Jason Hamilton Hall in his capacity as Trustee of the Hamilton Trust and in his personal capacity v LEWIS

[2004] WASC 217

JASON HAMILTON HALL in his capacity as Trustee of the Hamilton Trust and in his personal capacity -v- LEWIS & ANOR [2004] WASC 217

Jurisdiction:	SUPREME COURT OF WESTERN AUSTRALIA	Citation No:	[2004] WASC 217
Case No:	CIV:1011/2001	Heard:	23-24, 27-29 SEPTEMBER & 1 OCTOBER 2004
Coram:	COMMISSIONER ZILKO SC	Delivered:	21/10/04
No of pages:	48	Judgment Part:	1 of 1
Result:	Plaintiff entitled to relief for infringement of patent and design Plaintiff's claim in respect of infringement of trade marks dismissed
Category:	B
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Parties:	JASON HAMILTON HALL in his capacity as Trustee of the Hamilton Trust and in his personal capacity JAN LEWIS SUNWISE INNOVATIONS PTY LTD (ACN 091 393 467)
Catchwords:	Intellectual property Patents Designs Trade marks Alleged prior use of patent Alleged prior public disclosure of and commercial dealing with design Alleged new design by enlarged amendments thereof Whether invalidity of patent or design Whether issue estoppel arises from decision of delegate of Registrar of Designs Relevance of pronunciation of trade marks to question of infringement Whether first defendant an aggrieved person under Trade Marks Act Requirement to give Registrar of Trade Marks notice of application to remove trade mark from Register
Legislation:	Designs Act 1906 Designs Act 2003 Patents Act 1990 Trade Marks Act 1995
Case References:	Administration of Papua New Guinea v Daera Guba (1973) 130 CLR 353 Allsop Inc v Bintang Ltd (1989) 15 IPR 686 Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 Azuko Pty Ltd v Old Digger Pty Ltd [2001] FCA 1079 Benchairs Ltd v Chair Centre Ltd (1974) RPC 429 Blair & Perpetual Trustees Co Ltd v Curran (Adams' Will) (1939) 62 CLR 464 Catnic Components Ltd v Hill & Smith Ltd (1982) RPC 183 Chris Ford Enterprises Pty Ltd v B H & J R Bardenhop Pty Ltd (1985) 4 IPR 485 Commonwealth Industrial Gases Ltd v M W A Holdings Pty Ltd (1970) 180 CLR 160 D Sebel & Co Ltd v National Art Metal Co Pty Ltd (1965) 10 FLR 224 Dart Industries Inc v Décor Corp Pty Ltd (1989) 15 IPR 403 Decor Corp Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 Dunlop Rubber Co Ltd v Golf Ball Developments Ltd (1931) 48 RPC 268 Faessler v Neale (1994) 29 IPR 1 Firmagroup Australia Pty Ltd v Byrne & Davidson Doors (Vic) Pty Ltd (1987) 9 IPR 353 Foggin v Lacey (2003) 57 IPR 225 Gerard Industries Pty Ltd v Auswide Import Export Pty Ltd (1998) 40 IPR 119 Grove Hill Pty Ltd v Great Western Corporation Pty Ltd (2002) 55 IPR 257 House v Department of Defence (1996) 136 ALR 444 Jones v Dunkel (1959) 101 CLR 298 K-Aire Pty Ltd v Polyaire Pty Ltd [2003] FCAFC 310 L J Fisher & Co Ltd v Fabtile Industries Pty Ltd (1979) 49 AOJP 3611 Linsley v Petrie (1998) 1 VR 427 Malleys Ltd v J W Tomlin Pty Ltd (1961) 180 CLR 120 Meanwell v Hall [2001] ADO 1 Minnesota Mining & Manufacturing Co v Beiersdorf (Aust) Ltd (1980) 29 ALR 29 Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd (2002) 56 IPR 248 Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 16 IPR 545 Olin Corporation v Super Cartridge Co Pty Ltd (1977) 14 ALR 149 Oren v Redbox Toy Factory Ltd (1999) FSR 785 Populin v H B Nominees Pty Ltd (1982) 41 ALR 471 Powell v Glow Zone Products Pty Ltd (1996) 36 IPR 343 Radiation Ltd v Galliers & Klaerr Pty Ltd (1938) 60 CLR 36 Ramsay v Pigram (1968) 118 CLR 271 Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 12 IPR 417 Rysta Ltd's Application (1943) 60 RPC 87 Schmittzehe v Roberts (1955) 72 RPC 122 Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 Taylor v Ansett Transport Industries Ltd (1987) 72 ALR 188 Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd (2003) 204 ALR 90 Turbo Tek Enterprises Inc v Sperling Enterprises Pty Ltd (1989) 15 IPR 617 Unilever Aust Ltd v Karounos (2001) 52 IPR 361 Waddington v Silver Chain Nursing Association (1998) 20 WAR 269 Wanem Pty Ltd v Tekiela (1990) 19 IPR 435 Yates Property Corp Pty Ltd v Boland (2000) 179 ALR 664 Advantage-Rent-a-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24 Ainsworth Nominees Pty Ltd v Andclar Pty Ltd (1988) 12 IPR 551 Aktiebolaget Hassle v Alphapharm Pty Ltd (2000) 51 IPR 375 Australian Home Loans Ltd t/as Aussie Home Loans v Phillips & Anor (1998) 40 IPR 392 Bank of Western Australia Ltd v Ocean Trawlers Pty Ltd (1995) 13 WAR 407 Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353 Boardman v Phipps [1967] 2 AC 46 Bristol-Myers Squibb Co v F H Faulding & Co Ltd (2000) 46 IPR 553 British Celanese Ltd v Courtaulds Ltd (1935) 52 RPC 171 British Thomson-Houston Co Ltd v Corona Lamp Works Ltd (1922) 39 RPC 49 Britt Allcroft (Thomas) LLC v Miller t/as The Thomas Shop (2000) 49 IPR 7 Campomar Sociedad Limitada v Nike International Ltd (2000) HCA 12 Carnaudmetalbox PLC v American National Can Co (1994) APO 69 Commonwealth v Verwayen (1990) 170 CLR 394 De Cordova v Vick Chemical Co (1951) 1B IPR 496 Deeko Australia Pty Ltd v Decor Corporation Pty Ltd (1988) 11 IPR 531 EI Dupont de Nemours & Co v Imperial Chemical Industries PLC (2002) 54 IPR 304 Elconnex Pty Ltd v Gerard Industries Pty Ltd (1991) 22 IPR 551 Elders IXL Ltd v Australian Estates Pty Ltd (1987) 10 IPR 575 Electrical & Musical Industries Ltd v Lissen Ltd (1939) 56 RPC 23 Equity Access Pty Ltd v Westpac Banking Corporation (1989) 16 IPR 431 F Hoffman-La Roche AG v New England Biolabs Inc (2000) 50 IPR 305 Fina Research SA v Halliburton Energy Services Inc (2003) FCA 55 Firebelt Pty Ltd v Brambles Australia Ltd (2002) 188 ALR 280 Firmagroup Australia Pty Ltd v Byrne and Davidson Doors (Vic) Pty Ltd & Ors (1986) 6 IPR 377 Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 22 IPR 1 Flexible Steel Lacing Co v Beltreco Ltd (2000) 49 IPR 331 Fraser Henleins Pty Ltd & Anor v Cody (1945) 70 CLR 100 Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd (2004) FCA 323 GAP ITM Inc v General Pants Co Pty Ltd (2004) 60 IPR 486 General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1971) 1A IPR 121 Global Sportsmen Pty Ltd v Mirror Newspapers Ltd (1984) 2 FCR 82 Hill v Evans (1862) 31 LJ Ch 457 Hospital Products Ltd v United States Surgical Corp (1984) 156 CLR 41 John Fitton & Co Ltd's Application (1949) 66 RPC 110 Leonardis v Sartas No 1 Pty Ltd (1996) 35 IPR 23 Levi Strauss & Co v Wingate Marketing Pty Ltd (1993) 26 IPR 215 Lift Verkaufsgerate GmbH v Fischer Plastics Pty Ltd (1993) 27 IPR 187 Longworth v Emerton (1951) 83 CLR 539 Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 Minerals Separation North America Corporation v Noranda Mines Ltd (1952) 69 RPC 81 Mining Equipment ("Minquip") Pty Ltd v Alfagomma Australia Pty Ltd (2004) FCA 780 Neat Holdings Pty Ltd v Karajan Holdings Pty Ltd (1992) 67 ALJR 170 Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56 Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 Parkinson v Simon (1894) 11 RPC 493 Pierre Treand's Application (1961) AOJP 2164 Pollock v Wellington (1996) 15 WAR 1 Port of Melbourne Authority v Anshun Pty Ltd (1981) 147 CLR 589 Pownall v Conlan Management Pty Ltd (1995) 12 WAR 370 Purkess v Crittenden (1965) 114 CLR 164 Raleigh Cycle Co Ltd & Anor v H Miller & Co Ltd (1948) 65 RPC 141 Re Application by Bourjois Ltd (1988) 11 IPR 625 Re Application by International Chemical Engineering AG (1988) 11 IPR 601 Re Application by Joseph Crosfield & Sons Ltd (1909) 26 RPC 850 Re Wolanski's Registered Design (1953) 88 CLR 278 Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 11 IPR 289 Root Quality Pty Ltd v Root Control Technologies Pty Ltd (2000) 49 IPR 225 Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd (1960) RPC 59 Sandtara Pty Ltd v Abigroup Pty Ltd (1997) 2 NSWLR 5 Seiller's Application (1970) RPC 103 Seven-Up Co v Bubble-Up Co Inc (1987) 9 IPR 259 Societe des Usines Chimiques Rhone-Poulenc v Commissioner of Patents (1958) 100 CLR 5 Sunbeam Corporation & Anor v Morphy-Richards (Australia) Pty Ltd (1961) 1 B IPR 625 Taco Company of Australia Inc v Taco Bell Pty Ltd (1982) ATPR 40-303 The "Ikarian Reefer" (1993) FSR 563 The Electric Construction Co Ltd v The Imperial Tramways Co Ltd (1900) 17 RPC 537 Trawl Industries of Australia Pty Ltd v Effem Foods Pty Ltd (1992) 36 FCR 406 Valor Heating Co Ltd v Main Gas Appliances Ltd (1973) RPC 871 Welcome Real-Time SA v Catuity Inc (2001) 51 IPR 327 Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262; 1A IPR 268 Werner Motors Ltd v A W Gamage Ltd (1904) 21 RPC 621 Wingate Marketing Pty Ltd & Anor v Levi Strauss & Co & Anor (1994) 28 IPR 193 Wundowie Foundry Pty Ltd v Milson Foundry Pty Ltd (1993) 27 IPR 202

JURISDICTION : SUPREME COURT OF WESTERN AUSTRALIA

IN CIVIL

CITATION : JASON HAMILTON HALL in his capacity as Trustee of the Hamilton Trust and in his personal capacity -v- LEWIS & ANOR [2004] WASC 217 CORAM : COMMISSIONER ZILKO SC HEARD : 23-24, 27-29 SEPTEMBER & 1 OCTOBER 2004 DELIVERED : 21 OCTOBER 2004 FILE NO/S : CIV 1011 of 2001

Consolidated with CIV 1012 of 2001 by order dated 20 August 2001

BETWEEN : JASON HAMILTON HALL in his capacity as Trustee of the Hamilton Trust and in his personal capacity

Plaintiff

AND

JAN LEWIS
First Defendant

SUNWISE INNOVATIONS PTY LTD (ACN 091 393 467)
Second Defendant

Catchwords:

Intellectual property - Patents - Designs - Trade marks - Alleged prior use of patent - Alleged prior public disclosure of and commercial dealing with design - Alleged new design by enlarged amendments thereof - Whether invalidity of patent or design - Whether issue estoppel arises from decision of delegate of Registrar of Designs - Relevance of pronunciation of trade marks to question of infringement - Whether first defendant an aggrieved person under Trade Marks

(Page 2)

Act - Requirement to give Registrar of Trade Marks notice of application to remove trade mark from Register

Legislation:

Designs Act 1906

Designs Act 2003
Patents Act 1990
Trade Marks Act 1995

Result:

Plaintiff entitled to relief for infringement of patent and design

Plaintiff's claim in respect of infringement of trade marks dismissed

Category: B

Representation:

Counsel:

Plaintiff : Mr R J L McCormack
First Defendant : Mr R M Wilenski
Second Defendant : Mr R M Wilenski

Solicitors:

Plaintiff : Mallesons Stephen Jaques
First Defendant : Tottle Partners
Second Defendant : Tottle Partners

