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Federal Court of Australia |
Designs Act 1906 (Cth)
Malleys Limited v J W Tomlin Pty Ltd [1961] HCA 77; (1961) 180 CLR 120 followed
Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd [1991] FCA 434; (1991) 103 ALR 239 applied
Dart Industries Inc. v Decor Corporation Pty Ltd (1989) 15 IPR 403 applied
Matter No. SG17 of 1997
GERARD INDUSTRIES PTY LTD v AUSWIDE IMPORT EXPORT PTY LIMITED
VON DOUSSA J
ADELAIDE
6 FEBRUARY 1998
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IN THE FEDERAL COURT OF AUSTRALIA | |
| SOUTH AUSTRALIA DISTRICT REGISTRY | SG17 of 1997 |
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BETWEEN: | gerard industries pty ltd
Applicant |
|
AND: | auswide import export pty limited
Respondent |
|
JUDGE: | VON DOUSSA J |
| DATE OF ORDER: | 6 february 1998 |
| WHERE MADE: | ADELAIDE |
THE COURT ORDERS THAT:
1. The matter be relisted to hear the parties as to the orders which should be made in light of the reasons for judgment delivered this day.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
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IN THE FEDERAL COURT OF AUSTRALIA | |
| SOUTH AUSTRALIA DISTRICT REGISTRY | SG17 of 1997 |
|
BETWEEN: | gerard industries pty ltd
Applicant |
|
AND: | auswide import export pty limited
Respondent |
JUDGE:
VON DOUSSA J DATE: 6 february 1998 PLACE: ADELAIDE
The applicant alleges that the respondent has infringed the monopoly in its registered design. On 5 November 1987 the applicant obtained registration under the Designs Act 1906 (Cth) ("the Act"), with effect from 10 March 1987, in respect of "An Electrical Accessory Cover Plate" ("the Design"). The Design is numbered 98585 and the applicant continues to be the owner. It is convenient to refer to the commercial embodiment of the Design manufactured by the applicant as the "applicant's cover plate".
The alleged infringement is said to arise under s 30(1)(b) and s 30(1)(c)(ii) of the Act. It is alleged that the respondent, without the licence or authority of the owner of the Design, imported into Australia for sale, or for use for the purposes of its trade or business, an article in respect of which a fraudulent or obvious imitation of the Design had been applied outside Australia without the licence or authority of the applicant, and sold or offered or kept for sale the said article. The infringing article is alleged to be an electrical accessory cover plate included in an electrical fan controller switch assembly imported into Australia by the respondent as an electrical accessory to a heavy duty "Hercules" ceiling fan, bearing Approval No. N14689 and marked "Made in China" ("the Hercules product"). I shall refer to the alleged infringing article as the Hercules cover plate.
The applicant seeks remedies for the infringement of its registered design. The applicant also seeks to have registered design No. 126467, owned by the respondent, in respect of "A dress ring for a switch mounting plate" expunged from the Register of Designs. The representation of that design depicts the Hercules cover plate. The applicant contends that the design the subject of that registration was neither new nor original within the meaning of s 17 of the Act as at the priority date, viz 25 August 1995, and for that reason that registered design No. 126467 is invalid.
The applicant's ownership of the Design is admitted. The validity of its registration has not been put in issue by the respondent. The respondent also admits that since late October 1996 and thereafter it has imported the Hercules product into Australia which product has included an electrical accessory cover plate.
Evidence tendered by the applicant establishes that on or about 13 November 1996 the applicant, by one of its employees, purchased in Queensland from GEC Electrical Wholesale a "Hercules" heavy duty ceiling fan. The switch assembly included a Hercules cover plate. The evidence also establishes that the applicant did not licence or authorise any person to import into Australia any product which would or would be likely to infringe the applicant's design in suit. The evidence does not establish that the applicant did not licence or authorise the application outside Australia of the Design to any product later imported into or sold in Australia, but the respondent raises no issue over that omission.
Under s 30 of the Act, there is an infringement in any one of three cases, that is where the design which has been applied is (i) the registered design (ii) an obvious imitation of the registered design (i.e., not the same but a copy apparent to the eye, notwithstanding slight differences) and (iii) a fraudulent imitation (i.e., 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): Malleys Limited v J W Tomlin Pty Ltd [1961] HCA 77; (1961) 180 CLR 120 at 127. In the present case, the applicant does not allege that the Design has been applied to the Hercules cover plate. The issue in dispute is whether the Hercules cover plate is an obvious imitation or a fraudulent imitation of the Design.
