Re Dart Industries Inc and Tupperware Australia Pty Limited v the Decor Corporation Pty Limited [1989] FCA 35; 49 Copyright 15 IPR 403 (28 February 1989)

FEDERAL COURT OF AUSTRALIA

Re: DART INDUSTRIES INC. AND TUPPERWARE AUSTRALIA PTY. LIMITED
And: THE DECOR CORPORATION PTY. LIMITED
No. VG180 of 1988
FED No. 49
Copyright
15 IPR 403

COURT

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
Lockhart(1), Jenkinson(2) and Gummow(3) JJ.

CATCHWORDS

Copyright - Designs - Infringement - What constitutes - Appropriate tests.

Designs Act 1906 - s.30

Copyright Act 1968 - ss. 75, 77

AMP Incorporated v Utilux Pty. Limited (1972) RPC 103

Benchairs Limited v Chair Centre Limited (1974) RPC 429

Coulton v Holcombe [1986] HCA 33; (1986) 65 ALR 656

Dean's Rag Book Co. Ltd. v Pomerantz & Sons (1930) 47 RPC 485

D. Sebel & Co. Limited v National Art Metal Co. Pty. Limited (1965) 10 FLR 224

Dalgety Australia Operations Limited v F.F. Seeley Nominees Pty. Limited (1986) 6 IPR 361

Dunlop Rubber Co. Ltd. v Golfball Developments Ltd. (1931) 48 RPC 268

Firmagroup Australia Pty. Ltd. v Byrne & Davidson Doors (Vic.) Pty. Limited (1986) 67 ALR 29

Grafton v Watson (1884) 50 LT(NS) 141

Hanfstaengl v W.H. Smith & Sons (1905) 21 TLR 291

Hecla Foundry Co. v Walker Hunter & Co. (1889) 14 AC 550

Kevi A/S v Suspa Verein U.K. Limited (1982) RPC 173

L.J. Fisher & Co. Limited v Fabtite Industries Pty. Limited (1978)

49 OJOP 3611

Lewis Falk Limited v Jacobwitz (1944) 61 RPC 116

Macrae Knitting Mills Limited v Lowes Limited [1936] HCA 43; (1936) 55 CLR 725

Malleys Limited v J.W. Tomlin Pty. Limited [1961] HCA 77; (1961) 35 ALJR 352

Oliver & Co. v Thornley & Co. (1986) 13 RPC 490

Phillips v Harbrow Rubbert Company (1920) 37 RPC 233

Pugh v Riley Cycle Case (1912) 29 RPC 196

Rosedale Associated Manufacturers Ltd. v Airfix Products Limited

(1956) RPC 360

Saunders v Wiel (1893) 10 RPC 29

University of Wollongong v Melwally (No. 2)(1985) 60 ALR 68

Valor Heating Company Ltd. v Main Gas Appliances (1973) RPC 871

Wallpaper Manufacturers Limited v Derby Paper Staining Co. (1925)

42 RPC 443

HEARING

MELBOURNE
28:2:1989

Counsel for the Appellant : Mr. P.G. Hely Q.C. and Mr. G.T.
Pagone

Counsel for the Respondent : Mr. A.C. Archibald Q.C. and Mr.
R.C. Macaw

Solicitors for the Appellant : Arthur Robinson & Hedderwicks

Solicitors for the Respondent: Phillips Fox

ORDER

The appeal be dismissed.

The respondent's costs of the appeal be paid by the appellants.

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

DECISION

The question in this case is whether the respondent, The Decor Corporation Pty. Ltd., infringed any one or more of three registered designs which are registered in the name of the first appellant, Dart Industries Inc., a Delaware corporation. The second appellant, Tupperware Australia Pty. Limited, is the sole and exclusive licensee in Australia of the right to use the registered designs. One design is in respect of a container or bowl (Registered Design No. 80053), another is in respect of a closure or lid for a container (Registered Design No. 80054) and the other (Registered Design no. 80058) is a combination design in that it embodies both the container or bowl and the closure or lid. Each design was registered with effect from 16 August 1979. The argument before us on appeal was confined to this combination design, so I shall therefore generally direct my findings only to it. I shall, for convenience, refer to Registered Design No. 80058 as "the registered design".