Case(s) referred to in judgment(s):

Administration of Papua New Guinea v Daera Guba (1973) 130 CLR 353
Allsop Inc v Bintang Ltd (1989) 15 IPR 686
Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641
Azuko Pty Ltd v Old Digger Pty Ltd [2001] FCA 1079
Benchairs Ltd v Chair Centre Ltd (1974) RPC 429
Blair & Perpetual Trustees Co Ltd v Curran (Adams' Will) (1939) 62 CLR 464
Catnic Components Ltd v Hill & Smith Ltd (1982) RPC 183


(Page 3)

Chris Ford Enterprises Pty Ltd v B H & J R Bardenhop Pty Ltd (1985) 4 IPR 485
Commonwealth Industrial Gases Ltd v M W A Holdings Pty Ltd (1970) 180 CLR 160
D Sebel & Co Ltd v National Art Metal Co Pty Ltd (1965) 10 FLR 224
Dart Industries Inc v Décor Corp Pty Ltd (1989) 15 IPR 403
Decor Corp Pty Ltd v Dart Industries Inc (1988) 13 IPR 385
Dunlop Rubber Co Ltd v Golf Ball Developments Ltd (1931) 48 RPC 268
Faessler v Neale (1994) 29 IPR 1
Firmagroup Australia Pty Ltd v Byrne & Davidson Doors (Vic) Pty Ltd (1987) 9 IPR 353
Foggin v Lacey (2003) 57 IPR 225
Gerard Industries Pty Ltd v Auswide Import Export Pty Ltd (1998) 40 IPR 119
Grove Hill Pty Ltd v Great Western Corporation Pty Ltd (2002) 55 IPR 257
House v Department of Defence (1996) 136 ALR 444
Jones v Dunkel (1959) 101 CLR 298
K-Aire Pty Ltd v Polyaire Pty Ltd [2003] FCAFC 310; (2004) 60 IPR 512
L J Fisher & Co Ltd v Fabtile Industries Pty Ltd (1979) 49 AOJP 3611
Linsley v Petrie (1998) 1 VR 427
Malleys Ltd v J W Tomlin Pty Ltd (1961) 180 CLR 120
Meanwell v Hall [2001] ADO 1
Minnesota Mining & Manufacturing Co v Beiersdorf (Aust) Ltd (1980) 29 ALR 29
Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd (2002) 56 IPR 248
Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 16 IPR 545
Olin Corporation v Super Cartridge Co Pty Ltd (1977) 14 ALR 149
Oren v Redbox Toy Factory Ltd (1999) FSR 785
Populin v H B Nominees Pty Ltd (1982) 41 ALR 471
Powell v Glow Zone Products Pty Ltd (1996) 36 IPR 343
Radiation Ltd v Galliers & Klaerr Pty Ltd (1938) 60 CLR 36
Ramsay v Pigram (1968) 118 CLR 271
Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 12 IPR 417
Rysta Ltd's Application (1943) 60 RPC 87
Schmittzehe v Roberts (1955) 72 RPC 122
Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407
Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592
Taylor v Ansett Transport Industries Ltd (1987) 72 ALR 188
Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd (2003) 204 ALR 90
Turbo Tek Enterprises Inc v Sperling Enterprises Pty Ltd (1989) 15 IPR 617


(Page 4)

Unilever Aust Ltd v Karounos (2001) 52 IPR 361
Waddington v Silver Chain Nursing Association (1998) 20 WAR 269
Wanem Pty Ltd v Tekiela (1990) 19 IPR 435
Yates Property Corp Pty Ltd v Boland (2000) 179 ALR 664

Case(s) also cited:

Advantage-Rent-a-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24
Ainsworth Nominees Pty Ltd v Andclar Pty Ltd (1988) 12 IPR 551
Aktiebolaget Hassle v Alphapharm Pty Ltd (2000) 51 IPR 375
Australian Home Loans Ltd t/as Aussie Home Loans v Phillips & Anor (1998) 40 IPR 392
Bank of Western Australia Ltd v Ocean Trawlers Pty Ltd (1995) 13 WAR 407
Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353
Boardman v Phipps [1967] 2 AC 46
Bristol-Myers Squibb Co v F H Faulding & Co Ltd (2000) 46 IPR 553
British Celanese Ltd v Courtaulds Ltd (1935) 52 RPC 171
British Thomson-Houston Co Ltd v Corona Lamp Works Ltd (1922) 39 RPC 49
Britt Allcroft (Thomas) LLC v Miller t/as The Thomas Shop (2000) 49 IPR 7
Campomar Sociedad Limitada v Nike International Ltd (2000) HCA 12
Carnaudmetalbox PLC v American National Can Co (1994) APO 69
Commonwealth v Verwayen (1990) 170 CLR 394
De Cordova v Vick Chemical Co (1951) 1B IPR 496
Deeko Australia Pty Ltd v Decor Corporation Pty Ltd (1988) 11 IPR 531
EI Dupont de Nemours & Co v Imperial Chemical Industries PLC (2002) 54 IPR 304
Elconnex Pty Ltd v Gerard Industries Pty Ltd (1991) 22 IPR 551
Elders IXL Ltd v Australian Estates Pty Ltd (1987) 10 IPR 575
Electrical & Musical Industries Ltd v Lissen Ltd (1939) 56 RPC 23
Equity Access Pty Ltd v Westpac Banking Corporation (1989) 16 IPR 431
F Hoffman-La Roche AG v New England Biolabs Inc (2000) 50 IPR 305
Fina Research SA v Halliburton Energy Services Inc (2003) FCA 55
Firebelt Pty Ltd v Brambles Australia Ltd (2002) 188 ALR 280
Firmagroup Australia Pty Ltd v Byrne and Davidson Doors (Vic) Pty Ltd & Ors (1986) 6 IPR 377
Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 22 IPR 1
Flexible Steel Lacing Co v Beltreco Ltd (2000) 49 IPR 331
Fraser Henleins Pty Ltd & Anor v Cody (1945) 70 CLR 100
Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd (2004) FCA 323


(Page 5)

GAP ITM Inc v General Pants Co Pty Ltd (2004) 60 IPR 486
General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1971) 1A IPR 121
Global Sportsmen Pty Ltd v Mirror Newspapers Ltd (1984) 2 FCR 82
Hill v Evans (1862) 31 LJ Ch 457
Hospital Products Ltd v United States Surgical Corp (1984) 156 CLR 41
John Fitton & Co Ltd's Application (1949) 66 RPC 110
Leonardis v Sartas No 1 Pty Ltd (1996) 35 IPR 23
Levi Strauss & Co v Wingate Marketing Pty Ltd (1993) 26 IPR 215
Lift Verkaufsgerate GmbH v Fischer Plastics Pty Ltd (1993) 27 IPR 187
Longworth v Emerton (1951) 83 CLR 539
Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228
Minerals Separation North America Corporation v Noranda Mines Ltd (1952) 69 RPC 81
Mining Equipment ("Minquip") Pty Ltd v Alfagomma Australia Pty Ltd (2004) FCA 780
Neat Holdings Pty Ltd v Karajan Holdings Pty Ltd (1992) 67 ALJR 170
Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56
Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191
Parkinson v Simon (1894) 11 RPC 493
Pierre Treand's Application (1961) AOJP 2164
Pollock v Wellington (1996) 15 WAR 1
Port of Melbourne Authority v Anshun Pty Ltd (1981) 147 CLR 589
Pownall v Conlan Management Pty Ltd (1995) 12 WAR 370
Purkess v Crittenden (1965) 114 CLR 164
Raleigh Cycle Co Ltd & Anor v H Miller & Co Ltd (1948) 65 RPC 141
Re Application by Bourjois Ltd (1988) 11 IPR 625
Re Application by International Chemical Engineering AG (1988) 11 IPR 601
Re Application by Joseph Crosfield & Sons Ltd (1909) 26 RPC 850
Re Wolanski's Registered Design (1953) 88 CLR 278
Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 11 IPR 289
Root Quality Pty Ltd v Root Control Technologies Pty Ltd (2000) 49 IPR 225
Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd (1960) RPC 59
Sandtara Pty Ltd v Abigroup Pty Ltd (1997) 2 NSWLR 5
Seiller's Application (1970) RPC 103
Seven-Up Co v Bubble-Up Co Inc (1987) 9 IPR 259
Societe des Usines Chimiques Rhone-Poulenc v Commissioner of Patents (1958) 100 CLR 5
Sunbeam Corporation & Anor v Morphy-Richards (Australia) Pty Ltd (1961) 1 B IPR 625


(Page 6)

Taco Company of Australia Inc v Taco Bell Pty Ltd (1982) ATPR 40-303
The "Ikarian Reefer" (1993) FSR 563
The Electric Construction Co Ltd v The Imperial Tramways Co Ltd (1900) 17 RPC 537
Trawl Industries of Australia Pty Ltd v Effem Foods Pty Ltd (1992) 36 FCR 406
Valor Heating Co Ltd v Main Gas Appliances Ltd (1973) RPC 871
Welcome Real-Time SA v Catuity Inc (2001) 51 IPR 327
Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262; 1A IPR 268
Werner Motors Ltd v A W Gamage Ltd (1904) 21 RPC 621
Wingate Marketing Pty Ltd & Anor v Levi Strauss & Co & Anor (1994) 28 IPR 193
Wundowie Foundry Pty Ltd v Milson Foundry Pty Ltd (1993) 27 IPR 202


(Page 7)

1 COMMISSIONER ZILKO SC: In these consolidated actions there are a number of claims and counterclaims requiring resolution by the Court. In order to identify the issues arising for my consideration it is appropriate that I begin by setting out a summary of the pleadings. I propose to do so by reference to the various causes of action pleaded by the parties and the relief sought by each of them.

The Plaintiff's Letters Patent

2 The plaintiff is registered under the Patents Act 1990 as the proprietor of Australian Letters Patent No 684592 for an invention entitled "An Article of Headwear". The complete specification was published on 1 August 1995 and the Letters Patent were sealed on 9 April 1998 ("the plaintiff's patent"). The plaintiff says that the first defendant has infringed the various claims of the plaintiff's patent by manufacturing and selling articles of headwear called the "Le Hood". Insofar as the second defendant is concerned, similar allegations are made in relation to infringement of the plaintiff's patent by the second defendant's manufacture and sale of articles of headwear called the "Adapt-A-Cap".

The Plaintiff's Registered Design

3 The plaintiff is the proprietor of Australian registered design AU-S-120181 under the Designs Act 1906 for an article described as a hat for which application was filed on 10 March 1993. Registration took effect on 4 May 1994 ("the plaintiff's design"). The plaintiff contends that the first defendant has infringed his monopoly in the plaintiff's design by applying the design or an obvious or fraudulent imitation thereof to an article, the Le Hood hat, the shape and configuration of which are within the scope of the subject matter of the plaintiff's design without his licence or authority to do so. The same allegations are made against the second defendant in relation to the Adapt-A-Cap hat. It should be noted at this juncture that since 20 February 2001 the first defendant has been the proprietor of Australian registered design AU 1430285 ("the first defendant's design"), and since 30 May 2000 Kerryn Ann Meanwell has been the proprietor of Australian registered design AU 140792S ("the Meanwell design"). As will become clear later in these reasons, the Le Hood hat is manufactured by the first defendant in accordance with the first defendant's design and the Adapt-A-cap hat is manufactured by the second defendant in accordance with the Meanwell design.

(Page 8)

The Plaintiff's Registered Trade Marks

4 The plaintiff is registered under the Trade Marks Act 1995 as the proprietor of the trade marks "Araphat" and "Wraphat". The application for Araphat was filed on 10 January 1994 and the wordmark was sealed on 19 June 1996. The application for Wraphat was filed on 17 April 1998 and the wordmark was sealed on 7 December 1998.

5 The plaintiff contends that the first defendant has, without his licence or authority, manufactured or caused to be manufactured and has advertised, offered for sale, distributed, supplied and sold hats under the trade mark Wraphat which trade mark is substantially identical or deceptively similar to both of the plaintiff's trade marks. Particulars of the alleged breach are that the first defendant has advertised for sale hats described as an "improved design Wraphat" and has manufactured and sold hats identical or substantially identical to the plaintiff's hat.

6 With regard to the second defendant, the plaintiff pleads that the second defendant has, without his licence or authority, manufactured or caused to be manufactured and advertised, offered for sale, distributed, supplied and sold hats under the trade mark Adapt-A-Cap which trade mark is substantially identical or deceptively similar to the plaintiff's trade mark Araphat. No plea is made by the plaintiff in respect of the mark Wraphat as far as the second defendant is concerned.

