Mining Equipment (Minquip) Pty Ltd v Mining Supplies Australia Pty Ltd
[1999] ADO 3
•11 October 1999
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS
Design: No. 131967 in the name of MINING EQUIPMENT (MINQUIP) PTY LTD.
Article: A Coupling
Action: Application by Mining Equipment (Minquip) Pty Ltd for extension of the period of registration; and notice, under S.27A(4), by Mining Supplies Australia Pty Ltd, of material relevant to newness or originality of the design.
Decision: Issued .
Abstract:The present design for a coupling differs from all prior designs exhibited in evidence by more than immaterial details. The present design is also distinct from features commonly used in the trade.
On the other hand the design is an obvious adaptation of a design in respect to another type of coupling previously known in the industry.
The application to extend the period of registration of the present design was refused.
DESIGNS ACT 1906
DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS
Re:Design No. 131967 by MINING EQUIPMENT (MINQUIP) PTY LTD, application for extension of the period of registration; and notice, under S.27A(4) by MINING SUPPLIES AUSTRALIA PTY LTD, of material relevant to newness or originality of the design.
BACKGROUND
Mining Equipment (Minquip) Pty Ltd ("Minquip") applied to register design 131967 on 15th April 1997. The design related to a coupling. The application proceeded to registration on 6th November 1997. The initial period of registration ceased on 6th November 1998. Prior to this date Minquip filed an application for an extension of the period of registration of the design and paid the corresponding fee.
Mining Supplies Australia Pty Ltd ("Minsup") filed a notice, under S.27A(4) of the Designs Act, against the registered design on 6th October 1998. Minsup's notice lists several Australian patents and designs, and Minsup product catalogues and drawings, that they consider relevant to the newness or originality of Minquip's design. Concurrently with the notice Minsup filed supporting declarations by Mr Craig Laurence Vinall, Mr Brian Albert Ginger, Mr Neville Frank Howse and Mr Sergio Robert Faggionato. Mr Vinall is the attorney for Minsup. Mr Ginger is the chief executive officer of Minsup. Mr Howse is the company's technical sales representative and Mr Faggionato is the manufacturing manager.
Minquip filed a partial response to Minsup's notice and supporting declarations on 16th November 1998. This response contained a declaration by Mr David Byrne, the design's author, and the managing director and founder of Minquip. On 26th November 1998 the deputy registrar of designs allowed an extension of time for Minquip to file the remainder of their response. Minquip filed that response on 15th January 1999. The latter response contained declarations by Mr Peter Butcher and Mr Nigel Wotton. Mr Butcher is a mining superintendent at Pasminco Pty Ltd in Broken Hill, New South Wales. Mr Wotton is an employee of Adelaide Technical Rubber.
On 18th March 1999 Minsup filed a further declaration. This declaration is by Mr Donald Nixon, a retired factory manager of Minsup. His evidence largely responds to the declaration of Mr Byrne.
Minquip did not object to the inclusion of this further evidence from Minsup. Instead they submitted it would be only fair for them to be able to respond to that further evidence. Minquip responded to Mr Nixon's evidence on 23rd April 1999. The responding evidence included a second declaration by Mr Byrne and a declaration by Mr Ian Donaldson, a fitter and draftsman employed by Powercoal Pty Ltd in New South Wales.
On 30th March 1999 the Designs Office advised the parties that the registrar of designs proposed not to extend the period of registration of design 131967. The deputy registrar's reasons for recommending that course of action were also attached to that advice.
In response to the deputy registrar's opinion Minquip requested a hearing on 23rd April 1999.
The hearing took place in Adelaide on 10th June 1999. Dr Paul Wyk, attorney of A.P.T., represented Minquip. Mr David Byrne, the design's author, and Mr Richard Reed, of A.P.T., were also present at the hearing as observers. Mr Craig Vinall, attorney of Madderns, represented Minsup.
THE DESIGN
Registered design 131967 relates to a coupling. The coupling has particular application in the mining industry for joining air hoses through which compressed gas is passed. The representations show top, side, underside, cross-sectional and perspective views of the coupling. The statement of monopoly claims the shape and configuration of a coupling as illustrated in the representations. The statement of novelty says that novelty lies in the internal toroidal cavity.
The cross-sectional and perspective views are depicted below.