2. It was common ground at the trial before the Supreme Court of Victoria (King J.) and on appeal to this Court that the purpose both of an article made in accordance with the registered design and of the alleged infringing article of the respondent is to serve as a bowl and lid in which to keep a lettuce in a refrigerator. It must be kept in mind, however, that the registered design is for the combination container and closure, whatever may be the use to which articles made in accordance with the registered design are put.

3. The learned trial Judge held that the three registerd designs were valid, but that they had not been infringed by the respondent. Although the validity of the registered designs was in issue by way of defence and counter claim at the trial, no cross appeal was lodged by the respondent against King J.'s finding that the registered designs were not invalid.

4. The registered design is illustrated by four drawings which portray its appearance from different points of view and by a drawing of a vertical cross-section of it. The following is a copy of the five figures appearing in the registered design.

(DIAGRAM OMITTED)

5. It is necessary to describe in words the appearance of an article made in accordance with Registered Design No. 80058, but it must be kept in mind that questions of infringement are determined by comparing the registered design itself with the accused article.

6. The height and width of the bowl made in accordance with the registered design are approximately the same. The part of the side wall is frusto-conical, extending downwardly for about half the distance from the top of the bowl to the surface upon which the bowl is placed. In effect, the part of the side wall tapers slightly inwardly, in a straight line, from top to bottom at an angle of a few degrees. The bowl then curves inwardly with a constant radius until it forms a ring base. The junction between this inward curve and the top of the ring base is in the form of a shorter curve extending outwardly. The interior of the bowl is hollow, the cavity extending into the ring base of the bowl. There is an outwardly projecting flange near the top of the side wall which extends laterally around the circumference of the bowl. The lid is dome shaped, the dome extending almost to the edge of the lid. Between the end of the dome and the edge of the lid and extending around the lid are a short horizontal area, an upward standing rim which forms a downwardly opening groove fitting over the rim of the bowl, and a short approximately horizontal projection.

7. The article manufactured by the appellants in accordance with the registered design is made of a thermoplastic substance and is called a lettuce keeper or crisper. Articles manufactured in accordance with the design or articles manufactured by the respondent are to be used by placing a common form of lettuce of spherical shape (as distinct from other varieties such as a mignonette or cos lettuce, neither of which would be readily susceptible of spiking and retention in an integrated form) in the bowl on a vertical spike with a flat base. The lettuce is thus impaled on the spike and is held clear of the wall of the container. If the lettuce has been washed before it is placed in the container, the water that remains on the lettuce after washing may drain to the base of the container without touching the leaves of the lettuce. The closure or lid protects the lettuce from contact from above, and reduces or prevents it from drying out in the refrigerator.

8. The registered design was registered under the Designs Act 1906 (Cth) ("the Act") as it stood before the amendments effected by the Designs Amendment Act 1981 (Cth). As the definition of "design" in s. 4 of the Act then stood, to be registrable a design had to be applicable, in any way or by any means, to the purpose of the ornamentation, or pattern, or shape, or configuration of an article, or to any two or more of those purposes. The case law interpreting the Act indicated that the design had to be capable of application to an article in such a way that the article would show to the eye the particular pattern, shape, configuration or ornamentation, the concept, suggestion or idea of which constituted the design. The present definition of 'design' puts these principles into statutory form by providing:

'Design' means 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.'

9. Where a three-dimensional article is sought to be protected under the law of designs, it is the concepts of "shape" and "configuration" which have primary relevance: Ricketson, The Law of Intellectual Property, 1984, p 488. Registration of the design does not protect methods or principles of construction. A conception or suggestion of a mode or principle of construction, though in some sense a design, is not registrable under the Act. If the shape exists solely to make the article work or function then it is not within the concept of a registered design. The Act protects pattern, shape, configuration or ornament not function: AMP Incorporated v Utilux Pty. Limited (1972) RPC 103; Firmagroup Australia Pty. Ltd. v Byrne & Davidson Doors (Vic) Pty. Limited (1986) 67 ALR 29 at 37; (1987) 73 ALR 321 at 323. While the Firmagroup Case was heard by the High Court on appeal from the Full Court of this Court, in my view nothing in the High Court's judgment casts doubt upon the analysis of the applicable principles of law in the decision of the Full Court in that case. A design is not registrable unless it is a new or original design. Although the shape or pattern may itself be an entirely new one never previously published or registered, it is not necessary, however, that the shape or pattern be entirely new. The novelty may consist of the application of an old shape or pattern to new subject matter: Saunders v Wiel (1893) 10 RPC 29; Dean's Rag Book Co. Ltd. v Pomerantz & Sons (1930) 47 RPC 485 per Luxmoore J. at 490-491.