Breach of Section 10 of the Fair Trading Act 1987

7 The plaintiff also claims that the first defendant has breached the Fair Trading Act by her use of the term "improved design Wraphat" with hats manufactured by the first defendant which were identical or substantially identical or deceptively similar to the hats produced and sold by the plaintiff. The plaintiff contends that the production of the first defendant's hats in the above way has had the effect of causing potential customers of the plaintiff to believe wrongly that the first defendant's hats were manufactured, promoted and/or sold by or with the permission of the plaintiff and as such the first defendant has engaged and continues to engage in conduct that is misleading or deceptive or is likely to mislead or deceive contrary to the provisions of s 10 of the Fair Trading Act. No similar claim is made against the second defendant.

The Relief Sought by the Plaintiff

8 Against each of the defendants the plaintiff claims the following relief:

(Page 9)

1) a declaration that the first defendant has infringed the plaintiff's patent, the plaintiff's design and his registered trade marks Araphat and Wraphat;

2) a declaration that the second defendant has infringed the plaintiff's patent, the plaintiff's design and his registered trade mark Araphat:

3) an injunction to restrain each of the defendants from infringing the plaintiff's patent, the plaintiff's design and his registered trade marks;

4) an account of profits in respect of those infringements and payment of the sum found to be due;

5) in the alternative as far as the first defendant is concerned, damages pursuant to s 79 of the Fair Trading Act;

6) delivery up to the plaintiff for destruction all material in the possession or control of the first and second defendants which would be an infringement of the plaintiff's patent, the plaintiff's design or his registered trade marks;

7) further or other orders as may be necessary.

9 Separately against the first defendant the plaintiff seeks a declaration that:

a) the first defendant's design is invalid by reason of the non-compliance with s 17 of the Designs Act 1906 and is liable to be removed from the Register of Designs;

b) the first defendant holds ownership thereof on constructive trust for the plaintiff;

c) the first defendant's design is invalid by reason of the article the subject of the first defendant's design embodying features within the claims and each of them of the complete specification of the plaintiff's patent.

10 Two comments need to be made about the plaintiff's prayer for relief. First, the prayer for relief as framed in the statement of claim seeks damages or, in the alternative, an account of profits. During the trial, however, counsel for the plaintiff elected to seek an account of profits and thereby abandoned the claim for damages. It was agreed between the parties that any account of profits would be dealt with by my referring the matter to a Master of the Court for determination. Second, in his opening submissions counsel for the plaintiff submitted that the catch-all provisions in the prayer for relief which seek further or other orders as

(Page 10)

may be necessary were capable of embracing an order for revocation of the first defendant's design and the Meanwell design but this was not pursued further during the trial and I do not understand the plaintiff to be seeking any such relief under the catch-all provisions.

The Defences and Counterclaims

11 In their respective defences the defendants admit the existence of the plaintiff's patent and the plaintiff's design and also admit that the plaintiff is registered as the proprietor of the trade marks Araphat and Wraphat

12 As far as the plaintiff's patent is concerned, the defendants deny any infringement thereof and say further that the provisional patent application in respect of the plaintiff's patent was filed after the first commercial and non-confidential exploitation of the invention the subject of the plaintiff's patent thereby resulting in the invalidity thereof. Particulars of the plaintiff's alleged prior use are that the plaintiff has admitted the same in an earlier version of the statement of claim and in his reply and, further, there was commercial and non-confidential exploitation of the invention in the course of the plaintiff's dealings with manufacturers and others who supplied commercial quantities of materials to the plaintiff during 1993.

13 I should add for completeness that the defences filed by each of the defendants also challenged the validity of the plaintiff's patent on the basis that it lacked novelty, involved no inventive step, was obvious in light of the common general knowledge as it existed at the time of the registration of the plaintiff's patent, and was not a manner of manufacture which embodied a new mode of the application of a useful art in an economic endeavour. However, these defences were abandoned by counsel for the defendants during his closing submissions.

14 As far as the plaintiff's design is concerned, each defendant denies any infringement thereof and contends that the headwear the subject of the plaintiff's design is materially different from the headwear designed and manufactured by the defendants. The defendants raise several other discrete defences. First, the defendants contend that the plaintiff's design is invalid because the scope of the monopoly protected by it is indeterminate. Particulars of this allegation are that the representation of the article by the plaintiff does not, as a whole, provide a clear representation of the shape and/or configuration of the headwear. The overall shape of that section is not clear and the hood section appears to be made from several sections with seams being shown on some drawings within the representation but not on others. In particular, the defendants

(Page 11)

point to the plaintiff's failure to disclose the configuration of the ruffles on the peak and its alignment with what appears to be a badge.

15 Second, the defendants say that the plaintiff submitted representations in which the monopoly was claimed on or about 7 April 1994 which, although intended to be an amendment of the original application for design, did not fall within the scope of an allowable amendment under s 22B(1) of the Designs Act 1906 with the consequence that the plaintiff's design should have been refused pursuant to s 22(B)(1A) of the Act.

16 Third, the representations of the plaintiff's design were not filed by him until 11 April 1994 and there was prior public disclosure of and commercial dealing with the plaintiff's design prior to that date. Particulars of this allegation are that the plaintiff commenced manufacture of the hats in commercial quantities in 1993 and the manufactured items were disclosed to various persons.

17 By reason of the above matters the defendants say that the plaintiff's design is invalid and should be expunged from the Register of Designs.

18 Finally insofar as the plaintiff's design is concerned, the defendants plead issue estoppel. In this regard I refer to the first defendant's design and the Meanwell design. The first defendant says that the plaintiff had the opportunity to but failed to oppose the grant of the first defendant's design in consequence of which the plaintiff may not now raise as an issue between the plaintiff and the first defendant a contention that an article of headwear having the configuration of the first defendant's design falls within the scope of the plaintiff's design. The second defendant says that the plaintiff did not successfully oppose the grant of the Meanwell design and his failure to successfully oppose that grant constitutes an issue determined as between the plaintiff and the second defendant such that the plaintiff cannot now assert that articles of headwear adopting the configuration of the Meanwell design fall within the scope of the protection provided by the plaintiff's design.

19 Although there is no express plea of estoppel, it was made clear by counsel for the defendants during the trial that this is what was intended by each of the defendants. On their face the pleas appear to be the same. However, as the facts emerged during the trial it was clear that they were not the same. Insofar as the first defendant's design is concerned, the plea is very much as it appears above, namely, that the plaintiff took no step to oppose the registration of the first defendant's design. Insofar as the

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second defendant is concerned, however, the issue estoppel point arises from the fact that the plaintiff did object to an extension of the registration of the Meanwell design. In support of his objection reference was made to the plaintiff's design, the plaintiff's patent and other design registrations and patent specifications. Eventually a delegate of the Registrar of Designs convened a hearing on 27 November 2001 to determine the plaintiff's objections. I will refer to these matters in more detail later in these reasons but it is sufficient to say at this stage that after considering the objections the registration of the Meanwell design was extended by the delegate.

20 Insofar as the plaintiff's trade marks are concerned, the first defendant denies any infringement thereof and says that the advertisement which referred to an improved design Wraphat was printed, published and distributed by a marine goods distributor known as Blue Water without the first defendant's authority or consent or indeed her knowledge of the advertisement until after it was published. The first defendant also says that the mark Wraphat was invented and is owned by her and has in consequence been invalidly registered by the plaintiff. The first defendant also says that the name was registered by the plaintiff without having the intention in good faith to use the mark in Australia or authorise the use of the mark in Australia or to assign the mark for use by a body corporate in Australia.

21 The second defendant admits its use of the trade mark Adapt-A-Cap but denies that in doing so it has breached the plaintiff's registered trade mark Araphat. The second defendant denies that the mark Adapt-A-Cap is substantially identical or deceptively similar to the plaintiff's trade mark. Further and in any event, the second defendant says that the mark Adapt-A-Cap is registered under the Act in the name of Kerryn Ann Meanwell as trade mark number 833741 and that the second defendant has, since the date of that registration, been the sole licensed user of the registered trade mark and is thereby permitted to rely on s 122(1)(e) of the Act.

22 With regard to the alleged breach of s 10 of the Fair Trading Act, the first defendant denies any breach thereof.

23 By each counterclaim, the defendants seek:

a) a declaration that the plaintiff's patent is invalid;

b) an order pursuant to s 121 of the Patents Act that the plaintiff's patent be revoked;

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c) a declaration that the plaintiff's design is invalid;

d) an order that the plaintiff's design be expunged from the Register of Designs;

e) an order that the Register of Designs be rectified by amending the date from which the plaintiff's industrial property rights have effect from 10 March 1993 to 11 April 1994 pursuant to s 39(1) of the Designs Act;

f) a declaration that the defendants have not infringed the plaintiff's patent, the plaintiff's design and the plaintiff's registered trade marks.

24 Separately, the first defendant seeks the following relief:

(a) an order under s 92(3) of the Trade Marks Act directing the Registrar of Trade Marks to remove trade mark number 760174, which relates to the trade mark Wraphat, from the Register of Trade Marks;

(b) a declaration that the trade mark Wraphat is invalid by reason of the plaintiff not being the owner of that trade mark;

(c) an order that the Register of Trade Marks be rectified by cancelling the registration of trade mark number 760174 pursuant to s 88 of the Trade Marks Act;

(d) a declaration that the first defendant's headwear goods do not infringe any right of the plaintiff in respect of the plaintiff's headwear the subject of the registered trade marks 619908 and 760174 or either of them.

25 The plaintiff has filed a reply in respect of each of the defences. Without descending into detail, each reply essentially deals with the defendants' allegations regarding prior disclosure and commercial use. In each case the plaintiff says any prior disclosure was on a confidential basis for the purposes of reasonable trial and experimentation.

26 There are other matters in the various pleadings referred to above and merely because I have not specifically mentioned those matters does not mean that I have not taken them into account in the overall assessment of the merits of the claim and the defences and counterclaims.

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The Evidence

27 The plaintiff gave evidence that in August or September 1992 he began to think seriously about designing a hat which would protect most of the head, face and neck from the sun and stay on in windy and wet conditions. He looked at various options and decided that a combination that might work would be a capped peak attached to panels of fabric. Those panels would cover the top of the head, hang down the sides and back of the head and neck and be held on the head by an adjustable headband made of Velcro. The plaintiff says that in late 1992 after much trial and error he came up with a design which would provide the wearer with a number of options to cover all or part of the head, neck and face whilst reducing the likelihood of the hat being blown off in strong winds. Thereafter he consulted Reg Wray, a patent attorney, who recommended that he seek a registered design first and later apply for a patent.

28 He says that he developed the name Araphat in 1992. In deciding on a name, he thought that it could be called a Wraphat either with a "W" or an "R" but he chose the spelling Araphat as a play on the word "Arafat" because of the headdress worn by Yasser Arafat. As already noted these marks were sealed on 19 June 1996 and 7 December 1998 respectively. The plaintiff said that although he chose the spelling Araphat in his first trade mark, the word could be pronounced "A-Wrap-Hat". Notwithstanding this, I note that there was no evidence that any member of the buying public pronounced it in this way. I will refer to this issue in more detail when I deal with the alleged infringement of the plaintiff's trade marks.

29 In late 1992 the plaintiff attempted to make a sample of the Araphat. He showed it to Mr Wray. He made other samples as well. As a result of Mr Wray's advice the plaintiff decided that he would need to have a hat maker or seamstress construct a sample for him.

30 The plaintiff consulted various people in order to obtain a prototype of his hat and these included Joy Watling, Sally Johnston (now Sally McKercher) and Thanh Quang Nguyen ("Mr Quang"). He also sought advice as to production costing from various quarters, in particular from Mr Quang. This entailed the manufacture of several hundred hat bodies by Mr Quang in December 1993 (when I refer to hat bodies I mean the hat without a visor or headband). The plaintiff said the hat bodies were not suitable for any form of commercial sale because of Mr Quang's use of different coloured materials in their manufacture. Accordingly, the

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plaintiff said that he rendered the hat bodies useless by pouring oil and bleach over them and then depositing them at the local tip.

31 In addition to his dealings with the above parties, the plaintiff went on a surfing trip to a beach in the north of Western Australia with two friends, Stephen Tummel and Mark Williams, where they wore the hat over several days to assess its utility both in the water and on land.

32 In due course the plaintiff obtained a registered design of the Araphat hat but not before the Registrar of Designs had advised him that the drawings in support of the registration of the design were inadequate. There was some delay in responding to the Registrar's enquiry but eventually the plaintiff obtained professionally drawn illustrations of the proposed design which were sent to the Registrar's office. Registration of the plaintiff's design followed.