APPLICABLE LAW
S.17(1)(a) provides as follows:
"17.(1)Subject to this Act, a design shall not be registered unless it is a new or original design and, in particular, shall not be registered in respect of an article if the design-
(a) differs only in immaterial details or in features commonly used in the relevant trade from a design that, before the priority date in respect of the application for registration, was registered, published or used in Australia in respect of the same article; or
(b) is an obvious adaptation of a design that, before the priority date in respect of the application for registration, was registered, published or used in Australia in respect of any other article."
In considering whether the registered design is new or original it is the appearance of the design as a whole as judged by the eye alone which is important. The eye should be that of an instructed person; that is, the eye of one who knows what was common trade knowledge and usage in the class of articles to which the design applies (Phillips v Harbro Rubber Co (1920) 37 RPC 233). Ordinary trade variants, routinely used in the trade and introduced into an old design, do not make a new or original design.
A design that differs from an earlier design in small details requires careful consideration since immaterial details would deprive a design of newness or originality. This consideration needs to be made having regard to the nature of the article (Le May v Welch (35 AOJP 2512)) and to the fundamental form and development of such articles in the trade (D Sebel & Co Ltd v National Art Metal Co Pty Ltd ((1965) 10 FLR 224)).
The D Sebel (supra) decision also states the onus lies with the party asserting invalidity of the registered design to establish that that is the case.
DEPUTY REGISTRAR'S RECOMMENDATION
The deputy registrar noted the representations of the design show five views of a coupling used in conjunction with hoses. A particular example of use is for compressed air hoses for mining equipment.
The deputy registrar also noted the views, that show the whole article, use a mixture of solid and broken lines. The solid lines depict the head of the coupling. This end of the coupling connects to the corresponding end of another coupling. The broken lines depict the tail of the coupling and show a hose connection configuration. Other possible industry variations of the tail ends are male and female threaded tails.
The deputy registrar said the depiction of the article in solid and broken lines leaves the representations and the scope of the monopoly unclear. The deputy registrar resolved this by referring to the monopoly and novelty statements to say:-
"….the scope of the registration should be read narrowly. The scope of the registration should be no more than the features of shape and configuration of a coupling having the external appearance of the coupling shown by the dotted and solid lines in the representations and the internal feature of the toroidal cavity…….".
Consequently the deputy registrar interpreted the scope of registration of the present design as the depicted solid head of the coupling combined with a hose configured tail section.
In discussing the newness or originality of design 131967 the deputy registrar said that design has the external appearance of a type A coupling (one of three types generally known in the industry). He also made the following further observations.
Minsup have not provided any disclosure of a type A coupling having a toroidal cavity for a toroidal seal. Minsup have provided a disclosure of a Surelock coupling with a toroidal seal.
From these observations the deputy registrar concluded, in respect to section 17(1)(a), that the design shown in registration 131967 was not registered or published in Australia before 15 April 1997.
In respect to section 17(1)(b) the deputy registrar said the present design involves the combination of the internal toroidal cavity with a coupling having the external appearance of a type A coupling. Surelock couplings rather than type A couplings were previously known to have toroidal cavities. The deputy registrar concluded the provision of a toroidal cavity from a Surelock coupling into a substantially equivalent type A coupling is mere adaptation of a design. He also stated the prior art teaches it would have been obvious for a designer of hose couplings to redesign a known coupling to include a known cavity from other forms of couplings. Consequently the deputy registrar regarded this adaptation as an obvious adaptation.
Accordingly the deputy registrar said design 131967 is not new or original, and recommended that the period of registration of that design should not be extended.
EVIDENCE
Mr Vinall's evidence consists of exhibits of Minsup entries in the 1972 and 1973 Adelaide telephone directories. The intent of this evidence is to establish publication of some Minsup product catalogues in the 1970s through correlation of telephone numbers quoted in the catalogues.
Mr Ginger's evidence includes a copy of a Minsup product catalogue showing type A, type B and Surelock couplings. These couplings are distinguished by the configuration of their heads. The distinguishing features of the three types of couplings essentially are as follows. The type A coupling has wide but slim pinhole blocks and small locking lugs. The type B coupling has narrow but thick pinhole blocks and large so-called American standard locking lugs. The Surelock coupling has similar pinhole blocks to the type A coupling but with small positive locking lugs that must be compressed to disconnect from another coupling.
