Ullrich Aluminium Pty Ltd v Dias Aluminium Products Pty Ltd [2006] FCAFC 119 (18 July 2006)

Last Updated: 24 July 2006

FEDERAL COURT OF AUSTRALIA

Ullrich Aluminium Pty Ltd v Dias Aluminium Products Pty Ltd

[2006] FCAFC 119

CORRIGENDUM

ULLRICH ALUMINIUM PTY LTD v DIAS ALUMINIUM PRODUCTS PTY LTD
VID 1322 OF 2005

TAMBERLIN, FINKELSTEIN AND YOUNG JJ
18 JULY 2006 (CORRIGENDUM 20 JULY 2006)
MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VID 1322 OF 2005

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN:	ULLRICH ALUMINIUM PTY LTD (ACN 001 697 445) APPELLANT
AND:	DIAS ALUMINIUM PRODUCTS PTY LTD (ACN 006 422 500) RESPONDENT

JUDGES:	TAMBERLIN, FINKELSTEIN AND YOUNG JJ
DATE:	18 JULY 2006
PLACE:	MELBOURNE

CORRIGENDUM

1 On page 27 of the reasons for judgment, the appearances should read as follows:

Counsel for the Appellant:	B Caine SC with M Goldblatt
Solicitor for the Appellant:	Middletons Lawyers
Counsel for the Respondent:	C Golvan SC with Dr S Ricketson
Solicitor for the Respondent:	Hunt & Hunt Lawyers

I certify that the preceding one (1) numbered paragraph is a true copy of the Corrigendum to the Reasons for Judgment of the Honourable Justices Tamblerlin, Finkelstein and Young JJ.

Associate:

Dated: 20 July 2006

FEDERAL COURT OF AUSTRALIA

Ullrich Aluminium Pty Ltd v Dias Aluminium Products Pty Ltd

[2006] FCAFC 119

DESIGNS – validity of registered designs – whether new or original under s 17(1)(a) of Designs Act 1906 (Cth) – whether designs differ from prior art only in immaterial details – whether designs differ from prior art only in features commonly used in the relevant trade – whether trial judge made factual errors in relation to common use in the relevant trade – whether trial judge’s findings as to common use produced appealable error

Designs Act 1906 (Cth) s 17(1)(a)

Le May v Welch (1884) 28 Ch D 24 cited
Re Clarke’s Registered Design (1986) 13 RPC 351 cited
Wells v Attache Case Manufacturing Co Ltd (1931) 49 RPC 113 cited
Walker & Co v A G Scott (1892) 9 RPC 482 cited
Lewis Falk Ltd v Jacobwitz (1944) 61 RPC 116 applied
Re Household Articles Ltd’s Registered Design [1998] FSR 676 applied
Phillips v Harbro Rubber Company (1920) 37 RPC 233 followed
Conrol Pty Ltd v Meco McCallum Pty Ltd (1996) 34 IPR 517 applied
Dart Industries Inc v Decor Corporation Pty Ltd (1989) 15 IPR 403 considered
Malleys Ltd v JW Tomlin Pty Ltd [1961] HCA 77; (1961) 180 CLR 120 applied
LJ Fisher & Co Ltd v Fabtile Industries Pty Ltd (1979) 1A IPR 565 cited
British Franco Electric Pty Ltd v Dowling Plastics Pty Ltd [1981] 1 NSWLR 448 cited
D Sebel & Co Ltd v National Art Metal Co Pty Ltd (1965) 10 FLR 224 applied
Dalgety Australia Operations Ltd v FF Seeley Nominees Pty Ltd (1986) 10 FCR 403 cited
Australian Building Industries Pty Ltd v Woodman McDonald (Glass) Pty Ltd (1986) 84 FLR 454 cited
J Rapee & Co Pty Ltd v Kas Cushions Pty Ltd (1989) 90 ALR 288 considered
Conrol Pty Ltd v Meco McCallum Pty Ltd (1997) 80 FCR 264 cited
Re Wolanski’s Registered Design [1953] HCA 72; (1953) 88 CLR 278 cited
Macrae Knitting Mills Ltd v Lowes Ltd [1936] HCA 43; (1936) 55 CLR 725 cited
Richsell Pty Ltd v Khoury (1995) 32 IPR 289 cited
Aluminium Specialities Pty Ltd v Ibis Building Products Pty Ltd (1982) 42 ALR 127 cited
Re Travers Ltd’s Application (1951) 68 RPC 255 cited
Re Britvic Ltd’s Application [1960] RPC 201 cited
Phillips v Harbro Rubber Co (1919) 36 RPC 79 followed

