Lewis v Hall [2005] FCAFC 251 (1 December 2005)

INTELLECTUAL PROPERTY – patents – infringement of Letters Patent – construction of patent – Letters Patent – registered design – obvious imitation of a registered design – fraudulent imitation – prior art.

Patents Act 1990 (Cth), ss 3, 120, 155, 157, 158(1), (4)
Designs Act 1906 (Cth), ss 4(1), 20(4), 22B, 23(3), (4), 30, 31, 32, 39 and 40G(1B), 40H, 40I(1), (4)
Designs Act 2003 (Cth), ss 86, 87(1)(4), 155(1),(2)
Jurisdiction of Courts (Cross-Vesting) Act 1987 (Cth), ss 4(1), 7(5), (7), (8)

Computer Edge Pty Ltd v Apple Computer Inc [1984] HCA 47; (1984) 54 ALR 767 followed
The General Tire & Rubber Company v The Firestone Tyre & Rubber Company Ltd [1972] RPC 457 followed
Marconi’s Wireless Telegraph Co Ltd v Mullard Radio Valve Co Ltd (1923) 40 RPC 159 followed
Electric and Musical Industries Ltd v Lissen Ltd [1938] 56 RPC 23 followed
Interlego A.G. v Toltoys Pty Ltd [1973] HCA 1; (1973) 130 CLR 461 followed
Décor Corporation Pty Ltd & Anor v Dart Industries Inc (1988) 13 IPR 385 followed
Raleigh Cycle Coy Ld v H Miller & Coy Ld (1948) 65 RPC 141 (HL)
Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 applied
TCN Channel Nine Pty Ltd v Network Ten Pty Ltd [2002] FCAFC 146; (2002) 118 FCR 417 followed
Polyaire Pty Ltd v K-Aire Pty Ltd [2005] HCA 41; (2005) 218 ALR 761 applied
Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd [1991] FCA 434; (1991) 103 ALR 239 followed
Wanem Pty Ltd v John Tekiela [1990] FCA 372; (1990) 19 IPR 435 followed
Dart Industries Inc v Décor Corporation Pty Ltd (1989) 15 IPR 403
Chris Ford Enterprises Pty Ltd v BH & JR Badenhop Pty Ltd (1985) 7 FCR 75 at 87 followed
Re Application by International Chemical Engineering AG [1988] ADO 1; (1988) 11 IPR 601 followed

T.A. Blanco White: "Patents for Inventions" (5^th Ed) (1983) Stevens & Son

JAN LEWIS v JASON HAMILTON HALL and JASON HAMILTON HALL as Trustee of the Hamilton Trust

IN THE FEDERAL COURT OF AUSTRALIA
WESTERN AUSTRALIA DISTRICT REGISTRY	WAD69 OF 2005

BETWEEN:	JAN LEWIS APPELLANT
AND:	JASON HAMILTON HALL and JASON HAMILTON HALL as Trustee of the Hamilton Trust RESPONDENT
JUDGES:	LEE, MOORE & NICHOLSON JJ
DATE OF ORDER:	1 DECEMBER 2005
WHERE MADE:	PERTH

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

IN THE FEDERAL COURT OF AUSTRALIA
WESTERN AUSTRALIA DISTRICT REGISTRY	WAD69 OF 2005

BETWEEN:	JAN LEWIS APPELLANT
AND:	JASON HAMILTON HALL and JASON HAMILTON HALL as Trustee of the Hamilton Trust RESPONDENT

JUDGES:	LEE, MOORE & NICHOLSON JJ
DATE:	1 DECEMBER 2005
PLACE:	PERTH

1 This is an appeal from a judgment of the Supreme Court of Western Australia entered on 21 October 2004 under which, inter alia, the court declared that the appellant had infringed Letters Patent No. 684592 ("the Letters Patent") granted to the first-named respondent ("Hall") under the Patents Act 1990 (Cth) ("the Patents Act") and had infringed Design No. 120181 ("the Registered Design") of which Hall was registered as owner under the Designs Act 1906 (Cth) ("the Designs Act"). The court also declared that Design No. 143028 of which the appellant was the registered owner under the Designs Act was invalid and liable to be removed from the Register of Designs. The court further ordered that the appellant be restrained from infringing the Letters Patent and the Registered Design; that the appellant deliver up to the respondent all material in the possession of the appellant that constituted an infringement of the Letters Patent or the Registered Design; and that the appellant’s counterclaim be dismissed.