Mr Howse attests to the existence and use of type A couplings at Broken Hill Mines Pty Ltd prior to 1970 when he left that company. He states the type A couplings used at Broken Hill Mines are virtually identical in external appearance to the registered design 131967. Mr Howse further states the shape of the toroidal cavity in design 131967 is dictated solely by the shape of the seal that is used. He acknowledges there may be some minor variation in the width of the channel extending beyond the toroidal cavity depending on the diameter of the bore extending through the coupling. However Mr Howse regards this as an immaterial variation between couplings that use a bellows or toroidal seal.
Mr Howse's evidence includes exhibits of several examples of type A, type B and Surelock couplings. The most pertinent exhibits are two Minsup product catalogues. Mr Howse asserts these catalogues date from the early 1970s and from 1995, respectively. The latter catalogue is equivalent to the one exhibited by Mr Ginger. Both catalogues display all three types of couplings including clear pictures of the type A coupling. Furthermore the 1995 catalogue shows square shouldered seals being associated with type A and B couplings, and toroidal or bellows seals being associated with the Surelock coupling. Mr Howse says this arrangement of specific types of seals for the three types of couplings is a standard design feature of the couplings. On the other hand he also says the use of a bellows seal on a type A coupling, or any other coupling that used a square shouldered seal, is an immaterial design variation. Such couplings would differ only in respect of a feature that was commonly known and used in the trade.
Mr Faggionato's evidence includes various exhibits of seals and couplings. The most pertinent exhibit that predates the present design 131967 is Australian patent specification 245310. This specification shows a Surelock coupling with a toroidal cavity.
Mr Byrne exhibits comparatively dimensioned drawings showing the relative head dimensions of the type A coupling with toroidal cavity to accommodate a bellows seal, and a comparatively sized Surelock coupling. He notes the overall diameter of the toroidal cavity, acting as the seal recess for the Surelock coupling, is greater than that for the type A bellows seal the subject of the present design.
Mr Byrne further states that uniformity of couplings for individual customers is important to retain compatability of couplings on two hose ends. For this reason the practice in mines is to use the same coupling type at any particular mine, that is, type A, Surelock, or type B. Consequently Mr Byrne asserts that, in the minds of the user, these coupling types are quite distinct products.
Mr Butcher supports Mr Byrne in respect to the distinctiveness between the coupling types. He also states he was somewhat surprised when first seeing a Minquip type A coupling with a toroidal cavity for a bellows seal. He says this is a major industry development. He also says type A couplings are the most commonly used couplings in Australia. Consequently Mr Butcher suggests that if a bellows seal was obviously usable with a type A coupling then someone would have previously suggested it.
Mr Wotton states he was involved with Mr Byrne between June 1995 and March 1996 in developing Minquip seals for use with metal couplings.
Mr Nixon outlines the background development and differences between the three types of couplings. He also challenges Mr Byrne's statements about the distinctiveness between the three types of couplings. Mr Nixon says various parameters such as size and diameter differ only by small amounts between the couplings and are designed to ensure incompatability between couplings so that one type of coupling cannot be interconnected with another type. He also says the difference in size between seals ensures incompatability of one seal in the other coupling.
Mr Byrne's second declaration quotes several registered designs of type A and discusses minor differences between them. He says small differences in the shape of a coupling are significant rather than immaterial in the industry. He also suggests the allowance of individual registered designs for such differences supports his proposition of the significance of those differences.
Mr Donaldson provides supportive statements for Mr Byrne in respect to the superior effectiveness of Minquip seals and couplings over the Minsup products in preventing leakage.
DECISION
Presentation of articles at the hearing
At the beginning of the hearing Mr Vinall sought to make submissions using a number of samples of couplings to illustrate his points. Dr Wyk objected to any discussion taking place in respect to these articles saying the presentation of the articles at the hearing amounted to the inclusion of new evidence.
In accordance with Dr Wyk's comments I did not allow the articles to be presented. I also did not allow submissions to be made in respect to the articles. In any case, presentation or submissions in respect to these articles would be inconsequential. The present matter is not about the merits of particular articles. Instead the matter concerns the newness or originality of a design in respect of an article.
