Re Brisbane Aluminium Fabricators and Supplies Pty Ltd v Techni Interiors Pty Ltd [1991] FCA 619; 23 IPR 107; (1993) Aipc 90-955 (12 December 1991)

FEDERAL COURT OF AUSTRALIA

Re: BRISBANE ALUMINIUM FABRICATORS AND SUPPLIES PTY LTD
And: TECHNI INTERIORS PTY LTD
No. Q G86 of 1990
FED No. 805
Copyright and Designs
[1991] FCA 619; 23 IPR 107
(1993) AIPC 90-955

COURT

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
GENERAL DIVISION
Pincus J.(1)

CATCHWORDS

Copyright and Designs - whether valid registration of an extruded object where length indeterminate but other dimensions set - whether design original and with features sufficiently different from ones commonly in use in the trade.

Designs Act 1906

Brisbane Aluminium Fabricators and Supplies Pty. Ltd. v. Techni Interiors Pty. Ltd.

HEARING

BRISBANE
12:12:1991

Counsel for the applicant: Mr A.B. Crowe

Solicitors for the applicant: Corrs Chambers Westgarth

Counsel for the respondent: Mr P.D. McMurdo

Solicitors for the respondent: Seymour Nulty

(now Phillips Fox)

ORDER

The application be dismissed.

The applicant pay the respondent's costs of and incidental to the proceedings, to be taxed.
NOTE: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

DECISION

This is an application under the Designs Act 1906 ("the Act") for an injunction and damages, based upon an allegation that the respondent infringed the applicant's monopoly in a registered design, No. AU-S-103890. The defence denies the validity of registration (which took place on 18 May 1989). It also puts in issue the allegation of infringement.

2. The design in question has a purely functional purpose. It is intended to be applied in making extruded aluminium sections used in the building industry. These sections, about 9 cm wide, are able to be used as door frames, glazing jambs and the like. For example, a vertical length of the section may be fixed in a position as a means of holding in place plasterboard used in office partitions; the sheets of board are held between the metal protrusions shown in the design, the representation of which is as follows:

(DIAGRAM OMITTED)

3. The statement of monopoly set out in the applicant's certificate of registration reads as follows:

"Monopoly is claimed in the shape and configuration
of an extrusion of indefinite length as illustrated
in the accompanying representations".

It should be noted that the monopoly claimed is for a design of an extrusion - an extruded object. The statement that the extrusion is of indefinite length is consistent with the representation which has, it will be observed, an irregular line included in the perspective view, indicating that what I shall call the length of the object depicted is indefinite. The claim is for a monopoly, not in a two-dimensional entity such as a drawing, but in a three-dimensional shape, of uniform cross-section. The length is of no practical significance in assessing the characteristics or usefulness of the design.

4. After the case was heard, there was reported a decision of the Full Court in Bondor Pty. Ltd. v. National Panels Pty. Ltd. (1991) 102 ALR 65. It is convenient to deal first with the effect of that decision.

5. In the Bondor case, the Full Court held that the registration of a three-dimensional shape was invalid. It is necessary to analyse the grounds on which that was held, to determine whether or not the reasoning applies in the present case.

6. The design there in question was of a panel for use in making coldrooms and other buildings. The point of it was not the shape of the panel itself, but the means provided for attachment of one panel to an adjoining panel. In commenting upon the reasons I gave at first instance - I was the primary Judge - the Full Court remarked:

"A copy of the representation of the design is annexed to these reasons
... The representation includes breaks in two lines across the thickness
and the width at the end of the panel which is furthest from the viewer.
His Honour held that those indications were intended to convey that the
length of the panel as drawn is indefinite, that being in accordance
with the statement of the nature of the design. His Honour held that
the representation itself did not indicate that all three dimensions
were indefinite. However, on the appeal, counsel for the appellants put
his case on the basis that the design in question was indefinite, not
only as to length but also as to the other two dimensions ..." (66-67).

7. That is a point of distinction: here, the monopoly claimed relates to a shape which is, as to two dimensions, quite definite; it is the "length" which is indefinite - i.e. the dimension "into" the page. The word "length" is used in the Bondor case in the same sense.