In support of the allegation that the Hercules cover plate is a fraudulent imitation the applicant adduced evidence, which I accept, to establish the following facts. Application was made for the registration of the Design by the applicant on 10 March 1987. On 17 March 1987 the applicant altered the original Design drawing to add the words "REGISTERED DESIGN PENDING" on the underside of the article, for the design of which registration was being sought. From 22 April 1987 commercial production of the applicant's cover plate commenced in accordance with the design drawings. On 12 February 1988, subsequent to the registration of the Design, the word `PENDING' was deleted. The words `REGISTERED DESIGN' have appeared on the underside of the applicant's cover plate since that time. The applicant's cover plate is supplied by the applicant to electrical wholesalers principally in conjunction with other electrical fittings, but also as an individual item. Many millions of such cover plates have been manufactured and sold by the applicant. By way of illustration, figures given show that from July 1993 to December 1995, 12,444,594 cover plates were sold by the applicant.
The applicant tendered Exhibit A10 which comprises four pages of drawings discovered by the respondent. Two pages represent features of a switch assembly and the other two pages appear to depict a plan view of the applicant's cover plate with measurements of various features, some of which have been altered. One page has a side view of the cover plate projected to one side of the plan view. The pages show facsimile header notations reading "1995-06-03 10.33 VIEW FAN CO LTD...". Company search extracts tendered by the applicant show that View Fan Company Limited is a private company incorporated in Hong Kong, and that the name of one of its directors shown in an Annual Return filed on 27 December 1996 is so similar to the name of one of the directors of the respondent, a company incorporated in New South Wales, as to raise the likelihood that the person is one and the same. The measurements and design features of the plan view in Exhibit A10 which appear to depict the applicant's cover plate leave little room for doubt that they are in fact depictions of the applicant's cover plate, and the altered measurements coincide with features of the Hercules cover plate.
The inference is plainly open from these drawings that the design for the Hercules cover plate has been produced by copying the features of the Design, and then changing certain of them so that the appearance to the eye of an article to which the altered representation has been applied is different from the Design, and from the applicant's cover plate. The respondent has adduced no evidence concerning Exhibit A10, and has not proffered an explanation to explain away the inference. In these circumstances the Court is more readily entitled to draw the inference: Jones v Dunkel [1959] HCA 8; (1959) 101 CLR 298. Senior counsel for the respondent conceded that in the absence of evidence from the respondent the inference was properly to be drawn that the Hercules cover plate was designed by someone who had access to the applicant's cover plate, and who must therefore have been aware from the words REGISTERED DESIGN embossed on it that the manufacturer had purported to apply the Design to it. I agree that the inference should be drawn, and find accordingly. Nevertheless, counsel contended, the alterations made to the design of the applicant's cover plate were not merely to disguise the copying of the Design, but resulted in the Hercules cover plate being so different to the eye in shape and configuration that the Hercules cover plate is not an imitation - either obvious or fraudulent.
The Certificate of Registration of the Design contains the following statement of Monopoly:
"Monopoly is claimed in the shape and configuration of an electrical accessory cover plate as illustrated in the accompanying representations."
The Certificate records that there is no statement of novelty. The effect of the statement of monopoly was to seek protection for the Design as a whole. Accordingly the entirety of the Design must be considered: Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd [1991] FCA 434; (1991) 103 ALR 239 at 243-244, 246.
The accompanying representations contain a plan view, side view, end view, perspective view and underneath view of the electrical accessory cover plate. The representations do not record measurements.
Evidence was led on the applicant's behalf from Mr J S Brooks, a qualified industrial designer holding a Bachelor of Design degree. At the request of the applicant's patent attorneys he had prepared a report in relation to design aspects arising out of a comparison between the Design and the applicant's cover plate on the one hand, and the Hercules cover plate on the other hand. His evidence provides technical assistance to the Court in order to understand the design features involved, but ultimately it is for the Court to rule on the meaning of the Design, and on the question of infringement: Dart Industries Inc. v Decor Corporation Pty Ltd (1989) 15 IPR 403 at 409.
Both the applicant's cover plate and the Hercules cover plate are manufactured from a thermoplastic polymer. They are described by Mr Brooks as removable plastic frames which cover the outer edge of an electric switch plate. Cover plates are a recent enhancement to electrical switch assemblies to hide the mounting screws, to ease the task of painting around a switch, to allow flexibility in combining colour combinations and to cater for future changes in colour preferences and style. In the present case the applicant's cover plate and the Hercules cover plate are constructed of similar materials, have similar colour and surface finishes, and serve an identical function. However, these characteristics are irrelevant in considering whether the monopoly in the shape and configuration of the applicant's design is infringed by the Hercules cover plate.
