Re Dalgety Australia Operations Limited v F F Seeley Nominees Pty Limited [1986] FCA 39 (25 February 1986)

FEDERAL COURT OF AUSTRALIA

Re: DALGETY AUSTRALIA OPERATIONS LIMITED
And: F. F. SEELEY NOMINEES PTY. LIMITED
Nos. G36 and G37 of 1985
Design

COURT

IN THE FEDERAL COURT OF AUSTRALIA
SOUTH AUSTRALIA DISTRICT REGISTRY
GENERAL DIVISION
Fisher J.
Neaves J.
Beaumont J.

CATCHWORDS

Design - Registrable design - Whether a feature of dimension can be part of design - What constitutes infringement - Tests to be applied for infringement.

DESIGNS ACT 1906 ss.4, 17(1), 18, 20(4), 20(5)(a) and 40I(1).

HEARING

ADELAIDE
25:2:1986

ORDER

1. The appeal be dismissed.

2. There be no order as to costs of the appeal.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

DECISION

These are two appeals from the Supreme Court of South Australia brought to this Court pursuant to the provisions of sub-s. 40I(1) of the Designs Act 1906 ("the Act"). The two appeals were directed by order of the Court to be heard at the same time. For my part I would dismiss both of the appeals being of the opinion that Bollen J. was correct in his finding that the design in question was validly registered under the Act by Dalgety Australia Operations Limited ("the appellant") and that it had not been infringed by F.F. Seeley Nominees Pty Limited ("the respondent"). In arriving at this conclusion I have had the benefit of reading in draft form the reasons for judgment of Beaumont J. I agree with him that the appeals should be dismissed and generally with the substance of his reasons. There are however a few observations which I wish to make upon the most persuasive of the arguments presented by counsel on behalf of the parties. In so doing I will adopt the background facts as stated by Beaumont J. and only repeat them where unavoidable.

2. The Act was substantially amended in 1981, consequent upon the report of the Franki Committee and the amendments took effect by proclamation on 1 April 1982. All of the High Court authorities and most of those of the Supreme Courts referred to by counsel were decisions given in relation to the legislation prior to the amendments. However no significance need be attached in these proceedings to this fact, particularly as Parliament in enacting the amendments substantially adopted the language used by the Courts when construing the legislation.

3. A crucial feature of this matter is that the appellant sought to register and gain a monopoly in respect of the design for features of shape and configuration applicable to the article illustrated in photographs accompanying its application. These photographs have been helpfully reproduced in the reasons of Beaumont J. There was no statement of monopoly by the appellant which identified the features of the shape or configuration for which it did or did not claim a monopoly. The design as registerd applies to the appearance as a whole of the air conditioner (D. Sebel & Co Ltd v. National Art Metal Co. Pty Ltd (1965) 10 FLR 224 per Jacobs J. at p 228). It did not relate to any pattern or ornamentation thereon. On the question of validity of registration and infringement regard must be paid to the shape or configuration considered as a whole in relation to the article illustrated in the photographs and I agree with the emphasis which Mr Doyle Q.C. placed on this aspect of the matter. The design consists of the totality of the visual features of the air conditioner. In Re Clarke's Registered Design (1896) 13 RPC 351 Lindley L.J. said at p 358 in relation to design for shape or configuration:

"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 section 60
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."

4. The respondent challenged in its appeal the finding of Bollen J. that the design illustrated by the photographs was validly registered. In this regard it may fairly be said that its counsel pressed upon us virtually every objection that was open under the Act and argued on matters of considerable detail and with the benefit of hindsight. It is of course necessary for the shape to have individuality of appearance and such individuality is provided by "the various features that are disclosed and their general arrangement" (Malleys Ltd v. Tomlin Pty Ltd (1961-62) 35 ALJR 352 at p 353). On the question of benefit gained from reliance upon hindsight counsel for the appellant referred us to a passage in the judgment of Aickin J. in Minnesota Mining & Manufacturing Co. v. Beiersdorf (Australia) Ltd [1980] HCA 9; (1980) 144 CLR 253 at p 293 which I adopt as appropriate, although said in a different context:

"It is in relation to this process that the misuse
of hindsight is most common. When once an idea
or an object or a process or a combination,
admittedly novel, has been published, it is very
easy to say after perhaps months of search and
study in the Patent Office and the public
libraries that the integers into which the patent
might be dissected could be found scattered
amongst the prior documents by a person who
already knew the solution to the problem and
therefore knew what to look for and what to
discard. But that process does not demonstrate
lack of an inventive step. The opening of a safe
is easy when the combination has been already
provided."

5. Beaumont J. in his reasons has dealt with each of the grounds upon which the respondent sought to impugn the registration by the appellant. Subject to the comments which I make hereafter I agree with his rejection of the respondent's arguments and his reasons therefor.