2 The proceeding in the Supreme Court commenced in January 2001. That court was a "prescribed court" under the Patents Act and the Designs Act having jurisdiction in matters arising under the Patents Act and Designs Act in respect of which a proceeding could be started in that court. A proceeding in respect of infringement of the Letters Patent or infringement of the Registered Design, or in respect of rectification of the Register of Designs, was a proceeding that could be started in the Supreme Court. (See: Patents Act ss 3, 120, 155; Designs Act ss 4, 31, 32, 39, 40G(1B)).

3 The Designs Act was repealed on 17 June 2004, the date of commencement of the Designs Act 2003 (Cth) ("the New Designs Act"). Under s 151(2)(a)(i) of the New Designs Act the Registered Design was taken to be registered under the New Designs Act from that date. Transitional provisions set out in s 155(1) of the New Designs Act provided that a proceeding under the Designs Act that was pending immediately before commencement of the New Designs Act was to be determined as if the Designs Act had not been repealed. Therefore, when the proceeding in the Supreme Court came on for hearing in September 2004 it was a proceeding to which s 155(1) of the New Designs Act applied.

4 Jurisdiction to hear an appeal from the judgment of the Supreme Court in this matter is conferred on this Court as an exclusive jurisdiction by s 158(1), (4) of the Patents Act, s 40I(1), (4) of the Designs Act and s 87(1), (4) of the New Designs Act. However, the provisions of s 4(1) of the Jurisdiction of Courts (Cross-vesting) Act 1987 (Cth) ("the Cross-vesting Act") appear to invest a concurrent, although qualified, appellate jurisdiction in the Supreme Court. (See: Cross-vesting Act s 7(5), (7), (8)). It is unnecessary to consider whether the appellate jurisdiction now exercised by the Court has been conferred by the Designs Act or the New Designs Act.

5 On 2 November 2004 the appellant commenced an appeal in the Supreme Court. On 2 March 2005 the Supreme Court made an order, by consent, that the appeal be transferred to this Court and that the costs in the appeal be costs in the cause of "the transferred proceeding".

6 Section 157 of the Patents Act, s 40H of the Designs Act, and s 86 of the New Designs Act give the Supreme Court power to transfer both the originating proceeding and the appeal proceeding to this Court. It should be assumed, however, that the power of transfer exercised by the Supreme Court was that provided by s 7(5), (7) of the Cross-vesting Act and that the only proceeding transferred to this Court is the appeal proceeding. It is to be noted that the parties to the appeal did not include another party to the originating proceeding bound by the judgment of the Supreme Court and, therefore, that further party has not subscribed its consent to the order of transfer.

7 The judgment of the Supreme Court was an interlocutory judgment limited to questions of liability, the further rights of the parties being left for determination at a later date. (See: Computer Edge Pty Ltd v Apple Computer Inc [1984] HCA 47; (1984) 54 ALR 767). Section 24(1A) of the Federal Court of Australia Act 1976 (Cth) provides that an appeal to this Court shall not be brought from such a judgment unless the Court gives leave to appeal. The appellant sought that leave when the matter came on for hearing. The respondent did not oppose the grant of leave. The Court extended the time within which the appellant could make such an application and granted leave to appeal from the interlocutory judgment. All steps taken by the parties prior to the grant of leave, whether in this Court or in the Supreme Court, were taken to be steps in the appeal.

8 A short summary of the relevant facts upon which the learned Commissioner’s decision is based is as follows. Between 1992 and 1993 Hall developed an idea for an article of headwear to provide protection from the sun for the head, face and neck of the wearer and be able to withstand wind and rain. Hall’s idea consisted of a visor to which material was attached to cover the top of the head and hang down at the sides and back of the head and neck, being held to the head by an adjustable headband. Fastening devices were attached to the pendant material to allow it to be fixed across or under the face or held at the back of the head and away from the face. Prior art existed for a number of the elements of the foregoing idea.