Scope of registered design
Mr Vinall noted the mixture of solid and broken lines depicted in the representations of design 131967. He suggested such depiction showed Minquip's intent to register different coupling designs with several different tail sections as one registered design. Mr Vinall said the registered design is invalid for this reason alone. However, for the purpose of discussion at the hearing, Mr Vinall was prepared to read the representations in the narrower form outlined by the deputy registrar.
Dr Wyk submitted the scope of the registered design is a type A coupling with head shape as shown by the solid lines and a tail shape from any of the common trade variants. He also noted that Mr Howse, one of Minsup's declarants, also construed the design as having variations in the tail portion of the coupling.
The Designs Act defines a design as features of shape, configuration, pattern or ornamentation applicable to an article. The act also defines a set of articles as a number of articles that are of the same general character and ordinarily on sale, or intended to be used, together, being articles to each of which there is applied a design that is the same as, amongst other things, the design applied to the other articles or to any of them. If the owner of a design wishes to register the design in respect of more than one article, sub-section 20(6) states the owner shall make a separate application in respect of each article. However sub-section 20(7) says that for the purposes of sub-section (6) a set of articles shall be deemed to be one article.
The diagrammatic representations the subject of the present registered design 131967 show a type A coupling with the head portion in consistent solid outline. The mining industry uses such couplings to join, for example, air hoses through which compressed gas is passed. The tail portions of the couplings may vary depending on the items to be connected. Common variations in the industry are hose configured tail pieces, as depicted in broken outline for the registered design, or male or female threaded tail pieces. Such variations are simply to facilitate connection of the appropriate items used in the mining industry. On the other hand the configuration of the head portion for coupling with an equivalent head of another coupling is consistent. In line with the Re Porcelain Products Pty Ltd decision ((1986) AIPC 90-331 at page 37,023), I am satisfied that couplings with type A head portions but variable tail portions are articles all of the same general character, commonality of design and would ordinarily be on sale together. The couplings qualify as one set of articles.
The registered design is in respect to one article. The scope of the registered design is the shape and configuration of a coupling as illustrated in solid outline in the representations.
The eye of the person in the relevant trade
The Phillips (supra) case suggests an important issue in assessing newness or originality of a design is its appearance to the eye of an instructed person, that is, the eye of one who knows what was common trade knowledge and usage in the relevant field.
Dr Wyk submitted that small differences in the head portion of a coupling are significant in the industry. He attributed this significance to the fact that there has been little change in the head design over a number of years. Consequently small changes would be noticeable to those working in the trade. Dr Wyk also noted there are three major types of coupling in the industry. While the three types may appear similar, Dr Wyk noted the comments of Mr Byrne and Mr Butcher in respect to the distinctiveness of the three coupling types. Dr Wyk suggested that people in the industry have a keen eye for detail and would readily notice minor differences between coupling types and differences between couplings of the same type.
Mr Vinall disagreed that the lack of change of a design over time meant that any small change that is made is significant. He said such an argument does not logically follow. Mr Vinall acknowledged the nature of coupling design in the industry would lead people working in this field to have a keen eye for detail. On the other hand he also noted the comments of Mr Howse. Mr Vinall said the appearance of the cavities in the couplings may be different but a person, such as Mr Howse, working in the field, would not regard such a difference as significant.
The present design clearly relates to the coupling field. The Phillips (supra) case requires designs to be compared in the eyes of one who knows what was common trade knowledge and usage. In the present circumstances the evidence from both parties suggests that users of the three coupling types are acutely aware of the incompatabilities between the three types. Mr Byrne particularly mentions that uniformity of couplings for individual customers is important. Consequently I expect users of couplings to have sufficient eye for detail to readily distinguish small variations between couplings. I will consider the present design 131967 and the designs tendered in evidence as they appear to the eye of such a coupling user.
Public availability of Minsup catalogue
One of the Minsup product catalogues allegedly dates from 1995. To support the assertion of a 1995 publication date, Mr Howse has included exhibits of his own diary entries from July 1995. Several entries refer to Falcon Press. Mr Howse says Falcon Press is an Adelaide printing company where the Minsup catalogue was printed. He says the entries relate to him organising the printing of the catalogue with Falcon Press.
