Polglase v BTR Indeng Pty Ltd (Trading as Btr Hufcor)
[1995] ADO 2
•27 April 1995
official notice
decision of a delegate of the registrar of designs
Design: No. 117582 in the name of Keith Henry Polglase
Title: Section
Action: Application for extension of the period of registration; notice under S.27A(4); hearing.
Decision: Issued .
Abstract: Design not new or original; extension of term refused. Differences immaterial or workshop variations.
designs act 1903
decision of a delegate of the registrar of designs
Re:Design No. 117582 to Keith Henry Polglase, application for extension of the period of registration, and notice under S.27A(4) by BTR Indeng Pty Ltd (trading as BTR Hufcor).
background
Application number 2882/92 for registration of a design applicable to a section of movable wall track was lodged by Mr K H Polglase on 15 October 1992. For the purposes of section 17 of the Designs Act the priority date is also 15 October 1992.
The application proceeded to registration on 6 July 1993. The initial period of registration thus expired on 6 July 1994.
For the purposes of s27A(4) of the Designs Act an informant had until 6 June 1994 to lodge a Notice of matter material to newness or originality (form 8). A form 8 and supporting documentation was lodged by BTR INDENG PTY LTD trading as BTR HUFCOR on 6 June 1994. The registered owner lodged a statutory declaration in reply on 6 July 1994.
On 25 August 1994 both parties were advised that the Deputy Registrar of Designs proposed not to extend the period of registration and that he was of the opinion that the design had been prior published by the information provided by the informant. The reasons were set out in a written opinion of the Deputy Registrar dated 23 August 1994.
The matter was heard in Melbourne on 15 February 1995; the registered owner was present at the hearing and was represented by Mr Charles Sandercock, patent attorney.
At the hearing I requested that Mr Polglase file a sample exhibit of his track. (The Registered Design is the important consideration with regard to novelty and originality, but it is also accepted practice to regard an article incorporating the design as a visual representation of the subject matter of the design; see Lusty & Sons v Morris Wilkinson (1954) 71 RPC 169 at 179 and Benchairs v Chair Centre [1974] RPC 429 at 442). A sample track was filed on 8 March 1995.
The abovementioned opinion of the Deputy Registrar reads as follows:
"Scope of registered design no. 117582
In accordance with the authorities, in determining the scope of a registered design I must consider:
(1) the name of the article to which the design is applied
(2) the representations
(3) the presence or absence of a statement of monopoly and/or a statement of novelty
The title of the article is "Section". The representations show an isometric view of an extruded section of indefinite length but of constant cross-section. The section is characterised by the form of an inverted U. At first glance the eye sees a symmetry about the vertical axis running longitudinally along the section. Within the U there is a lack of symmetry in the arrangement of the tapering projections.
There is no statement of novelty.
The representations show features of shape and configuration. This is reflected in the statement of monopoly which reads:
"The features of shape or configuration shown in the accompanying representations. The section is of indeterminate length and is of constant cross-section throughout its length."
The information
The form 8 was supported by a statutory declaration by Mr Grant Simmons, the manufacturing manager of the informant.
His declaration refers to a sample of walling track and carrier, a series of copies of engineering drawings, copies of two patent specifications, an annotated copy of the representation in 117582 and copies of sales invoices. Paragraph 5 of the declaration refers to when the engineering drawings were made public in Australia. These dates are before the priority date of 15 October 1992. The two patent specifications are certified by an Assistant Director Patents Services as being open to public inspection at least a year before the priority date of 117582.
The Simmons declaration considers the registered design differs only by inessential differences or by features commonly used in the trade from the information provided.
Registered Owner's response
Mr Keith Polglase in his statutory declaration refers to 15 differences between the section of 117582 and the tracks of the informant.
Discussion
The informant has provided no single document of a date earlier than the priority date which clearly shows all the features of shape and configuration visible to the eye in the representation of 117852.
The informant identifies 4 differences in exhibit GHS 11.
The registered owner identifies 15 differences in exhibit KHP1. The common differences are tabulated as follows:
Informant Registered owner
A j
B e
C oThe informant considers feature d in exhibit GHS11 is a difference. Feature D is identified in the Simmons declaration at paragraph 15 as the stop. In GHS11 D could refer to both the stop surface and the channel.
