Turbo Tek Enterprises Inc. v Sperling Enterprises Pty Ltd

IN THE FEDERAL COURT OF AUSTRALIA

) )

VICTORIA	DISTRICT	REGISTRY	)	VG No.	192	of	1987
)

GENERAL DIVISION

Between: TURBO TEK ENTERPRISES INC.

and AUTOPACE PTY.

LTD.

(Applicants)

&A:	SPERLING ENTERPRISES PTY.
LTD. and EWAN SPERLING

(Respondents)

Judse Maklns Order Ryan J.

Date of

Order:

August

1987

Melbourne

Made:

Where

MINUTE OF ORDER

UPON THE RESPONDENTS by their counsel undertaking until the hearing and determination of the application herein or

further

order

not

communicate

disseminate

any

representation in the terms or to the effect that:

(i) the

United

States

retail

price

the

"Turbo-Wash"

spray device is USS9.99,

(ii) the

current

retail

price

Australia

the

AND UPON THE APPLICANTS by their counsel undertaking to pay to any party adversely affected by the interlocutory orders set forth hereunder such compensation (if any) as the court

thinks just in such manner

as the court directs

IT IS

ORDERED THAT:

1. The

respondents

restrained

until

the

hearing

and

determination of the application herein or further

order, whether by themselves, their servants or agents

or	howsoever otherwise from advertising, displaying,

exposing or

otherwise offering for sale, selling

supplying any spray washer devlce the same as

substantially identical with Exhibit	1 tendered herein
on 6 August 1987.

Unless any of

the times set out in this paragraph be

enlarged by mutual consent of the parties:

(1)

The applicants on or before 24 August

1987

file and serve	a Statement	of Claim by 24th
August 1987.

(11)

The respondents on or before

31 August 1987,

file and serve

a defence and any cross claim.

3 .

(ill)

The applicants on or before

7 September 1987

file and serve	a reply and defence to cross
claim.

(iv) Both

parties

file

and

serve

affidavits

. .

documents on or before

14 September 1987 and

give

inspection

saving

all

just

claims

privilege on or before

18 September 1987,

(V)

Any further affidavit evidence in chief to be

relied upon by the applicants be filed and

served on or before 25 September 1987 and any

further affidavit evidence to be relied upon

by the respondent in answer

be filed and

served on or before

9 October 1987 and any

further evidence in reply by the applicants be

filed and served on or before

16 October 1987.

3 .

The

directions

hearing

herein

adjourned

to 16

October 1987.

4 .

The costs

of and incidental to the applications for

interim

and

interlocutory

injunctions

and

the

directions

hearing

herein,

including

all

reserved

costs, be costs in the substantive application.

4 .

5. Liberty be reserved to any party to apply for further

directions herein as he or

it may be

advised on not

less than

48 hours notice

in writing to the other

parties.

NOTE: Settlement and entry

of orders is dealt with in Order

36 of the Federal Court Rules.

IN THE

- - FEnERAL

COURT OF AUSTRALIA )

)

VICTORIA	DISTRICT	REGTSTRY	)	VG	No. 192 of 1987
)

DIVISION

GENERAL

)

Between: TURBO TEX ENTERPRISES INC.

and AUTOPACE PTY. LTD.

(Applicants)

A A : SPERLING ENTERPRISES PTY.

LTD. and EWAN SPERLING

(Respondents)

W: Ryan J .

U: 17 August 1987

REASONS FOR JUDGMENT

This is an application for an interlocutory injunction to restrain conduct which is alleged to be in contravention

of s.52 of the Trade Practices Act 1974

("the Act").

The applicants also invoke the court's jurisdiction in respect of associated matters and seek injunctive relief for infringement of the first-named applicant's monopoly In a

design registered under the Desisns Act 1906

("the Designs

Act") and for passing

off.

Turbo-Tek

Enterprlses

Inc.

("Turbo-Tek") which

lncorporated

the

Unlted

States

of Amerlca is the

proprletor of a deslqn reglstered under the Desisns

Act, No.

96482.

That

reqlstration

was

granted

on an appllcation

lodged

on 17 September

1985.

advertlsement

for

the

product embodying that design descrlbes	It In the following
terms :

"New Turbo-Wash is the easy-to-use high pressure

cleaner that simply clicks onto your garden hose.

Turbo-wash

uses

specially

formulated

suds

power away dirt on cars, blkes, patios and even

second storey windows.

... The

ultimate power

pressure washer.

Turbo-Tek's operations are based in California and

relies on internationally.

overseas

distributors

market

Its

product

For

this

purpose,

appointed

Autopace

Pty.

Ltd.

("Autopace") to

its

exclusive

Australian

distributor to promote and sell "Turbo-Wash". Autopace is

itself a manufacturer and distributor throughout Australia

an extensive range of automotive parts and general hardware.

In November 1986 Autopace received its first shipment of the

"Turbo-Wash" device for release onto the Australian market.

In June 1987, it

commenced

extensive

campaign

advertislng

the

product

television

and

daily

newspapers.

On 20

July 1987 Mr. Barlow,

the Internatlonal Sales

Manager for Turbo-Tek,

Mr. Welch,

the General Manager of

3 .