9 Hall instructed a firm of patent attorneys to lodge an application for registration of a design under the Designs Act and to lodge a patent claim specification under the Patents Act. Registration of the Registered Design and grant of the Letters Patent followed in due course.

10 The Letters Patent granted Hall a monopoly of use of the invention for a term of 20 years from 6 January 1995, the priority date being 10 January 1994. The title of the invention set out in the Letters Patent is "an article of headwear". The article in respect of which the Registered Design is registered is said to be "a hat". The application for registration of the Registered Design was lodged on 10 March 1993 and it was registered on 4 May 1994, the priority date being the date of lodgement of the application. In the course of the hearing of the appeal the Court was informed that the rights of use and reproduction under the Letters Patent and the Registered Design had been assigned to the second-named respondent.

11 Pursuant to the Letters Patent and the Registered Design the respondent began to manufacture and sell an article of headwear, under the trade name "Araphat", as an embodiment of the invention and an application of the Registered Design. The respondent appointed the appellant to act as distributor of the "Araphat" hat in Western Australia. By the end of 1999 sales of the "Araphat" hat represented 80% of the business of the appellant. Shortly thereafter the relationship between the respondent and the appellant was terminated. The appellant then purported to "create her own hat" and began to manufacture and sell a hat under the name "Le Hood".

12 The respondent claims that the manufacture and sale of the "Le Hood" hat infringed the respondent’s rights under the Letters Patent and the Registered Design. The appellant contends that the "Le Hood" hat differs in a material respect from an article manufactured pursuant to the monopolies granted by the Letters Patent and Registered Design.

13 Numerous points of defence raised by the appellant at trial are no longer live questions in the appeal. The appellant defines the questions to be determined in the appeal as follows:

14 It appears to have been accepted by the parties that the idea for an article of headwear the subject of the Letters Patent reflected an inventive step in that it combined elements of prior art to create a new and useful form of headwear.

15 Where the invention differed from the prior art and exhibited an inventive step was in the idea of taking a visor, to which an adjustable headband and a length of material was attached, and using fastening means attached to that material to configure the material so that it could be kept in a position that would protect the neck and/or head and/or face of the wearer from sun, wind or rain.

16 The Letters Patent defined the monopoly claimed by Hall in 14 claims. The finding that articles of headwear manufactured by the appellant infringed the Letters Patent was made by the learned Commissioner in respect of Claims 1-13 compendiously. Claim 14 was excluded from consideration. The respondent gave notice that if the appellant succeeded in the argument that the "Le Hood" hat did not infringe Claims 1-13 of the Letters Patent, it would be contended that the learned Commissioner’s finding that the Letters Patent had been infringed should be upheld by reason of infringement of Claim 14 (described by counsel for the respondent as "an omnibus claim").

18 It is not in issue that the elements of the invention claimed in Claim 1 of the Letters Patent could be reduced to the following essential items:

1. a substantially forwardly projecting peak or visor;
2. an adjustable head engaging band;
3. a length or sheet of material;

19 The appellant accepted that all of those integers were embodied in the "Le Hood" hat manufactured by her save for items 7 and 8. The appellant contends that the "Le Hood" hat does not have a plurality of fastening means on the material whereby the material may be drawn to a number of positions and fastened to protect the wearer’s neck and/or head and/or face. Counsel for the appellant submitted that whilst the "Le Hood" hat had two components of a "Velcro" fastener attached to the material, those components provided only one fastening means.

20 The respondent contended that the two components of a "Velcro" fastening device constituted such "a plurality of fastening means" for the purpose of the principal claim of the Letters Patent.

21 The learned Commissioner did not address directly the issue whether the fastening means provided on the material of the "Le Hood" hats, as represented in Exhibits 7 and 9, constituted "a plurality of fastening means".