10. The design is the mental conception conveyed to the mind by the eye; it is the mental picture of the shape, configuration, pattern or ornament of the article to which the design has been applied: Pugh v Riley Cycle Case (1912) 29 RPC 196 per Parker J. at 202. For a design to be protected there must be a special or distinctive appearance, something in the design which captures and appeals to the eye. To have that effect, the design must be noticeable and have some perceptible appearance of an individual character: AMP Incorporated v Utilux Pty. Limited (supra). In Firmagroup Australia Pty. Ltd. v Byrne & Davidson Doors (Vic) Pty. Limited (supra) at 37-38 I discussed the cases dealing with the meaning of design and the manner in which the effect of its infringement is to be judged. I there referred to some divergence in the authorities as to whether the matters are to be judged by the eye of the court or by the eye of somebody else, such as an expert witness, or people in the trade or business which deals with the article made from or by the application of the registered design, or the eye of the ultimate consumer of the product. I stated that in my view the law in Australia concerning that question was that it is for the court to determine the meaning of a design in proceedings under the Act, whether the central question be the meaning of the design, novelty or infringement. I observed that, while some designs are simple so that the court needs no expert evidence to interpret them, other designs are complex and judges require technical assistance in order to understand them. Such evidence is plainly admissible, but ultimately it is for the court to rule on the meaning of a design. Similarly, prior art may be a fairly simple matter in a particular case, requiring little or no technical evidence. On the other hand, the understanding and interpretation of prior art may call for expert assistance to be provided to the court for similar reasons. I see no objection in an appropriate case to evidence being received from persons in the relevant trade or industry or members of the public directed to the question of infringement; but it is for the court to determine that question with or without such evidence. However, to say that questions of infringement must be determined by reference to the eye of the consumer or of the relevant industry or trade comes perilously close to asserting that the determination of questions of infringement depends on the evidence of such persons, rather than being determined by the court itself.

11. The scope of a registered design must be determined with reference to the background of the prior art at the priority date and questionsof infringement and novelty or originality are connected. In Hecla Foundry Co. v Walker Hunter & Co. (1889) 14 AC 550 Lord Herschell said at 555:

"... one may be able to take into account the state
of knowledge at the time of registration, and in
what respect the design was new or original, when
considering whether any variations from the
registered design which appear in the alleged
infringement are substantial or immaterial."

Where novelty or originality is discovered in slight variations, there cannot be infringement without a very close resemblance between the registered design and the article alleged to be an infringement of the design. Lloyd-Jacob J. in Rosedale Associated Manufacturers Ltd. v Airfix Products Limited (1956) RPC 360 at 364 said that the court would have regard to what was "known and old", and:

"... if the particular features which provide a
novel conception have not been reproduced in the
alleged infringement, the similarity of appearance
between the article complained of and the
registered design if present must necessarily
reside in the common possession of characteristics
which are free to everybody to employ."

See also Macrae Knitting Mills Limited v Lowes Limited (1936) 55 CLR at 725 per Dixon J. at 731 and L.J. Fisher & Co. Limited v Fabtite Industries Pty. Limited (1978) 49 OJOP 3611 per Fullagar J. at 3620.

12. Small differences between the registered design and the prior art will generally lead to a finding of no infringement if there are equally small differences between the registered design and the alleged infringing article. On the other hand, the greater the advance in the registered design over the prior art, generally the more likely that a court will find common features between the design and the alleged infringing article to support a finding of infringement: Kevi A/S v Suspa Verein U.K. Limited (1982) RPC 173 per Falconer J. at 179; Firmagroup v Byrne & Davidson (supra) at 38; D. Sebel & Co. Limited v. National Art Metal Co. Pty. Limited (1965) 10 FLR 224 per Jacobs J. at 229; Russell Clarke: Designs 5th Edn. pp 85-7; Blanco White on Patents and Designs 4th Edn pp 326-7; and Ricketson The Law of Industrial Property, p 493.