Autopace, and a Mr.

Relnstem, one of the CO-deslgners of the

Turbo-Wash

devlce

attended

the

Australian

Auto

Parts

Accessories trade show at the Sydney Showgrounds. They there

noticed a display

stand

conducted

the

first-named

respondent, Sperllng products on display were several pressure spray

Enterprises

Pty.

Ltd.

Amongst

other

washmg

devices, one of whlch was enclosed in clear bllster packaglng

on a cardboard backing.

That

backing bore the inscrlption

"Cosmic Aqua Blaster

- Suds and rinse spray gun." On

22 July

1987 when Mr. Barlow agaln attended the trade show

he met Mr.

Quenton Pilllng, advlser to the United States Consul in New

Zealand. Mr. promoting American products

Pilling

who

was

there

for

the

purpose

in	Australia and New Zealand,

provided Mr. Barlow

with a brochure which he claimed to have

received from Sperling Enterprises

Pty. Ltd.

The brochure, under the heading "Sperling Enterprises

Pty.

Ltd.

Newsletter" depicbd an illustration

the

respondents' product and contained, amongst other things, the

following representatlons:

"Now you can buy

a high power car washer

reasonable price.

We now make it possible for

you to retall the Cosmic Aqua Blaster for	: $35 -
$40 (Recommended retail price)
We consider the Cosmic Aqua Blaster to be the

best car washer

Australia.

Just

look

and

compare its features:

*	Practical elegant styling with pistol grips for ease of use.

rt Uses

all

famous

Australian

'wash

and

wax'

liqulds.

N . B .

also compatible with 'Turbo

Wash' preparatlon washlnq llqulds.

rt Attractlve

clear

blister

packaging

for

unrestrlcted viewinq of product.

Realistic retail price point of

$35-$40.

A	Enjoy the benefits of our heavy advertlslnq campaign programmed for this summer season."

The brochure went on to invite the reader to:

"Compare these facts about the other available

brand product 'Turbo Wash'

Turbo Wash In

the

U.S.A.

Retall

price

$9.99 after

USD

$5.00

rebate.

Yet

the

same

'Turbo-Wash'in

Australia

Retail Price (current) AU

$50.00.

Just see for

yourself from these local

U.S.A. advertisements."

There

followed

two

advertisements

which

were

apparently

reproduced

from

American

publications

support

the

respondents' claims.

It has been the distribution of this brochure and the

fact that the respondents were offering for sale

product

which the applicants claim

is identical with or substantlally

the

same

the

"Turbo-Wash" device which prompted the

applicants to apply on

24 July 1987 for interim injunctions.

In the event, on that

day, on giving

the usual undertaking

damages

they

were

granted

an interim

in]unctlon

restraining the respondents:

' I . . . until 4.15 p.m. on Thursday 30th July

1987 or

further order whether by themselves, or by thelr

directions, servants,	agents,	howsoever	or
otherwlse from:

(a)

distrlbuting or disseminating the brochure

ldentified

Schedule

the

application herem;

(b) communicating

dlsseminating

any

representations	in	the terms or to the
effect that:-

(i)

Cosmlc

the

Aqua

Blaster

'compatible with Turbo-Wash';

(il) representlng that the United States

retail

price of the

'Turbo-Wash'

spray washer device

1 s USS9.99;

(iii) representing that the current retail price in Australia of the 'Turbo-Wash' spray washer device 1 s AS50.00. "

To expedite

the

hearing

the

application

for

interlocutory rellef , I also abridged all times specified by

the Rules of the Court and gave directions as to service to

enable that applicatlon to come on for hearing on 30 July

1987 in Sydney.

On 30

July 1987

the respondents were represented by

their solicitor, Mr. Jenkins and after hearing some argument,

necessarily

limited

because of the

short time which Mr

Jenkins had been afforded to obtain instructions, I

granted

an injunction restraining the respondents until 4.15	p.m. on
6 August 1987 or further order from:

"(a)

advertising,

displaying,

exposing

otherwise offering for sale, selling or

supplying any spray washer device the same

as or substantially identical wlth any of

the

devices

respectlvely

depicted

Schedules 1, 2 and 3 to the appllcatlon hereln;

communicating or

disseminating

any

representations In the terms or to effect

that :

(i) the

United

States

retall

price

the 'Turbo-Wash' spray washer device

is US$9.99;

(li)	the	current retail price in
Australia of the 'Turbo-Wash' spray device 1 s AS50.00. "

On the matter coming back before me on

August 1987 the

applicants were again represented

Mr.

N. J.

Young of

counsel, and respondents. At the outset

Mr. Catterns

counsel

appeared

for

the

of the hearing on that day

Mr.

Catterns intimated that his clients would undertake until the

hearing and determination

of the substantive application to

refrain from the conduct from which they were enjoined by

paragraph (b) of the order of 30 July 1987. Accordingly, the

issue between the parties for interlocutory purposes has been

narrowed to one of whether the applicants are entitled to a

continuation

until

the

trial

the

application

the

restraint imposed on the respondents by paragraph (a) of the

order of 30 July 1987. The resolution of that

issue

requires, in applicants' claim that the respondents have infringed,

turn,

analysis

and

evaluation

the

have threatened

infringe

the

first-named

applicant's

monopoly in the design registered under the Desiqns Act 1906

No. 96482 in respect

of "a pressure sprayer".