Both the applicant's cover plate and the Hercules cover plate are generally rectangular with medium to large geometric radii on all external corners, and have the appearance of a frame, the aperture within also being generally rectangular in shape. The geometry of each cover plate is symmetrical along both major axis. The ratios of length to width of both the external dimensions of the articles, and the apertures are, to the eye, the same. Bordering the aperture on both cover plates is a stepped "part line" where the internal edges of the cover plate frame meet the switch plate to which the cover plate fits. The width of the step in each cover plate is the same. The step is marginally deeper in the Hercules cover plate, but this difference is only noticeable to the eye on very close inspection.
Whilst the proper comparison to be made is between the registered design in suit and the accused article, Mr Brooks treated the applicant's cover plate as a faithful embodiment of the representations in the Design, and for the purposes of giving evidence about the similarities and differences between the two, compared the applicant's cover plate with the Hercules cover plate. In the presentation of their arguments counsel followed the same practical expedient. I do so too, to observe that in most respects the shape proportions and configuration of the two articles appear almost identical.
There are subtle differences in the curvature of the surfaces of the applicant's product. Mr Brooks considers these curvature differences would not be apparent to a consumer. In my opinion these differences in curvature are not apparent to the eye unless attention is specifically drawn to them, and even then they are difficult to detect.
When the cover plates are affixed to the switch plates they are intended to cover the under view of the cover plates, and four clipping tabs that protrude slightly from the cover plate frame into the aperture are not visible. In the fitted position Mr Brooks is of the opinion that the only visual difference between the applicant's cover plate and the Hercules cover plate is a soft chamfer at the ends of the Hercules cover plate. Having carefully considered the representations in the Design, the applicant's cover plate, and the Hercules cover plate, I agree that this is the only difference to the eye when the cover plates are viewed fitted to switch plates, and I so hold. On the Hercules cover plate, when viewed side on, the upper surface is parallel to the base for the length of the internal aperture, but each end is chamfered so that the height drops from the end of the aperture to the outer extremity of the cover plate by about one third. The chamfer is described as "soft" as it starts and finishes with gentle radii which make it difficult to see where one radius stops and another radius starts - in contrast with a "hard" chamfer where the change in surface plane occurs sharply along a clear line. However, when the applicant's cover plate is viewed side on, the article appears to be of a uniform height for the full length, save for the geometric radii on each external end (although the design plans show a subtle curvature, almost imperceptible to the eye). The major surface, the front of the applicant's cover plate, appears flat. Senior counsel for the respondent in argument characterised the applicant's cover plate as having a "chunky" appearance at each end, in contrast with the sloping or chamfered appearance of the ends of the Hercules cover plate.
When the cover plates are compared as discrete articles removed from the switch plates, the shape and configuration underneath, and the clipping tabs, are visible. A number of differences are then apparent in addition to the soft chamfers just described. In the applicant's cover plate two clipping tabs at each end of the aperture are 17.00 mm apart in the commercial embodiment. In the Hercules cover plate, which has virtually the same external and aperture dimensions, the clipping tabs are 30.00 mm apart. This difference matches an altered measurement on Exhibit A10. Viewed underneath the positioning of two ejection points (a necessary feature for the injection moulding manufacturing process), and four small "pinhead" shaped tensioning points on the underside of the stepped part line are positioned in slightly different places. These differences have the hallmarks of being deliberately made to disguise the copying which is evidenced in Exhibit A10.
Is the Hercules cover plate an obvious imitation of the Design? In Malleys Ltd v T W Tomlin the High Court said at 123:
"If a design applied by another has the features that are characteristic of the registered design and are so arranged that to the eye the resulting shape is substantially the same, there is infringement, whereas if the same features are arranged so that to the eye the resulting shape is different, there is, in the absence of fraudulent imitation, no infringement."
Later in the judgment it was said (at 127) there will be an obvious imitation if the accused article is not the same but a copy apparent to the eye notwithstanding slight differences. This is a question which must be looked at as one of substance and by examining the essential features of the design: Dart Industries Inc. v Decor Corporation Pty Ltd at 410, and Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd at 246.
In Hecla Foundry Co. v Walker, Hunter & Co. (1889) 14 App Cas 550, Lord Herschell said at 555:
"It seems to me, therefore, that the eye must be the judge in such a case as this, and that the question must be determined by placing the designs side by side, and asking whether they are the same, or whether the one is an obvious imitation of the other. I ought, perhaps, to qualify this by saying that, as a design to be registered must, by sect. 47, be a `new or original design, not previously published in the United Kingdom,' one may be entitled to take into account the state of knowledge at the time of registration, and in what respects 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."