6. The respondent challenged the validity of the registration on the ground that there was no "design" within the meaning of the Act in the appearance disclosed by the photographs. Its counsel contended that this appearance which Bollen J. identified as "slim and upright" was part of the fundamental form of an air conditioner and as such could not be registered as a design. He also contended that this appearance was, in the words of the definition of design, "a method or principle of construction".

7. It is not in dispute in this matter that both the fundamental form of an evaporative air conditioner prior to 1984 and the then state of the prior art were that the air conditioner was box-like and chunky in appearance. In general it may be said that it was necessarily so because of the essential nature of its fan. The discovery and introduction of an axial fan in lieu of a centrifugal fan enabled a departure from this appearance in that the fan could be confined in a narrower box. The manufacturer was thereby enabled to reduce the dimensions of the cabinet and in particular the depth thereof. This reduction meant, as pleaded by the appellant, that it had a "slim-line shape" because its depth from its front face to its back face was considerably less than the corresponding depth of air conditioners on the market at the relevant date. It was also pleaded that it had a depth to height ratio which was considerably less than the depth to height ratio of such air conditioners. The appellant particularised certain other aspects of its registered design which I shall call "embellishments".

8. In his reasons for judgment the learned trial judge found that the appellant's air conditioner had a slim upright appearance. It was said by the respondent's counsel that he made this finding merely by reference to the reduction in depth of the air conditioner which he said was a matter of measurement and not of design and thus necessarily permitted differences in shape. Some support for this submission can be found in his reasons. Having found that the design was productive of a slim, upright air conditioner, his Honour went on to say:

"Considering all the issues thus far I have not
found it necessary to consider details such as the
exact nature of bevelling, of radius, of position
of controls, or appearance of front or back of the
cabinet. To my eye the slim, upright appearance
of itself is so individualistic as to make
consideration of these details unnecessary."

9. If by this the trial judge intended to convey that he was concentrating exclusively on the narrowness (to use a neutral word) of depth of the air conditioner produced by the reduction in the measurement of its depth and was excluding consideration of the embellishments I would be inclined to see considerable force in this contention. It could well be said that this change in appearance was not the consequence of the application of a design or alternatively that the "design" was the application of a method or principle of construction. As the High Court said in Malley's Case at p. 352 -

"The answer to these contentions lies, we think 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 originality of appearance
to distinguish it from what Russell-Clarke in Ch. 2
of his book Copyright in Industrial Designs aptly
describes as 'the fundamental form' of an article.
Furthermore, the existence of that sort of
individuality is to be determined by the eye and
not be measuring dimensions."

10. Furthermore to disregard the embellishments, which are features of the design, would be to visualise something other than the total design and something which in itself would be an adjustment merely of the measurements of one aspect of the air conditioner. As such it would arguably not amount to a "design" as understood in this area of the law but to a mere shape determined by measuring dimensions.

11. In Re Clarke's Registered Design (supra) at p 361 Lopes L.J. said of the design under consideration in the case of Le May v. Welch (1885) 28 Ch D 24:

"The combination was considered too narrow or
trifling to constitute a new design. In the
Court of Appeal, Bowen L.J. said, 'There must be a
substantial novelty in the design, having regard
to the nature of the article. It is not every
new difference of cut, every change of outline,
every change of height, or breadth, or
configuration in a simple and familiar article of
dress like this which constitutes novelty of
design."

12. Speaking of the articles under consideration in the matter before him, Lopes L.J. went on to say:

"Put the two lamps or lamp shades side by side,
apply the test of the eye to them, and the only
difference is the curtailment of the chimney in
the Respondent's lamp or lamp shade, effecting no
substantial change in the shape of the entire
apparatus. You cannot, by adding that to, or
omitting that from, the shape of a thing, which is
immaterial and does not substantially alter its
shape, make that novel in shape which otherwise
would not be novel."

However notwithstanding the persuasive arguments of Mr Ellicott Q.C. on this aspect of the matter, I am of opinion that the submission must be rejected. I accept Mr Doyle's submission that the trial judge must have had regard to the embellishments as well as the narrowness of the depth and that what he is saying in the passage above quoted is that the distinctive overall effect is so clear that he does not have to spell out in detail the role these embellishments play. In other words, I accept that he has viewed the design as a whole and is basing his conclusion on his view of the totality of its features. It follows that his decision is not based solely on the narrowness of the air conditioner as productive of the slim appearance, which narrowness might be said to be the application of a method of construction, but also on his appreciation of the embellishments as enhancing the otherwise physical slimness. All of these features and their general arrangement have produced to my mind sufficient individuality of appearance to distinguish the shape from the fundamental form of air conditioners and I consider the trial judge was correct in so finding.