M Howe, Russell-Clarke and Howe on Industrial Designs, 7^th edn, Sweet & Maxwell, 2005

ULLRICH ALUMINIUM PTY LTD v DIAS ALUMINIUM PRODUCTS PTY LTD
VID 1322 OF 2005

TAMBERLIN, FINKELSTEIN AND YOUNG JJ
18 JULY 2006
MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VID 1322 OF 2005

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN:	ULLRICH ALUMINIUM PTY LTD (ACN 001 697 445) APPELLANT
AND:	DIAS ALUMINIUM PRODUCTS PTY LTD (ACN 006 422 500) RESPONDENT
JUDGES:	TAMBERLIN, FINKELSTEIN AND YOUNG JJ
DATE OF ORDER:	18 JULY 2006
WHERE MADE:	MELBOURNE

THE COURT ORDERS THAT:

1. The appeal be dismissed.
2. The appellant pay the respondent’s costs of the appeal.

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

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VID 1322 of 2005

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN:	ULLRICH ALUMINIUM PTY LTD APPELLANT
AND:	DIAS ALUMINIUM PRODUCTS PTY LTD RESPONDENT

JUDGES:	TAMBERLIN, FINKELSTEIN and YOUNG JJ
DATE:	18 JULY 2006
PLACE:	MELBOURNE

REASONS FOR JUDGMENT

TAMBERLIN J:

1 I agree with the reasons and orders of Justice Young and with the observations of Finkelstein J in this matter.

I certify that the preceding one (1) numbered paragraph is a true copy of the Reasons for Judgment herein of the Honourable Justice Tamberlin.

Associate:

Dated: 18 July 2006

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VID 1322 of 2005

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN:	ULLRICH ALUMINIUM PTY LTD APPELLANT
AND:	DIAS ALUMINIUM PRODUCTS PTY LTD RESPONDENT

JUDGES:	TAMBERLIN, FINKELSTEIN and YOUNG JJ
DATE:	18 JULY 2006
PLACE:	MELBOURNE

REASONS FOR JUDGMENT

FINKELSTEIN J:

2 I agree with Young J. I wish only to add the following observations.

3 To obtain registration, a design must be new or original. Putting to one side what might be the difference between ‘new’ and ‘original’, to meet the requirement the design must be substantially novel or substantially original, having regard to the nature of the article to which the design is applied: Le May v Welch (1884) 28 Ch D 24 at 34–35; Re Clarke’s Registered Design (1986) 13 RPC 351. However, in commonplace articles -- for example, chairs, tables, doors -- a subtle difference may be a substantial difference provided it is something more than a ‘trifling change’ over the prior art: Le May v Welch at 33.

4 Importantly, it is not a condition of registration that every aspect of the design must be novel or original. It is sufficient if a part of the design is new or original: Wells v Attache Case Manufacturing Co Ltd (1931) 49 RPC 113 at 118–119; Walker & Co v A G Scott (1892) 9 RPC 482, 485. Indeed, in Lewis Falk Ltd v Jacobwitz (1944) 61 RPC 116 at 126, Morton J said that a design will be new or original if it is a combination of only old, well-known devices or features provided the combination is novel in appearance. See also Re Household Articles Ltd’s Registered Design [1998] FSR 676 at 686.