Ultimately, the

task

for

the

court

will be

determine

whether

the

design

applied

that

allegedly

infringing devlce is a "fraudulent or obvious imitation" of

the applicant's registered design within the meaning of

s.30(1) of the Desisns Act. A related question raised by the

respondents is whether they

are entitled

an order for

rectlfication of the register kept pursuant to the Desiqns

Act by expunging the entry in respect of Turbo-Tek's design

for its lack of the novelty or originality required by

3.17

of that Act.

It has been accepted by counsel on each side that, for

the purposes of the present applicatlon for interlocutory

relief, the Court should consider, first, whether, on the evidence so far adduced, the applicants have demonstrated a serious question to be tried, and, secondly, if they have,

whether the balance of convenience favours the grant of

interlocutory

injunction.

See

e.g.

The Australian

Coarse

Grains Pool Ptv. Ltd.

The

Barlev Marketincr Board of

Queensland (1982) 57 ALJR 425.

Accordingly, it is neither necessary nor appropriate

for me to reach

a concluded view on

whether the product which

the respondents propose to import is

an obvious or fraudulent

imitation of Turbo Tek's design. It is sufficient for the

applicants to persuade me that a serious question

has

been

raised as to whether an infringement of the registered design

has occurred In one

or other of those ways. As Lockhart

observed In

Flrmaqroup

Australia

Ptv.

Ltd.

v. Bvrne &

Davidson Doors (Vic) Ptv. Ltd. (1986) 67 ALR 29 at 41:

"Whether unitations are obvious

or fraudulent

one sense raises separate questions, but they

overlap.

For an allegedly

infringing

article

be an obvious

imitation of a registered design it must

be "a copy apparent

to the eye notwithstandlng slight

differences"; Mallev Ltd.

v. J. W. Tomlin Pty. Ltd. (1961) 35 ALJR 352

at 354.

The relevant certificate of registration recites that

"Monopoly I s

claimed in the shape and configuration of A

PRESSURE

SPRAY

WASHER

and

the

as shown

the

representations." Registered design

No. 96482 shows a single

cylinder from the top front of which protrudes a telescoplcally extendible barrel of three sections, tapering

towards

nozzle. At the rear of the cylinder, likewise

mounted

eccentrically

an inlet

valve

designed

for

connexion to

garden hose.

The registered design also

depicts,

the

front

the

cylinder

mounted

directly

beneath the barrel, a triangular knob or tap apparently for

regulating the

flow

detergent, and, Immediately below

that, a circular cap covering an aperture through which the

cylinder I s filled with detergent.

A further exhlbit,

JNB2, is

another pressure washlng

device which has been asserted to be identical to that

dlsplayed by the first respondent at the Sydney

Trade Show.

The allegedly infringing article has

a similar single

cylinder with

barrel protruding eccentrically from the front and in line

with the top of the barrel. The top of the barrel is clean,

not cluttered by changeable spare nozzles or a pair of

tri-sectional

telescopically

extendible

slightly raised projections like the registered design.

The

most

signiflcantly

different

feature

the

allegedly

infringing article is

a "pistol-grip'' handle whlch depends

from the cylinder

roughly a right angle to it.

The

attachment by which

domestic hose can be

]olned to the

device 1s located at the bottom of the handle which is hollow

to permit the passage of water to the cylinder and thence

along the barrel and out through the nozzle.

A stop cock is

incorporated in that attachment to enable the

]et

of water

from the hose to be turned on and off.

As a result of the

addition of the

handle,

the rear of the cylinder on the

accused device is

free of the water inlet valve and stop cock

which are depicted on the rear of the cylinder in the

registered design.

However,

there is a knob mounted on the

rear of the cylinder of the accused device for shutting

and off the ad mixture of detergent to the water ejected from

the nozzle of the spray.

10.

The deslgn, has at the front of the cylinder

allegedly infringing device, like the reglstered

a knob

tap

mounted directly beneath the barrel for controlling the

admixture of detergent

water.

However,

that

knob

1 s

rectangular

rather

than

triangular

shape.

Immediately

below that

circular cap which can be removed to

introduce detergent to the cylinder. At each edge

the

front of

the cylinder and mounted centrally are the stored

alternative

nozzle

tips

which

the

registered

design

protrude from the top of the cylinder. As

on the registered

design, the cylinder

of the allegedly infringing device is

encased by

an annulus approximately one centimetre wide.

However, on the registered design the annulus

is at the front

extremity of the cylinder and serves

to enlarge the face of

the cylinder on which

are

mounted the barrel, detergent

regulator and reservoir cap. By contrast, the annulus on the accused article is toward the rear of the cylinder and flows into the "pistol-grip'' handle.

In an appropriate case the court may form its visual appreciation of the registered design and the alleged copy instructed by expert evidence. Thus, in Firmasroup Australia

Ptv. Ltd. v. Bvrne

€4

Davison

Doors (Vic) Pty. Ltd. (supra)

Lockhart J. observed, at p.37:

"It is for the court to determine the meaning of

design in any proceedings under the Designs Act whether the central question be the meaning of

the

design,

novelty

or infringement.