22 The claims of a patent are designed to define with clarity and precision the subject of the invention. Proper construction of the claims must keep in mind that the claims are addressed to a person skilled in the relevant art at the relevant date. (See: The General Tire & Rubber Company v The Firestone Tyre & Rubber Company Ltd [1972] RPC 457 at 485). Information provided in the body of the specification cannot overtake the plain meaning of the words used in the claims and be the source of further meaning that alters the monopoly claimed, whether by narrowing or enlarging the scope thereof. Information in the body of the specification, however, may resolve ambiguity or uncertainty in the meaning of the claim. (See: Marconi’s Wireless Telegraph Co Ltd v Mullard Radio Valve Co Ltd (1923) 40 RPC 159 at 175).

23 Whilst it is not permissible to alter by reference to the body of the specification the clear and unambiguous meaning of words used in a claim, it is both legitimate and appropriate to read the body of the specification and the claim together to provide the context in which the claim is to be construed. The specification, of course, must be read as a whole. (See: Electric and Musical Industries Ltd v Lissen Ltd [1938] 56 RPC 23 per Lord Russell of Killowen at p 41; Interlego A.G. v Toltoys Pty Ltd [1973] HCA 1; (1973) 130 CLR 461 per Barwick CJ and Mason J at 478-479; Décor Corporation Pty Ltd & Anor v Dart Industries Inc (1988) 13 IPR 385 per Lockhart J at 391; Sheppard J at 399-400; Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd [2005] FCAFC 220 at [44]).

24 The description of the invention in the specification, which used the drawings of the specification by way of example, referred to "both components of a hook and loop type fastener ... sold under the trade name ‘Velcro’" as a means that could be used to provide the adjustable headband referred to and stated that "[t]he plurality of releasable fastening means" shown in the drawings as Item 30 in Figures 1, 6, 7, 9, 11, 12, 14, 16 and 19, "[is] also formed of either component of such a hook and loop type fastener".

25 Although the "Velcro" patent was not included in the evidence before the learned Commissioner it was not in issue between the parties that a "Velcro" fastener consists of the "interengagement" of two pieces of fabric comprised of multiple "hooks", or a piece of fabric of multiple "hooks" interengaged with another of multiple "loops". The pieces of fabric are interengaged by being pressed together and are released by being pulled apart. The articles manufactured by the appellant as the "Le Hood" hat (Exhibits 7 and 9) use a "Velcro" fastening means of two pieces of fabric in which multiple "hooks" engage with multiple "loops".

26 In manufacturing the invention described in the Letters Patent with "a plurality of fastening means", it would have been understood by a skilled artisan to whom the claims of the Letters Patent were addressed that a "Velcro" fastening means could be used to provide such a plurality. The skilled addressee would have confirmed that understanding by reading the claims of the Letters Patent with the specification as a whole.

27 The "plurality of fastening means" with which Claim 1 of the Letters Patent is concerned is that provided on the material of the hat which enables the material to be "fastened to protect the wearer’s neck and/or face, the fastening means being arranged on the material such that the material may be drawn to a number of positions in front of the wearer’s neck and/or head and/or face and the material fastened together releasably in a number of arrangements as desired by the wearer". That is to say what Claim 1 requires is the availability on the material of a means of fastening the material at more than one position, to which the material may be drawn by the wearer. The two pieces of "Velcro" provided on the material of the "Le Hood" hat in Exhibits 7 and 9 constitute that plurality of fastening means in that they enable the material to be fastened at several positions to which the material may be drawn. The material of Exhibits 7 and 9 can be fastened below the wearer’s face or drawn around the back of the wearer’s neck and fastened in that position by the "Velcro" components on the material.

28 It follows that the learned Commissioner did not err in assuming that the foregoing integer of the invention was met by the two components of a "Velcro" fastening means provided on the material of Exhibits 7 and 9.

29 The appellant further submitted, however, that whilst a fastening means attached to the material of Exhibits 7 and 9 enabled that material to be drawn and fastened in several different positions the material "could not be drawn into all of the arrangements stipulated in the drawings" of the specification of the Letters Patent and, therefore, it was submitted, Claims 1-13 of the Letters Patent had not been infringed.

30 The drawings accompanying the specification (Figures 1-23) are used in the specification to describe the invention "by way of example only". They are not part of a claim to monopoly unless a claim incorporates them. There are no words in Claims 1-13 to indicate that any drawing is made part of any of those claims. It follows that this submission of the appellant must fail.