33 In the plaintiff's design monopoly is claimed in the shape and/or configuration of a hat as illustrated in the representations accompanying the application. There is no statement of novelty. The representations which form part of the plaintiff's design are 12 in number and depict the Araphat hat, from both the front and rear, being used three-dimensionally in a number of guises. I have appended to these reasons the 12 drawings referred to in the plaintiff's design.

34 The drawings show the shape and configuration of the hat. Its two most distinctive features are a head-covering which fits over the crown of the wearer's head and then falls in a symmetrical arrangement either side of the wearer's face and behind the head to shoulder level. A crescent-shaped peak or visor attached to a headband is seen on top of the hat and the head-covering material is attached to the top of the visor or peak at the rear edge thereof from which point the material falls to each side of the face and to the back of the head to shoulder level. The design provides for a wide variety of arrangements that may be employed by the wearer to draw the material around the head and face in order to provide protection to the face, the back of the head and neck as desired. The material can also be drawn back so as to expose the face without protection.

35 The drawings also show that the material is cut and sewn so as to produce seam lines which follow the contours of the crown of the head. The bottom edges of the material are contoured to sit on the shoulders of the wearer. There are several Velcro patches to enable the side panels of the material to be attached if desired either to each other by overlapping in

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front of the face or under the chin or held away from the face and attached at the back of the neck. There is a loop attached to the upper forward edges of the side panels which provides a further point of attachment for the material. There is a decorative logo which appears to be in the centre of the visor.

36 In due course registration of the plaintiff's patent was effected. The features or integers described in numerical form are as follows:

Claim 1

An article of headwear characterised by:

1.1 a substantially forwardly projecting peak or visor;

1.2 an adjustable head engaging band

1.3 a length or sheet of material

1.4 the head engaging band being attached or attachable to the peak or visor at or near the rear edge thereof

1.5 the length or sheet of material being attached or attachable to the peak or visor and extending rearwardly thereof, whereby the peak or visor may be positioned on a wearer's head such that the material covers the wearer's head and hangs therefrom about the shoulders and neck of the wearer

1.6 the head engaging band is positioned about a rear of the wearer's head such that the peak or visor is held in position thereon

1.7 the material having provided thereon a plurality of fastening means whereby the material may be fastened to protect the wearer's neck and/or face; and

1.8 the fastening means being arranged on the material such that the material may be drawn to a number of positions in front of the wearer's neck and/or head and/or face and the material fastened together releasably in a number of arrangements as desired by the wearer.


Claim 2

An article of headwear according to claim 1, characterised in that a number of fastening means are provided about a lowermost edge and sides of the material when in position on a wearer's head whereby the sides may be drawn together and fastened to protect the wearer.

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Claim 3

An article of headwear according to claim 1 or 2 characterised in that the two sides of the length of material are proportioned whereby they may overlap when adjusted or arranged to protect the wearer's neck and/or head and/or face.


Claim 4

An article of headwear according to claim 1, 2 or 3, characterised in that the fastening means are provided in the form of a hook and loop type fastener.


Claim 5

An article of headwear according to any one of the preceding claims, characterised in that the material is a flexible or pliable material able to conform to the crown of the wearer's head and hang therefrom.


Claim 6

An article of headwear according to any one of the preceding claims, characterised in that the length of material is attached to the visor such that sides of the length of material hand from the visor over the sides of the visor and in turn the sides of the wearer's face.


Claim 7

An article of headwear according to any one of the preceding claims, characterised in that the head engaging band has an adjustment means provided therein allowing the length of the band to be adjusted to suit the size of the wearer's head.


Claim 8

An article of headwear according to claim 7, characterised in that the adjustment means of the band comprises a releasable and adjustable join whereby the continuity of the band may be broken and reattached to adjust the length of the band to suit the head of a wearer.


Claim 9

An article of headwear according to claim 8, characterised in that the band in formed in part from a hook and loop type fastening allowing the length of the band to be adjusted.


Claim 10

An article of headwear according to any one of the preceding claims, characterised in that the material has one or more fastening means

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provided thereon allowing the material to be releasably attached to the band.


Claim 11

An article of headwear according to claim 10, characterised in that the fastening means allowing the material to be releasably attached to the band is provided in the form of one or more straps able to be held to the band.


Claim 12

An article of headwear according to any one of the preceding claims, characterised in that the peak or visor is formed of a rigid material in a crescent shape whereby the forehead of the wearer is received within the hollow described by the crescent shaped peak or visor.


Claim 13

An article of headwear according to claim 12, characterised in that the material is fixedly attached to the peak or visor at or adjacent a rear edge thereof.


Claim 14

An article of headwear substantially as hereinbefore described with reference to Figures 1 to 4, 5 and 6, 7 and 8, 9 and 10, 11 to 13, 14 and 15, 16 to 18, 19 and 20, 21 or 22.

37 It can be seen that claims 2 to 14 in the plaintiff's patent all flow from and incorporate what is said in claim 1. Following the above claims there are a number of drawings, 23 in all, which demonstrate the manner of use of the article in its three-dimensional form. It is clear that the 12 drawings which form part of the plaintiff's design are included in the 23 drawings in the plaintiff's patent.

38 The plaintiff also gave evidence as to the registration of the trade marks Araphat and Wraphat. I have already mentioned the relevant dates in relation to those trade marks. Although the plaintiff said that he thought the name Araphat could equally have been Wraphat, he conceded in his evidence that he has never promoted or sold his products by using the name Wraphat.

39 In relation to the allegations raised by the defendants regarding prior disclosure and commercial use, the plaintiff said that he only disclosed the samples or drawings of the Araphat or components or combinations of the prototypes on a confidential basis and for the purposes of research and development, trial and experimentation and otherwise in order to ascertain

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costings as to manufacture and production. The plaintiff said that to this end disclosure was made to Ms Watling, Mr Wray, Ms McKercher, his friends Mr Tummel and Mr Williams, Mr Quang and one or two other people whom he approached to obtain production and manufacturing costs.

40 Several non-expert witnesses were called by the plaintiff and I will briefly deal with their evidence. Richard Kurland gave evidence as to certain surveillance conducted on behalf of the plaintiff in relation to the activities of the first and second defendants. He was not cross-examined as to what he had to say. Ms Watling and Ms McKercher also gave evidence in relation to design work carried out on the plaintiff's prototype and the strict conditions of confidentiality imposed by him in relation to that work. As with Mr Kurland, Ms Watling and Ms McKercher were not cross-examined. Mr Quang gave evidence as to the circumstances in which he came to produce hat bodies and then Araphat hats for the plaintiff. Stephen Tummel and Mark Williams corroborated the plaintiff's evidence in relation to the surfing trip and the fact that they wore Araphat hats during the trip. What they had to say confirmed that the hats were only worn in an isolated area such that there could be no serious suggestion they were disclosed to the public or were otherwise used in a commercial sense.

41 Colin Sainty gave evidence about his operation of the Lawn Mowing Association's shop and discussions he had with the first defendant in relation to the sale of the Araphat hat and the Le Hood hat. He was not cross-examined about his evidence. In similar vein Douglas John Clegg, who runs a fishing tackle shop, also had discussions with the first defendant in respect of the two hats. With regard to the pronunciation of the word Araphat, Mr Clegg said that when he had sold Araphat hats to customers he had always called them Araphats. There was evidence to the same effect from Christopher James Kennington who spoke of his dealings with the first defendant when he was the merchandise manager for the Cancer Foundation. In relation to the Araphat hat Mr Kennington said that he had heard staff sometimes refer to it as A-Wrap-Hat and sometimes as Araphat but in his own dealings with customers he pronounced it as Araphat. Mr Kennington did not recall speaking to the plaintiff about the hat being pronounced A-Wrap-Hat.

42 The plaintiff also called Anthony Russell, Adjunct Professor in Design at Curtin University. It is apparent from Professor Russell's curriculum vitae that he has spent a lifetime in the teaching of design or in some way associated with design activities, although not specifically to do

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with hats. Professor Russell prepared a report on both the patent and design questions and a supplementary report devoted solely to the design question. I will not set out in detail the contents of the reports. It is sufficient to say that in Professor Russell's opinion the defendants' hats infringed the plaintiff's patent. He was of the view that both the Le Hood hat and the Adapt-A-Cap hat had taken every essential feature of the plaintiff's patent and that any differences were minor or cosmetic and had been made to avoid the appearance of copying. He said that such differences as there were added nothing to the working of the plaintiff's hat. As far as the plaintiff's design is concerned, Professor Russell thought that both defendants' hats took all of the essential features of shape and configuration of the plaintiff's design and that what differences there were had been made to avoid the appearance of copying.

43 In relation to the defence under s 22B(1A) of the Designs Act, Professor Russell was cross-examined as to whether the further illustrations provided by the plaintiff after he had received an enquiry from the Registrar of Designs fell within the scope of the drawings which comprised the original application for registration. His answers were at times somewhat equivocal whilst at other times he acknowledged a distinction between the original drawings and the revised drawings. Nevertheless, the gist of his evidence in relation to that comparative exercise was that whilst there were specific differences, the generality of what was conveyed by the original drawings was present in the later drawings, that is, the headpiece, the visor and the head-covering material flowing downwards either side of the head and being drawn in various positions in front of the face.

44 The first defendant gave evidence of her arrangements with the plaintiff in relation to the sale of the Araphat hat. It essentially confirmed that she was, informally at least, the Western Australian distributor of the Araphat hat for several years. By the end of 1999 sales of the Araphat hat represented 80 per cent of her business. Insofar as the cessation of those arrangements was concerned, it is clear that the relationship between the plaintiff and the first defendant soured in late 1999 and she then decided to create her own hat. She said in her evidence that she started with a basic hood type pattern and adapted her design from there. She also spent some time at the Karrinyup Library researching types and shapes of hats and other sorts of headwear through history. Despite the tenor of this evidence which suggested that the plaintiff was in fact the designer of the hat, the registration of the first defendant's design shows that the author thereof was an employee of the first defendant, Debbie Morhall. Ms Morhall was not called to give evidence at the trial. When asked by

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counsel for the plaintiff why Ms Morhall had not been called since she was shown as the author of the design, the first defendant said she saw no reason to call Ms Morhall because she, the first defendant, owned the design. She explained further that she and Ms Morhall had begun designing the hat together but Ms Morhall had done more than her in relation to the design of the finished product. The first defendant was unable to produce the prototype of the Le Hood hat or any sketches or drawings in relation to the original Le Hood design.

45 The first defendant was cross-examined about whether she had copied the plaintiff's design in creating the Le Hood hat. She denied that she had done so and further denied that she had incorporated minor differences in the Le Hood hat in order to disguise the fact that she was copying the plaintiff's design. Her evidence was that the first defendant's design was materially different from the plaintiff's design in the following respects:

a) the Araphat hat has a number of pleats and ruffles around the point of contact with the visor;

b) the pleats on the Araphat hat disburse as the material extends from the centre of the hat without any seams present on the crown of the hat. By comparison, the Le Hood hat comprises flat pieces of material sewn together;

c) the Araphat hat is a rectangular piece of material gathered onto the peak of the visor whereas the material of the Le Hood hat is shaped;

d) the Araphat hat contains four pieces of Velcro tape on the fabric as compared to the two pieces on the Le Hood hat;

e) the Araphat hat has a triangular centre front badge while the Le Hood hat has a square/diamond shape badge;

f) with the Araphat hat it is possible to view the elasticised hat from the front viewing of it whereas the presence of elastic is not clear from a front viewing of the Le Hood hat;

g) the Araphat hat has no sweatband whilst the Le Hood hat does;

h) the Le Hood hat can be fastened loosely across the face while the Araphat hat cannot be fixed in this way;

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i) the Le Hood hat's peak extends further than the hood attaching to the visor on the Araphat hat.

46 The first defendant also gave evidence in relation to her dealings with Mr Kennington, Mr Clegg and Mr Sainty. There was some disagreement between her and those witnesses as to what she said in relation to the sale of the Araphat hat and whether it was still available in the market when she began selling the Le Hood hat but in my view nothing turns on these differences of recollection.