Some

11.

designs are simple

SI-I

that the court needs

expert

assistance

to interpret

them.

Other

deslgns are complex and judges requlre technlcal

assistance to understand them. Such evidence

1 s

plalnly admissible but ultlmately

it 1 s for the

court

rule

on the

meaning

a design.

Slmilarly, the understanding and interpretation

of prior art may call for expert assistance to be

provided to the court for similar reasons. On

- the other hand, prior

art may be a falrly simple

matter in a particular case, requirlng little or

no technical evidence.

It goes, I think, too far to say that questions of infringement must be determlned by reference to the eye of the consumer or of the relvant

industry or

trade because that comes perilously

close to asserting

that the determination of

questions of infringement depend on the evidence

of such persons and cannot be determlned by the

court itself. On the other hand I see no

objection in an

being received from persons in the relevant trade

or industry or members of the public directed to

appropriate case to evidence

the question of

infringement; but it is for the

court to determine that question	with or without
such evidence."

With a view to

providing

instruction

that

kind the

applicants have relied on evidence of expert opinion from Mr.

Bayly, a local expert in design, and Professor Marinissen,

the

Professor

Industrial

Designing

the

Technical

University of

Delft.

Professor

Marinissen's

evidence

was

given in the course of proceedings taken in the Netherlands

by Turbo-Tek for infringement of a design substantially

similar to, if not identical with, its Australian registered

design, by

importation

a "Squirt Gun" high pressure

cleaner of Taiwanese manufacture, which, I infer, was to

the

same design

the article which the present respondents

propose to import into Australia.

The relevant

concluslons

reached

Professor

Marinissen, as stated

by him in translation, were:

"A first global look learns already the striking

resemblance of	th1s	product	with	the	'Turbo
wash'.

The	technical appearance, obtained by the same

elements such as storage cylinder, nozzle and

colour

scheme

make

one

rapidly

think

the

'Turbo Wash'.

The fact

that to the 'Squirt

Gun'

a grip was

added hardly diminishes the resemblance; the main

elements are present and can be seen.

The

grlp

should be seen

as a

detalling as

is also

present at the water inlet

of the 'Turbo Wash'.

Striking is the choice of the proportions and

dimensions of the storage

cylinder

and

the

nozlle.

The storage cylinder

of the 'Squirt Gun'

has a diameter of over

71 mm and a length up to

the collar of 93	mm; for the "turbo Wash" these
dimensions are 71	mm and 96 mm respectively. The

difference between the two products as regards

diameter of the three components of the nozzle is

only 0.5 mm at the most and also the total length

of the two nozzles is almost identical. Even the

small step at the position of the passage to the

storage cylinder to the nozzle is identical in

that the device under the Trade Mark 'Squirt Gun'

the two designs. ... I come to the conclusion

cannot be held to constitute

new,

original

work.

essential points the design of this

product

shows a colorable

imitation of the

product 'Turbo Wash'."

Mr.

Bayly

made registered design with the allegedly infringing article which

a comparison

Turbo

Tek's

Australian

the

first

respondent

proposes

market

under

the

name

"Cosmic

Aqua

Blaster".

The relevant

paragraphs

his

affidavit are:

"13. After inspecting the registered design and

the Consmic Aqua Blaster

I formed the view

that

the

overall

configuration

the

Cosmic

Aqua

Blaster

was

substantlally

similar to that of the registered design.

The

feature3

which

I observed

strikingly similar which serve to give the

Item a machine gun-like appearance were:

the

appearance

and

proportions

the

cylindrical

barrel;

the

positioning,

proportion

and

appearance

the

extendable wand and

the eccentric mounting

of the wand on the

barrel, the shape of

the nozzle at the wand's extremity; the shape of the control taps for water and detergent supply positioned on the end

face of the barrel from which the wand

extends.

14 .

I also

observed

certain

design

features

which

distinguished

the

Cosmic

Aqua

Blaster

from

the

registered

design,

of the water inlet valve on both items.

although these, in my opinion, are minor design; the difference in the positioning

variations. These are: slight differences

in the dimensions of the component parts

of both items; the handle of the Cosmic

In	the case of the Cosmic Aqua Blaster

this valve is positioned

the base

the

handle

device

whereas

the

registered design these

are

shown to be

located on the base or the rear face

the

cylindrical

barrel.

Other

minor

observable differences are the type

sockets

used

for

the

hose-insertion

section

the

attachment,

and

the

graduated appearance of the tip section of

the wand.

15. My overall impression was that the Cosmic

Aqua Blaster bore

a striking resemblance

to the registered design drawings. This impression derives from the substantially

similar shape of the cylindrical

barrel

with its

extendable protruding wand and

nozzle tip, together

with the shape and

location

the

water

and

detergent

opening and control tap devices common to

both

items.

Overall

the

Cosmic

Aqua

Blaster replicates the

machine

gun-like

appearance constituted by

the barrel and

wand

features

which

confer

upon

the

registeed

design

obvious

its

distinctiveness.

16.