On the other hand the registered owner considers feature a (channel in the track upstand) in exhibit KPH1 to be a difference. The registered owner does not comment upon the curved rather than stepped stop surface shown in the representations.
The remaining differences identified by the registered owner are about the replacement of stepped portions by smooth curves and the thinness/thickness of portions of the section.
Opinion
It is my opinion that registered design no. 117582 is not a new or original design over the track published in the engineering drawings of exhibits GHS3,4,5,6,7,8 lodged by the informant. Drawings fall within the definition of document in the Acts Interpretation Act. These drawings were published in Australia some years before 15 October 1992. [See paragraph 5 of the Simmons declaration.]
The differences between any of these documents and the representations in the registered design are immaterial or merely trade variants.
Replacing step changes with smooth curves, thinning or thickening a part and moving the position of the dowel slots up are only immaterial differences or trade variants.
The channel appears to serve no significant purpose and seems only to result from the reworking of the stop feature by reducing the amount of metal to be extruded to produce the track upstands.
It is my opinion that because I consider registered design no 117582 not to be new or original the registration should not be extended."
The originality of a design is covered by Section 17 of the Designs Act 1906. Subsection (1) reads:
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 adaption 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.
Representations of the registered design and one of the Hufcor designs, Exhibit GHS2, are shown below:
D117582 Hufcor
submissions
At the hearing Mr Sandercock referred to Mr Polglase's declaration and made an in-depth comparison of the registered design and the prior art referred to in Mr Simmons' declaration, pointing out all the differences and some functional advantages associated with these differences. He submitted that no item of the prior art disclosed all the features of the registered design, and that one could only arrive at the registered design by "mosaicing" the features of the prior art.
Mr Sandercock also suggested that the registered design was the same fundamental form as the prior art but was an improvement over the prior art, not just a mere workshop variation. He submitted that the track of the registered design was created especially to satisfy a need in the building industry to install movable glass panels where a standard window frame had been removed. The prior art Hufcor track is 120mm wide; it is usually used for hanging movable solid panels, eg. to divide a large room into smaller rooms, and it is too wide for the standard window frame space. Mr Polglase designed his track to be 101.6mm wide; this is suitable for glass installations. Mr Sandercock submitted that size per se is not a registrable characteristic of a design, but in this case the specific width of the registered design track also "has its effect with respect to proportionality" and that the width-height ratio of the registered design was different to that of the prior art.
Mr Polglase made submissions at the hearing on the commercial success of the track of his design in the glazing industry. It has been used in shop-fronts, swimming pool enclosures, lounge balconies and the like. He confirmed that he designed his track to solve a particular problem in the industry, ie. the available Hufcor track was not suitable for some glazing jobs.
decision
In my view, a visual comparison of the representations of the registered design and Exhibit GHS2 shown above, prima facie reveals the same fundamental configuration of five significant features, viz:
(i) a generally inverted U-shaped section with
(ii) internal offset "ledges" (item 2 shown in GHS2) which support load-carrying rollers (7),
(iii) horizontal "track upstands" (4) to support the edges of ceiling panels, and
(iv) two "fixing channels" (5) for suspending the track from bolt heads,
(v) the fixing channels being located at the upper corners of the inverted U-shaped section.
However, a closer comparison of the representation of the registered design and Exhibit GHS2 reveals several differences. Compare, for example, equivalent parts of the registered design with roller "stops" (15), vertical portions (12) of the track upstands, "dowel slots" (14), and the thickened portions of walls (3) which bear against the rollers, in GHS2. Also, other differences were referred to by the registered owner.
I will now consider whether the registered design differs only in immaterial details from the prior art Hufcor track, and whether the differences are mere workshop variations of features commonly used in the trade.
The most apparent visual difference I think is the position of the dowel slots on the side walls of the track. The issue of whether a particular feature in a design is an immaterial detail must take into account the relative size of the feature in relation to the whole design. In Sebel & Co.v National Art Metal Co. (1965) 10 FLR 224, where the novelty of a metal chair frame was at issue, the splay and curvature of the legs was considered to be a distinctively novel feature over the prior art; and in this design the chair legs were a substantial part of the whole design. Similarly, in Re HPM's Application (1988) AIPC 90-494 the distinctive twin active electrical plug terminals were a relatively large part of the design and were found to be a novelty-conferring feature. On the other hand, in Le May v Welch (1885) 28 Ch D 24, the position of a stud on a collar was considered to be "trifling", and in Re Aluminium Specialities' Application (1991) 23 IPR 86, the position of a lip in a window frame extrusion was found to be a small and insignificant feature compared to the design as a whole. The dowel slots in the present design I consider to be less distinctive than the chair legs and the plug terminals in the former two of the abovementioned cases, but more distinctive than the collar stud and the lip in the latter two abovementioned cases. Thus I think it is difficult to decide whether this feature is an immaterial detail.