13. The trial Judge paid regard to the importance of prior art and did so, in my opinion, correctly when he said:

"The significance or relevant prior art is that the
scope of protection of a Registered Design will
depend upon the extent to which its features are
seen to be novel or original against the
background of prior knowledge."

14. His Honour found that the only prior art in the area of lettuce crispers consisted of earlier products of the appellants and the respondent, of which the only relevant one is an earlier product of the appellants which was Exhibit "B" in the proceedings before him. This earlier product was intended to perform the same function as articles incorporating the registered design and comprised, as do the latter, a thermoplastic bowl and lid. The bowl of the earlier product was shaped more like a conventional pudding basin than is the registered design, its side wall appearing to curve uniformly downwards to the surface on which the article stands. The lid of the earlier product had a low dome extending over above half its area, with an annular horizontal surface between the dome and an upwardly extending flange which performed the same function as does the annular flange on the lid of the registered design. On the outside of the flange there was, as there is in the registered design, a short laterally extending flange. The annular horizontal surface is much wider than in the registered design.

15. The trial Judge found that persons familiar with what was on the market on 16 August 1979 (the date of registration claimed in respect of the registered design) would be familiar with the visual concept of a bowl with a domed lid intended for the keeping of lettuce. The trial Judge found, however, that the form of the registered design suggests the concept of a container of a spherical object such as a lettuce much more vividly than does the prior art article. His Honour found that the shape of the former part of the prior art article, looked at alone, did little in this regard, although the effect of the past marketing of the prior art article would have made the public familiar on 16 August 1979 with the idea of lettuce holders designed to hold objects of spherical form. His Honour noted that the fact that the registered design was in its appearance obviously designed to hold a spherical object would come as no surprise. No challenge was made to these findings of his Honour.

16. The consequence of sub-s. 30(1) of the Act is that there is infringement of a registered design in any one of three cases: namely, where the design which has been applied by the defendant is:

(a) the registered design itself;
(b) an obvious imitation of the registered design; or
(c) a fraudulent imitation of the registered design.

17. An obvious imitation is one which is not the same as the registered design but is a "copy apparent to the eye notwithstanding slight differences": Malleys Limited v J.W. Tomlin Pty. Limited [1961] HCA 77; (1961) 35 ALJR 352 at 354. The question must be looked at as one of substance and by examining the essential features of the design: Oliver & Co. v Thornley & Co. (1896) 13 RPC 490; Hanfstaengl v W.H. Smith & Sons (1905) 21 TLR 291; Wallpaper Manufacturers Limited v Derby Paper Staining Co. (1925) 42 RPC 443; Dunlop Rubber Co. Ltd. v Golfball Developments Ltd. (1931) 48 RPC 268 per Farwell J. at 281; Benchairs Limited v Chair Centre Limited (1974) RPC 429 per Graham J. at 437; Firmagroup Australia Pty. Limited v Byrne & Davidson Doors (Vic) Pty. Limited (supra) at 41. A closer correspondence between the registered design and the accused design is necessary to satisfy the test of obvious imitation than fraudulent imitation.

18. In distinguishing the concepts of "obvious imitation" and "fraudulent imitation", the oft-cited passage from the judgment of Farwell J. in Dunlop Rubber Co. Limited v Golfball Development Limited (supra) at 279-280 is useful and apposite:

"Now with regard to the two words 'fraudulent' or
'obvious', in my 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 to the eye looking at
the two. With regard to the word 'fraudulent',
fraudulent I think does presuppose a knowledge of
the registered design. I think it would be
difficult for a court to come to the conclusion
that an imitation was fraudulent unless the court
was satisfied that the registered design had been
known to the author of the alleged infringing
design, and further, it seems to me that
'fraudulent' imports something in the nature of
making use of the registered design. It does not
necessarily import deliberate intention to steal
the property of the owner of the registered
design. It does not import any intention to be
fraudulent, because a 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 be honest in that sense. But
fraudulent imitation 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 a fraudulent imitation, and yet the
fraudulent imitation, although it is different in
some respects from the original, and in respects
which render it not obviously an imitation may yet
be an imitation perceptible when the two designs
are closely scanned and accordingly an
infringement."