31 The concluding claim of the Letters Patent (Claim 14) does purport to claim a monopoly for "(a)n article of headwear substantially as hereinbefore described with reference to" the drawings in the specification. Whether Claim 14, by defining the claim in terms of a preferred embodiment depicted in drawings attached to the specification is intended to be an "omnibus claim", or succeeds in claiming a broader scope for the invention’s monopoly than the claims made for the invention in Claims 1-13, is unnecessary to decide unless the appellant succeeds in showing that the learned Commissioner erred in finding that the appellant infringed any of the prior claims. At this point, however, it may be stated that where a concluding claim of a patent purports to incorporate the drawings of a preferred embodiment, or embodiments, of the invention as set out in the body of the specification the usual purpose thereof is as a fail-safe claim in the event that preceding and broader claims are found to be unclear or to be too broad in which case the patentee will seek to rely upon the clarity, particularity and limitations of a drawn embodiment to define the claim to monopoly. (See: T.A. Blanco White: "Patents for Inventions" (5^th Ed) (1983) Stevens & Son para 2-113; Raleigh Cycle Coy Ld & Anor v H Miller & Coy Ld (1948) 65 RPC 141 (HL) per Lord Morton at p 157).

32 That is to say the usual effect of setting out the structure and sequence of the claims of a patent in that manner is to narrow progressively the area of monopoly claimed. (See: Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 per Gummow J at 92). In our view the claims of the Letters Patent followed that course and the sequence of claims appear to reflect a progressive diminution of area of monopoly claimed.

33 In the course of the hearing of the appeal further examination of Exhibits 7 and 9 by counsel revealed that "Velcro" components were attached to the underside of the respective headbands. In Exhibit 7 there are two "Velcro" components ("hooks" and "loops") affixed as small tabs to the underside of the headband, one at each end of the headband at the point of attachment of the band to the visor. Each tab can be fastened to, and released from, the corresponding engaging "Velcro" component provided on the material. In Exhibit 9 there is one "Velcro" component ("loops") to which the corresponding engaging "Velcro" component provided on the material may be attached and released. The only discernible purpose of the "Velcro" components affixed to the headbands is to provide a means of drawing and fastening the material of the headwear to a position in front of the wearer’s head face or neck so as to provide protection from sun, wind or rain.

34 It is apparent that irrespective of the meaning of the expression "a plurality of fastening means" the foregoing facts raised the issue whether the hat manufactured by the appellant infringed Claim 10 of the Letters Patent in any event.

35 In construing the terms of Claim 10 (see [17] above) it is necessary to read the claim with the understanding of a person skilled in the art of fabricating such an invention. (See: Blanco White para 2-101). Such an addressee would understand that Claim 10 contemplates that the one or more fastening means provided on the material could be a "Velcro" fastening means and that if a corresponding engaging "Velcro" component were provided on the headband the fastening means provided on the material would then "allow[-] the material to be releasably attached to the band".

36 It may be noted that Claim 11 further refines the monopoly claimed in Claim 10 by confining the "one or more fastening means" to be provided on the material to "one or more straps able to be held to the band" (emphasis added). The manner in which a "strap" is "held" to the band is left to the choice of the skilled addressee.

37 The learned Commissioner was not asked to consider whether Claim 10 of the Letters Patent was infringed by Exhibits 7 and 9. The expert witness upon whose evidence the learned Commissioner placed some reliance did not advert to the foregoing elements of Exhibits 7 and 9 and counsel made no submissions on those facts. The appellant concedes that it is open to this Court to determine the issue of infringement by examining Exhibits 7 and 9 and reaching its own conclusion, the technology of the invention being said to be relatively simple. (See: TCN Channel Nine Pty Ltd v Network Ten Pty Ltd [2002] FCAFC 146; (2002) 118 FCR 417).

38 In our view, in addition to the finding of infringement made by the learned Commissioner it is apparent that the "Le Hood" hat took so much of the invention as was necessary to constitute an infringement of the terms of Claim 10 of the Letters Patent.