The respondent has relied heavily in the presentation of its defence on prior art in the design of electrical switch plates and cover plates as registered before the priority date of the Design. In particular, heavy reliance is placed on the design features of registered design no. 90356 the application for which was lodged on 19 January 1984 in respect of an "Electrical Accessory Cover". At trial this design, and its commercial embodiment, was referred to as the "Wilco" cover plate, and I adopt that description. Prior registered designs show the state of knowledge at the time of registration of the Design. The respondent contends that when the scope of the Design is considered against the prior art, the respects in which the Design was new or original are small. Where the new or original features of a registered design are small, the scope of the protection of the registered design will be correspondingly narrow:
"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...".(Dart Industries Inc. v Decor Corporation Pty Ltd at 409).
Many of the features of the applicant's cover plate which strike the eye exist in the prior art. These features include the generally rectangular shape of the cover plate, the generally flat appearance of the major surface, and the generally rectangular aperture centrally situated in the cover plate. The proportions of the applicant's cover plate and the Wilco cover plate are generally the same. These features are also common between the applicant's cover plate and the Hercules cover plate. There is a form of part line around the edge of the aperture in the Wilco cover plate. There is a more prominent part line in the Design and the Hercules cover plate. In the Wilco cover plate the part line is a narrow curved depression whereas the Design and the Hercules cover plate have a stepped part line.
There are however, major differences between the Wilco cover plate design and the Design. The most striking difference that is apparent, at first glance and on close examination, and whether the two are examined side by side or apart, is that the Wilco cover plate has narrow hard chamfers at the corners between the sides and the major face of the plate whereas in the Design there are medium to large geometric radii on all external corners. In my opinion these radii give the applicant's cover plate a shape that has a strikingly different appearance to the Wilco cover plate.
Other differences between the Wilco cover plate and the Design include the clipping points (which are very different) and the presence of a hard chamfer on either end of the major face of the Wilco cover plate which start adjacent to the ends of the aperture and finish at the outer ends of the major face. It is the absence of a chamfer in this location that gives the Design the appearance of having "chunky ends".
The feature of the rounded corners between the major face and the sides of the Design constituted by the medium to large geometric radii is a feature that is apparent in registered design no. 42250 (application dated 21 July 1961) in respect of a switch plate. In other respects however, the design of the switch place bears little resemblance to the Design. On that switch plate the sides and ends, which are at right angles to the major face, meet at a sharp right angle. In the Design, the sides and ends, which are at slightly more than a right angle to the major face, have medium to large geometric radii corners. A new or original feature of the Design is the incorporation of rounded corners both where the major face meets the sides and ends, and also where the sides and ends meet. The Design incorporates the medium to large radii consistently on all external corners. This is not a large difference from the prior art, and neither is the shape of the stepped part line, but these features produce a novel or original design.
When the Design is compared with the Hercules cover plate the similarity between the two is very close. A strikingly similar feature is the shape produced by the medium to large radii on all external corners. When the two are looked at face on and from a distance (i.e. in plan view), first impressions are that they are one and the same. The plan view from a distance is the view that would present itself most often to users of articles to which the Design has been applied, and lest the registration be sapped of its commercial worth to the registered owner this must be an important consideration in determining whether there has been an obvious imitation: cf. Kevi A/S v Suspa-Verein U.K. Ltd [1982] RPC 173 at 182 and Wallpaper Manufacturers Ltd v Derby Paper Staining Co. (1925) 42 RPC 443 at 448. The common feature of the stepped part line is another strikingly similar feature.
However, when the Design and the Hercules cover plate are considered as a whole, and examined closely - whether together or apart - even from the plan view the presence of the soft chamfer on the major face of the Hercules cover plate is clearly a point of difference. If the comparison is made from the side view the difference becomes more prominent. If the comparison is between the underneath views, the positioning of the clipping points, the ejection points and the tensioning points, the difference is also clearly apparent.
Although I have hesitated on this aspect of the case, I conclude that the differences are such that the Hercules cover plate is not an obvious imitation of the Design. The differences may not be great, but where the differences between the prior art and the Design are small, small differences between the Design and the accused article lead, in the absence of fraudulent imitation, to a finding of no infringement. In short, I think the apparent differences are not merely insubstantial ones.
Although I conclude that the Hercules cover plate is not an obvious imitation of the Design, it may nevertheless be a fraudulent imitation. The Hercules cover plate has differences from the Design that are both apparent and not so slight as to be insubstantial, but it will be a fraudulent imitation if those differences are ones that have been made merely to disguise the copying of the Design.
