared.
         In addition, it was requested that the statement of monopoly be amended to read:

"Monopoly is claimed in the pattern applied to an unfilled sausage casing as illustrated in the representations."

The original photograph shows an unfilled sausage casing and a filled sausage.  For the purposes of this decision the latter is irrelevant.  The unfilled casing may be best described, in my view, as a length of either natural or synthetic skin, the surface of which is creased or crinkled in an irregular and, apparently, random fashion.  The creasing has the effect of giving a wavy or irregular outline to the casing.  It also has the effect of reflecting light in an irregular manner in the photograph, so that the surface of the casing appears to be 3‑dimensional rather than 2.
         As required by section 4 of the Act, "a design" means features of shape, configuration, pattern or ornamentation applicable to an article, such features being able to be judged by the eye.  This latter requirement is discussed at sections 17.17‑
17.19 of The Law of Intellectual Property by S. Ricketson, where the differing approaches of the U.K. and Australian Courts are described. Whereas the U.K. Courts have interpreted the corresponding, but differently worded, section of the U.K. Act as meaning that the "eye" in question should be that of the customer, the Franki Committee in making recommendations for the framing of the present Australian Act took the view that this should be the eye of the court. Notwithstanding these differences, Ricketson suggests that "the qualities which the features must possess are the same under each test, namely some individuality or distinctiveness of appearance". Mr. Justice Windeyer, in MALLEY LTD. v. J.W. TOMLIN PTY. LTD. 35 ALJR 352, expressed this as being a "sufficient individuality of appearance" to be distinguished from the "fundamental form" of the article.
         I note, further, that "pattern" may also be a matter of "shape" or "configuration", since it is not always possible to distinguish rigidly between these concepts.  Ricketson, at section 17.3, gives the examples of ornamental roses cut into glassware and the ribbing on a rubber hot water bottle.  In the same way, the "pattern" referred to in this application presumably is intended to encompass the 3‑dimensional creases and folds shown on the casing as well as their overall appearance in 2 dimensions.
         Applying the principles referred to above and judging the casing in the photograph by the eye, I find that there is not the necessary "individuality of appearance" which would enable one to distinguish this unfilled sausage casing from some other similar casing, which, until filled, would presumably fall into the same, or a very closely similar, irregular and random arrangement of creases and crinkles.  There is not, in my opinion, a discernible design disclosed in this representation.
         As I have said, Mr. Huntsman submits that the drawing now under consideration shows a pattern taken from the left hand end of the casing in the photograph, and repeated 3 times.  Certainly the drawing shows 3 repeats of an arrangement of irregular shapes : some 40‑odd such shapes of varying sizes are included in each repeat.  They represent, as far as I can decide, representations of the highlights, shapes, creases and shadings on a section of the photograph. I will accept Mr. Huntsman's assertion that they are taken from the left hand end, but in all honesty I cannot say that this is apparent from a visual comparison.  Neither is the tracing provided of much assistance, since it is appreciably larger than the corresponding section of the photograph.  The most assiduous attempts to match the shapes shown in the drawing to the various creases and folds evident in the photograph have, so far as I am concerned, been unsuccessful.  The requirements of section 22B(1A), that an amendment of an application may not increase the scope of the application by the inclusion of matter that was not in substance disclosed in the application as lodged, have not been met, therefore, and the proposed substitution of the drawing cannot be allowed.  I make no further comment about the registrability of the design depicted therein, except to observe that I have considerable doubts as to its sufficiency in individual appearance.
         It follows, then, that the application cannot proceed to registration, there being no design within the meaning of the Act disclosed in the application as lodged.  Accordingly, application 5401/83 is refused.

(S. FARQUHAR)