19. In Malleys Case (supra) at 354 the High Court described a fraudulent imitation as being:

"... a copy with differences which are both
apparent and not so slight as to be insubstantial
but which have been made merely to disguise the
copying."

20. A design may be an obvious imitation within the meaning of para. 30(1)(a) of the Act notwithstanding that the person who puts the obvious imitation on the market may not know of the registered design. By contrast, a fraudulent imitation presupposes a knowledge of the registered design and making use of it by the author of the alleged infringing design: Dunlop Rubber Co. Ltd. v Golfball Developments Ltd (supra) per Farwell J. at 279; Lewis Falk Limited v Jacobwitz (1944) 61 RPC 116 per Morton J. at 122, Firmagroup (supra) at 41. It follows that, whereas visual comparison will establish whether the article alleged to infringe the registered design applies the registered design or an obvious imitation of it, something more is required to establish whether there has been a fraudulent imitation.

21. As I observed in Firmagroup at 41 the use of the word "fraudulent" in the Act is perhaps somewhat unfortunate since fraudulent in this context does not necessarily connote dishonesty. The essence of fraudulent imitation is that the respondent's design has knowingly, consciously or deliberately been based on or derived from the registered design and neither dishonest intent nor deliberate or conscious intention to copy is a necessary element: Grafton v Watson (1884) 50 LT(NS) 141 especially per Cotton L.J. at 144; Pugh v Riley Cycle Co. (supra) per Parker J. at 202; Lewish Falk v Jacobwitz (supra).

22. It is the necessary corollary of a finding that a design is entitled to statutory protection so as to confer the monopoly on the person in whose name it is registered, that the design is one which involves some unique feature of pattern, shape, configuration or ornament applicable to an article, and not being a method or principle of construction. If registration of a design is to confer anything useful upon the registered owner then questions of infringement must not be determined by a narrow or overly technical approach when comparing the registered design and the design of the offending article.

23. First impressions are important in determining whether there is infringement of a registered design. An essential purpose of the statutory scheme of design registration is to confer a monopoly upon the owner of the design for a limited period so that he may be rewarded for his inventiveness by exploiting the design commercially. Section 30 of the Act, specifying the circumstances in which a registered design may be infringed, should be interpreted having regard to the objects of the legislative scheme. In particular, it should be recognised that s. 30 is intended to ensure that persons other than those entitled to the benefit of a registered design cannot produce or market articles which are derived by imitation, whether obvious or disguised, of the registered design and which are likely to be regarded by others who may acquire them as those of the registered design owner. There are, of course, two associated purposes here. One, that of encouraging and rewarding invention by the proprietor of the registered design, exhibits an analogy with the law of patents. The other, preventing confusion between articles bearing the registered design and infringing articles, has common elements with common law principles as to passing off.

24. The visual comparison test is obviously an important and sensible test to employ, having regard to the second purpose identified above, because purchasers of articles will in practice use their eyes in deciding whether to acquire, by purchase or otherwise, a particular article. It is for this reason that the principle is now well established by the courts that precise mathematical comparisons or matters of measurement or ratios, which form no part of the mental picture which the eye conveys to the brain of the shape or configuration suggested by the design, are not to be applied as the test of infringement. Appearance to the eye is the critical issue, and the decision of the trial Judge is to be given particular weight unless some error in his judgment has been demonstrated: Dalgety Australia Operations Limited v F.F. Seeley Nominees Pty. Limited (1986) 6 IPR 361 per Fisher J. at 367 and Beaumont J. at 373-4.

25. I compare now the appearance of the respondent's article which is alleged to infringe the registered design with the registered design itself. On first impression there are obviously similarities between the respondent's article and the figures appearing in the registered design, in particular figure 5. It must be remembered, however, that figure 5 represents a cross section of the depicted bowl and lid; hence the cross hatching shows the cross section by some form of external or outer cutting. The other figures are probably a more reliable measure of comparison, although I certainly take figure 5 into account. Each lid has a dome like appearance and a rim at the circumference. Walls on both the respondent's container or bowl and the registered design curve inwardly and culminate in a base with a fairly squat appearance.