Whllst the addition

of the handle device,

and the dlfferent shape and positioning of

the water inlet valve

on the Cosmic Aqua

Blaster represent dlfferent deslgn features, they do not, in my view, detract

from the overall

strlkmg

similarity in

appearance of both items."

Mr. Bayly on the assumption that the "Cosmic Aqua Blaster''

identical

with

the

"Squirt

Gun" exammed by

Professor

Marmissen indicated that:

"In essence I agree with the opmions expressed by

Professor Marinissen on page 4 of that document

to the effect that in essential points the deslgn

of, in this case, the Cosmic Aqua Blaster shows

colourable imitation of the product "Turbo-Wash''

as represented in the registered design drawings.

I	also agree with Professor Marinissen's view

that

within the restrictions

imposed by the

technical

functional

and

aspects

manufacturing, It would have been quite possible

have

produced

another

design

without

compromising

the

fitness

and

quality

of the

product.

The respondents

relied

the

evidence

Mr. Redmond,

another expert in industrial design, who compared Turbo-Tek's

registered design with an example of the allegedly infringing

artlcle

bearing

the

name

"Jet

Gun

Washer".

Mr. Redmond

identified

the

three

major

components

the

article

disclosed by the registered design and the "Jet Gun Washer"

as "a barrel or wand that concentrates and

aims the water

jet, a container for soap and

a hose connection for the water

supply." He first addressed himself to the nature of the

articles and its effect in determining their configuration,

having noted that

"the configuration

of the three major

15.

components and some

the minor parts are to some extent

determined by the nature of the

article and to some extent by

design

sholce. " Mr. Redmond

then

made

the

following

assessment of the design registered No. 96482, a "Turbo-Wash"

device said to be made to that

design, and the

"Jet Gun

Washer"

"In respect of

the design applied in the Design

Registration

No.

96482,

except for the aspects

that

may

relate

configuration,

design

confined to the detailing

of the wand/barrel end

of the

soap

container;

the

placing

the

alternative nozzles on the soap container;

the

detall at the rear of the soap container	-	the
secondary soap insertion point; hose coupling;

the detailing of

the control knobs, container

caps and nozzles;

as well as the detailing of the

ends of the wand/barrel segments. The aesthetics

of the Registered

Designs

are

relatively

unsophisticated and have what I would term

'engineered'

appearance.

This may be by

accident,

in that an engineer without visual

skills may have designed the product, considering

only

mechanical

and

production

engineering

factors, or it may be that it was designed by an industrial designer to have the appearance of an 'engineered' rather than 'styled' product.

Comparison of the Design Registratlon 96842 with the design applied to the Jm GUN PlAAsHER reveals

a	different configuration of the parts of the

article, in that an additional element, a pistol grip handle has been introduced at right angles to the soap container - wandlbarrel axis, with

the hose coupling being at the end of the pistol

grip, at right angles to

the

water line in the

Registered Design. This pistol grip gives the

product a pronounced

'gun'

'pistol'

appearance which is different to	the	appearance
of the Registered Design.

There

are

similarities

aspects

the

Registered Design 96842 and the JEX GUN W?iASH?ZR,

principally the relationship

between the axis of

the

wandlbarrel

and

the axis of the

soap

container, and the proportions of the two parts,

as well as

the layout of the

control and

cap at

16.

the wand/barrel end of the

soap

contamer,

however, as has been prevlously maintalned some

of these aspects are matters of the nature of the

artlcle rather than design.

In addition

to the difference of

the overall

conflguration of

parts and the addltlon of the

pistol grip handle on the JET GUN WASHER,

there

are differences in

the

design of

the control

knobs, contamer cap, hose coupling, nozzles and

soap container.

There has also been placed before the court by both sides

body of prior

art

which

substantially

the

same

and

consists of extracts, including drawings, from records	in the
United States Patent Office related to articles variously

described as a "hose mounted fluid mixing sprayer",

a "fluid

operated

spraying device", a "spray

gun

for

vlscous

materials"

"detergent dispensing device" and the like.

Examination

that

material

reveals

that

each

device

incorporates

what Mr. Redmond

called

the

three major

components, namely

a hose connection, a container for soap or

detergent and a

barrel or nozzle from which the mixture

water and detergent is expelled. However, peruse of the

prior art also discloses

considerable diversity in the

design, comparative proportions and arrangement

those

three components. In

some, a compact hose inlet and nozzle

are mounted on top of a large jar-like detergent container. In others, the outlet valve or nozzle 1s attached to a

non-rigid conduit from the detergent reservoir. Some have	a
wand or barrel not unlike those on the present registered

design and the allegedly infringing article, but with

a quite

different

location

and

proportion

relation

the

17.

detergent reservoir.

At least two examples of the prlor art

have "pistol grlp" handles like that adopted for the accused devlce but mounted In a maredly dlfferent configuration and

proportion to the nozzle and detergent

contamer.

. -

It was pointed out by Mr. Catterns for the respondents

in the course of argument that Turbo Tek mlght, pursuant to

s . 2 0 ( 4 ) of the Deslsns Act, have caused its application for registration of its design to be accompanied by a

statement

of monopoly in respect of some more limlted aspect of its

design than the "shape and configuratlon of a pressure spray

washer".