47 Insofar as the alleged infringement of the plaintiff's trade mark in the name Wraphat is concerned, it was the first defendant's evidence that the advertisement which referred to an improved design Wraphat when describing the Le Hood hat had been lodged in a newspaper by a company called Blue Water without her knowledge or consent. The plaintiff led no evidence to contradict the first defendant's denial of any knowledge of the offending advertisement and there was no other evidence that the first defendant had used the name Wraphat, or indeed the name Araphat, at any time without the plaintiff's consent. The first defendant claimed to have thought of the name Wraphat because of her concerns about the name Araphat when she was promoting and selling the Araphat hat. She says that she obtained the plaintiff's permission to sell the hats under the name Wraphat and did so for some time until the plaintiff requested her to cease these activities. It was about this time that the plaintiff registered the name Wraphat under the Trade Marks Act and it seems that he did so on the advice of his then patent attorney. As already observed by me, despite registering that name the plaintiff has never used it to promote or sell his products.

48 With regard to the pronunciation of Araphat, the first defendant said that she always pronounced it in that way and had never heard the plaintiff pronounce it as A-Wrap-Hat.

49 Warren Michael Meanwell and Kerryn Ann Meanwell gave evidence on behalf of the second defendant. They are the second defendants' shareholders and Mr Meanwell is the sole director thereof. Mr Meanwell described meeting the plaintiff in Perth in the early 1990s and later in Broome. Thereafter Mr and Mrs Meanwell entered into an informal arrangement with the plaintiff to sell Araphat hats and they did so in Brisbane. Upon their moving from Queensland to New South Wales in 1996 they continued to distribute the Araphat hat both in New South Wales and Queensland. In mid-1999 Mr Meanwell said that the plaintiff hinted he was considering taking over the distribution business himself as a result of which Mr Meanwell began enquiring about similar headwear

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from alternative sources. He says that in late 1999 or thereabouts he and Mrs Meanwell decided to come up with their own hat design. He gave evidence as to the differences between the Araphat hat and the Adapt-A-Cap hat as he saw them. In about October 1999 he sought advice from a patent attorney in Sydney. On New Year's Eve 1999 the plaintiff confirmed to Mr Meanwell that he was taking over the distributorship of the Araphat hat in Australia. There was some discussion between the plaintiff and Mr Meanwell about the latter continuing to sell Araphat hats on a commission basis but that is not relevant for present purposes. Thereafter Mr Meanwell said that he and Mrs Meanwell decided to go ahead with production of the Adapt-A-Cap hat. In due course the Meanwell design was registered. By an informal arrangement between Mrs Meanwell and the second defendant, the second defendant has sole use of the Meanwell design to manufacture and sell Adapt--A-Cap hats.

50 In relation to the similarities or dissimilarities between the Araphat and the Adapt-A-Cap hat, Mr Meanwell acknowledged in cross-examination that the two products were essentially the same in terms of their fundamental or basic design features in that they both had a head-covering with a peak or visor, an adjustable headband and material which is able to be manipulated into various positions to provide the wearer with protection to the face, the ears and the neck. Mr Meanwell said that in designing the Adapt-A-Cap he was concerned not to infringe the plaintiff's patent or the plaintiff's design because he did not want to end up in court. He agreed with the proposition from counsel for the plaintiff that he was particularly concerned to overcome similarities between the Meanwell design and the plaintiff's design. However, he contended that there were material differences between the Meanwell design and the plaintiff's design in the following respects:

a) the Araphat hat has a narrower brim than the Adapt-A-Cap hat;

b) the Araphat hat is pleated and stitched across the top of the peak and has a triangular badge/patch covering the join of the fabric while the Adapt-A-Cap hat has no badge or patch;

c) the Araphat hat has an elastic headband around the head which is attached to the rear edge of the peak while the headband of the Adapt-A-Cap hat is attached only to the sweatband and extends from about ear to ear across the back of the wearer's head;

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d) the Araphat does not have a sweatband but the Adapt-A-Cap hat does;

e) the Araphat hat has two leather loops on the front edges of the flaps but the Adapt-A-Cap hat has none;

f) the Araphat hat has touch tapes on both sides of the headband but the Adapt-A-Cap has none;

g) the Araphat hat has zig-zag stitching around the edges of the material flaps while the Adapt-A-Cap has bias binding around the finished edges of the material flaps;

h) the Araphat hat has protective material which is cut square across the bottom while the Adapt-A-Cap's protective material is cut longer at the front and back and is contoured over the shoulder;

i) the Araphat hat has four Velcro tapes on the lower front edge of the flaps while the Adapt-A-Cap has two;

j) the Araphat hat has a protective flap attached to the peak which is made from one square piece of fabric while the protective flap of the Adapt-A-Cap hat is made from three separate panels sewn together to form the crown of the hat.

51 Mrs Meanwell gave evidence that she did not deal with the plaintiff very often but by the end of 1999 she was completely fed up with him and she and Mr Meanwell thought they should design their own hat and sell it through the second defendant. In the previous five years she had formed certain views about design flaws in the Araphat hat and by September 1999 she had produced a couple of prototypes that she and Mr Meanwell were happy with. Despite saying she had formed an opinion about design flaws in the Araphat hat, she did not elaborate on what those flaws were or otherwise explain the developmental process undertaken by her in coming to the design of the Adapt-A-Cap hat. She confirmed Mr Meanwell's evidence that they took advice from a patent attorney in Sydney and thereafter the Meanwell design was registered.

52 Mrs Meanwell was cross-examined as to the whereabouts of the prototypes of the Adapt-A-Cap or any original patterns and designs used by her in devising the Adapt-A-Cap design. As a result of this exchange a rather simple pattern, said to have been drawn by Mr Meanwell in about the middle of 2000, was tendered in evidence. Mrs Meanwell said that aside from this pattern she had no other documents which related to the research and development of the Adapt-A-Cap. Like her husband

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Mrs Meanwell said that in designing the Adapt-A Cap she wanted to avoid litigation with the plaintiff.

53 As to the merits of the Araphat hat Mrs Meanwell agreed that there was no other hat at the time that she was selling it which had its combination of particular features and that it represented a different hat from any hat that she had come across previously. She agreed that what made the Araphat hat different was its peak or visor to which was attached an adjustable headband at the rear and material connected to the hat so that it fell down the neck and to the sides of the face giving some protection to the wearer. She also agreed that these features were fundamental to the design of the Araphat hat. However, she denied that minor changes were made to the Araphat hat in order to avoid infringing the plaintiff's design or the plaintiff's patent.

54 In relation to the pronunciation of the trade mark Araphat, Mr and Mrs Meanwell both said that they had only ever known the name to be pronounced Araphat and not A-Wrap-Hat. Mrs Meanwell recalled the plaintiff using the latter pronunciation once or twice early in the piece but from then on it was always pronounced Araphat. With regard to the second defendant's business operations, Mr Meanwell's evidence was that the second defendant's principal place of business at the time when these proceeding were commenced was New South Wales. This is relevant to the order sought by the second defendant in its counterclaim that the plaintiff's design be expunged from the Register of Designs. That issue is dealt with later in these reasons.

Relevant Legal Principles and Findings

The patent issue

55 I will deal with the plaintiff's patent first. In essence, the plaintiff alleges that the defendants have infringed the plaintiff's patent and the defendants in turn deny infringement and allege prior non-confidential and commercial use by the plaintiff. There is no definition of infringement in the Patents Act but the task for the court is to ascertain the precise scope and meaning of the monopoly claimed by the plaintiff and then determine whether the invention, as claimed, has been taken by the defendants or either of them.

56 The rules of construction have been usefully summarised in the judgment of Sheppard J in Decor Corp Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400 as follows:

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"(1) The claims define the invention which is the subject of the patent. These must be construed according to their terms upon ordinary principles. Any purely verbal or grammatical question that can be answered according to ordinary rules for the construction of written documents is to be resolved accordingly.

(2) It is not legitimate to confine the scope of the claims by reference to limitations which may be found in the body of the specification but are not expressly or by proper inference reproduced in the claims themselves. To put it another way, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification.

(3) Nevertheless, in approaching the task of construction, one must read the specification as a whole.

(4) In some cases the meaning of the words used in the claims may be qualified or defined by what is said in the body of the specification.

(5) If a claim be clear, it is not to be made obscure because obscurities can be found in particular sentences in other parts of the document. But if an expression is not clear or is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim.

(6) A patent specification should be given a purposive construction rather than a purely literal one.

(7) In construing the specification, the court is not construing a written instrument operating inter partes, but a public instrument which must define a monopoly in such a way that it is not reasonably capable of being misunderstood.

(8) The body, apart from the preamble, is there to instruct those skilled in the art concerned in the carrying out of the invention; provided it is comprehensible to, and does not mislead, a skilled reader, the language used is seldom of importance.

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(9) Nevertheless, the claims, since they define the monopoly, will be scrutinised with as much care as is used in construing other documents defining a legal right.

(10) If it is impossible to ascertain what the invention is from a fair reading of the specification as a whole, it will be invalid. But the specification must be construed in the light of the common knowledge in the art before the priority date."

57 The article which is the subject of the invention is a relatively simple one notwithstanding that its design was the result of novel and inventive steps which removed it from the state of the then existing art. While inventiveness requires more than novelty, even a "scintilla of inventiveness" is sufficient and a step, if otherwise inventive, does not lose its inventiveness because the idea, once conceived, is very simple to put into effect (Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd (2002) 56 IPR 248 at [42]). The invention is said to relate to an article of headwear for use in protecting a wearer from exposure to the elements, for example sun, wind and rain. There follows a discussion of the prior art and then a description of the invention. There are, as I have said, 14 claims and as already noted, claims 2 to 14 emanate in one form or another from claim 1.

58 For infringement of the plaintiff's patent to occur, each and every essential integer of the claim must be taken by the infringer and incorporated into his own product or process (Populin v H B Nominees Pty Ltd (1982) 41 ALR 471 at 475; Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 16 IPR 545 at 559-560). Despite this requirement, a highly technical construction of the claims or an over-precise analysis of the language used is to be resisted in order to avoid a defendant escaping infringement by adopting what are immaterial variations, for example, by omitting an inessential part or step and substituting another part or step as its equivalent (Allsop Inc v Bintang Ltd (1989) 15 IPR 686; Populin at 475). However, whilst it is not permissible to impose an overly restrictive construction on the specification, equally one should not adopt an unduly liberal construction such that an unnecessary level of cover is provided to the patent holder. One must always look to see whether the substantial idea disclosed by the specification and made the subject of a definite claim has been taken and embodied in the infringing article (Radiation Ltd v Galliers & Klaerr Pty Ltd (1938) 60 CLR 36 at 51; Populin at 475).

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59 One recognised means of testing whether each and every essential integer has been taken is to ask whether the patent holder, by his claim, has left open that which the infringer has done (see, for example, Minnesota Mining & Manufacturing Co v Beiersdorf (Aust) Ltd (1980) 29 ALR 29 at 52 – 53; Olin Corporation v Super Cartridge Co Pty Ltd (1977) 14 ALR 149 at 157). Allied to the above test and relevant to determining an infringement question where there are variations or alterations to one or more of the essential features of the invention, the court must ask itself whether the variation makes a material difference to the way the invention works or whether it is of minor proportions such that despite the variation all the essential features of the invention have been taken (Catnic Components Ltd v Hill & Smith Ltd (1982) RPC 183 at 243).

60 Whilst the proper construction of the specification is a matter of law, it is a task that is ordinarily undertaken through the eyes of the person to whom the specification is directed, that is, the person skilled in the art to which the specification relates. That person may give evidence to inform the court of how the invention actually works and to compare the invention to the allegedly infringing articles. In this respect I have had the benefit of the evidence given by Professor Russell to which I have already referred. In comparing the first defendant's hat with the claims in the plaintiff's patent, Professor Russell expressed the view that the integer by integer comparison of the claims of the patent with the relevant, corresponding features of shape and configuration of the Le Hood article clearly showed that this article had taken every essential feature of the patent as set out in claims 1.1 to 1.8 and 2, 3, 4, 5, 6, 7, 8, 9, 12 and 13. He said the Le Hood article differed from the plaintiff's patent by the incorporation of two Velcro type fasteners compared with the four at claim 1.7 in the patent claims. He also noted that the Le Hood hat did not incorporate the additional straps which allowed the material to be releasably attached to the band as in claims 10 and 11. He thought these minor differences of configuration made no difference to the working of the infringing article beyond limiting the range of possible arrangements of the head-covering material by the wearer. His view was that having taken every essential feature of the plaintiff's patent, the Le Hood hat was a copy of the plaintiff's patent and that those minor differences which existed added nothing material to the working of the plaintiff's patent. If anything, he thought they had resulted in a lower quality imitation thereof.