26. However, there are distinct and perceptible differences between the two. The critical and most obvious difference lies in the dome of the lid itself. Although the trial Judge found that the visual concept of a bowl with a domed lid intended for the keeping of lettuce was familiar to persons aware of what was on the market on 16 August 1979, the domed lid used in the prior art was distinctly different from the domed lid represented by the registered design. The appellant's earlier product, being the only prior art in the area of lettuce crispers which the trial Judge found to be relevant, had a small and only slightly raised dome which occupied only a portion, perhaps one half, of the total area of the lid; whereas the dome of the lid in the registered design extends close to the outer rim of the lid and is the dominant feature of the lid and of the combination lid and bowl. The domes of the registered design and of the respondent's article are similar, but there are obvious differences. The essential difference between the two lids is that the dome on the respondent's article is distinctly higher than the dome on the registered design, although there are other differences including small differences between the rims on the lids themselves.

27. A second difference is in the bowl. The side wall of the respondent's bowl begins from the top downwards with approximately the same vertical fall as that contained in the registered design, but curves inwardly at a distinctly higher point than does the wall of the registered design. The lower part of the respondent's bowl conveys the appearance of a more continuous and gradual curve than the more rigid and pronounced curve of the lower part of the registered design.

28. The third difference, but a less distinct one, lies in the comparison of the bases of the respondent's article with the registered design. The base of the bowl in the registered design is smaller in height than that of the respondent's article and contains at its top a small curved area, whereas the base of the respondent's article is higher and more perpendicular than that of the registered design.

29. Doubtless there are other differences between the registered design and the respondent's article which can be measured by appropriate instruments, but this is not the test to be applied for determining questions of infringement under the Act.

30. Based on first impression and on later impressions formed by several examinations and comparisons between the registered design and the respondent's product, in my opinion the respondent's article plainly involves no application of the design itself. Nor is there any obvious imitation of the registered design.

31. As to the question of fraudulent imitation some examination of the trial Judge's findings is required. The managing director of the respondent, Mr. Davis, gave evidence at the trial. He said in essence that the respondent wished to produce a lettuce keeper as a companion to a product which it had already marketed, being a lettuce shaker of spherical form. It was not suggested to Mr. Davis in cross-examination that his company had deliberately based its design upon the product of the appellants or that it had deliberately copied it. Nor was it suggested that any differences were adopted for the purpose of disguising any fact of copying.

32. The designer of the respondent's product is a Mr. Carlson who also gave evidence. He said that he had the idea in mind of a "ball" concept for the lettuce crisper before he saw products of the appellants. He said that the conception which he had initially formed as to the ball design did not alter after he had examined the samples produced to him of the Tupperware products, being the products of the appellant, prior to his producing concept drawings for the Decor product. He gave evidence as to the reasons for his adoption of the various features of the Decor design, none of which involved copying or disguising and copying of the appellants' product or design. This evidence was not challenged. He said that he was not asked to copy the registered design and that he did not copy it. His Honour appears to have accepted the evidence of Mr. Carlson. Although his Honour did not expressly state that he accepted such evidence, its acceptance appears to me to be implicit in his Honour's findings of fact. An element of doubt arises from the statement by his Honour that the respondent "was helped" by the sample of the appellant's product which was placed before Mr. Carlson and the design development inherent in the product over and above the prior art consisting of the article produced by the appellant earlier. Although his Honour did not define the respects in which this help was afforded, in my view it cannot be inferred that his Honour rejected any material part of Mr. Carlson's evidence.

33. The evidence does not therefore support a finding that the respondent knowingly, consciously or deliberately based its design upon the registered design or that the respondent's design was derived from that of the appellant so as to constitute a fraudulent imitation of the appellant's design.

34. It was submitted on behalf of the appellants that the trial Judge erred in that he approached the comparison through the eye of an expert in design looking at the matter in considerable detail instead of in terms of visual impact. The trial Judge stated the test which he applied, namely, that the requisite comparison is between the offending article and the registered design, that the required comparison is visual and must be made by the court.

35. His Honour did say that the Court should take into account common trade knowledge and usage in the class of articles to which the registered design relates and cited Phillips v Harbrow Rubbert Company (1920) 37 RPC 233 per Lord Moulton at 239-40 as authority for that proposition. His Honour stated the result of his comparison of the registered design with the respondent's article, noting similarities and the major points of difference. It is true that in his examination his Honour stated in some detail the particular differences which he observed; but this does not in my view detract from his Honour's findings as to the differences. His Honour plainly approached the comparison as a matter of visual impact correctly and not as an expert in design, and he did not look in undue detail at the matter.