I have already held that the design drawings for the Hercules cover plate were produced by someone who was aware of the Design, copying its features and changing some to produce a result that is different to the eye from the Design, and from the applicant's cover plate. I have also observed that the changes to features of the Design when viewed from the underside have all the hallmarks of being deliberately made to disguise the copying of the Design. I am satisfied that the applicant has established that the respondent's design has been knowingly based on and derived from the Design. This finding fulfils the requirement of "fraudulent" in the concept of fraudulent imitation, but it is also necessary for the applicant to establish that the Hercules cover plate is an "imitation": see Malleys Ltd v J W Tomlin Pty Ltd at 127-128, A.C. Components Pty Ltd v Jadon Investments Pty Ltd (1992) 23 IPR 594 at 604, and L.J. Fisher & Co. Ltd v Fabtile Industries Pty Ltd (1979) 49 AOJP 3611. In the last mentioned case Fullagher J at 3619 said:
"The law, is in my opinion, quite clear that even the fact, that every feature of a defendant's design was adopted solely in order to disguise a taking from the plaintiff's registered design, is not sufficient to show fraudulent imitation if the resultant design by the defendant is not truly an imitation, even if every conceivable element of `fraud' is present. If I were to use the `definition' of `fraudulent imitation' above cited from Malleys' Case (supra), which was of course framed with the different circumstances of that case in mind, I would say that in the present case the fraudulent and disguised `copying' had not resulted in a `copy'."
Whilst the accused article must be an "imitation", a fraudulent imitation may display greater departures from the original design than would otherwise have been apparent if the case were one of obvious imitation as there is involved an attempt to disguise the imitation: Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd at 248; Lift Verkanfsgerate Gmbh v Fischer Plastics Pty Ltd [1993] FCA 388; (1993) AIPC 91-015 at 39-520; Dunlop Rubber Co. Ltd v Soft Ball Developments Ltd (1931) 48 RPC 268 at 279-280 per Farwell J. Notwithstanding the differences which exist, I consider that the Hercules cover plate is a fraudulent imitation of the Design. I consider that the proper inference to be drawn from Exhibit A10 is that the changes incorporated in the design of the Hercules cover plate were intended merely to disguise the copying of the Design. Those changes did not alter the new or original features of the Design existing in the medium to large geometric radii on all external corners, and did not alter, in a way apparent to the eye, the shape or proportions of the stepped part line. These features contribute substantially to the visual appearance of the shape and configuration of the Design, and the alterations which have been incorporated in the Hercules cover plate do not so alter its appearance that it can be considered as a different design which merely embodies many of the features of the Design. In my opinion the fundamental and basic design that is embodied in the Design has been reproduced in the Hercules cover plate.
Counsel for the respondent drew attention to the evidence of Mr Brooks that the incorporation of a part line is a standard method of distinguishing the joint line between the plastic components, and contended that the part line was not a new or original feature of the Design. I do not agree. The use of a part line might be a standard design technique, but it is the shape, configuration and proportion of the part line incorporated in the Design that is a new or original component in the whole Design, and it is the reproduction of a part line in the Hercules cover plate that is indistinguishable to the eye from that in the Design which is significant.
In my opinion the respondent in importing and selling the Hercules cover plate has infringed the applicant's monopoly in the Design.
On the claim by the applicant for the expungement from the Register of Designs of registered design no. 126467, the parties are agreed that in the event that it is held that the importation and sale of the Hercules cover plate constitutes an infringement of the applicant's monopoly in the Design, this claim must succeed as the design of the Hercules cover plate could be neither new nor original: see Valor Heating Co. Ltd v Main Gas Appliances Ltd [1973] RPC 871 at 876-877. Accordingly, I hold that the applicant's are entitled to an order sought in respect of registered design no. 126467.
By direction, the trial has been conducted on the footing that I should first determine liability in respect of the alleged infringement of the Design and the expungement of registered design no. 126467, and stand over questions relating to remedies. Accordingly, I publish these reasons, and I will hear the parties as to the orders which should now be made, and as to the future conduct of the matter.
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I certify that this and the preceding eleven (11) pages are a true copy of the Reasons for Judgment herein of the Honourable Justice
von Doussa |
Associate:
Dated: 6 February 1998
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Counsel for the Applicant: | Mr D M Yates SC with Mr B Murray |
| Solicitor for the Applicant: | Norman Waterhouse |
| Counsel for the Respondent: | Mr D Catterns QC with Mr D Hart & Ms K Underwood |
| Solicitor for the Respondent: | Phillips Fox |
| Date of Hearing: | 15 & 16 December 1997 |
| Date of Judgment: | 6 February 1998 |
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