I note that Mr Simmons refers to the dowel slots in paragraph 7 of his declaration:
"Dowel slots are used to accommodate dowels which bridge across the joint between abutting track lengths - a portion of the dowel being inserted into the dowel slots of abutting tracks. The position, shape and dimensions of the dowel slots on legs 3 may and have since well before October, 1992 been routinely altered for different tracks depending upon whether or not they are likely to interfere with other features such as ceiling panels and the shape of desired dowels. For example in the track shown in Exhibit GHS3 the dowel slots are in a different position to those in Exhibit GHS4, and in Exhibit GHS9 the dowel slots are located near the junction of the legs and track upstands.
I am thus aware that before 15 October 1992 it was common in the trade in Australia to vary the position, shape and dimensions of dowel slots on operable walling tracks...."
At the hearing, Mr Sandercock suggested that the dowel slots were located approximately in the centre of the side walls of Mr Polglase's track because in this position the dowels could best withstand bending forces on the track. He seemed to be suggesting that this positioning gave the track of the registered design a distinctive character because of the said functional advantage. I note though that Mr Polglase has not discussed this aspect of the dowel slots in his declaration, so I am inclined to conclude that the informant's evidence carries greater weight on this issue. Also, the registered owner did not dispute the informant's evidence that it is common knowledge to vary the position of the dowel slots. Furthermore, with regard to Mr Sandercock's submission, I imagine, in a situation where the bending force was acting down on the track junction, that it would be preferable to have the slots nearer the bottom of the track, as shown in the prior art. Thus I have difficulty accepting that there is any real advantage in the position of the slots in the registered design. Taking all these matters into account, I therefore conclude that this feature is a mere workshop variation.
In Rapee v KAS Cushions (1989) 15 IPR 577, at 590, the Federal Court indicated that "a feature of a design which is not an immaterial detail may still be a variant commonly used in the trade". So, even though I have left open the issue of whether the dowel slots feature is an immaterial detail, I have found this feature to be a mere workshop variation, and therefore this feature does not confer novelty or originality on the design.
Another feature which merits some discussion is the width to height proportions of the registered design and of the Hufcor track. Mr Polglase declares that the Hufcor track is "flatter and squatter" than his design, and at the hearing he and Mr Sandercock discussed how the track of the registered design was deliberately made narrower for the specific purpose previously referred to. It was also mentioned at the hearing that Mr Polglase's track uses "standard" size rollers, so, prima facie, it seems that these design criteria would result in a slimmer track.
In Benchairs v Chair Centre, supra, at 445, the UK Court of Appeal stated:
"In addition to attempting a detailed analysis of similarities and differences, we also have done our best to step back and consider the designs of the two chairs, on all too many occasions, separately, together, and each as a whole.
In this case I think it is useful to consider those comments on procedure used by the Court of Appeal.
Upon "separately" comparing the representations of the registered design and Exhibit GHS2, to my eye there is no discernible difference in the width-to-height ratios of the two sections. However, when they are placed side-by-side and closely compared, the registered design does appear to be slightly slimmer. This can be confirmed by measuring the height and width of each of the representations. My scaled measurements of the representations of the registered design and of the drawings and example track of the informant's exhibits result in ratios of 0.77 for the registered design and from 0.85 to 0.88 for the informant's exhibits.
The originality of a design should be determined by an "instructed eye" or a "trained eye", see L J Fisher v Fabtile Industries (1979) 49 AOJP 3611 at 3614 and Sebel & Co.v National Art Metal Co, supra, at 227; and in the present case it could be argued that a person with a "trained eye", a shopfitter or glazier for example, would make a close visual comparison and would notice that the registered design is slimmer than the prior art.