61 With regard to the second defendant's hat, Professor Russell expressed the view that it had also taken all of the essential features of the plaintiff's patent set out in claims 1.1 to 1.8 and 2, 3, 4, 5, 6, 7, 8, 9, 12

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and 13. He said it differed only in the number of fastening means referred to in claim 1.7 which were four in number in the plaintiff's patent whereas only two were used in the second defendant's hat. He also pointed to a minor difference at claims 10 and 11 where the second defendants had a loop or strap which he assumed served the function of providing a means of attachment of the head-covering material to the headband as required. He noted that this single loop or strap was attached directly to the headband of the second defendant's hat rather than to the frontal upper edges of the head-covering material as were the two loops or straps in claims 10 and 11 of the plaintiff's patent. He thought these minor differences added nothing to the working of the plaintiff's patent beyond possibly limiting the number of arrangements that could be made to the head material by a user of the second defendant's hat compared to the greater number of possible arrangements shown in the plaintiff's patent. He pointed to other minor and chiefly cosmetic details such as the stitching lines of the attachment of the head-covering to the visor and headband which was slightly different to that of the plaintiff's patent but all in all his opinion was that these minor differences had been made to avoid copying and added nothing to the working of the article.

62 Assisted by Professor Russell's evidence and having made a careful comparison myself of the defendants' hats with each of the claims in the plaintiff's patent, I have little difficulty in agreeing with his conclusions. In my opinion, every essential feature in the plaintiff's patent has been taken by the defendants. What little changes there are add nothing to the working of the article except to slightly limit the number of arrangements that can be made by someone wearing the defendants' hats. It seems to me that what has been done by the defendants in this case is similar to what was attempted by the defendants in Commonwealth Industrial Gases Ltd v M W A Holdings Pty Ltd (1970) 180 CLR 160. In that case the defendants were aware of the plaintiff's letters patent and set about modifying their own manufacture of the same article by incorporating minor changes to its appearance. At p 167 Menzies J said:

"In my judgment the modification so made did not prevent equipment manufactured and sold thereafter from constituting an infringement of the letters patent. Patent rights are not to be set at nought by such a subterfuge which I am satisfied added nothing to the equipment and was made merely in an attempt to take full advantage of the invention while avoiding infringement of the plaintiff's letters patent by a modification so small as to be insignificant."

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For the above reasons I find that each of the defendants' articles, namely, the Le Hood hat and the Adapt-A-Cap hat, have infringed the plaintiff's patent.

63 The remaining defence raised by the defendants in relation to the plaintiff's patent is that there was non-confidential or commercial use of the invention prior to the date on which the plaintiff acquired the protection of the Patents Act. That is, the defendants plead that there was prior use by the plaintiff in terms not countenanced by the provisions of the Act. In this context s 24(1)(a) of the Act requires the Court to disregard any information made publicly available through any publication or use of the invention in prescribed circumstances by or with the consent of the patent holder. This is to enable him to undertake trial and experimentation in respect of the proposed invention. So long as the trial is proportionate to the nature and use of the invention, the benefit of the protective period is not lost simply because during the trial process the inventor acquires some indirect commercial advantage (Grove Hill Pty Ltd v Great Western Corporation Pty Ltd (2002) 55 IPR 257 at [229] – [232]).

64 In the present case the uncontradicted evidence of the plaintiff was that all dealings with those persons who were engaged to construct a prototype of the article or, in the case of Mr Quang, to manufacture the article in some volume were required to treat the arrangements with the plaintiff and the work carried out on his behalf in strict confidence. Similar arrangements were made in respect of the wearing of the hat by Mr Tummel and Mr Williams on the surfing trip to which I have already referred. Equally important is the fact that there is simply no evidence that the plaintiff derived any commercial benefit from what was done by him during the experimentation stage before the priority date. Even if the plaintiff had not destroyed the hat bodies made by Mr Quang, and I accept that he did so, the manufacturing of several hundred hat bodies by Mr Quang did not amount to a commercial use of those goods (Azuko Pty Ltd v Old Digger Pty Ltd [2001] FCA 1079 per Giles J at [183] – [184]). In my opinion there was no prior use sufficient to render the plaintiff's patent invalid.

65 Having concluded that the defendants' articles have infringed the plaintiff's patent and that there was no prior use of the kind which would render the plaintiff's patent invalid, there is no need for me to consider the question of revocation of the plaintiff's patent as sought in the respective counterclaims of the defendants. However, insofar as the second defendant is concerned, it seems to me that I did not have jurisdiction in

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any event to make such an order. Section 155(2) suggests that the court only has jurisdiction to deal with matters of that kind if a corporate claimant has its principal place of business in Western Australia at the time the proceedings are started. Mr Meanwell confirmed in his evidence that at the time when the proceedings were started, and indeed at all times, the second defendant's principal place of business has been New South Wales. In the circumstances, it was not open to me to order revocation of the plaintiff's patent even if I had been minded to do so.

The design issue

66 I now turn to the matters to be determined in relation to the plaintiff's design, the first defendant's design and the Meanwell design. At the outset it is relevant to note that there is presently in force the Designs Act 1906 and the Designs Act 2003. However, the Designs Act 1906 applies to these proceedings because of the date on which the proceedings were commenced, save for any rectification issue which must be determined under the Designs Act 2003. In this regard it is to be remembered that each of the defendants has sought an order that the plaintiff's design be expunged from the Register of Designs and this of course entails rectification of the Register. Henceforth whenever I refer to the Designs Act, I am referring to the Designs Act 1906 unless I indicate otherwise.

67 As already noted, the three parties are operating their respective businesses with the benefit of registered designs. The first defendant's design is being used by her for the manufacture of the Le Hood hats. The Meanwell design is being used by the second defendant for the manufacture of the Adapt-A-Cap hats and the plaintiff's design is being used by him for the manufacture of the Araphat hats. The plaintiff alleges that the hats manufactured and sold by the first and second defendants infringe the plaintiff's design. This is denied by the defendants.

68 Section 4(1) of the Designs Act defines "design" as meaning 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.

69 Pursuant to s 30(1) thereof a person shall be deemed to infringe the monopoly in a registered design if he, without the licence or authority of the owner of the design, inter alia, applies the design or any fraudulent or obvious imitation of it to any article in respect of which the design is registered or sells any article to which the design or any fraudulent or obvious imitation of it has been applied in infringement of the monopoly in the design. Pursuant to s 30(2) thereof if any person infringes the

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monopoly in a registered design, the owner of the design may bring an action or proceeding against him for infringement of the monopoly in the design. In this context "owner" means the person who is registered as the owner of the registered design. In the case of the second defendant that is, of course, not the second defendant but Mrs Meanwell.

70 The principles in relation to whether a registered design has been infringed are now well-established. I begin with the statement of the High Court in Malleys Ltd v J W Tomlin Pty Ltd (1961) 180 CLR 120 at 127 which is as follows:

"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 (ie, not the same but a copy apparent to the eye notwithstanding slight differences); and

(iii) a fraudulent imitation (ie, 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).

The 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."

71 The High Court's comments in Malleys have been applied repeatedly over the years. See, for example, Firmagroup Australia Pty Ltd v Byrne & Davidson Doors (Vic) Pty Ltd (1987) 9 IPR 353; Gerard Industries Pty Ltd v Auswide Import Export Pty Ltd (1998) 40 IPR 119; Foggin v Lacey (2003) 57 IPR 225.

72 The fact that the shape and configuration of an article must be judged by the eye means that measurement and mathematical precision play no part in the equation. The assessment, which is for the court to make, is very much a matter of impression rather than prescription, although the eye of the court may be assisted by expert evidence led by the parties during the trial (L JFisher & Co Ltd v Fabtile Industries Pty Ltd (1979) 49 AOJP 3611 at 3614; Dart Industries Inc v Décor Corp Pty Ltd (1989)

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15 IPR 403 at 409). Where the statement of monopoly does not identify particular features of shape or configuration of the design, the design applies to the appearance of the article as a whole and issues of infringement are to be approached with that in mind (Turbo Tek Enterprises Inc v Sperling Enterprises Pty Ltd (1989) 15 IPR 617 at 636).

73 Whilst it is usual to compare the allegedly offending article with the drawings which comprise the registered design, it is nevertheless permissible to make a comparison between two manufactured articles, one said to be the offending article and the other depicting the drawings in the registered design (Benchairs Ltd v Chair Centre Ltd (1974) RPC 429; Gerard Industries at 123). Articles manufactured from the plaintiff's design, the first defendant's design and the Meanwell design have been tendered in evidence and I have therefore had the benefit of comparing those articles as well as comparing the articles manufactured by the defendants with the representations of the plaintiff's design.

74 The ultimate test of infringement is one of impression, and I have been assisted in undertaking the task at hand by reference to the comments of Gummow J in Wanem Pty Ltd v Tekiela (1990) 19 IPR 435 at 440 where his Honour summarised the principles as follows:

"(i) First impressions are important in determining whether there is an infringement of a registered design;

(ii) 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;

(iii) The question of whether the alleged infringing design is an obvious imitation of the registered design must be looked at as one of substance and by examining the essential features of the design;

(iv) A closer correspondence between the registered design and the alleged infringing design is necessary to satisfy the test of obvious imitation than that of fraudulent imitation;

(v) Precise mathematical comparisons or matters of measurements or ratios, which form no part of the mental picture which the eye conveys to the brain of shape or configuration suggested by the design, are not to be

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applied as the test of infringement; appearance to the eye is the critical issue; and

(vi) Questions of infringement must not be determined by a narrow or overly technical approach in comparison between the design and the alleged infringement, lest the registration be sapped of its worth to the registered owner."

75 The novelty or originality of an allegedly offending article might be satisfied by relatively small differences in design (D Sebel & Co Ltd v National Art Metal Co Pty Ltd (1965) 10 FLR 224 at 226 – 227). In a commonly used item such as a chair, which was the subject of the proceedings in the Sebel & Co case, the Court noted that one does not expect to find "startling novelty or originality" in an article of that kind. Moreover, if there are only small differences between the registered design and what has gone before, then equally small differences between the registered design and the allegedly infringing article will avoid infringement (Sebel & Co at 229; Dart Industries Inc at 409). In this case neither the plaintiff nor the defendants led any evidence as to the prior art in relation to the design issues. What evidence existed insofar as the prior art is concerned was directed to the validity of the plaintiff's patent and the question of whether it had been infringed by the defendants. As different tests apply to the infringement of patents and designs, I do not consider the art existing before the plaintiff's patent to be of much assistance when considering the design issues.

76 The plaintiff's design is somewhat unusual in that it is made of material which enables it to be manipulated into a variety of positions. However, it is not a bar to the validity of the plaintiff's design or a finding of infringement by the defendants that by manipulation the precise attitude chosen for the purposes of representation can be avoided (Schmittzehe v Roberts (1955) 72 RPC 122 at 125; Oren v Redbox Toy Factory Ltd (1999) FSR 785 at 794).

77 There is one final matter I should mention before expressing a view as to the question of infringement of the plaintiff's design. Although each of the defendants has operated for some years under the protection of a registered design, the existence of those registered designs will not preclude a finding that the defendants' articles have infringed the plaintiff's design if indeed that view is to be reached upon a comparison of the defendants' articles with the plaintiff's design (Gerard Industries at 121, 127). On the other side of the ledger it seems to me that there is no

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impediment to my finding, as I have, that the defendants' articles have infringed the plaintiff's patent but nevertheless concluding that the first defendant's design or the Meanwell design do not infringe the plaintiff's design. As I have observed above, different considerations apply to infringement of patents and designs with potentially different outcomes in circumstances, as here, where the plaintiff holds both patent and design protection.

78 I will now consider whether in this case either of the defendants' articles has infringed the plaintiff's design. In forming a view as to whether the headwear manufactured by the defendants is materially different from the plaintiff's design, I have made a point of comparing the defendants' articles to the plaintiff's design by reference not only to the drawings which form part of the plaintiff's design but also to an article manufactured in accordance with the plaintiff's design. Moreover, I have undertaken that exercise separately in relation to the first defendant's design and the Meanwell design so as to ensure that the impression formed by me when comparing the plaintiff's design with the Le Hood hat will not taint the impression formed by me when comparing the plaintiff's design with the Adapt-A-Cap hat.

