Standard Telephones and Cables Pty Ltd

[1988] ADO 2

In the Matter of the Designs Act 1906

‑ and ‑

In the Matter of Design Application No. 9915/84 in the Name of STANDARD TELEPHONES AND CABLES PTY. LTD.

DECISION OF THE REGISTRAR OF DESIGNS:
        The above application was lodged on 17 December, 1984 and sought registration of a design applicable to a "telephone subset".  The application was accompanied by a statement of monopoly in accordance with s.20(4) of the Act as follows:

"Monopoly is claimed in the shape and configuration of a telephone subset as illustrated in the representations."

The latter, however, show the two basic constituent elements of the telephone subset, the keypad and the handset, in different positions relative to each other viz.  the handset above, to the right, and to the left of the keypad.  The Designs officer considering the application objected that the applicant had in effect depicted three different designs and that therefore  two of them should be deleted.  As a consequence of this objection being maintained the applicant requested a decision of the Registrar on the question of whether the different orientations of the keypad and handset constituted a single design or not.
        In its response dated 17 March, 1987 to the first notice under reg. 14 the applicant commented as follows:

"With reference to Item 1 of the Reg. 14 Notice, the subset is designed so that the relative orientation of the keypad and handset may be altered to suit particular applications.  Thus it is envisaged that the handset may be mounted at the top, to the left, or to the right with respect to the keypad.  This is in fact achieved by rotating the keypad in relation to the rest of the subset.

The representations do depict a single subset with the handset and keypad in different orientations." (emphasis added)

Again, in its reply dated 7 May, 1987 to the second Official Notice the applicant reiterated:

"On this point the Applicant submits that there is only one article which is intended to be sufficiently versatile to permit the relative positions of handset and keypad to be changed depending on whether the phone is used e.g. as a wall phone or a desk phone.  We would stress that the same phone can be used in either position, the keypad being rotatable, i.e. the representations are of one article only." (emphasis added)

It is not clear to me what is meant here by the expressions "rotating" and "rotatable'.  If what is meant is that the article can be varied in the course of manufacture so as to produce three different final configurations of the keypad and handset according to whether the purchaser wishes a left‑hand set or right‑hand set etc. then I should have to conclude that there are three different designs rather than one.  Even if what is meant is that the article is manufactured in one single form with a keypad that can be varied in relation to the handset by the user according to convenience I should still have to decide that there were three different designs involved.  There is no evidence before me to show which of these two possibilities is the case.  Certainly there is nothing in the representations to indicate that the keypad could be rotated in relation to the handset by the user.  In either case, however, as I have said the finished article would, either on display or in use, present to the eye three distinct configurations.
        In the applicant's letter dated 7 May, 1987 already mentioned above there was a reference to the definition of "design" contained in s.4 of the Act:

"Turning to the definition of "design" it is seen that "design means features of shape, configuration ... applicable to an article ..."

He then went on to add:

"We submit that in the present design the three shapes or configurations are applicable to the one article and so constitute the design of the article.  In this matter we believe that the view expressed in the Examiner's report of 22nd April 1987 that each configuration represents a design is not the correct interpretation of the definition.  The definition refers to the features of configuration applicable to an article as constituting the design."

It seems to me to follow from the applicant's own words that if there are three shapes or configurations applicable to one article then in terms of the definition quoted there must be three different designs involved.  The applicant appears to confuse the design itself and the article to which the design is to be applied, a clear‑cut distinction which the courts have habitually made.  A well known explanation of the difference was given by Buckley L.J. in Dover Ltd. v. Nu_{_$_"rnberger Celluloid‑Waren Fabrik Gebru_{_$_"der Wolff (1910) 27 RPC 498 at 503:

"Design means, therefore, a conception or suggestion or idea of a shape or of a picture of a device or of some arrangement which can be applied to an article by some manual, mechanical, or chemical means.  It is a conception, suggestion, or idea, and not an article, which is the thing capable of being registered.  It may, according to the definition clause, be applicable to any article whether for pattern or for the shape or configuration or for the ornament thereof (that is to say of the article) or for any two or more of such purposes.  The design, therefore, is not the article, but is the conception, suggestion, or idea of a shape, picture, device, or arrangement which is to be applied to the article, by some one of the means to be applied to the article, by some one of the means mentioned in the definition clause.

To the same effect are the words of Lindley L.J. in Re Clarke's Registered Design (1896) 13 RPC 35 at 358:

"This Act is confined to designs applicable to manufactured articles, and to the application of such designs to such articles.  Again, the Act does not apply to the things to which a design is applied; the Act applies to the design applied to them.  The distinction is obvious enough when the design is for a pattern or ornament; but when, as in this case, the design is for the shape of a thing, the distinction is reduced to the difference between the shape of a thing and a thing of that shape.  A design applicable to a thing for its shape can only be applied to a thing by making it in that shape.  A design for the shape of something is what is meant by one section when shape is in question; and a registered design for a shape of a thing is infringed if that thing is made in the shape shown by the registered design."

In terms of this established distinction and in light of the applicant's stated concession that there are three shapes or configurations applicable to the one article I must find that the application has been made in respect of three separate designs.  The notice of objection pursuant to reg. 14 was therefore validly given and the objection is maintained.  The applicant may of course amend the application pursuant to s.22B of the Act and lodge divisional applications in terms of s.22C.

(M.A. HOMANN)