13. Mr Ellicott Q.C. then contended in the alternative that the design was not registerable because the slimness was something which could not be taken into account - it being a "function" of the fundamental form and not a matter of design - and that everything else which had been added, the embellishments were common trade variants (sub.s.17(1)(a)). He also submitted that the alleged design was the consequence of processes which were either obvious or inevitable. I would reject these arguments. The question for determination is whether the shape or configuration taken as a whole is new or original. If it is new or original, it is nothing to the point to say that it was inevitable or obvious that eventually such a design would be conceived. The Act makes no reference to concepts of inevitability and obviousness when dealing with registrability except in relation to obvious adaptation (para.17(1)(b)). Furthermore as the author of Russell-Clarke on Copyright in Industrial Designs 5th Edition put it at p. 38 -

"The whole of the design need not be new.

'The design may be valid within the Act, although
all the parts are old except some particular part
only which is new or original. The novelty or
originality of the particular part may be
sufficient to impart the character of novelty and
originality to the whole.'

(Per Chitty J., in Walker & Co. v. AG. Scott &
Co. (1892) 9 RPC 482 at p 485). And, in fact,
a design may well be novel although all the parts
are old, and were common general knowledge or were
trade variants at the date of registration, for
the combination of two or more old and well-known
designs or parts of designs will certainly
constitute novelty, if the effect, i.e. the
appearance of the combination as a whole, is new."

See also the comments of Jacobs J. in D.Sebel & Co. Ltd. v National Art Metal Co. Pty. Ltd. supra at p. 227.

14. On the matter of infringement counsel for the appellant contended that the trial judge had erred in law in failing to apply the correct test and that in any event this Court should be prepared in the circumstances to substitute its view as to the appearance, strictly as illustrated in the photographs, of the appellant's Profile and the appearance of the respondent's Convair air conditioner.

15. The submission on the alleged error of law was that the trial judge failed to look at the competing articles as a whole and through the instructed eye of the Court. It was contended that he approached the matter "through the eye of an expert in design, looking at it in detail and, with respect, losing himself in the details".

16. There can be no criticism of the trial judge's statement of the test to be applied. He said:

"The comparison is a question of fact for the eye
to judge but an eye instructed as to the meaning
and identity of the registered design and the
features which are to be compared. . .I must judge
by my eye and instructed and assisted by the
'expert witnesses'"

17. The trial judge certainly paid considerable attention to and and was greatly impressed by the evidence of a Mr Redmond, an expert in design. This witness gave evidence in great detail of the differences between the two articles, the Profile and the Convair.

18. However two passages of the trial judge's reasons for judgment satisfy me that he did not merely adopt Mr Redmond's opinion in lieu of making his own judgment. After extracting considerable passages of Mr Redmond's evidence he said:

"He spoke of how each appealed to his eye. So far
as the differences are concerned I find his
evidence acceptable. As I have said he spoke
with more detail than I have done. And of course
he spoke as a designer. To my eye the design of
the Profile and the Convair are markedly
different. . .I think the total appearance of the
Convair leads one to think that the designer of it
has designed something which, although having some
similarities to the design of the Profile is very
different. Each is within the same family but
the Convair has a very different appearance to the
design of the Profile. I speak of the whole
appearance. . .But taking the whole appearance of
the Profile and the whole appearance of that (the
Convair) there is no obvious imitation."

19. These passages also satisfy me that his Honour did consider the characteristic features of each article as a whole and that he was in the ultimate not overconcerned with detail.

20. In my opinion counsel's criticisms of his Honour's approach in law are unwarranted and must be rejected. I can add, should it be of any relevance, that I would have no hesitation in arriving at the same conclusion as the trial judge, at least by the use of the so called "doctrine" of "imperfect recollection" (Benchairs Ltd v. Chair Centre Ltd (1974) RPC 429 at p 502).

21. Counsel also contended that, whether or not there was any error of law, we should be prepared to substitute our view, having seen for ourselves everything that was before the trial judge for his judgment. He said we should not be reluctant to do so, and relied upon the fact that, as he said, the High Court in Malley's Case (supra) substituted its view on infringement for that of the trial judge.

22. Two comments can be made in rejecting this submission. As I read Malley's Case both at first instance and in the High Court it is not clear authority for the appellant's contention.

23. It can fairly be said that the High Court approached the matter on the basis that the trial judge erred in law in considering the question of fraudulent imitation. The latter held that the "J" rim there in question did not form part of the design but of the process of manufacture and therefore should be disregarded. The High Court, in holding that the "J" rim was one of the features of the design and could not be disregarded, said at p. 353:

"His Honour treated the 'J' rim as not part of the
design and as no more than an indication that the
bottom would be applied to a cylinder by a
wheeling-in process that will be described later.
We cannot accept this view. It is not the
function of design to indicate a process of
manufacture; indeed, anything amounting to a
method of construction that would permit
differences of shape spells invalidity. Pugh v.
Riley Cycle Co. Ltd (1912) 29 R.P.C. 196 per
Parker J. at p. 202; Rosedale Associated
Manufacturers Ltd v. Airfix Products Ltd (1956)
RPC 360; (1957) RPC 239. As Kitto J. said
in In the Matter of Design registered by Wolanski
[1953] HCA 72; (1953), 88 C.L.R. 278, at p. 279, when speaking of
the subject of registration 'it is not an article
made according to a particular shape or pattern.
Much less is it a method of making such an
article, or a method of achieving an end by the
use of such an article'. The design here is the
shape of a pan bottom and the circumferential 'J'
rim is just as much part of that shape as is the
dome in the middle. It is one of the features of
the design and cannot be disregarded."