The standard of proof required for establishing public availability of an item is the civil standard. On the balance of probabilities I need to be satisfied the Minsup product catalogue was publicly available prior to the date of application of design 131967. That date is 15th April 1997. On the one hand I am faced without direct evidence of the public availability of the catalogue. On the other hand the evidence shows Mr Howse organised the printing of the catalogue almost two years before the application date. The catalogue shows a diverse range of articles supplied by Minsup. In this light I would expect such a catalogue to be circulated as widely as possible soon after printing to show existing and potential customers the range of products produced by Minsup. On balance I am prepared to accept this catalogue became publicly available before the date of application of design 131967.
Immaterial details
Mr Vinall noted the present issue concerned the provision of a toroidal cavity, for a toroidal seal, in a type A coupling. He said such cavities are known for Surelock couplings. On the other hand type A couplings generally have square shouldered cavities for square shouldered seals. Mr Vinall said the declarations of Mr Butcher, for Minquip, and Mr Nixon, for Minsup, support the position that the replacement of one of these types of cavities for the other in a particular coupling would not be seen in the trade to be a significant change. Mr Vinall also suggested the use of a toroidal cavity, instead of a square shouldered cavity, in a type A coupling does not have a significant effect on the overall appearance of the design. In the light of the above comments Mr Vinall relied on the Aluminium Specialities Pty Ltd decision (23 IPR 86) to submit that such a change is an immaterial detail.
Dr Wyk cited the Le May (supra) decision to say the background of the particular trade must be taken into account when considering whether the present design differs from previous designs only in immaterial details. He noted that variations in the internal shape of cavities are well recognised by users of couplings and there has been little change in the shape of cavities over a large number of years. Consequently Dr Wyk submitted that small changes in coupling design are significant and cannot be considered immaterial details.
The 1995 Minsup catalogue illustrates Surelock, type A and type B couplings. None of the illustrations show the cavity within each coupling. On the other hand the catalogue clearly illustrates the types of seals associated with each coupling. The Surelock coupling has a bellows or toroidal seal. The type A and type B couplings have square shouldered seals.
Dr Wyk relied on the J Rapee & Co Pty Ltd v Kas Cushions Pty Ltd decision (15 IPR 577) to suggest it is inappropriate to read the internal cavity shape into a coupling from something only showing a seal associated with that coupling. The Rapee (supra) decision says the reader of relevant material must from a fair perusal of the material be able to at least see the design, and the design or something substantially the same as the design should be disclosed with reasonable clarity.
Mr Vinall said people working in this field would understand the seal is to go into the coupling. Consequently he said the coupling must have an internal shape matching the type of seal illustrated for that coupling.
The interpretation of material should be done with a purposive approach. If a drawing shows a particular seal related to a certain coupling and it is well known in the industry that the seal is intended to reside in the coupling then one can deduce there must be a matching internal space to accommodate the seal. In this respect I favour Mr Vinall's approach. Consequently the Surelock coupling illustrated in the Minsup catalogue must have a toroidal cavity to accommodate this type of seal. In any case Australian patent 245310 clearly illustrates a Surelock coupling with an internal toroidal cavity. Similarly the illustrated type A and type B couplings must have square shouldered cavities to accommodate square shouldered seals.
The Aluminium Specialities (supra) decision says a design must be considered as a whole. Furthermore differences between features of two designs must be considered in respect to the designs as a whole. I accept these principles. I have also noted earlier that the eye of a person in the coupling field would readily distinguish small variations between couplings.
In the present circumstances there is no material presented in evidence that shows the existence of a type A coupling with an internal toroidal cavity prior to the application date of design 131967. This is a major departure from the square shouldered cavities previously provided for type A couplings. The internal cavity is also a major part of the head portion of the coupling. Consequently this variation of cavity structure for the type A coupling is also clearly evident in respect to the design as a whole. The evidence from both parties supports this view. To a person in the coupling field, the appearance of a toroidal cavity in a type A coupling would be easily noticed.
It may be argued that a type A coupling with a toroidal cavity is an immaterial variation from a Surelock coupling known to have a toroidal cavity. On the other hand, the knowledge in the industry of the incompatabilities between coupling types is well documented by both parties. To a person in the coupling field, a type A coupling appears distinctly different from a Surelock coupling.
A toroidal cavity within a type A coupling is more than a variation in an immaterial detail.
