Polyaire Pty Ltd v K-Aire Pty Ltd and Others No. Scgrg-96-2401 Judgment No. S193
[1999] SASC 193
•10 May 1999
POLYAIRE PTY LTD v K-AIRE PTY LTD and OTHERS
[1999] SASC 193
Civil
Bleby J
This is an action against the defendants for (inter alia) infringement of registered design number 110628. The design relates to an air-conditioning outlet director. The plaintiff pleads in its Statement of Claim (paragraph 25) that the design is and at all material times has been valid and subsisting. It alleges in paragraph 26 particulars of infringement by the defendants and of similarity of the defendants’ design to its own. Particulars of that pleading are not in issue.
The defendants deny the validity of the plaintiff’s registration and by way of counterclaim seek a declaration (inter alia) that the design is invalid, and seek consequential relief, including rectification of the register.
The first, second and third defendants have a common defence. The fourth defendant is separately represented but in respect of this aspect has identical pleadings.
That the plaintiff’s design is registered is not in dispute. The relevant question is whether the registration is invalid. Prima facie it must be taken to be valid as the Registrar appears to have been satisfied that it was a design which may be registered (see s23, Designs Act 1906).
The defendants have given particulars of the alleged invalidity of the plaintiff’s registration as follows:
“Particulars
21.3.1....... Design 2 was not new or original in that it did not differ or differed only in immaterial details or in features commonly used in the trade from designs registered, published or used in Australia in respect of the same article prior to the Priority Date. The Defendants will provide details of the said designs (‘the Prior Art”) in the reports of the expert witnesses which they are to file in this action (“the Experts’ Reports”);
21.3.2further or in the alternative, Design 2 was not new or original in that it was an obvious adaptation of the Prior Art. The Defendants will provide details of the Prior Art in the Experts’ Reports.
21.3.3....... the statement of monopoly, the statement of novelty and the representation in relation to Design 2 are each ambiguous and uncertain. The Defendants will provide details of the said ambiguity and uncertainty in the Expert’s Reports; and
21.3.4the statement of novelty in respect of Design 2 relates to and is a claim in respect of a method or principle of construction. The Defendants will provide details of the said allegations in the Expert’s Reports.”
The reference to “Design 2” is a reference to Registered Design No 110628. Those particulars are taken from the defence of the 1st, 2nd and 3rd defendants. A similar plea occurs in paragraph 1 of their counterclaim and in the defence of the 4th defendant (paragraph 26.3) and his counterclaim (paragraph 2). For convenience I shall refer to paragraph 21.3 of the 1st, 2nd and 3rd defendants’ defence.
A few other observations need to be made about that pleading. Paragraphs 21.3.1 and 21.3.2 are based on s17(1) paragraphs (a) and (b) respectively of the Designs Act 1906. There is some apparent confusion in those two paragraphs of the pleading, however, because what is referred to as “the Prior Art” in Paragraph 21.3.1 relates to details of designs in respect of the same article. The plea in Paragraph 21.3.2 can only relate to designs in respect of any other article. It seems to me that the Prior Art referred to will not necessarily be the same for each of those paragraphs.
“Article” is defined in s1(4) of the Act to mean any article of manufacture and includes a part of such an article if made separately.
The reference in Paragraph 21.3.4 to “a method or principle of construction” relates to the statutory definition of “design”. That is defined to mean “features of shape, configuration, pattern or ornamentation particular 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”. Thus, if a purported design in reality is merely a method or principle of construction, it cannot be registered.
The final point to be noted about the particulars pleaded is that the reference to details being provided in the experts’ reports arise out of an amendment to the pleading allowed by a Master at an earlier stage of the proceedings. The experts’ reports now relied on by the defendants comprise a report of Dr M Zockel dated April 1999 and a report of Professor J Redmond dated January 1999. I have been supplied with copies of those two reports.
The plaintiff now complains that notwithstanding the supply of the reports, the particularity of invalidity is still inadequate. In respect of paragraph 21.3.1 it seeks the following further particulars:
“In respect of paragraph 21.3.1, please identify each piece of prior art which constitutes the relevant trade and in doing so provide details of same. Doctor Zockel refers to use in homes, offices and the automotive industry. Please identify each piece of prior art with reference to one or all of the abovementioned categories.
Please specify the immaterial details which are referred to.
Please identify the features commonly used in the trade.”
One further observation needs to be made about paragraph 21.3.1 in particular. The paragraph, as does s17(1)(a) of the Act on which it is based, really contains two particulars of why the design is not new or original. It is alleged:
(a)That the design differs in only immaterial details from designs registered, published or used in Australia in respect of the same article prior to the Priority Date (“the Prior Art”); and
(b)The design differs only in features commonly used in the relevant trade from the Prior Art.
As I have already observed, the Prior Art referred to in this paragraph relates to designs in respect of the same article. The Prior Art referred to in Paragraph 21.3.2 refers to designs in respect of some other article. They are not likely to be the same, although this does not appear to be recognised in the two reports referred to in the pleadings. There is also some confusion in the plaintiff’s first request, in that for the purposes of the second limb of Paragraph 21.3.1, Prior Art does not constitute the relevant trade. The Prior Art refers to designs in respect of the same article.
In respect of the plaintiff’s second request, each of the reports identifies details of the design said not to be found in what is loosely identified as the Prior Art and which are depicted in the drawings forming part of the registered design. However, it is not clear whether either of the experts regards such differences as are identified as being “immaterial”. I realise that a decision as to whether they are immaterial ultimately lies with the Court, but to the extent that there are differences the plaintiff is entitled to know whether the defendants say they are immaterial.