5 There is an important qualification to the foregoing principles. According to the early cases a design could not be registered if it differed in appearance from the prior art only in features that were in common use in the trade or in features that were an ordinary trade variant. Put another way, the introduction of a feature that was in ordinary use or was a trade variant could not convert an old design into a design that was new or original. This common law qualification found its way into the Designs Act 1906 (Cth), where the relevant section was s 17. The current legislation, the Designs Act 2003 (Cth), is different in significant respects: see ss 15, 16, 19.

6 The reason the courts (and later Parliament) denied novelty to a design which depended upon the use of features which were in common use or were a trade variant was that ‘[t]he working world, as well as the trade world, is entitled at its will to take, in all cases, its choice of ordinary trade variants for use in any particular instance, and no patent and no registration of a design can prevent an ordinary workman from using or not using trade knowledge of this kind’: Phillips v Harbro Rubber Company (1920) 37 RPC 233 at 240.

7 It is necessary to look a little more closely at one aspect of what is meant by a feature in common use. Here it is important to keep in mind that we are concerned with nothing more than a design applicable to the purpose of the ornamentation or pattern or shape or configuration of an article. Registration is not obtained for an article made according to a particular shape or pattern. When the cases speak of a feature in common use they are referring to a feature or element which, of necessity, has a particular shape, configuration, etc. If, having regard to the function it performs, that feature can be designed differently, and the newly designed feature is incorporated into a new combination that will be sufficient to confer novelty or originality to the combination. This statement is, of course, subject to the qualification that the newly designed feature is not a trade variant.

8 I think this approach was accepted by Lockhart J in Conrol Pty Ltd v Meco McCallum Pty Ltd (1996) 34 IPR 517. He described (at 529) the policy behind s 17 as being ‘that no trader should be entitled to gain a monopoly in a design which is merely a variant of standard designs in the trade; members of an industry should be free to employ any of the standard design variants in the relevant trade without the risk of suit for infringement of monopoly.’ I think the trial judge had the same thing in mind. Employing the appellant’s terminology, the trial judge identified as ‘the basic features of the door panel stile’ the u-shaped channel, the arc-like arms to retain a rubber buffer, the roller wheel location section (nibs) and the finger grip. These were the features which the appellant contended were commonly used in the trade and that any differences between them and the prior art were mere trade variants which any skilled workman might employ. The trial judge then compared these features with the prior art. She found not only that the features (or most of them) differed from the prior art, but also that the differences were ‘differences of substance’. She said that the features ‘show sufficient individuality of appearance to distinguish the applicant’s design from the [prior art]’. She described in detail the points of distinction. I will not repeat what the trial judge said. In any event the analysis is undertaken by Young J in his reasons. It is sufficient if I simply record my agreement in his analysis.

9 In my opinion the appeal should be dismissed.

I certify that the preceding nine (9) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Finkelstein.

Associate:

Dated: 18 July 2006

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VID 1322 OF 2005

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN:	ULLRICH ALUMINIUM PTY LTD (ACN 001 697 445) APPELLANT
AND:	DIAS ALUMINIUM PRODUCTS PTY LTD (ACN 006 422 500) RESPONDENT

JUDGES:	TAMBERLIN, FINKELSTEIN AND YOUNG JJ
DATE:	18 JULY 2006
PLACE:	MELBOURNE

REASONS FOR JUDGMENT

YOUNG J:

10 This appeal concerns the validity of two registered designs: Registered Design No. 115996 (‘the first design’) and Registered Design No. 123036 (‘the second design’). The trial judge held that the two designs were validly registered under the Designs Act 1906 (Cth) (‘the 1906 Act’) and that they had been infringed by the respondent’s products.