In my opinion the finding of the trial judge that the "J" rim was part of the process of manufacture and not of the design was an error in his judgment which justified the High Court in disturbing that judgment. (See Hart v. Edwards (infra)).

24. Furthermore the comparison between the two articles in this matter is a question of fact, and not of inferences to be drawn from primary facts. Two recent decisions of the High Court and the Full Court of this Court, emphasize that where the test for infringement is one of appearance reached by a visual comparison, the question for the Court is a question of fact. Those decisions, on questions arising under the Copyright Act in each instance, are S.W. Hart & Co. Pty Ltd v. Edwards Hot Water Systems (1985) 59 ALJR 729 and Mainbridge Industries Pty Limited and another v. Francis George Sykes and another a decision of the Full Court of this Court delivered on 4 December 1985. In the former case the Chief Justice said at p 733:

"The question whether a defence under s.71 of the
Act was made out was one of fact and the onus of
proving it lay on the respondent. The nature of
the issue, involving as it does matters of
impression, is one in which particular respect and
weight should be given to the decision of the
trial judge unless some error in his judgment has
been demonstrated. No such error was
demonstrated in the judgment of Brinsden J. I,
myself, see no reason to differ from his
conclusion. In my opinion, his judgment should
not be disturbed."

25. I am, on this aspect of the appeal, as well as on the question of the validity of the registration of the appellant's design, of opinion that the trial judge's judgment should not be disturbed. Each appeal must be dismissed and I agree with the view of Beaumont J. that there should be no order for costs of either party on either appeal.

The facts and issues relating to these appeals are sufficiently set forth in the reasons for judgment of Beaumont J. which I have had the benefit of reading. I concur in his Honour's reasons and in his conclusion that the appeals should be dismissed. I agree that no order should be made in respect of the costs of the appeals.

These appeals from the Supreme Court of South Australia, brought under the provisions of the Designs Act 1906 ("the Act"), arise in the following circumstances. On 17 June 1983, Dalgety Australia Limited applied for registration under the Act of a design applicable to an evaporative air conditioner. Dalgety Australia Limited assigned all its rights and interest in its application to Dalgety Australia Operations Limited ("the appellant") on 30 November 1983. The appellant obtained registration of the design on 12 July 1984. In September 1984, the appellant, claiming that F.F. Seeley Nominees Pty. Ltd. ("the respondent") had infringed the statutory monopoly in its registered design by the manufacture at about that time of an evaporative air conditioner, brought proceedings in the Supreme Court to restrain the alleged infringement. The respondent raised the validity of the registration of the appellant's design by way of defence to the infringement action. The respondent also counter-claimed for rectification of the register by expunging the entry of registration of the design. The Supreme Court (Bollen, J.) dismissed the appellant's claim for infringement and the respondent's claim for rectification of the register. The parties have each appealed against the dismissal of their claims.

2. Before reference is made to the relevant legislation, some of the details of the appellant's registration should be noted. The certificate of registration issued in respect of the appellant's design contained a statement of monopoly in the following terms:

"The design of an evaporative air conditioner
applicable to the shape and configuration as
illustrated."

3. The illustration mentioned consisted of three photographs annexed to the certificate of registration -

Design omitted.

4. The relevant legislation may be summarised as follows. 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." (s.17(1)).

5. A "design" is defined to mean "features of shape, configuration, pattern or ornamentation applicable 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" (s.4(1)). An application for registration of a design shall not be refused, and a registered design is not invalid, by reason only that the design consists of, or includes, features of shape or configuration that serve, or serve only, a functional purpose (s.18). The owner of a design is entitled to make application for the registration of the design (s.20(1)). An application for registration of a design shall be in accordance with a prescribed form and shall be accompanied by the prescribed number of representations of an article to which the design is applied (s.20(3)).

6. The priority date in respect of an application for registration of a design is the date on which the application is lodged (s.21(2)). The certificate of registration shall be prima facie evidence of the facts stated therein, and of the validity of the registration (s.26(3)).

7. An application under s.20(3) may be accompanied by a statement of monopoly in respect of the design to which the application relates (s.20(4)). A "statement of monopoly" means a statement relating to the representations of an article to which the design is applied that indicates -

"(a) those features of the representations in
respect of which the applicant for
registration of the design wishes to claim
a monopoly; and

(b) those features of the representations that
are to be disregarded in considering the
extent of the monopoly protection" (see
s.4(1)).