So far as the plaintiff’s third request is concerned, there also appears to be some confusion in the report as to what is said to constitute “the trade”. The design is in respect of an air‑conditioning outlet director, and there is reference in the reports to the use of such directors in homes, offices and the automotive industry. It is not clear to me whether the experts are referring to one or all of these applications when they speak of “the trade”.
Accordingly, it seems appropriate that Paragraph 21.3.1 should be further particularised in the following manner:
(a)It should specify the details in respect of which the design differs from the Prior Art (as defined for the purposes of this paragraph) and whether it alleges that all or some (and if so which) of such differences are immaterial details.
(b)It should specify what is said to constitute the Prior Art for the purposes of this paragraph (i.e. in respect of the same article).
(c)It should specify what is the trade for the purposes of the paragraph.
(d)It should specify the features commonly used in such trade in respect of which the design differs from the Prior Art.
In respect of Paragraph 21.3.2 the plaintiff only seeks particulars and details of the Prior Art referred to in that paragraph. As that will not necessarily be the same as the Prior Art referred to in Paragraph 21.3.1, that is not an unreasonable request. Once that Prior Art is properly identified, it will be for the Court to determine, in light of the experts’ evidence as to whether the design in question is an “obvious adaptation” of that Prior Art. Accordingly in respect of this paragraph, notwithstanding that the plaintiff accepts that Prior Art has been identified, as it seems to me that this is not the same as that referred to in Paragraph 21.3.1, the plaintiff’s request should nevertheless be granted.
In respect of Paragraph 21.3.3 the plaintiff seeks the following further particulars:
“In relation to paragraph 21.3.3, please specify in respect of each of the statement of monopoly, the statement of novelty and the representation in what precise respect it is alleged that each of these is ambiguous, in what precise respect it is alleged that each of these are uncertain and how each or all of these matters impact upon the allegation that the design is not new or original.”
The ground of invalidity alleged in Paragraph 21.3.3 is not a ground which seems to have any obvious statutory origin. Presumably the defendants allege that taken together the representation, the statement of monopoly and the statement of novelty are capable of referring to more than one article, as s20(6) of the Act requires that a separate application for registration must be made of the design in respect of any one article or set of articles (s20(7)).
The plaintiff complains that there is nothing in the reports which suggests that the registration is capable of referring to more than one design. It is suggested that there ought to be particulars given of just what number of possible designs it is said can arise from the way in which these statements are expressed.
It remains to be seen precisely what the defendants propose to argue, but it seems to me that the plea in this paragraph could suggest that taken together the representation, the statement of monopoly and the statement of novelty are sufficiently ambiguous and uncertain not to constitute a design capable of registration, or alternatively they are ambiguous and uncertain in such a way that they are capable of application to more than one article, and the article in question is not sufficiently specified. Both the reports identify some ambiguity and uncertainty in the documentation. In my opinion it would not be reasonable to expect the defendants to specify the articles to which the design could possibly apply, if that indeed was the plaintiff’s submission. However, in my opinion Paragraph 21.3.3 should specify whether the defendants allege that the consequence of the alleged ambiguity and uncertainty is that:
(a)The purported design does not constitute a design capable of registration;
(b)The purported design applies to more than one article and is therefore invalidly registered; or
(c)Some other (and which) consequences follow.
The plaintiff’s request in respect of Paragraph 21.3.4 is as follows:
“In respect of paragraph 21.3.4, please provide details of the allegations that the statement of novelty relates to and is a claim in respect of a method or principle of construction. In doing so, please identify the method or principle of construction which it relates to.”
The allegation in Paragraph 21.3.4 has reference to the definition of “design” as not including a method or principle of construction. One of the reports suggests that the wording of the novelty statement and lack of design detail in the drawings suggests “a method of assembly rather than a specific design”. That is not a reflection of the phrase used in the definition of “design”.
I agree with Mr Whitington QC that a method or principle of construction in itself is not capable of further description or particularisation. What can be particularised, however, is the object of the method or principle of construction alleged, and I would be prepared so to direct.
I therefore propose to make the following order pursuant to r46.20:
That the first, second and third defendants file a more explicit pleading in respect of Paragraph 21.3 of the defence by specifying the following:
(1)... In respect of Paragraph 21.3.1 of the defence:
(a).... The details in respect of which the design differs from the Prior Art (as defined for the purposes of that paragraph) and whether it alleges that all or some (and if so which) of such differences are immaterial details;
(b)... What is said to constitute the Prior Art for the purposes of this paragraph;
(c)... What constitutes the “trade” for the purposes of the paragraph;
(d)... The features commonly used in such trade in respect of which the design differs from the Prior Art.
(2)... In respect of Paragraph 21.3.2, what is said to constitute the Prior Art for the purposes of this paragraph.
(3)... In respect of Paragraph 21.3.3, whether the defendants allege that the consequence of the alleged ambiguity and uncertainty is that:
(a).... The purported design does not constitute a design capable of registration;
(b)... The purported design applies to more than one article and is therefore invalidly registered; or
(c)... Some other (and which) consequences follow.
(4)... In respect of Paragraph 21.3.4, the object of the method or principle of construction alleged.
That the first, second and third defendants file a more explicit pleading in respect of paragraph 1 of the counterclaim including the same particulars set forth above as if the reference to paragraph 21.3 were a reference to paragraph 1 of the counterclaim.
That the fourth defendant file a more explicit pleading in respect of paragraph 26.3 of the defence by including the same particulars set forth above as if the reference to paragraph 21.3 were a reference to paragraph 26.3 of his defence.
That the fourth defendant supply a more explicit pleading in respect of paragraph 2 of the counterclaim by including the same particulars set forth above as if the reference to Paragraph 21.3 were a reference to Paragraph 2 of the counterclaim.
In view of the fact that this is a somewhat complex area and that the arguments addressed to me did not cover every point to which I have referred in these reasons, I give liberty to any party to apply further in respect of this order.
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