39 Claim 10 is to be read as a diminution of the breadth of Claim 1. It is sufficient for the purposes of the Claim 10 that there be one or more fastening means provided on the material and that the fastening means so provided allow the material to be fastened to, and released from, the adjustable headband. Given that a skilled addressee would understand that the fastening means provided on the material may be a "Velcro" fastener it would be obvious to that addressee that the words of Claim 10 contemplate that a "Velcro" component could be attached to the adjustable headband to allow a corresponding engaging component of the fastening means provided on the material to be "releasably attached" to the band for the purpose of drawing and holding the material across the face to protect the face, neck and head from sun, wind or rain. All of the features or integers of Claim 10 are embodied in the "Le Hood" hat.

40 The learned Commissioner did not err in determining that products manufactured by the appellant as the "Le Hood" hat and represented by Exhibits 7 and 9 infringed the Letters Patent.

42 The terms "monopoly", "design" and "article" are defined in s 4(1) of the Designs Act as follows:

43 A design (consisting of observable features applied to an article) is registered in respect of the article specified in the application. (See: s 23(3)). An application for registration is to be accompanied by representations of an article to which the design is applied (i.e. "of the article specified in the application"). (See: s 20(3)(b)).

44 Section 20(4) of the Designs Act states that an application for registration of a design may be accompanied by a "statement of monopoly" in respect of the design to which the application relates. Section 4(1) of the Designs Act provides the following meaning for "statement of monopoly":

45 The statement of monopoly recorded in the Register of Designs for the Registered Design reads as follows:

46 Although it was asserted in the respondent’s statement of claim that the appellant infringed the respondent’s monopoly by applying the Registered Design that contention was not pressed at trial. The issue before the learned Commissioner, therefore, was whether the appellant infringed the Registered Design by applying a fraudulent or obvious imitation of the Registered Design to an article, to wit, the hats manufactured by the appellant being Exhibits 7 and 9. The learned Commissioner found that an obvious imitation of the Registered Design had been applied to Exhibits 7 and 9.

47 By a purported cross-appeal the respondent contends that the learned Commissioner erred in failing to find that the appellant applied a fraudulent imitation of the Registered Design in the manufacture of the articles comprised in Exhibits 7 and 9. Given that the learned Commissioner declared that the appellant had infringed the Registered Design the notice of cross-appeal should be treated as a notice of the ground on which the respondent would seek to support that declaration of infringement if the appellant succeeds in the argument that the learned Commissioner erred in finding that the appellant infringed the Registered Design by applying an obvious imitation thereof.

48 It was not in issue that at all material times the appellant was aware, or believed, that the respondent was the owner of a registered design in respect of the article represented by the "Araphat" hat. Therefore, it is appropriate to deal first with the issue raised by the respondent on the "cross-appeal", namely, that the appellant applied a fraudulent imitation of the Registered Design in the manufacture of the articles in Exhibits 7 and 9.

49 If it is established that an alleged infringer of a registered design knew of, or had reason to suspect, the existence of a registered design, a finding of application of a fraudulent imitation may follow notwithstanding that the differences between the design applied to an article and a registered design are greater than those that would allow a finding to be made that an obvious imitation of a registered design had been applied. (See: Polyaire Pty Ltd v K-Aire Pty Ltd [2005] HCA 32; (2005) 216 ALR 205 at [21]). It still remains an essential element of a finding of infringement by fraudulent imitation, however, that the alleged offending article be an imitation of a registered design. A conclusion that an alleged offending article is an imitation of a registered design will be more readily drawn where the alleged infringer, with knowledge of the existence of the registered design, has set out to copy in substance that design although introducing changes thereto. (See: Polyaire at [27]-[28], [36]).

50 The type of fraud to which the expression "fraudulent imitation" applies is of a lesser degree than that required to meet the usual meaning of that word.

52 If it is found that there has been infringement by fraudulent imitation it becomes unnecessary to determine whether there has been infringement by obvious imitation. An obvious imitation made with knowledge of the existence of a registered design is a fraudulent imitation. (See: Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd [1991] FCA 434; (1991) 103 ALR 239 at 248).