I am wary of this line of argument though. I think it is unlikely, under normal circumstances, that a person with a trained eye, or any casual observer, would compare the two representations closely enough or long enough to detect the difference in slimness. I had to make measurements to be certain that there is some difference, but in Malleys v Tomlin (1961) 35 ALJR 352 the High Court reversed a decision of the Supreme Court of NSW where the latter saw fit to consider scaled measurements of the Registered Design and the plaintiff's and defendant's articles.
The High Court stated, at 352:
"The answer...lies...in the recognition of what is essential to distinguish a design from a mere shape. It is, of course, true that every shape is not a design; there must be `sufficient individuality of appearance' to distinguish it from...'the fundamental form' of an article. Furthermore, the existence of that sort of individuality is to be determined by the eye and not by measuring dimensions."
In Dart v Decor (1989) 15 IPR 403, at 408, the Federal Court dealt with authorities which establish that, inter alia:
(i) first impressions are important in determining whether there is infringement of a design, and (ii) precise mathematical comparisons or matters of measurements or ratios are not to be applied as the test of infringement. I think these infringement tests are useful in determining novelty or originality in this case. Also, in the part cited from Benchairs v Chair Centre, supra, the Court of Appeal, in referring to considering the plaintiff's and defendant's articles "on all too many occasions", one could conclude that the court is warning against a prolonged and microscopic analysis.
I have indicated that, when considered "separately", the representations of the Registered Design and of the prior art appear to have a similar width-to-height ratio, and I think this is also the "first impression" one gets when comparing the representations. Thus, I am of the view that the slightly slimmer profile of the Registered Design is an immaterial detail when compared with the prior art.
I have found that the slimmer profile of the Registered Design is an immaterial detail, so that difference cannot confer novelty or originality on the Registered Design. However, I think it is also appropriate to consider the matter of whether the slimmer configuration of the registered design is a mere workshop variation, since this is an important issue in this case.
I have already discussed the registered owner's considerations in designing his track to be narrower than the Hufcor track. A slimmer track could be considered an improvement over the prior art if some "difficulties have been overcome" and some "ingenuity" was involved in creating the design to overcome the problems of the prior art; see for example Gadd v Mayor of Manchester (1892) 9 RPC 516 (to borrow from patent law). At the hearing Mr Polglase discussed how he had some commercial success with his design, and commercial success can be an indicator of the practical application of ingenuity. However, I was somewhat surprised when I first saw Mr Polglase's sample track (received after the hearing). The sample track does incorporate the Registered Design, but I was surprised because it does not appear to be slimmer than the Hufcor track; to me, it only appears to be smaller, in width and in height (I had assumed from submissions made at the hearing that it would be similar in height) and it uses smaller rollers than the Hufcor track.
Thus I reject Mr Sandercock's submissions relating to originality being in the slimness of the Registered Design. Since that slimness is not apparent in the article to which the design is applied, any advantage that the article has over the prior art cannot be because of a different width-to-height ratio. The evidence and submissions suggest to me that Mr Polglase's commercial success is based on his design simply being smaller than the Hufcor product. I consider this difference to be a mere workshop variation, and along with my finding that it is also an immaterial detail, I conclude that it cannot confer novelty or originality on the Registered Design.
I will now consider the other differences between the Registered Design and the prior art. Firstly, Mr Polglase lists 15 differences between his design and the Hufcor tracks, but I note that many of these are the same difference on each side wall of the track, so in effect there are only half this number of "real" differences. Secondly, I think these differences are all relatively small compared to the overall size of the track section, and none are features which would stand out as significant to the "trained eye" of the person skilled in the art. Finally, to my eye, these differences are immaterial when considering the design as a whole: the design as a whole is characterized by the five significant features referred to earlier, and these features are disclosed in the informant's prior art. The design lacks the "individuality of appearance" required by the High Court in Malleys v Tomlin, supra.
conclusion
I have found the registered design not to be new or original because it differs only in immaterial details or in features commonly used in the relevant trade from the known designs brought to the Registrar's attention by the informant. Thus I refuse to extend the term of registration of Registered Design No.117582.
Neither party made submissions on costs, the informant was not represented at the hearing, and taking all matters into account, I think it is appropriate that I make no award of costs.
John Welsh
Delegate of the Registrar of Designs
Attorneys for the registered proprietor: Sandercocks, Dandenong.
Attorneys for the informant: Philips Ormonde & Fitzpatrick, Melbourne.
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