8. In the Bondor case, the Full Court referred to the argument advanced for the appellant and then went on in language which it appears necessary to quote in full:

"However, in our opinion, in asserting a monopoly under the Act in
respect of a panel of indefinite length (emphasis added) but with the
particular slip joint configurations at each end, the applicant was
seeking to obtain more than the Act permitted, namely protection for one
particular individual and specific appearance. It is not a question of
the one design being applicable (as undoubtedly may be the case) to
articles of the same appearance and shape but of different sizes. Nor
is it a question of imposing a requirement of such precision in
definition as might be found in, say a working drawing. Various
examples of proper user of designs in this way were discussed in
argument.
But the retreat by the appellants to rely upon the common
characteristics of panels with different appearances, given the
indefinite length of the panels encompassed by the registration,
(emphasis added) served to emphasise the applicability against their
case of the reasoning in the authorities to which we have referred. It
would have been no answer for the unsuccessful party in Re Bayer's
Design to say that, in all its applications, the design had to be in
respect of an article being a corset, constructed with gores or gussets
cut in a particular way, or in Moody v Tree that the design would be
applied only in relation to baskets worked in a particular fashion. It
was that range of the purported monopoly which led the courts to speak
of that for which registration was sought as something other than a
design in the statutory sense. The designs were so defined as
necessarily to permit differences of shape and this spelled invalidity,
as Beaumont J pointed out in Dalgety Australia Operations Ltd v F.F.
Seeley Nominees Pty Ltd (1986) 10 FCR 403 at 414-15; 64 ALR 421.
That adverse conclusion to the appellants is only fortified if one
accepts their submission that not only length but the other dimensions
are indefinite.
The appeal should be dismissed, with costs" (69-70).

9. As I read this, the Court appears to have held that the indefinite length was, in itself, sufficient to destroy the validity of the registration; that was the "adverse conclusion" referred to in the second-last sentence, described as being fortified by the indefiniteness of the other dimensions.

10. A representation of the design which was in issue in the Bondor case may be found in the report at first instance: 98 ALR 114 at 116. The mode of representation differs from that in the present case; no cross-section of the design was represented, but only a perspective view. Here, one finds both a perspective view and a cross-section. That does not appear to make any difference to the application of the principle of the Bondor case. As in Bondor, the intention of the registration is to claim a monopoly for the shape of a three-dimensional object, although, in each case, the practical merit or point of the design may be completely discerned from examining a drawing of a cross- section.

11. At first instance, I suggested that indefiniteness as to one dimension was not fatal to the validity of a design: 98 ALR at 118; my reasons referred to the decision of the High Court in Malleys Ltd. v. J.W. Tomlin Pty. Ltd. [1961] HCA 77; (1961) 35 ALJR 352. The judgment of the Full Court cannot, I think, be reconciled with the suggestion I made. The Bondor case appears to me to decide that a design depicting an object of uniform cross-section but indefinite length (as in Bondor and in this case) is not registrable under the Act. Although, as the Full Court made clear in Bondor, each of the three dimensions was indefinitely variable in relation to the others, the ground of decision based upon indefiniteness of length seems to me distinct and binding. Such a design - that is, a design of an object of which one of the three dimensions is indefinitely variable - is not a design of a thing having a "particular individual and specific appearance": In Re Wolanski's Registered Design [1953] HCA 72; (1953) 88 CLR 278 at 279.

12. I am therefore of opinion that the applicant's design was not registrable under the Act and the suit must fail. I feel obliged to add that, but for the Full Court's decision, I might have been inclined to apply the view of the law suggested at first instance in Bondor and to hold that, where the cross-section is uniform, indefiniteness of length is not fatal to the validity of registration of a three-dimensional design.

13. It is unnecessary to go further, but as I have formed a clear view about another question in the case, I think I should briefly express it.

14. Mr McMurdo argued for the respondent that the design was not registrable because it was not original and in particular because it differed "only in immaterial details or in features commonly used in the relevant trade" from a design published and used in Australia before the priority date: see s.17(1)(a) of the Act. He relied upon the publication of a number of designs which were in use for similar purposes. Mr Crowe, for the applicant, said that the registered design is not a mere trade variant of a kind any skilled workman might make, and sought to defend it on the ground that it was new even if all its parts were old.

15. The evidence includes drawings of a number of rather similar published designs predating the applicant's, but it appears to me it is necessary to refer by way of example to one only, namely Exhibit PJS11 to the supplementary statement of P.J. Shaw. That includes the design of a section having similar purposes ("the Donn design"), forming part of a brochure produced and published in this country by a company called Donn Pacific Limited:

(DESIGN OMITTED)

16. The applicant's design priority date is 7 December 1987 and it is not disputed that the Donn design preceded that date; there is in evidence a copy of a drawing dated 18 August 1981 which shows the Donn design in more detail. It was proved that Mr Theron, a director of the applicant, had knowledge of the Donn design before he caused the applicant's design to be produced.