79 I will begin with the first defendant's article. I observe immediately that the essential features associated with the plaintiff's design are to be found in the first defendant's article. This was the firm impression I gained upon an initial comparison of the Le Hood hat and the plaintiff's design. It was an impression reinforced upon returning to the comparative exercise on several different occasions. Indeed, the impression I had initially formed grew stronger on each visual inspection regardless of whether the first defendant's article and the plaintiff's design were viewed together or separately in undertaking that comparative process. It is, of course, difficult to articulate what it is about one's impression in circumstances of this kind. I think it is sufficient to say, however, that apart from the fact that the headband is partly concealed by the material in the Le Hood hat whereas it is entirely exposed in the plaintiff's design, I could see no other material difference between the two. I regard the concealment of part of the headband in the Le Hood article as a minor difference. If, for the purposes of observation, differences are trivial, one design will at the very least be considered to be an obvious imitation of the other (Chris Ford Enterprises Pty Ltd v B H & J R Bardenhop Pty Ltd (1985) 4 IPR 485; Dunlop Rubber Co Ltd v Golf Ball Developments Ltd (1931) 48 RPC 268).

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80 The above comments are sufficient for me to conclude that the first defendant's article is an obvious imitation of the plaintiff's design and I so find. I should add, however, that the evidence of the first defendant was to the effect that she had embarked on a course of conduct which was intended to produce an article of headwear which was sufficiently dissimilar to the plaintiff's design in order to continue by then what was a seemingly successful business. In this respect I recall that 80 per cent of the sales achieved by her at the time of the creation of the Le Hood hat were Araphat hats acquired from the plaintiff. The onus was on the first defendant to prove an absence of copying (Firmagroup Australia Pty at 418; K-Aire Pty Ltd v Polyaire Pty Ltd [2003] FCAFC 310 at [31]; (2004) 60 IPR 512). Despite this, the first defendant did not call Debbie Morhall, the author of the first defendant's design, to give evidence as to the process whereby Ms Morhall created that design. Ms Morhall's unexplained failure to give evidence leads me to conclude that her evidence would not have assisted the first defendant's case (Jones v Dunkel (1959) 101 CLR 298; Gerard Industries at 122).

81 I now turn to the second defendant's article. In forming a view as to whether the Adapt-A-Cap hat has infringed the plaintiff's design, I adopted the same process as I used when determining the position in relation to the Le Hood hat and I will not repeat here the nature of that process. Again, I refer to the essential features of the plaintiff's design to which I have already referred. My impression in relation to this article was different from that reached in respect of the first defendant's article. In particular, my first impression was that although the second defendant's article was very similar to the plaintiff's design, there were not the striking similarities which I felt when comparing the first defendant's article to the plaintiff's design. For example, the fall of the cloth away from the headband is slightly different to the eye and the cut of the cloth at its base has a v-shaped appearance rather than the straight cut of the plaintiff's design. There is also, as with the first defendant's article, partial concealment of the headband and a small loop at the rear of the headband which is not present in the plaintiff's design.

82 Having considered the matter carefully and having made a number of inspections at different times and in different ways for purposes of comparison between the second defendant's article and the plaintiff's design, I have concluded that the overall distinctive appearance of the plaintiff's design has been taken and that nothing novel or unique has found its way into the Meanwell design. In short, I conclude that the second defendant's article is visually recognisable as an imitation of the plaintiff's design notwithstanding the differences described above which,

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in my opinion, do not give rise to a different design. Adopting the language of the High Court in Malleys Ltd v J W Tomlin Pty Ltd, those differences are not so slight as to be insubstantial but have been made merely to disguise the copying. In this regard I note the candid admission of both Mr and Mrs Meanwell that they set out to create the Meanwell design as something sufficiently dissimilar to the plaintiff's design when the plaintiff indicated that he was withdrawing their distributorship for the Araphat hat. I also take account of the fact that despite the second defendant bearing the onus of proving an absence of copying (see the cases referred to above), there was singularly no evidence of any research and development or prototypes produced by either Mr or Mrs Meanwell. If there had been genuine research and development and there had been an absence of copying of the plaintiff's design in circumstances where, as Mr and Mrs Meanwell said, they were anxious to avoid litigation with the plaintiff, I would have expected to see material of this kind retained and produced in evidence. In my opinion the second defendant has not discharged the onus upon it to establish an absence of copying. Accordingly, I conclude that the second defendant's article is a fraudulent imitation of the plaintiff's design.

83 In concluding that there has been a fraudulent imitation, I have taken account of the fact that one can deliberately base one's article on another's registered design and there can be no imitation fraudulent or otherwise because what has been produced is a different design embodying some of the registered design but ultimately resulting in a visually different article (Firmagroup at 380; L J Fisher & Co at 3619). Notwithstanding this, I am satisfied that a new and different article has not been created by the Meanwell design.

84 I turn to the remaining defences raised by the defendants in relation to the plaintiff's design. The first of these is that the plaintiff's design is invalid because the scope of the monopoly protected by it is indeterminate. I have set out in greater detail what the defendants say in relation to this aspect when discussing the claims and counterclaims of the parties. In my opinion, there is no substance to this plea. The scope of the monopoly afforded to the plaintiff is clearly defined by the 12 drawings depicting the article. No evidence, lay or expert, was led by the defendants in support of this proposition and on the basis of my own assessment of the parameters of the plaintiff's design I am not in the least convinced that the scope of monopoly protected by it is indeterminate as the defendants suggest.

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85 The next defence raised by the defendants is that the amendments made in early April 1994 to the original application for registration of the plaintiff's design did not fall within the scope of an allowable amendment under s 22B(1) of the Designs Act. The defendants therefore contend that the design should have been refused by the Registrar of Designs under s 22B(1A) and on this basis seek rectification of the Register. It is clear that the legislative intent of s 22B is to permit tolerable amendment of applications, tolerable in the sense that whilst there should not be carte blanche for wholesale change so as to produce a new article outside that disclosed in the original application, equally designers must have scope to tinker with the original design if to do so will clarify the scope and nature thereof. For me to find favour with the defendants' plea in respect of this matter would require me to conclude that the amendments made by the plaintiff extended the scope of the application in a fundamental way which resulted in the latter representations disclosing something not evident in the application before amendment. Section 22B is not intended to exclude amendments which introduce some difference in shape and configuration of the article or some new matter outside that disclosed in the original application as along as there is no fundamental change of the kind referred to above (Chris Ford Enterprises at 498). True it is that the drawings accompanying the original application made by the plaintiff are in some respects amateurish and a little imprecise. Very plainly the illustrations later sent to the Registrar were of a higher quality and far clearer in their description of the use of the article. Nevertheless, those later depictions did no more than introduce clarity to the shape and configuration of the article. In my view, they did not change the design in any fundamental way. For these reasons I reject the defendants' plea under s 22B of the Act.

86 The next defence raised by the defendants is that there was prior public disclosure of and commercial dealing with the plaintiff's design. As indicated earlier in these reasons, it is said in this respect that the plaintiff manufactured commercial quantities of the hats in 1993 and the manufactured items were disclosed to various persons. I have dealt with these issues when considering the allied question of whether there was prior use of the plaintiff's patent. I adopt my earlier comments and conclusions. In my opinion there was no prior public disclosure of or any commercial dealing with the plaintiff's design. The plaintiff has adequately explained the purpose for providing certain persons with the prototype of the Araphat hat and why Mr Quang manufactured several hundred hat bodies (not the full Araphat hat) in 1993.

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87 The final matter raised by the defendants is the question of whether an issue estoppel arises in respect of the first defendant's design or the Meanwell design. This defence requires different considerations in respect of each defendant. As earlier noted, the first defendant's issue estoppel point is based on the fact that the plaintiff did not object to registration of the first defendant's design. The second defendant's estoppel point is based on the finding of the delegate of the Registrar of Designs following a hearing on 27 November 2001 (Kerryn Anne (sic) Meanwell v Jason Hamilton Hall [2001] ADO 1).

88 The doctrine of issue estoppel extends to the decision of any tribunal which has jurisdiction to decide finally a question arising between the parties, even if it is not called a court, where its jurisdiction is derived from statute or from the submissions of the parties, and even if it only has temporary authority to decide matters before it (Administration of Papua New Guinea v Daera Guba (1973) 130 CLR 353 at 453; Waddington v Silver Chain Nursing Association (1998) 20 WAR 269 at 275). Issue estoppel can apply to an issue of fact or law. A judicial determination directly involving an issue of fact or law disposes once and for all of the issue so that it cannot afterwards be raised between the same parties or their privies (Blair & Perpetual Trustees Co Ltd v Curran (Adams' Will) (1939) 62 CLR 464 at 531). Furthermore, the parties must be suing or be sued in the same capacity (Ramsay v Pigram (1968) 118 CLR 271).

89 Aside from the identity of the parties and their capacity, the doctrine has no application unless there is a coincidence of issues or causes of action. If a party was not involved in the earlier litigation of a particular issue because it was not an issue between him and another party to the proceedings, no estoppel arises from a decision in the earlier proceedings (Taylor v Ansett Transport Industries Ltd (1987) 72 ALR 188 at 205; House v Department of Defence (1996) 136 ALR 444 at 450). The need to find that an identical question is being determined in both proceedings so that the duties performed in each court or tribunal are essentially the same is borne out by a number of decisions (see for example, Linsley v Petrie (1998) 1 VR 427; Yates Property Corp Pty Ltd v Boland (2000) 179 ALR 664).

90 I now turn to the first defendant's estoppel point. It can be dealt with very shortly. On my reading of the Designs Act, there is no provision which would have enabled the plaintiff to oppose the granting of the first defendant's design. In this respect the only right afforded to the plaintiff was to object to an extension of the first defendant's design under s 27A of the Act but this is not what is pleaded by the first defendant in her defence

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and counterclaim. In the circumstances, no issue estoppel arises. Further and in any event, even if the plaintiff did have the right to oppose the registration of the first defendant's design, no issue estoppel would arise because the lodging of the application by the first defendant and its acceptance by the Registrar of Designs does not meet any of the criteria set out in the above cases for the application of the doctrine. There was no decision of any court or tribunal or other decision-making body involving the determination of an issue between the plaintiff and the first defendant.

91 I turn to the second defendant's estoppel point. The plaintiff's objection, which led to the delegate of the Registrar of Designs convening a hearing to deal with the objection, was made pursuant to s 27A(4) of the Designs Act. The preamble to the delegate's decision describes the action as an "application by Kerryn Ann Meanwell for extension of the period of registration, and notice under s 27A(4) of material relevant to newness or originality of the design by Jason Hamilton Hall". It is immediately apparent that the action was confined to objections raised by the plaintiff as to the newness or originality of the design lodged by Mrs Meanwell. In determining the matter in favour of Mrs Meanwell, the delegate had regard to the plaintiff's design, submissions made by Mr Meanwell on behalf of Mrs Meanwell and an inspection of articles manufactured in accordance with each design. Significantly, in my view, the delegate did not consider nor was he asked to consider the questions which are the subject of these proceedings, namely, whether there has been infringement of the monopoly in the plaintiff's design by application of the design or any fraudulent or obvious imitation of it to any article manufactured by the second defendant. Whilst the delegate's decision required him to consider the shape and configuration of the respective designs to determine whether there were material or immaterial differences in the Meanwell design when compared with the plaintiff's design, it is clear that the exercise required of me in relation to determining whether there has been either an obvious imitation or a fraudulent imitation, particularly the latter, was not an exercise undertaken by the delegate. Although he acknowledged the definition of "design" in the Designs Act and the need to judge the shape and configuration of the two articles by the eye, there was no reference to the tests set down in decisions such as Malleys Ltd v J W Tomlin Pty Ltd or any application of those tests.

92 In summary, whilst there is certainly some similarity in the issues to be determined by me and those issues determined by the delegate, they are not identical issues. In particular, I have found that the second defendant's article is a fraudulent imitation of the plaintiff's design whereas the

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question of a fraudulent imitation was never before the delegate nor was it considered by him in reaching his decision. For these reasons I am not satisfied that any issue estoppel arises in relation to the present proceedings insofar as they relate to the claims between the plaintiff and the second defendant.

The trade marks issue

93 Insofar as the plaintiff's trade marks are concerned, s 120(1) of the Trade Marks Act 1995 provides that:

"A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered."

94 Section 122 of the Act provides that in spite of s 120, a person does not infringe a registered trade mark when, inter alia, the court is of the opinion that the person would obtain a registration of the trade mark in his or her name if the person were to apply for it. This provision is relevant to one aspect of the first defendant's defence. As to what is deceptively similar, s 10 provides that a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

95 Whether there is an infringement under the Act is a question of fact in each case. The test for determining whether marks are substantially identical is conducted by a comparison of the marks side by side. In other words, when viewed side by side could one trade mark be mistaken for the other? If not, they are unlikely to be substantially identical (Powell v Glow Zone Products Pty Ltd (1996) 36 IPR 343 at 364; Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 410, 414). Judgment by the eye alone is proper for the determination of substantial identity and each case will turn on its own facts because ultimately it is the general effect of the whole of each trade mark which will determine whether one mark is substantially identical to the other.

