Macrae Knitting Mills Ltd v Lowes Ltd - [1936] HCA 43

MACRAE KNITTING MILLS LIMITED

LOWES LIMITED

ON APPEAL FROM THE SUPREME COURT OF

NEW SOUTH WALES. Design-Registration- Validity-Want of novelty-Defence to proceedings for infringe-

ent-Designs Act 1906-1934 (No. 4 of 1906-No. 42 of 1934), secs. 17, 26 (3), 39. In an action or suit for the infringement of a design registered under the Designs Act 1906-1934 the defence may be taken that the registration is invalid because the design is not new or original.

Decision of the Supreme Court of New South Wales (Nicholas J.) affirmed.

APPEAL from the Supreme Court of New South Wales.

Macrae Knitting Mills Ltd. brought a suit in the equitable jurisdiction of the Supreme Court of New South Wales for an injunction restraining Lowes Ltd. from infringing its copyright in a design in respect of a swimming costume, class 10, registered as from 31st August 1932. In the statement of the nature of the design which accompanied the application for registration, it was described as " the pattern, shape or configuration of a swimming costume having trunks, top edge seam, resilient back band, back strap and shoulder straps terminating in a medial brace to be applied in any way and by any means." The design was described in the statement of claim as a new and original design,

55 CLR 726

A. and, also, as not having been previously published in the Common-

wealth of Australia. The defendant put the plaintiff to the proof of these matters, and also challenged the validity of the registration of the design relied upon by the plaintiff in that it lacked subject matter. The suit was heard before Nicholas J., who said that, in view of secs. 17-20, 23 and 26 of the Designs Act 1906-1934, he was unable to hold that secs. 12 and 13, upon which the plaintiff relied, gave a person whose design was registered, and who was de facto the owner of the copyright in that design, the right to obtain an injunction without having the validity of his design questioned. He held that the plaintiff's design was not new and original, and was published in Australia before the lodging of an application for its registration also, that it had been anticipated to the extent neces- sary to prevent its satisfying the requirements of sec. 17, in a design registered in February 1931, and in advertisements published during that year. His Honour held, further, that taking into consideration the knowledge which was common to the trade at the time the plaintiff's design was registered, besides drawing what inference he could from a comparison of the plaintiff's design and the costume sold by the defendant and put in evidence, the plaintiff's design, even if validly registered, had not been infringed as there were important differences between the two, particularly in the depth of the back and shoulder straps. The suit was dismissed.

The plaintiff appealed from that decision to the High Court. Spender K.C. (with him May), for the appellant. A defendant…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Keep reading for free

Create a free CaseChat account to read Macrae Knitting Mills Ltd v Lowes Ltd and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [1936] HCA 43
Decision Date: 19 August 1936

CaseChat Overview and Summary

Macrae Knitting Mills Ltd. (the appellant) appealed to the High Court of Australia from a decision of the Supreme Court of New South Wales, which had dismissed its suit seeking an injunction against Lowes Ltd. (the respondent) for alleged infringement of a registered design for a swimming costume. The appellant claimed copyright in the design, which it described as a new and original design not previously published in Australia. The respondent challenged the validity of the registration, asserting the design lacked novelty and originality.

The High Court was required to determine two primary legal issues. Firstly, whether the validity of a registered design could be challenged in an infringement action, or if such a challenge was exclusively confined to proceedings for rectification of the register. Secondly, if the validity could be challenged, whether the appellant's registered design was indeed new and original within the meaning of the *Designs Act 1906-1934*, and if so, whether the respondent had infringed it.

The High Court, by majority, affirmed the decision of the Supreme Court. The Court held that the validity of a registered design could be challenged in an infringement suit, and that the production of a certificate of registration served only as prima facie evidence, which could be displaced. The Court reasoned that registration does not confer a monopoly on a design that is not registrable under the Act. On the merits, the majority found that the appellant's design was not new or original, constituting merely a trade variation of existing swimming costume designs. Consequently, the registration was invalid, and the suit for infringement failed.

The appeal was dismissed with costs.

Orders