("Monopoly" in relation to a registered design, means the exclusive right to apply the design to an article in respect of which the design is so registered (s.4(1).)

8. Subject to s.25A, which deals with co-ownership, the owner of a registered design has a monopoly in that design (s.25). A person shall be deemed to infringe the monopoly in a registered design if he, without the licence or authority of the owner of the design, inter alia, "applies the design or any fraudulent or obvious imitation of it to any article in respect of which the design is registered;" (s.30(1) (a)).

9. It is convenient to deal first with the respondent's attack on the appellant's registration. The respondent, before the learned Judge and this Court, challenged the validity of the registration on several grounds. Amongst other matters, it contended that no "design" within the meaning of the Act was involved in the present case; alternatively, it argued that the appellant's design was neither "new" nor "original" for the purposes of s.17(1).

10. In the particulars of infringement given in its statement of claim, the appellant described the features of shape and configuration applied to its evaporative air conditioner as follows:

"The plaintiff's Registered Design depicts an
evaporative air conditioner which has:-

(i) a 'slim line' shape, that is having a depth
from its front face to its back face which
is considerably less than the corresponding
depth of evaporative air conditioners on
the market prior to the date of the said
application;

(ii) a depth to height ratio which is
considerably less than the depth to height
ratio of evaporative air conditioners on
the market prior to the date of the said
application;

(iii) corners which are generally rounded or
bevelled;

(iv) a front grill which wraps round the ends of
the unit;

(v) control knobs positioned in one upper front
corner of the unit;

(vi) prominently defined panels; and

(vii) a four-legged base set on castors and
connected to the unit by one upright pole."

11. In upholding the appellant's contention that its design was "new or original", the learned Judge found that earlier designs applied to evaporative air conditioners produced "quite large cabinets on stands. . . (which) to (his) eye. . . (were) not attractive. . . They were 'box-like' and 'chunky'". His Honour further found that none of the prior art had the "slim and upright" characteristics of the appellant's design and that the "fundamental form" of evaporative air conditioners prior to the appellant's design "was a 'box-like' or 'chunky' cabinet on a stand, the whole being unattractive." The learned Judge also found that "elegance" was a characteristic of the appellant's design which was not evidenced in the prior art:

"None of the air conditioners in use before the
priority date has to my eye any elegance. Nor
has any other appliance. Some have a measure of
attractiveness, but not elegance. The
photographs in P1 (i.e. the photographs annexed
to the certificate of registration) of
themselves and as applied to P6 (i.e. an
evaporative air conditioner to which the
appellant's design had been applied) show
something which is not only slim but upright.
They depict a piece of furniture which stands up
straight, slim and with a measure of elegance.
That was not the fundamental form whatever the
earlier fundamental form might have been. If it
be said that experts say that many others in
evidence have a slim upright appearance, I say
they have not to my eye."

12. The learned Judge concluded that the "slim, upright" appearance of the appellant's design was "distinctly individualistic" and very different from earlier designs.

13. In seeking to impugn the appellant's registration, the respondent first submitted that "slim and upright appearance", as found by the learned Judge, was no more than a principle of construction and thus outside the definition of "design" in s. 4(1) of the Act (see Pugh v. Riley Cycle Co. Ltd. (1912) 1 Ch 613 at pp 619-20; In the matter of Design Registered by Wolanski [1953] HCA 72; (1953) 88 CLR 278 at p 279).

14. In my opinion, the argument should be rejected. What is registered here is no more than the design consisting of the features of shape and configuration illustrated in the photographs annexed to the certificate of registration. Those features are not there described as a method or principle of construction nor, in my view, would it be appropriate to infer from those representations of the design any such method or principle which would necessarily permit differences of shape and thus spell invalidity (see Malleys Ltd. v. J.W. Tomlin Pty. Ltd. (1961) 35 ALJR 352 at p 353).

15. It was also suggested on behalf of the respondent that the appellant's registration should be characterised as a description of an evaporative air conditioner made thinner because the parts within it can be confined to a lesser depth. Thus, putting essentially the same argument in a different way, it was said that the entry on the register was no more than a description of the object which results from applying a principle of construction. Although the history of the development of the appellant's design may largely be explained by reference to the introduction of an axial fan, this is no part of the registration of the design. The illustrations annexed to the certificate of registration do no more than depict the features of the design. In my view they are not capable of the interpretation contended for by the respondent.

16. A related submission put on behalf of the respondent was that there was not here "sufficient individuality of appearance" to distinguish the appellant's shape from "the fundamental form" of an evaporative air conditioner (see Malleys Ltd. v. J.W. Tomlin Pty. Ltd. . supra, at p 352). It was suggested by the respondent that the "fundamental form" of an evaporative air conditioner is a rectangular box-like shape which contains the parts but has openings for the intake and outflow of air and that, in the case of a conditioner with an axial fan, this rectangular box-like shape would, as a matter of course, be slim and upright. Thus, it was argued, the slim and upright character of the conditioner is dictated by the nature of the article and not by the skill or otherwise of the designer.