Features commonly used in the relevant trade
Mr Vinall said Surelock couplings with bellows or toroidal seals were widely known and used before the date of application of design 131967. Accordingly he said the bellows or toroidal seal is a well-known trade variant for these types of couplings. Mr Vinall also noted the evidence, particularly of Mr Howse, suggests that type A couplings were well known. Consequently Mr Vinall suggested design 131967, being a type A coupling with a toroidal cavity, differs from known type A couplings, with square shouldered cavities, only in respect of a feature commonly used in the trade.
Dr Wyk noted the Phillips (supra) decision allowed the trade world its choice of ordinary trade variants for use in any particular instance. He acknowledged the shape of the tail portion of the coupling is such a variant. However Dr Wyk submitted the head portion, and particularly the seal cavity, had not seen much variation in the industry over a large number of years in the three main types of couplings. Consequently he said any variation in the head portion in respect to the present design 131967 cannot be considered a difference in features commonly used in the trade.
The representations of Minquip's design 131967 allow variation in the tail portion of the coupling. This variation is dependent on the items to be connected by the coupling. Mr Howse's evidence for Minsup also acknowledges the variability of the tail portion of couplings in the industry. The representations of the registered design and the evidence filed against that design suggest that variations in the tail portions are variations of features commonly used in the trade depending on the items to be connected. On the other hand there is insufficient evidence that people in the coupling field apply similar variations of cavity configuration with any particular coupling type. The evidence does not establish that people in the trade readily interchange square shouldered and toroidal cavities in any particular coupling type. In fact the evidence from both parties suggests the contrary. Toroidal cavities are specifically associated with Surelock couplings. Square shouldered cavities are associated with type A and type B couplings. See for example again the 1995 Minsup catalogue in this respect.
The depiction of a toroidal cavity in a type A coupling, in the case of design 131967, is more than a variation of a feature commonly used in the trade.
Obvious adaptation
Mr Vinall said the taking of a toroidal cavity from a well known design of a Surelock coupling and applying it to a type A coupling is an adaptation. He further said it would have been obvious to people in this field to apply the toroidal cavity to a type A coupling. In this respect Mr Vinall noted Mr Byrne's and Mr Butcher's evidence to say that people in the industry recognised the advantage with toroidal seals is the ease of coupling.
Mr Vinall referred to Mr Byrne's comments of a market need for a type A coupling with the ease of use of the Surelock coupling. Mr Vinall said this effectively meant Mr Byrne's customers were telling him it would be desirable to use a toroidal seal in a type A coupling. Mr Vinall also noted Mr Butcher's comments expressing surprise that Minsup had not previously considered such a change. In the light of these comments Mr Vinall submitted the provision of the toroidal cavity from the Surelock coupling into the type A coupling is an obvious adaptation.
Dr Wyk said Mr Butcher's comments of surprise relate to seeing a Minquip type A coupling using a bellows or toroidal seal. Dr Wyk further said if something is a plainly obvious adaptation then one would not expect a reaction of surprise from a person in the field at the production of the thing. He also noted Mr Butcher's surprise relates to his assumption that there is insufficient wall thickness to allow for a bellows or toroidal seal in a type A coupling. Dr Wyk said if a person's state of mind suggests a particular approach is not going to work or not going to produce a practical coupling then such an approach cannot be considered obvious.
The comments from Mr Byrne and Mr Butcher are not particularly helpful in assessing whether a type A coupling with a toroidal cavity is more than an obvious adaptation from a Surelock coupling with a toroidal cavity. The comments primarily relate to recognition of industry needs and the functionality of the different types of coupling. Both Mr Vinall and Dr Wyk appear to use these comments to make functionality a determinant of whether or not the type A coupling with toroidal cavity is an obvious adaptation.
The reliance on functionality places too high a test on whether such a coupling is an obvious adaptation of a design. The registration of designs relates to appearance rather than function of an article. Consequently I should not concern myself with the function of the toroidal cavity or seal in a type A coupling or whether such an arrangement would work.
S. Ricketson, in The Law of Intellectual Property (1984, The Law Book Company, Sydney, pp 467 and 468), sets out a test for obvious adaptation. He refers to the Departmental Committee on Industrial Designs 1962 (the "Johnston Committee"). He says this committee originally proposed the formulation of obvious adaptation and referred to patent law in respect to obviousness of an invention. Ricketson states if Australian courts are to draw analogies from patent law, they will have to consider the following question. That is, whether the adaptation in question would be obvious to a skilled but unimaginative craftsman, possessed of the common general knowledge in that area, and faced with the task of conceiving a design to apply to a particular article. This test derives from the approach of Aickin J. in the Minnesota Mining & Manufacturing Co Ltd & 3M Australia Pty Ltd v Beiersdorf (Aust) Ltd decision ((1980) 144 CLR 253), a patent case on obviousness. In respect to the common general knowledge of the craftsman, Ricketson states as a general proposition that that person will only be familiar with those designs previously published or used in respect of articles of a similar character to that with which they are concerned in their everyday work.