53 Comparison between an alleged infringing article and a registered design (i.e. the representation of an article to which the Registered Design is applied) is a matter of judgment according to the appearance to the eye of one to the other. It is a question of the impression conveyed by the eye to the brain of that comparison, not a test involving matters of measurement or ratio. A narrow or technical approach must be avoided lest the owner of a registered design be denied the benefit of registration. (See: Wanem Pty Ltd v John Tekiela [1990] FCA 372; (1990) 19 IPR 435 per Gummow J at 440).

54 At the same time, however, it is to be kept in mind that where a registered design involves small variation from the prior art small differences between the registered design and an alleged infringing article may mean that no infringement of a registered design has occurred. The alleged infringing article must embody the features of the registered design that distinguish it from the prior art. (See: Dart Industries Inc v Décor Corporation Pty Ltd (1989) 15 IPR 403 per Lockhart J at 409).

55 The representations of the article to which the Registered Design is applied are the twelve illustrations in Schedule 1 of these reasons. For the purpose of these reasons these illustrations have been numbered 1-12. It was accepted that the illustrations so numbered may be divided into six separate depictions of the Registered Design as follows: (1, 2); (3, 4); (5, 6); (7, 8, 9); (10); (11, 12). It is accepted that illustrations (1, 2) reflect the prior art. The appellant submitted that although the configurations shown in illustrations (1, 2); (5, 6); and (10) were able to be replicated in the "Le Hood" hat in Exhibits 7 and 9, no replication of the configurations shown in illustrations (3, 4); (7, 8, 9); or (11, 12) could be made by manipulation of Exhibits 7 and 9.

56 With regard to illustrations (3, 4) of the Registered Design it is true that Exhibits 7 and 9 do not embody a specific means of attachment to the headband as indicated in those illustrations but the appearance of illustrations (3, 4) is achieved by tucking the pendant material of Exhibits 7 and 9 under the headband. The appearance achieved has sufficient similarity to illustrations (3, 4) to suggest to the eye that it involves an imitation of those representations of the application of the Registered Design. The differences in manufacture of Exhibits 7 and 9 that involve deletion of a means by which the material may be attached to the headband directly do not involve the introduction by the appellant of a novel feature with the intent of providing a different design. Rather it may be said to be a difference based on a desire to copy the Registered Design to a degree that may avoid infringement thereof.

57 With regard to illustrations (7, 8, 9) and (11, 12) the appellant’s submissions on these representations did not address the fact that components of a "Velcro" fastener had been affixed to the underside of the headbands in Exhibits 7 and 9 making possible the configurations discussed earlier in respect of the infringement of the Letters Patent.

58 By use of these additional fastening tabs representations of the Registered Design contained in illustrations (7, 8, 9) and (11, 12) can be repeated in appearance to the eye by manipulation of the material in Exhibits 7 and 9, the degree of similarity being sufficient to be regarded by the eye as an imitation of the Registered Design notwithstanding the difference in method employed. To the eye the differences are not so substantial that the configurations of Exhibits 7 and 9 obtained from the use of those means can be said to reflect a fresh design unable to be described as an imitation of representations of the Registered Design.

59 By comparing the representations of the Registered Design with all possible configurations of Exhibits 7 and 9 it can be seen that any differences in appearance between the two are at the margins, there being an underlying commonality in the basic elements of style, proportion and presentation including a visor and headband; pendant material attached thereto; and fastening devices attached to that material. Examination of the representations of the Registered Design and the configurations of Exhibits 7 and 9 show that in totality an imitation of the Registered Design has been achieved and that any differences recognised by the eye do not detract from the overall impression of imitation.

60 Given that such differences are explicable by the appellant’s knowledge of the existence of a Registered Design the imitation observed is to be taken to result from a desire to come as close as possible to the Registered Design whilst attempting to avoid infringement and is a fraudulent imitation in the articles that comprise Exhibits 7 and 9.

61 The evidence before the learned Commissioner, as the learned Commissioner appeared to accept, failed to discharge the onus on the appellant to show that it did not embark upon copying the Registered Design.