17. The respondent's contention that the appellant's design embraced only the fundamental form of the article cannot, in my view, be accepted. In the ultimate analysis, the question is one of fact and impression. The learned Judge found that the features of the appellant's design went significantly beyond the basic form of evaporative air conditioners as that form existed at the relevant date. Particular respect and weight should be given to that finding (see S.W. Hart & Co. Pty. Ltd. v. Edwards Hot Water Systems (1985) 59 ALJR 729 per Gibbs, C.J. at p 733). Having sighted the material before Bollen, J., I share his Honour's impressions.

18. The respondent further argued that the appellant's design lacked the novelty or originality required by s.17 (1). The argument was put in a number of ways but the respondent's principal contention was that all the features of the design which were alleged to be new, including its slim and upright appearance, were features common to the trade or immaterial details or, alternatively, an "obvious adaptation" of an earlier design within the meaning of s.17 (1) (a). But the learned Judge found that the features of the earlier designs of evaporative air conditioners were very different from those of the appellant's design. His Honour also found that there was "more to the design than mere trade variants. The design is not one to which a designer could have come by applying well-known design techniques." Again, as a question of fact and impression, to be judged by the eye, particular respect and weight should be given to the finding of the trial Judge.

19. The onus of proof in the attack on the appellant's registration lies on the respondent (see s.26 (3); D. Sebel & Co. Ltd. v. National Art Metal Co. Pty. Ltd. (1965) 10 FLR 224 at p 226). In Sebel, Jacobs, J. reminded us that, in relation to an article such as a chair, one cannot and should not expect to find some startling novelty or originality. A similar observation might be made of an evaporative air conditioner in 1983. Jacobs, J. went on to say (at p. 226):

"The element of novelty or originality will of
necessity be likely to be within a small
compass. I do not mean thereby that any
difference of shape, outline, proportion or
placement of components will thereby constitute
novelty of design, but provided I can see a
substantial difference from the fundamental form
and from the development in the trade up to the
time of the application for registration, then I
do not think that it is sufficient to point to a
number of elements of similarity to past design
in order to show that the design is not new or
original."

20. Lord Herschell had earlier adopted a similar approach to novelty and originality under the English Patents, Designs, and Trade Marks Act 1883 in Samuel Heath & Sons Limited v. Rollason (1898) AC 499, saying at p 503:

"Of course in the present day it is very
difficult to register any design that does not
contain in it something which has been done
before. Very often a very successful design may
be one in which the difference from previous
designs can on analysis be shewn to be very
slight, where nevertheless the result is to make
the one so much more pleasing than the other
that it is a successful design. Whilst on the
one hand we certainly ought not to give
protection to a design in which the variations
are trivial and unimportant so that it is
substantially the same design as one already
registered or known, on the other hand we ought
not to refuse it where the design is practically
a different one which may be more attractive."

21. In my opinion, the observations of Jacobs, J. and of Lord Herschell are in point in the present case. Like Bollen, J., I am not satisfied that there is no novelty or originality in the appellant's design. I respectfully agree with Bollen, J. that there are features of that design of shape and configuration which distinguish it from the characteristics of earlier designs. First and foremost are the overall slim impression of shape and upright appearance of the design. I accept the submission of Mr. Doyle, Q.C. on behalf of the appellant that, when compared with the prior art, that impression is brought about, to some extent, by the reduction of the dimensions from front to back of the article and by its height-depth ratio. The impression is enhanced by the use of a bevelled edge at the top of the front face of the unit and by the bevelled or sloping edges of the rear face, both sides and the top of the rear of the unit. I also accept Mr. Doyle's submission that the distinctive appearance of the appellant's design is further enhanced by the small wrap-around of the front grill; this contributes to a narrow centre panel, visible on the view from the side, which appears to be and is, relatively narrow. The slim, upright appearance is further enhanced, as Mr. Doyle suggested, by the use of a pedestal stand rather than a four-legged stand and by the use of rounded corners and edges horizontally and vertically.

22. The respondent sought to point to the earlier presence in other articles of a number of the features of the appellant's design. Instances were given of the use, in the design of evaporative air conditioners and other articles, of a horizontal rectangular face and of a horizontal grill; of a wrap-around front grill; of bevels and radiuses; and of a single pedestal base. But, as Jacobs, J. held in Sebel, supra, at p. 227:

". . . a mere conjunction of old features does not
necessarily result in a new design. However, it
may do so and . . . . when one is dealing with
furniture design, with the obvious limitations
that exist in the addition of new features, one
should not be astute to deny novelty upon the
ground that there is not some wholly new feature
of design incorporated. Design in such a field
is a subtle thing and provided it is distinctive
to the trained eye, . . . . registration should not
be denied in view of the element of subtlety
which is involved in the combination of old
features in a particular way and the manner in
which they are combined."