36. It was also submitted that his Honour erred in that he did not consider the design and the article said to infringe the design separately and together, comparing the mental picture which the Court retains of the registered design with the infringing article, and that he failed to note that the respondent's article was more like the registered design than the registered design was similar to the prior art.

37. His Honour did not state, whether he considered the designs of the registered design and of the respondent's product separately and together and whether he compared the mental picture he had of the registered design with the accused article. Nor, in my view, was it necessary that he make any such express statement. It is obvious from his Honour's reasons for judgment that he compared the registered design and the respondent's product carefully and in accordance with accepted principles. No error in this respect has been established.

38. One matter remains to be considered. On the hearing of the appeal counsel for the appellants moved for leave to be granted to the appellants to amend the grounds of appeal by adding two grounds, namely,

"16. That having found that the said Registered
Designs were valid, the learned Judge should
have found either:
(a) that the Defendant had infringed the
Registered Design; or
(b) that if there was no infringement of
the Registered Design that the
Defendant had infringed the copyright
in the said artistic works
corresponding to the said Registered
Designs.
17. That the learned Judge erred in law in
failing to consider whether the copyright in
the drawings corresponding to the registered
design and infringed."

39. The motion for leave to amend the grounds of appeal was opposed by counsel for the respondent. At the conclusion of argument on the motion, the Court dismissed the motion with costs and said that it would give its reasons later.

40. In essence, the appellants sought to assert for the first time in this Court that the respondent had infringed the copyright of the appellants in the artistic works which corresponded to the registered designs, assuming that the Supreme Court correctly found that the registered designs were valid and that the Supreme Court's finding that the respondent had not infringed the registered design was upheld in this Court. The only question relating to copyright which was raised before the Supreme Court at the trial was whether, on the assumption that the registered designs were held to be invalid, copyright could be infringed. That question involved the construction of s. 77 of the Copyright Act 1968 (Cth), whereas the question sought to be raised by amending the grounds of appeal turns upon the application of s. 75 of the Copyright Act. Section 75 provides:

"75.Subject to the next succeeding section, where
copyright subsists in an artistic work and a
corresponding design is registered under the
Designs Act 1906-1968, it is not an infringement of
the copyright in the work -
(a) to do anything, while the monopoly in the
registered design subsists under the Designs
Act 1906-1968, that is within the scope of
the monopoly in the design; or
(b) to do anything, after the monopoly in the
registered design has expired, that, if it
had been done while the monopoly in the
design subsisted, would have been within the
scope of that monopoly as extended to all
associated designs and articles."

41. The effect of s. 75 is generally taken to be that, where a design is registered, it is then no longer an infringement of copyright in the subject of the design to do anything falling within the scope of the monopoly in the design conferred by the Designs Act, although the reproduction of the work would otherwise have involved breach of copyright in the work: Ricketson, The Law of Intellectual Property, p 516.

42. Section 77 of the Copyright Act canvassed in proceedings before the trial Judge, deals with the loss of copyright protection where copyright subsists in an artistic work; a corresponding design is applied industrially by the copyright owner or his licensee; articles to which the corresponding design have been applied are sold in Australia; and the corresponding design has not been registered under the Designs Act when the articles are sold. It is not necessary to review the precise scope of any loss of copyright protection under s. 77 for the purposes of this appeal, since no challenge has been made on appeal to the trial Judge's finding that the appellant's design was validly registered.

43. In my view the pleadings do not raise the issue which the appellants now seek to raise on the appeal. They raise an issue under s. 77, not under s. 75. Even if the point was open on the pleadings, it is common ground that it was not pressed during the trial. The appellant's failure to press the argument as to s. 75 at the trial explains why the learned trial Judge held in the last page of his judgment that there was no necessity for him to consider the argument addressed on the question of copyright since he had found that the registered design was valid, although not infringed.