I accept that Turbo-Tek's adoption of such

wide

statement of monopoly requires the court

compare the

allegedly infringmg article as a while with the totality of

the registered design. Similarity in one or two features

such as

the barrel or detergent cylinder, will not entail

that a

device is

obvious imitation of the reglstered

design. For the court to

find- obvious imitation in a

case

like this, the allegedly infringing article

as a whole must

present itself to the eye	as a copy of the whole	of	the
registered design.

The

result of a visual

comparison

the

first

respondent's device with the registered design depends,

the

expert

evidence

suggests,

whether

one

struck

principally by the similarity in the barrel and detergent

cylinder, or principally by the presence of the "pistol

18.

grlp", and the absence of

a rear mounted inlet valve in the

allegedly infringing article.

I am satlsfied at least that

there is a

serious question as to whether the features

simllarity are not so striking

as to lead on balance to the

conclusion that the first respondent's device

is an apparent

. .

copy of the registered design. Since the respective physical

features of the respondent's device and the registered deslgn

can be appreciated

as well now

as they could at the trial of

the application, and since the expert evidence

1s unlikely to

alter

significantly In content

effect,

I might

have

expressed a concluded view of my own on this question had the

applicants' case for infringement turned solely on whether

not

there has been an obvious

imitation of Turbo-Tek's

registered design.

However, I am persuaded that there

is also, on the

evidence as it stands at present, a serious question whether

the

Taiwanese

manufacturers

the

allegedly

infringing

article have not been guilty of fraudulent imitation of the

registered

design.

fraudulent

imitation

has

been

characterized by the High Court in Mallevs Ltd. v. J. W. Tomlin Pty. Ltd. (supra) at 854 as "a copy with differences

which

are

both insubstantial but which have been made to disguise the

apparent

and

not

so slight as to

copying". The concept has been further elaborated

as follows

by Lockhart J.

in Firmasroup Austrlia Pty. Ltd. v. Bvrne

Davison Doors ( W C ) Ptv. Ltd. (supra) at 41:

19.

“A closer correspondence

between

the registered

design and the accused design

1 s

necessary to

satisfy

the

test

obvlous

imitation

than

fraudulent

Imitation.

using

the

phrase

‘fraudulent

imitation’

Parliament

doubtless

contemplated

imitation

that

fraudulent

without bemg obvlous. ... Vlsual

comparison

will establish whether the

offending design

1 s

the registered design or

obvlous imitation of

it but something more is required to establish

whether there has been a fraudulent imitation.

A design may be	an obvious imitation within the
meanmg of 5.30	notwithstandlng that the person

who puts the obvious imitation on the market may

not know of the registered design. A

fraudulent

imitation

presupposes

a knowledge

the

registered design and making use

of it:

Dunlop

Rubber Co. Ltd.

v. Golf Ball Developments Ltd.

(1931) 48 RPC 268 at 279 per Farwell

J. and Lewis

Falk Ltd. v. Jacobowitz (19441 61 RPC 116.

The

use of the word fraudulent in the Act

is perhaps

somewhat unfortunate

because fraudulent does

not

necessarily connote dishonesty; neither dishonest intent nor a deliberate or conscious intention to

copy

is a necessary

element.

The essence of

fraudulent imitation is that the respondents’

design has knowingly, consciously

or deliberately

been based on

derived from the registered

design: Grafton v. Watson (1884) 50 LT (NS) 420; Push v. Rilev Cvcle CO, supra; Lewis Falk v.

Jacobowitz, supra. In Dunlop Rubber

C o .

Ltd.

Golf Ball Development	L t d .	Farwell J.	said	at
~~

- _

pp.279 and 280: ‘Now with resard to the two words

‘fraudulent’ or ‘obvious’, in

judgment

‘obvious‘ means something which, as soon as you look at it, strikes one at once as being so like the original design, the registered design, as to be almost unmistakable. I think an obvious

Imitation is something which

is very close

to the

original design, the resemblance

to the original

design being immediately apparent

the

eye

looking at the two. With regard

the

word

‘fraudulent’, fraudulent I think does pre-suppose a knowledge of the registered design. I think it would be difficult for a court to come to the

conclusion

that

imitation

was

fraudulent

unless

the

court

was

satisfied

that

the

registered design had been known

t o the author

the alleged infringing

design, and further, it

seems to me

that ‘fraudulent’ imports something

in the nature of making use of

the

registered

2 0 .

design.

does

not

necessarily

import

deliberate intention to steal the property

of the

owner

the

registered

design.

It does

not

import any intention to be fraudulent, because

person may be the author of a fraudulent imitation believing perfectly honestly that he has so altered the registered design as to make

them two different

designs, and so far as his own

mind and his own intention are concerned,

he may

honest

that

sense.

But fraudulent

imltation seems

to me to be

an imitation which is

based

upon, and deliberately based upon, the

registered design, and is an imitation which may be less apparent than an obvious imitation; that

is to say. you may have

a more subtle distinction

between the registered design and

fraudulent

imitation,

and

yet

the

fraudulent

imitation,

although it is

different in some respects from

the original and in respects whlch render it not

obviously an imitation may

yet

be an imitation

perceptible when

the

two designs are closely

scanned and accordingly

an infringement."