23. The respondent instanced a number of the features of design applied to many earlier articles in this connection. I will not endeavour to catalogue them. Perhaps the strongest example of the prior art from the standpoint of the respondent was an evaporative air conditioner marketed by the appellant in 1981 known as the "Bonaire 1000 Deluxe". It was depicted in a photograph in evidence as follows:

Design omitted

24. It may be accepted that this earlier design of the appellant does have some features, e.g. the horizontal grill and the single pedestal base, which are also utilised in the present registered design. But it does not follow that the subject design lacks novelty or originality. In my view, the reasoning of Jacobs, J. in Sebel in the passage cited above (at p. 227) is apposite in this connection.

25. When the matter in question is to be judged by the eye, it will inevitably be difficult to express verbally the process of reasoning leading to the conclusion that the appellant's design represented a departure from the prior art: "the eye. . .has its reasons that reason does not know" (per Kitto, J. in Wolanski, supra, at p.28). Having made a visual comparison of the subject design and its predecessors, I agree with the finding of Bollen, J. that the appellant's design had characteristics which distinguished it from the prior art. These features are best, if imperfectly, indicated by reference to the overall slim impression of shape and upright appearance of the appellant's design. I also agree with Bollen, J. that the appellant's design did more than differ from previous designs only in "immaterial details or in features commonly used in the. . . .trade" (s. 17 (a)). Nor is the appellant's design an "obvious adaptation" of an earlier design (s.17(1)(b)). On the contrary, the appellant's design seems to my eye to represent a significant departure from the prior art.

26. In my view, the respondent has failed to establish that the appellant's design was not "new" or "original" for the purposes of s.17 (cf. Malleys Ltd. v. J.W. Tomlin Pty. Ltd. (1961) 35 ALJR 352 at p 353). I would reject this defence to the appellant's claim and accordingly I would dismiss the respondent's appeal.

27. There remains the question of infringement. The appellant's case before the learned Judge was that the respondent had infringed its statutory monopoly by an "obvious imitation" of the appellant's design in the form of an evaporative air conditioner manufactured by the respondent in the latter half of 1984. The respondent's product was depicted in the following photographs which, along with the unit itself, were in evidence before Bollen, J.:

Designs omitted

28. In the case of an alleged infringement by "obvious imitation", the test to be applied is again one of visual comparison. In Malleys Ltd. v. J.W. Tomlin Pty. Ltd., supra, an "obvious" imitation" of the registered design was held to be "not the same but a copy apparent to the eye notwithstanding slight differences" (at p.354).

29. Although Bollen, J. found that there were "some similarities" in the respective designs of the parties, he held that there were also "significant differences" between them. The learned Judge said :

"To my eye the design of the Profile (the
appellant's product) and the Convair (the
respondent's product) are markedly different. I
endorse Mr. Redmond's view that the plaintiff's
design is a very regular symmetrical form'
whereas the Convair is asymmetrical. To my eye
the defendant's article, the Convair, has an
even slimmer and more upright appearance than
has the design of the Profile. I think it is
more 'stream-lined' than is the design of the
Profile. I too am impressed by the difference
created by the circular air deflector in the
grill of the Convair. This is an outstanding
difference. The appearance or configuration
which it gives to the whole makes it markedly
different to the configuration of the Profile.
The appearance of the controls in each is
markedly different. I think that there is
generally a greater tapering down of the Convair
than exists in the Profile. No doubt this is
part of its looking, to my eye, 'slimmer' and
'more streamlined'.

I think that the total appearance of the Convair
leads one to think that the designer of it has
designed something which, although having some
similarities to the design of the Profile, is
very different. Each is within the same family
but the Convair has a very different appearance
to the design of the Profile. I speak of the
whole appearance. But in fact I think that the
very prominent air deflector in the Convair
('the circle') is of itself enough to make the
one markedly different from the other. It
causes one to think and see that the 'second'
designer has designed something different to
that designed by the 'first' designer. But
taking the whole appearance of the design of the
Profile and the whole appearance of that, there
is no 'obvious' imitation. The Convair looks
like that which Mr. Seeley said it was i.e.
(using my words) something different designed
with the Profile in mind but designed to be
different from and to 'beat' the Profile."

30. Once again, particular respect and weight is to be given to the findings of the trial Judge on such a question of impression. Again, having myself sighted the material in evidence before his Honour, I share his reaction as a matter of visual comparison. Here also, it is difficult to articulate with precision the impression obtained upon inspection. But I agree with Bollen, J. that the presence in the respondent's design of an air deflector in the form of a rotating grill is a prominent feature of the design which is absent from the appellant's design. Given its prominence that feature is, to my eye, of decisive importance in distinguishing the two designs (cf. Malleys Ltd. v. J.W. Tomlin Pty. Ltd., supra, at p 355).