44. Had the point been raised at the trial it probably would have led to the trial being conducted differently on behalf of the respondent. It would have been open to the respondent to call further evidence and, of course, to make additional submissions in relation to the issue. Nor is this simply a case of an attempt to raise an appeal a pure question of law, where that question of law was not raised below, and where the point requires no further facts to support it than those which were otherwise before the court from which the appeal is brought and no further inferences of fact than those already drawn by the trial Judge.

45. King J. made no findings on the question of ownership and subsistence of copyright, reproduction and copying. He was not bound to make such findings, in view of the manner in which the appellants put their case before him and in view of the finding made by him that the appellant's design was validly registered to which earlier reference has been made. Indeed, his Honour made no findings of fact at all with respect to copyright.

46. In substance the appellant is seeking to amend the grounds of appeal by raising a different cause of action to that which it pursued on the trial of the matter. Having regard to the principles laid down by the High Court in Coulton v Holcombe [1986] HCA 33; (1986) 65 ALR 656 at 660-661 - which, it should be noted, apply to an intermediate court as well as to an ultimate appellate court - this Court declined to allow the amendment and dismissed the motion with costs. In my view, this was not a case involving exceptional circumstances such as would justify the Court in allowiong the appellant to depart from the basis on which he had conducted his case at first instance, raising an argument as to s. 75 of the Copyright Act which the appellant had failed to put during the hearing when it had the opportunity to do so: University of Wollongong v Melwally (No. 2) (9185) 60 ALR 68 at 71; Coulton v Holcome (supra) at 660.

47. I would dismiss the appeal with costs.

The questions which were raised in this appeal are fully disclosed in the reasons for judgment of Lockhart J., which I have had the advantage of reading.

2. I agree in the reasons which Lockhart J. gives for the order dismissing the appellant's motion for leave to amend its grounds of appeal.

3. The learned trial judge's decisions that there had not been an application of any of the first appellant's three registered designs or of any obvious imitation of any of those three designs to the respondent's bowl were decisions of fact. Each of those questions of fact was to be determined, the law requires, upon visual examination and comparison of the design and the article alleged to infringe that design in the sense contemplated by sub-section 30(1) of the Designs Act 1906. My own visual examination and comparison of the designs and the bowl lead me to the same conclusion of fact. But it was submitted on behalf of the appellant that error had infected the learned trial judge's performance of his fact finding function. First, it was said that his Honour's recitation in his reasons for judgment of particular differences between the registered designs and the design which informed the respondent's bowl betrayed a concern with severable aspects of design which was inconsistent with that concentration on comparison "as a whole" which it was said that the law required. But I am not persuaded that the reasons for judgment do suggest a failure to make comparison "as a whole". Second, it was said that, because the reasons for judgment do not record any examination by his Honour of the registered designs on the one hand and the bowl on the other, separately, it should be inferred that his Honour had failed to make comparison of the designs and the bowl by reference to his recollection of one or the other, and that that failure was an error, of law, in the performance of his fact finding function. Reference was made to Grafton v. Watson (1884) 50 LT 420 at 424; D. Sebel & Co. Ltd. v. National Art Metal Co. Pty. Ltd. (1965) 10 FLR 224 at 228; Benchairs Ltd. v. Chair Centre Ltd. (1974) RPC 429 at 445; and Valor Heating Company Ltd. v. Main Gas Appliances (1973) RPC 871 at 878. (See also Lahore: Intellectual Property in Australia - Patents, Designs, Trade Marks, Confidential Information, Unfair Competition, vol. 1, p 1608.) Like Lockhart J., I am not prepared to draw the suggested inference. If the inference were drawn, I would hesitate to hold that the inferred failure constituted an error of law. It is unnecessary, however, to determine the point. Third, it was submitted that the learned trial judge had failed to take into account that, as it was suggested by counsel for the appellants, the registered designs differed more markedly from the prior art in the relevant field of design than from the design of the respondent's bowl. But I think that that part of his Honour's reasons for judgment which commences with a discussion of the prior art and concludes with a statement of his decision that there was no obvious imitation does disclose his Honour's consciousness of the significance of the comparison which the submission proposes.

4. I agree, for the reasons which Lockhart J. gives, that the learned trial judge's finding that there had not been fraudulent imitation cannot be disturbed.

5. The appeal should be dismissed with costs.

I agree in the reasons for judgment of Lockhart J. I would dismiss the appeal with costs.