11 The 1906 Act was repealed with effect from 17 June 2004 by the Designs Act 2003 (Cth) (‘the 2003 Act’). However, the 1906 Act applies in this case by virtue of the transitional provisions in ss 151(3) and 156(3) of the 2003 Act.

12 Each of the registered designs relates to an extruded metal component for a sliding wardrobe door system. The first design relates to an extruded metal component known as a door panel stile, which is designed to be affixed to the vertical edge of a sliding wardrobe door. The second design relates to a component, known as a flush mirror stile, which is designed to be affixed to the vertical edge of a door where the door panel consists of a flush mirror.

13 The statement of monopoly under s 20(5) of the 1906 Act for the first design (which was registered on 16 December 1992, with a priority date of 13 April 1992) provides:

‘Monopoly is claimed in the features of shape and configuration of a wardrobe door panel stile of indefinite length and constant cross-section.’

The first design was described by Mr Brown, a witness for the applicant at trial, as quoted in the trial judge’s reasons for judgment, as follows:

‘The shape described in the isometric view attached to the registration is complicated.

On the left hand side there is a vertical blade which curves inward at the top and curves outward at its lower end.

Slightly below the inward curving top edge is a horizontal blade which terminates on the right hand side with what appears to be a mirror image of the top third (approximately) of the left hand side vertical blade. The right hand side blade is also curved inward. It mirrors the shape of the top portion of the left hand side vertical member.

On the centre line of the horizontal blade there is an additional vertical blade at right angles to the horizontal blade on the centre line of the horizontal blade. This blade is not curved.

The outward curving portion of the left hand side vertical member is likely to be intended to be a finger grip or finger pull panel.

On both the left hand side vertical member and the centre line vertical member there is a small nib located on both members to the inward side. This nib would appear to be a spacer or location feature.

There is a similar nib on the lower edge on the right hand side curved vertical member . . .’

14 The statement of monopoly for the second design (which was registered on 23 March 1995, with a priority date of 27 July 1994) provides:

‘Monopoly is claimed in the features of shape and configuration of a wardrobe door flush mirror stile of indefinite length.’

The second design was described by Mr Brown as follows:

‘The design registration 123036 shows an isometric view.

The isometric view shows a complex form consisting of a number of straight vertical and horizontal blades and one curved shape.

The main shape is seen as a horizontal blade from the centreline of which extends in a downward direction a vertical blade. The blades meet at a right angle. At the Left had (sic) end of the horizontal blade is a second downward vertical blade which appears to be the same length as the centreline vertical blade. This blade also meets the horizontal blade at a right angle. The two vertical blades have similar features found on their inside faces in the same position on each blade.

The features are a grooved section at the bottom of each blade, extending approximately for one third the length of the blade.

The second feature is a short rib or nib located on each inside face approximately one quarter of the length of the blade down from where the vertical blade meets with the horizontal blade. There are two additional major deign (sic) elements to the isometric view. To the left hand side of the top of the horizontal blade is a further horizontal blade approximately half the length of the previously described horizontal blade.

The short horizontal blade is parallel to and joined to the longer horizontal blade. The joining part is a short blade which extends between the two parallel horizontal blades at an angle of approximately 45 degrees. The angled blade joins the longer horizontal blade on its top surface inboard from its left hand edge.

The second major feature is a curved blade which is attached to the horizontal blade at its right hand end. A part of the curved blade extends above the top surface of the horizontal blade. It extends to the same height and appears to align with the short horizontal blade.

On the underside of the horizontal blade there is a small nib extending downwards and there is a small corner block or nib where the underside of the curved blade joins with the underside of the horizontal blade.

A further short rib extends from the inside face of the curved blade and it appears to be positioned to be in line with the two inward facing nibs on the inside faces of the vertical blades.

A further short rib extends from the inside face of the curved blade and it appears to be positioned to be in line with the two inward facing nibs on the inside faces of the vertical blades.