31. The appellant sought to diminish the prominence of the rotating grill by showing that it was less obvious to the eye when rotated into a position where its grills were in line with the other grills on the front of the unit. It may be accepted that, viewed in this position, the air deflector is less prominent than the photographs of the respondent's article shown above would suggest. But even in that position, the air deflector is an obvious point of departure from the appellant's design. The decision of Lloyd-Jacob, J. in Schmittzehe v. Roberts (1955) 72 RPC 122 relied upon by the appellant may be distinguished for present purposes. The plaintiff there obtained registration of a design in respect of a toy figure, the predominating material being paper, cardboard, millboard or strawboard. It was held that since the toy figures sold by the defendant, which were made of flexible material, resembled the registered design in regard to clothing and features and could be manipulated into the position shown in the representation of the design, their manufacture and sale constituted an infringement. Lloyd-Jacob, J. said (at p. 125):

"There is no question that that figure can
readily be manipulated into positions similar to
those which form the illustration to the design
registration, and if so manipulated they are in
substance indistinguishable from that which
forms the Plaintiff's monopoly; but Mr.
Whitford, Counsel for the Defendant, has
submitted that unless the Defendant can be fixed
with knowledge of such manipulation of her
figures as to resemble the illustrations in the
design registration, the Plaintiff has not made
out a case of infringement.

In my judgment that submission proceeds upon a
mistaken appreciation of the scope of the
Registered Designs Act. A registration, if
valid, gives to the registered proprietor an
exclusive right in relation to articles to which
the registered design, or a design not
substantially different from it, has been
applied, and in my judgment, the manufacture and
offer for sale of a figure which, qua its
characteristic features is indistinguishable
from the registered design, is sufficient to
establish infringement of the statutory
monopoly, wholly irrespective of whether by
manipulation the precise attitude chosen for the
purposes of representation can be avoided."

32. This reasoning cannot be applied in the present case. There is no question here of any flexibility in the shape or configuration of the two designs, even if their appearances are less readily differentiated when the respondent's circular grill is moved to a certain position. Even in that position, the deflector is readily visible and, to my eye, it is itself sufficiently prominent to distinguish the two designs.

33. The appellant sought to criticize the trial Judge's reasoning process on the infringement issue by suggesting that his Honour concentrated too much on differences of detail and individual features. It was said that a global or overall approach was more appropriate and that Bollen, J. should have given more weight, on this issue, to his earlier findings as to the novelty and originality of the appellant's design.

34. In my opinion, these criticisms should be rejected. For one thing, the issues of registrability of the design and its infringement raise quite distinct questions of principle. Further, although the ultimate question on the infringement issue is one of impression, it was appropriate that the learned Judge expose his reasoning process by explaining the significance, to his eye, of the several features which, he held, distinguished the two designs. More important, Bollen, J. did in any event make a visual comparison of the two designs by taking into account, as he put it, their "whole appearance". His overall impression led him to reject the suggested infringement.

35. The appellant, both in the Supreme Court and in this Court, sought to put its case on infringement in a slightly different way by submitting that the test for infringement was whether the two designs were "substantially different". These words do not appear in s.30, although they are found in the authorities (see, e.g. Malleys Ltd. v. J.W. Tomlin Pty. Ltd., supra, at p 355). Although, in some contexts, "substantial" can be a word of uncertain content (see Day v. Pinglen Pty. Ltd. [1981] HCA 23; (1981) 148 CLR 289 at p 299), it is clear from a reading of the whole of the reasons in Malleys Ltd. v. J.W. Tomlin Pty. Ltd., supra, that when the High Court there spoke, for example, of "a substantial difference of a material kind" (at p 355), it was intending to apply the notion of "obvious imitation" in s.30(1)(a) as the Court had previously explained it; that is to say, the test of infringement for present purposes is whether, given that the respondent's design is not the same as the appellant's design, it is nonetheless a "copy apparent to the eye notwithstanding slight differences" (see (1961) 35 A.L.J.R. at p. 354).

36. When compared visually with the appellant's design, the respondent's design does not, to my eye, appear to be a "copy . . . notwithstanding slight differences". My impression, both overall and in the details recounted by Bollen, J., is that the designs may be readily differentiated.

37. I should add that, in this respect, I agree with the learned Judge that differences in colour are not material, especially where, as here, the claim for monopoly is restricted to the shape and configuration of the appellant's design. The position may well have been different if the claim had extended to features of pattern or ornament (see Calder Vale Manufacturing Co. v. Lappeh Manufacturing Co. (1935) 52 RPC 117; Lahore, Garnsey & Dwyer, Intellectual Property in Australia at pp 1610-1611).

38. In the result, I would dismiss both appeals. In the circumstances, it is appropriate that no order be made in respect of the costs of either appeal.