96 In determining whether a defendant's mark is deceptively similar to a plaintiff's mark, there should not be a comparison of the marks side by side. Rather, the comparison is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have and, on the other hand, the impression that such persons would get from the defendant's use of the mark whether in advertising materials or otherwise (Powell at 365; Shell

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Co of Australia at 415). The two marks are to be judged both by their look and their sound (Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at 658). The relevant principles applicable to the question of deceptive similarity have been recently summarised in Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd (2003) 204 ALR 90 at [78]. I have had regard to those principles in undertaking the exercise required of me in relation to the question of deceptive similarity.

97 Whilst it is not necessary for there to be evidence from people in the relevant trade or customers as to whether a mark is deceptively similar, such evidence will sometimes be helpful in deciding what impressions would be formed by persons of ordinary intelligence and memory (see, for example, Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 597 - 598). It is also relevant to note the way in which an owner uses his mark, the form in which it is depicted and whether it is surrounded by devices or legends which may distinguish it from another mark. All of this plays a role in the impression which may be formed as to whether two marks are deceptively similar (Shell Co of Australia at 410). Where the dissimilarities between two marks are differences of substance, the essential features of the plaintiff's mark will not have been used and there can be no infringement (see, for example, Faessler v Neale (1994) 29 IPR 1).

98 Insofar as the first defendant is concerned, the plaintiff alleges infringement of his trade mark Wraphat by the preparation and lodgement of the advertisement which referred to the Le Hood article as an improved design Wraphat. In that regard I have the first defendant's uncontradicted evidence that she did not prepare the advertisement, did not consent to its publication and knew nothing of it until after publication had occurred. In the circumstances, I am not satisfied that there was any infringement of the Wraphat trade mark on the first defendant's part. The plaintiff also alleges that by selling the Le Hood hats the first defendant has infringed both of his trade marks. It seems to me that this is really more a claim of misleading and deceptive conduct rather than an infringement of the plaintiff's trade marks because there is no suggestion by the plaintiff that the trade mark Le Hood is substantially identical or deceptively similar to either of the plaintiff's trade marks. In the circumstances, I am not prepared to find any infringement of the plaintiff's trade marks by the mere selling of the Le Hood articles.

99 Although not specifically pleaded, the plaintiff also contended in his evidence that he had agreed to the first defendant using the name Wraphat

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on her swing tags when she was selling Araphat hats provided they informed the buyer that the article was made by Hamilton Hall Enterprises. The plaintiff says he later ascertained that the first defendant had not complied with their "verbal agreement". This agreement was not pleaded and the first defendant denied its existence in the terms alleged by the plaintiff. I am not satisfied that any such agreement was made. Any use of the Araphat hats with Wraphat swing tags occurred with the plaintiff's knowledge and consent and that consent did not require reference to Hamilton Hall Enterprises on the swing tags.

100 With regard to the second defendant, it is said by the plaintiff that the trade mark Adapt-A-Cap is either substantially identical or deceptively similar to the plaintiff's trade mark Araphat. In support of this plea the plaintiff not only refers to the two words as they are spelt and normally pronounced but also contends in support of his claim that Araphat can be pronounced A-Wrap-Hat. The extent of the evidence in support of a pronunciation of this kind is, as I have noted earlier, essentially confined to the plaintiff himself other than Mr Kennington's reference to staff members of the Cancer Foundation between themselves using that pronunciation occasionally. However, the first defendant, Mr and Mrs Meanwell, Mr Clegg and Mr Kennington all said that the hat was described as Araphat and not A-Wrap-Hat in their dealings with the public. It was, of course, open to the plaintiff to register a trade mark with that spelling if he had desired to do so. Whilst it is relevant to consider how words are pronounced when determining infringement of a trade mark, no more than ordinary possibilities of bad elocution, careless hearing or defective memory ought to be assumed (Rysta Ltd's Application (1943) 60 RPC 87 at 105-106). Nevertheless, in making a comparison as to how words sound, one must take account of the fact that people tend to slur the ends of their words. It might therefore follow that the sound "phat" is similar to the sound "cap" when said quickly or by a member of the public slurring the ends of both words.

101 Insofar as the question of whether the two marks are substantially identical is concerned, despite several separate comparisons of the two marks side by side I am not satisfied that one could be mistaken for the other. Whilst it is the case that both marks commence with the letter "A" and the last syllable of each word has some similarity (both aurally and visually), there is very little else about either of the marks which could lead me to the view that they are substantially identical.

102 In relation to the question of whether the marks are deceptively similar, I have, in keeping with the principles enunciated in the various

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authorities referred to above, looked at the marks separately on several occasions and considered the sound of each mark when spoken in order to form a view about the impression of one and then the other. I have undertaken the visual comparison by reference to the way in which each mark is used on the articles manufactured by the plaintiff and the second defendant. The second defendant's mark is emblazoned on the peak or visor of the Adapt-A-Cap hat whereas the plaintiff's mark is not on the peak or visor, or indeed the hat body itself, but only on the rear of the headband. The words are written in a different stylization in each case. A mere possibility of confusion in the minds of the public is not enough. There must be a real, tangible danger of its occurring (Southern Cross at 595). I cannot countenance the prospect of that real, tangible danger when I visually compare the two marks.

103 Insofar as comparing them aurally is concerned in order to determine whether they are deceptively similar, there is in my opinion no similarity at all when Araphat is pronounced in the way the evidence suggests that both retailers and members of the public pronounce it. Arguably it may be deceptively similar if pronounced A-Wrap-Hat as the plaintiff contends is possible. However, I find that such a pronunciation is not and never has been used in the promotion and sale of the plaintiff's articles.

104 For the reasons set out above, I am not satisfied that the second defendant's mark Adapt-A-Cap infringes the plaintiff's mark Araphat either by being substantially identical or deceptively similar to that mark.

105 This leaves one remaining matter to be determined in respect of the trade marks issue, namely, the first defendant's claim for an order removing the Wraphat trade mark from the Register. Under s 92(3) of the Act the Court has the power, on the application of an aggrieved person, to make an order directing the Registrar to remove a trade mark from the Register for non-use. This is what the first defendant seeks in relation to the trade mark Wraphat. Alternatively, she seeks a declaration that the trade mark is invalid because the plaintiff is not the owner of that trade mark. Related to this alternative plea the first defendant seeks an order that the Register be rectified by cancelling the registration of the trade mark pursuant to s 88 of the Act. I will deal with each claim in turn.

106 In order to obtain removal under s 92(3) of the Act the first defendant must show, under s 92(1) thereof, that she is a person aggrieved by the fact that the trade mark is registered. The principles applicable to determining whether a person is aggrieved have been described as follows:

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"(a) The expression 'person aggrieved' has no special or technical meaning and is to be liberally construed.

(b) The expression includes any person having a real interest in having the Register rectified, or the trade mark removed in respect of any goods, as the case may be, and thus would include any person who would be, or in respect of whom there is a reasonable possibility of his being, appreciably disadvantaged in a legal or practical sense by the mark remaining on the Register.

(c) The question whether an applicant for relief is a 'person aggrieved' cannot be divorced from the nature and extent of the relief claimed. A person must be aggrieved in relation to the category of goods and services in respect of which they are seeking to have the trade mark cancelled.

(d) The material time at which a person must be aggrieved is the date of application. That is, the date of the commencement of the proceedings in which the claim for that relief is made."

(Unilever Aust Ltd v Karounos (2001) 52 IPR 361 at [34]). See also Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 12 IPR 417 at 454 - 457.

107 However, the first defendant gave no evidence that she had any continuing interest in the trade mark Wraphat or that she intended or desired to use that trade mark either at the time when these proceedings were commenced or at any later time. It is therefore not possible for me to conclude that there is a reasonable possibility of her being appreciably disadvantaged in a legal or practical sense by the plaintiff's mark remaining on the Register. In the circumstances, the first defendant has not established the threshold test for removal of the trade mark under s 92(3). However, I am satisfied that the plaintiff registered the trade mark on the suggestion of his then patent attorney, ostensibly to prevent the first defendant from registering the trade mark in her own name. He conceded he has never used it and he gave no evidence of any future plans for its use. Accordingly, if the first defendant had met the requirements for me to find that she was an aggrieved person, I would have been satisfied on the evidence before me that, on the day on which the application for the registration of the trade mark Wraphat was filed by the plaintiff, he had no intention in good faith to use the trade mark in Australia or to authorise the use of the trade mark in Australia or to assign the trade mark to a body

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corporate for use by that body corporate in Australia in relation to the sale of the articles manufactured by him (as to which see s 92(4) of the Act).

108 With regard to the alternative claim for a declaration of invalidity because the plaintiff is not the owner of the trade mark and the resultant cancellation of the registration thereof, the power to make an order that the Register be rectified is to be found in s 88 of the Act. In turn s 88 embraces, inter alia, s 58 and s 59 both of which are pleaded in the first defendant's counterclaim. Section 58 provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of that mark. Section 59 provides that the registration of a trade mark may be opposed on the ground that the applicant does not intend to use, or authorise the use of, the trade mark in Australia or to assign the trade mark to a body corporate for use by it in Australia in relation to the goods and/or services specified in the application.

109 There is in my view an immediate impediment to my making an order in the terms sought by the first defendant. By s 90(1) of the Act a person applying to a prescribed court under Pt 8 Div 2 of the Act, which contains s 88, must give notice of the application to the Registrar. I interpret the word "must" as imposing a mandatory requirement on the first defendant to give the requisite notice to the Registrar. There are good reasons for reaching this conclusion. The Registrar may wish to be heard on the question of rectification and indeed this entitlement is contemplated in s 90(2) which affords the Registrar that right. If he is not given notice, he can hardly be expected to exercise the right given to him by the Act to attend and be heard on the application.

110 In the present case the first defendant has put no evidence before the Court to show that the Registrar was given notice of the application (despite there being evidence of correspondence to and from IP Australia on matters relating to the patent and design issues - Ex 38) and I must therefore conclude that the first defendant has not complied with the provisions of s 90(1). As compliance with s 90(1) is a pre-requisite for the exercise of my jurisdiction, the first defendant's application under s 88 must be dismissed.

The Fair Trading Act claim

111 There is one final matter to be dealt with in relation to the plaintiff's claim. The plaintiff alleges that the first defendant has been guilty of conduct which is misleading or deceptive or likely to mislead or deceive contrary to s 10 of the Fair Trading Act. The offending conduct is said to be the first defendant's production and sale of hats materially similar in

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design to the plaintiff's hats which were described in advertising literature as an improved design Wraphat. As I have already noted in respect of the reference to an improved design Wraphat, this was done by a third party without the knowledge or consent of the first defendant. Counsel for the plaintiff submitted that the first defendant's intentions regarding the advertisement are irrelevant and I agree that intention to mislead or deceive is not relevant to a finding that there has been a breach of s 10 of the Fair Trading Act. Where, for example, a defendant has misled or deceived someone quite innocently as a result of not knowing the circumstances which then prevailed, his lack of intent will not provide a defence under the Fair Trading Act. However, I have found that the first defendant did not prepare or publish the advertisement in question, nor did she know of its existence until after the publication had occurred. That being the case, the first defendant cannot in my view be found to have breached the provisions of s 10 of the Fair Trading Act and I so find.

Conclusion

112 For the reasons set out above, I allow the plaintiff's claim insofar as it alleges infringement of the plaintiff's patent and the plaintiff's design by each of the defendants. I dismiss the plaintiff's claim insofar as it alleges infringement of either of the plaintiff's trade marks by the defendants. I dismiss the defendants' counterclaims in their entirety.

113 Insofar as the relief sought by the plaintiff against the first defendant is concerned, I am prepared to grant an injunction in the terms of par 1(a) and (b) thereof (although (b) will need to be amended), an order for delivery up under par 4(a) and (b) thereof, and declarations in the terms of par 5(a), 5(b) and 5A(a) thereof. I am not prepared to grant the relief sought in par 5A(b) and (c) thereof. I will order that an account of profits be taken and for that purpose the matter is to be referred to a Master so that he may either take the account or direct that a Registrar take the account in his stead.

114 Insofar as the relief sought by the plaintiff against the second defendent is concerned, I am prepared to grant an injunction in the terms of par 1(a) and (b) thereof, an order for delivery up under par 4(a) and (b) thereof, and declarations in the terms of par 5(a) and (b) thereof. I will order that an account of profits be taken in the same way as proposed for the first defendant.

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