The inference

that

the

Taiwanese

manufacturers

the

allegedly infringing article had knowledge of the design

the Turbo-Wash device is

almost inescapable in the light of

the following evidence given by the second respondent,	Mr.
Sperling:

"When I was there

(in Taiwan) in February

(1987)

when I mentioned they had prototypes, the patent

rights were mentioned because they were guns

without the modification this

has (indicating the

accused article).

They were certainly complete

look-a-likes to the original Turbo-Wash".

The inference of intentioned imitation is reinforced by the

the Turbo-Wash device made in accordance with the registered

allegedly

infringing

article

the

fact

that

design

is composed of black plastic with

the

nozzle tip,

stored alternative nozzle tips, detergent cylinder cap and

21.

control

knobs m red

plastic.

Mr. Catterns f o r

the

respondents argued

that the adoption of such

strikingly

slmllar colour scheme for the Taiwanese product signlfles the

absence of any belief by its manufacturers that they were

infringing

any

rights

Turbo

Tek.

Had

there

been

conscious intention to infringe,

the argument went,

the

Taiwanese manufacturers would have been likely to camouflage the infringement by putting their product out in completely different colours. However, it is conscious derivation from

registered

design,

not

consciousness

of guilt of

infringement which lies

at the heart of fraudulent imitation.

Accordingly, it is open to the applicants to point to the striking similarity in colours between the “Turbo-Wash’’

device and manufacturers of the latter

the

Taiwanese

product

as evidence

that

the

knew of

the design embodied in

the ”Turbo-Wash’’

device. If that knowledge is established,

as it would be if the evidence were to remain as it is,

the

respondents could escape liability only if the fraudulent	(in
the special sense explained by Lockhart J. in the passage

which I have just quoted) and partly disguised

“copying“ had

not resulted in a “copy”, as was held by Fullagar J. to have happened in L.J. Fisher & Co. Ltd. v. Fabtile Industries Pty.

Ltd. (1979) 49 OJPT & D 3611, and at first instance and by a

majority of this court on appeal in Firmasroup Pty. Ltd. v.

Byrne & Davison Doors (Vic) Pty. Ltd. (supra).

2 2 .

Slnce

have already concluded that there

1 s in the

present case

a serious question of obvious imltation,

follows

fortiori that a serious

question

also

exlsts

whether there has been the less faithful reproduction of

Turbo

Tek's

design

necessary

make

out

fraudulent

imitation.

As I have

indicated,

the

respondents

have

foreshadowed a

counterclaim to have Turbo-Tek's registered

design under

5.32

of the Desiqns Act expunged. However,

s.26(3) of that Act provides:

"The certificate of registration shall be prima

facie evidence of the facts stated therein and of

the validity of the registration"

As I held in Harry the Hirer Ptv. Ltd.

v. Mac I1 Enterprises

Ptv. Ltd. (unreported 22

December 1987) on p.7

that section

casts an onus on a respondent of persuading the court by

evidence that there is no respectable argument for resisting

a counterclaim for the expunging of the registered design.

It will be apparent from

my review of the evidence

far

adduced of the prior act in respect of pressure spraying

devices that I have not been	so	persuaded in the present
case.

It	becomes necessary therefore to consider whether

damages would afford	an adequate remedy to the applicants if
they were ultimately	to succeed in establishing infringement,

and, If not, whether the balance

of convenience is

f o r

against the grant of an interlocutory Injunction.

2 3 .

The applicants have spent almost twelve months and

considerable advertising budget in developing an

Australian

market for the

Turbo-Wash product.

The respondents on the

other hand, apart from displaying the "Cosmic Aqua blaster''

at the

Sydney Trade Fair at

stand partly given over to

other products in which the first respondent already has an

established

trade,

and

from

distributing

trade

representatives about 200 copies of the "home-made" brochure,

have done little by way of promoting the allegedly infringing

article. The second respondent,

Mr.

Sperling, has expressed

the opinion that

a car washing device of the same general

type as the Turbo-Wash and

"Cosmic

Aqua

Blaster''

"two-summer product", which he explained to mean that most of

its sales would be achieved in the first two summer seasons

following its emergence on the Australian market. If that

opinion were to prove correct, and the respondents were

allowed to participate in the first full summer season until

the substantive application and any appeal could be heard and

determined,

the

applicants,

the assumption

that

they

ultimately establish infringement, would lose about half of

the period in which their presumptive Australian monopoly

would generate most of its likely profit. Account must also

be taken of the effect of the presence in the market of a

rival product distribution chain who have purchased from Autopace on the

those

retailers

and

others

the

faith of the monopoly in the registered design.

(See Appleton

24.

Papers Inc. v. Tomasettl Paper Pty. Ltd. C19837	3 NSWLR 208
at 219 1 IPR 569 at 581)

By contrast with

the applicants, the respondents have

not

yet

established

the

"Cosmic

Aqua

Blaster"

the

Australian market. Television advertising of

that

product

has been projected to occur in November

1987 and a budget of

up to $20,000 has been allocated for newspaper advertisements

between now and Christmas 1987. No expenditure

has so

far

been incurred on that advertising.