I am not aware of case law in Australia on obvious adaptation of a design. On the other hand, the UK Court of Appeal gives guidance in this respect in another Phillips v Harbro Rubber Co decision (36 RPC 79). That decision states it is clear that a combination of parts, all old, may constitute a new design. However the decision also says it certainly does not follow that every combination of old parts, not shown to have been combined before, necessarily produces a new or original design. That decision further states it is not open to a manufacturer to take one or more leading features of different goods already on the market and acquire a registered design for a combination of those features without any real mental activity being required for the production of the combination.
The issue with the present design is whether a skilled but unimaginative person in the trade, possessed of the common general knowledge in that area, would produce a combination without any real mental activity that comprises a type A coupling having the toroidal cavity known for the Surelock coupling. I am satisfied a person in the coupling field would be familiar with the type A, type B and Surelock couplings and regard them as being of a similar character. The evidence from both parties also adequately shows it is common general knowledge in the coupling field that type A and type B couplings accommodate square shouldered seals and that Surelock couplings accommodate toroidal seals. There is also sufficient acceptance from the parties that type A couplings are the most commonly used type of coupling of the three coupling types. This suggests it may be appropriate in the coupling field to concentrate design revision and development on type A couplings.
In spite of the various differences highlighted previously between the three types of couplings, they are not so different in appearance to suggest a skilled but unimaginative person in the trade could not readily modify the couplings to use various seals from different coupling types. In any case most of the highlighted differences relate to external appearance rather than internal cavity structure for a seal. In this light I expect a person in the coupling field would not find any real difficulty requiring any real mental activity to modify the internal cavity of the type A coupling to accommodate a toroidal seal.
Mr Byrne compares the dimensions of the Surelock coupling and the type A coupling of design 131967 to say the overall diameter of the toroidal cavity for the Surelock coupling is greater than that for the type A coupling in the present design. Mr Butcher supports this observation with his comment that he had assumed there is insufficient wall thickness to accommodate a toroidal seal in a type A coupling. This may suggest a type A coupling could not be obviously adapted to accommodate a toroidal cavity as in the Surelock coupling. On the other hand there is ample case law stating that precise mathematical comparisons of dimensions are not to be applied in assessing the newness or originality of designs (Polglase v BTR Indeng Pty Ltd, 31 IPR 631, and Dart Industries Inc v Décor Co Pty Ltd, 15 IPR 403).
In any case, along with changing the shape of the internal cavity, a redesign of the internal dimensions to readily accommodate a toroidal cavity similar to that of the Surelock coupling is the only variation made to the type A coupling to arrive at the present design. I expect a person in the coupling field would readily redesign the type A coupling in shape and dimension to adapt a toroidal cavity, known for the Surelock coupling, to the type A coupling without exercising any real mental activity. The present design involves a combination of old, known features that do not require any real mental activity to produce the combination.
The registered design 131967 for a type A coupling is an obvious adaptation that simply incorporates the toroidal cavity from the Surelock coupling.
CONCLUSION
The present design for a coupling differs from all prior designs exhibited in evidence by more than immaterial details. The design is also distinct from features commonly used in the trade.
On the other hand, design 131967 is an obvious adaptation of a known design in respect to a Surelock coupling.
I refuse to extend the period of registration of design 131967.
COSTS
Both parties submitted that costs should follow the event. As the present matter was an inter partes hearing, both parties could be liable for costs. Consequently it is appropriate that costs follow the event.
On the basis of the material provided by Minsup under section 27A(4), Minquip have been unsuccessful in obtaining an extension of the period of registration of their design.
I award costs against Mining Equipment (Minquip) Pty Ltd.
M G Kraefft
Delegate of the Registrar of Designs
Attorneys for the design owner : A.P.T., Adelaide.
Attorneys for the informant : Madderns, Adelaide.
0