17. It is necessary to refer to some aspects of the applicant's case concerning the merits of its registered design.

18. It will be noticed that it incorporates four webs and a channel, the outer webs being shorter than the inner webs. Each outer web has a short return flange which was incorporated for specific purposes. I have considered the evidence relating to the return flanges, but find it unnecessary to set out its detail; there is no important difference between the applicant's design and the Donn design in this area. The applicant's inner webs were made so as to allow the section to be used either as a wall frame or as a ceiling track. It will be noticed that the applicant's inner web design has a groove in it; that is a weak line at which a web can be snapped off. That groove is the one closer to the main body of the section. Snapping off part of the web, to make the section more versatile, could hardly be said to constitute a novel idea. The longer web also has a smaller groove in it, which is simply a drill bit location line.

19. Emphasis was placed upon the idea of having the channel positioned off-centre, again in the interests of versatility. The advantage is, however, a relatively trivial one. Only one type of door stop is necessary using the applicant's system, whereas if the channel is centrally placed (as is usual with sections of this type) there need to be two different sorts of door stop. In the applicant's system, a single type of door stop may be used for a 35 mm wide door as well as a 45 mm wide door, by reversing the door stop's orientation. It was agreed by Mr Theron, who gave evidence for the applicant, that one disadvantage in not using a central channel was that the tradesmen using the applicant's system had to think ahead a little more, as to which way the door stop should be inserted.

20. The allegedly infringing design of the respondent has a centrally placed channel.

21. Because building components in commercial work tend to be of one of a limited number of standard sizes, there is not a great deal of room for significant variations in the design of this kind of section, once the basic configuration is determined upon.

22. It is not very obvious in the drawing of the Donn design, but the inner web there used is crooked to locate a special kind of stud which clips in; that appears to me to be a refinement which is omitted from the applicant's design. Again, the Donn design incorporates a slightly more elaborate central channel, intended to take special neoprene "rubbers".

23. I would find it difficult to agree that registration of the applicant's design falls within the spirit of the Act, as explained in Dart Industries Inc. v. The Decor Corporation Pty. Limited (1989) AIPC 90-569:

"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" (p 38,978).

The word "inventiveness" is significant. The applicant's design depends for its merit on the way in which it performs a function, rather than its aesthetic appeal. The better view appears to be that there must be some substantial change from previous designs in order to justify registration: Aspro-Nicholas Limited's Design Application (1974) RPC 645.

24. Here, the evidence shows that a number of different looking designs have been used to achieve purposes similar to those which the applicant's design serves. The solution adopted by a designer is likely to depend not upon any particular inventive step, but on the designer's judgment as to what is the most practical solution to the problems which this sort of construction presents. It is necessary to balance and weigh opposing considerations. The offset channel, used by the applicant instead of a central channel, produces a minor simplification - only one type of door stop is necessary - at the cost of a minor increase in the complexity of the task confronting the workmen using the system. Again, the provision in the applicant's design to facilitate snapping off excess length in the inner webs produces the advantage that a lesser variety of materials must be brought on site to do a particular job. That is presumably thought by the applicant to counter-balance the trouble and waste of having to remove the excess material when the section is being used for one purpose rather than another. No doubt the number of combinations which may be arrived at without introducing any truly new idea is quite considerable, but one would tend to resist the conclusion that each combination which happens to be adopted produces a statutory right to protection against any others who might later substantially concur in parts of an earlier designer's assessment of the best arrangement. Further, the applicant appears to assert that subsequent designs which depart in a significant respect from the combination adopted in the applicant's design - as the respondent's admittedly does - may be unlawful.

25. The intention of the Act is not to enable the progress which one would hope to see in Australian industrial design to be impeded by allowing some designers to hamper the efforts of others, on the basis of registered designs which, like that of the applicant, contain no features or combination of features of sufficient merit or originality to deserve protection.

26. In Caron International's Design Application (1981) RPC 179 at 186, Whitford J. remarked:

"I think the very greatest care must be taken to see that the right of
manufacturers generally to use well known forms of packaging is not
unduly restricted by applications for design registrations which in fact
produce, so far as any visual effect is concerned, nothing more than one
would expect from the packaging of the article in question in a package
of the type selected, assuming that to be a well known form of
packaging."

Here, one is concerned with functional merit, rather than visual appeal, but it appears that the note of caution sounded by Whitford J. is particularly to be heeded in a case of this sort to avoid encouraging claims of monopoly in a variety of rather similar designs.

27. Mr Crowe, who if I may say so presented the case ably on behalf of the applicant, argued that if the registered design was a mere trade variant, one would expect one of the previous extrusions to be closer to the applicant's. In fact, the evidence shows the existence of a range of designs of varying degrees of similarity and, amongst them, the applicant's does not strike one as markedly distinctive in appearance or function.

28. It has to be said, also, that the field being worked in is not one of any great complexity. The idea of using standard sections of various shapes to receive and contain wall board and other components used in construction is now well accepted; the devising of workable new sections of different shape does not appear to involve any considerable ingenuity.

29. In my opinion, the application should be dismissed with costs.