The first respondent has

made arrangements to have 10,000 "Cosmic Aqua Blasters"

shipped to Australia in August

1987

and proposes to import

further large quantities in each of September, October and

November 1987 and January 1988. Its liabillty to pay for the

first shipment in the event that

an interlocutory inpnction

is granted in these proceedings may depend, Mr. Sperling

has

suggested, on the "goodwill" of the Taiwanese sellers. Thus

the principal disadvantage

which respondents will suffer from

an interlocutory injunction will be the handicap,

or further

handicap,

which it

will

forced

concede

the

applicants in what Mr. Sperling believes to be	a short period
of competition.

Mr. Catterns for the respondents urged as a matter to

be weighed in the exercise

of the court's discretion to grant

or refuse an interlocutory injunction the fact (not initially

disclosed in affidavits filed on behalf of the applicants)

25.

that a new model "Turbo-Wash"

device is now belnq marketed

Australia which does not conform as closely as the original

model with the registered design. One visible difference

beween the new and old model is that on the former the stored

replaceable nozzles, which are different in shape, have been

removed from the top to the rear of the cylinder which has

been

restyled

present

a more

streamlined

"hi-tech"

appearance. The front of the cylinder has also been restyled

and the cap located there has been redesigned to match the

stop-cock at the top rear above the water inlet valve which

in turn has been modified to provide a "snap-on", instead of

a threaded, connexion with a hose. However, I consider it to

be clear beyond argument that the new model is still derived

from the registered design. Nor am

persuaded that the

applicant's failure at

the

outset of these proceedings to

disclose the existence of the new model evinces a lack of

candour of such

a kind as to disentitle them to the equitable

relief which they seek.

Mr. Young for the applicants relied

on the question

the balance of convenience, on doubts

which have been expressed as to whether the "Cosmic Aqua

Blaster" will satisfy the requirements of various Australian

authorities like

the

Melbourne and Metropolitan Board

Works, the New South Wales Products Safety Committee and the

Adelaide Water Board, governing the sale or use of devices to

be connected to a domestic water supply. However,

I am not

prepared to assume that the "Cosmic Aqua Blaster"

will

offered to the public in contravention

of those requirements.

2 6 .

I therefore disregard

as a matter affecting the balance of

convenience,

the

likelihood

the

"Turbo-Wash''

and

the

"Cosmic

Aqua

Blaster"

respectively

complymg with

the

regulatory requirements to which

I have just referred.

-In the

light

the

circumstances,

including

such

weight as

the authorities indicate may be attached to the

preservation of the status quo,

I have concluded that the

balance of convenience is in favour of the grant of

interlocutory

injunction.

Accordingly,

the

order

the

Court will be:

UPON THE RESPONDENTS by their counsel undertaking until the

hearing

and

determination

the

application

herein

further order representation in the terms or to the effect that:

not

communicate

disseminate

any

the United States

retail

price of the "Turbo-Wash''

spray device is USS9.99, or

the current retail price in Australia of the

"Turbo-Wash'' spray device

is AS50.00.

AND UPON THE APPLICANTS by their counsel undertaking to pay

to any party adversely affected by the interlocutory Orders

set forth hereunder such compensation (if any) as the court

thinks just in such manner

as the court directs

27.

IT IS ORDERED THAT:

1. The

respondents

restrained

until

the

hearing

and

determination of

the

application herein or further

order, whether by themselves, their servants or

agents

or howsoever otherwise from advertising, displaying,

exposing or otherwise offering

f o r sale, selling

supplying

any

spray

washer

device

the same as or

substantially identical with Exhibit	1 tendered herein
on 6 August 1987.

2 .

Unless any

the times set out in this paragraph be

enlarged by mutual consent of the parties:

(1) The

applicants

on or

before

August

1987

file and serve	a Statement	of Claim by 24th
August 1987.

(11)

The

respondents on or before 31 August 1987,

file and serve

a defence and any

cross claim.

(lii)

The applicants on

or before

7 September 1987

file and serve	a reply and defence to cross
claim.

28.

(iv) Both

parties flle and

serve

affldavits

documents on or before

14 September 1987 and

give

inspectlon

saving

all Just claims

privilege on or before

18 September 1987,

. .

'V)

Any further affidavit evidence in chief to be

relied upon by the applicants be filed and

served on or before

25 September 1987 and any

further affidavit evidence to be relied upon

the

respondent

answer

filed

and

served on

or before

9 October

1987 and any

further evidence in reply by the applicants be

filed and served on

or before 16 October 1987.

3 .	The directions	hearing	herein	be	adjourned	to	16
October 1987.

4 .

The

costs of and incidental to the applications for

interim

and

interlocutory

injunctions

and

the

directions

hearing

herein,

including

all

reserved

costs, be costs in the substantive application.

5. Liberty be reserved to any party to apply for further

directions herein as

he or

it may be advised

on not

less than

hours notice in writing to the other

parties.

I certify that this and the

preceding twenty-seven (27)

pages are a true copy

of the

Reasons for Judgment of the

Honourable Mr. Justice Ryan.

Dated:

' 7 2 3 7

,pS--Lk

Associate

[1987] FCA 455

17 Aug 1987