63 In the application for registration of the Registered Design lodged on 10 March 1993 the article to which the Registered Design was applied was said to be a "Hat or Cap for Use by Surfers or Skiers". The Registrar of Designs advised Hall that the article should be renamed "a hat". The Registrar also advised Hall that the representations accompanying the application for registration were confusing, and suggested that a set of photographs replace the representations filed. In April 1994 Hall submitted "commercially-drawn depictions" of the design being the 12 illustrations in Schedule 1. Registration of the design was granted by the Registrar upon lodgement of those representations.

64 The appellant submitted that the learned Commissioner erred in failing to find that the Registered Design was invalid and that it was liable to be expunged from the Register of Designs. The ground for that submission was that the learned Commissioner should have found that in April 1994 the respondent had amended the representations accompanying the application for registration by introducing "new shapes or configurations" that increased the scope of the application, contrary to s 22B(1A) of the Designs Act.

66 The first point to note about the content of s 22B is that the expression "application for registration of a design" is expressly defined to include the representations of an article to which the design is applied and that the word "amend" has an expanded meaning where the amendment of an application for registration of a design is the amendment of representations of the article to which the design is applied. In that circumstance the word "amend" includes substitution of one representation for another representation.

67 The inclusion of the concept of substitution as part of the meaning of the term "amend" indicates that it was contemplated by Parliament that a new representation may be lodged as an amended application and that such a new representation may include any matter that was in substance disclosed in the original representation.

68 It would seem to follow that Parliament intended that in respect of a representation the term "amend" is to be read liberally and that the limitation set out in s 22B(1A) is to be confined to a substituted representation which purports to extend the scope of the original representation in a fundamental respect and to disclose a design beyond that already disclosed. As Smithers J said in Chris Ford Enterprises Pty Ltd v BH & JR Badenhop Pty Ltd (1985) 7 FCR 75 at 87:

69 The original representation comprised four drawings. A copy of those drawings is Schedule 2 of these reasons. For the purpose of s 22B the "amended application for registration" was the substituted representation depicted in Schedule 1.

70 The learned Commissioner rejected the appellant’s contention that the substituted representation did not comply with the terms of s 22B(1A) of the Act and that the Registered Design was invalid. The learned Commissioner’s reasons read as follows:

71 Although the substituted representation amplified the shape and configuration of the design proposed for registration and "introduced some difference in shape and configuration of the article" and, perhaps, "some new matter outside that disclosed in the original application" it did not "extend the scope (of the application) in a fundamental way" or "make disclosures clearly beyond those already made".

72 It was open to the learned Commissioner to find, as had the Registrar, that perusal of the substituted representation did not reveal that it departed from the original representation in a significant respect to include matter that was not in substance disclosed in the original representation.

73 The design idea represented in the substituted representation was disclosed in broad terms in the original representation. The substituted representation removed uncertainty and defined with greater clarity the design as it applied to a hat. Although it included several configurations not set out in the original representation nonetheless the substance of the design applied in those configurations was disclosed in the original representation.

74 The appellant submitted that the learned Commissioner should have taken the approach followed by the Registrar in Re Application by International Chemical Engineering AG [1988] ADO 1; (1988) 11 IPR 601 in which the Registrar found that the substituted representation did not comply with s 22B(1A).

75 However, perusal of the reasons of the Registrar in that case (at p 603) show that the Registrar was unable to discern a design in the original representation and, ergo, the substituted representation in disclosing a design varied from the original representation in a fundamental respect.

76 The appellant has not shown that the learned Commissioner erred in law in failing to find that the registration of the Registered Design was invalid and that ground of the appeal also must fail.

77 According to the foregoing reasons it will be ordered that the appeal and cross-appeal be dismissed and that the appellant pay the costs of the appeal and cross-appeal taxed as one set of costs.

I certify that the preceding seventy-seven (77) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justices Lee, Moore & Nicholson.

Counsel for the Appellant:	A H Bowne SC; E McCloskey

Solicitors for the Appellant:	Tottle Partners

Counsel for the Respondent:	R J L McCormack; N J Landis

Solicitors for the Respondent:	Mallesons Stephen Jaques

Date of Hearing:	22 August 2005

Date of Judgment:	1 December 2005

Federal Court of Australia - Full Court Decisions

Lewis v Hall [2005] FCAFC 251 (1 December 2005)