From the above it can be deduced that the isometric view of registered design 123036 is a most complex design, the main parts of which I have described as:

- the main horizontal blade
- the left hand vertical blade
- the centreline vertical blade
- the short parallel horizontal blade
- the right hand side curved blade

A number of small features are also present in the form of nibs or small ribs.’

15 Diagrams depicting isometric views of the first design and the second design are attached to these reasons for judgment as Annexures A and B respectively.

16 The only ground of appeal now pursued by the appellant is that each design ought not to have been registered as its registration was precluded by s 17(1)(a) of the 1906 Act. Section 17(1)(a) of the 1906 Act provides:

‘Subject to this Act, a design shall not be registered unless it is a new or original design and, in particular, shall not be registered in respect of an article if the design:

(a) differs only in immaterial details or in features commonly used in the relevant trade from a design that, before the priority date in respect of the application for registration, was registered, published or used in Australia in respect of the same article.’

17 The appellant relies on both limbs of s 17(1)(a). It contends that each design differs only in immaterial details from the designs that are to be found in the prior art. Further or alternatively, it contends that each design differs only in features commonly used in the relevant trade from designs that appear in the prior art.

18 The prior art relied upon by the appellant is found in the following drawings:

(i) Dowell Australia Limited Drawing D2630;
(ii) Alcan Australia Limited Drawing U6113R;
(iii) Comalco Aluminium Ltd Drawing E34404;
(iv) Dias Aluminium Products Pty Ltd Extrusion Drawing WD-11 (‘WD-11’);
(v) Aluminium Extrusions Drawing AE820 or Australian Registered Design No 96859 (corresponding to Drawing AE820);
(vi) Uzit Products WA Drawing WA7647; and
(vii) Boral Drawing D7047 (which appears to have been prepared by Dowell Australia Limited).

19 Annexure C consists of two charts containing representational drawings of the prior art, juxtaposed against representational drawings of the first design and the second design. The relevant entries in the charts are those found in items 9, 11, 15, 20 and 27 of Chart A, and in items 2 and 11 in Chart B. The other items refer to other examples of prior art which the appellant relied on at trial, but which it no longer relies upon.

20 The appellant contends that the drawings contained in the prior art identify designs which, before the respective priority dates of the first design and the second design, were registered, published or used in Australia in respect of sliding wardrobe door panels.

21 The notice of appeal alleges that the findings of infringement of the first design and the second design were wrongly made; but this ground was abandoned. The appellant also expressly abandoned the contention that the trial judge erred in failing to find that the first design was not an obvious adaptation of designs found in the prior art within the meaning of s 17(1)(b) of the 1906 Act.

GENERAL LEGAL PRINCIPLES

22 The trial judge set out the applicable legal principles at some length in her reasons for judgment, and the appellant does not suggest that the trial judge misstated any of the relevant principles.

23 In these circumstances, it is sufficient for present purposes to note the following matters:

(1) Section 4(1) of the 1906 Act defines ‘design’ to mean ‘features of shape, configuration, pattern or ornamentation applicable to an article, being features that, in the finished article, can be judged by the eye, but does not include a method or principle of construction’. An ‘article’ is defined under s 4(1) as ‘any article of manufacture and includes a part of such an article if made separately...’
(2) Registration of a design protects the appearance of an article, which must be special or distinctive. In Dart Industries Inc v Decor Corporation Pty Ltd (1989) 15 IPR 403 (‘Dart’) at 408, Lockhart J stated that:
‘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 Co (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 Ltd’.

Whether a design is new or original when compared with prior art, and whether or not a registered design has been infringed by another article, are matters to be determined by the eye: Malleys Ltd v JW Tomlin Pty Ltd [1961] HCA 77; (1961) 180 CLR 120 (‘Malleys’) at 123. In Conrol Pty Ltd v Meco McCallum Pty Ltd (1996) 34 IPR 517 (‘Conrol’) at 530, Lockhart J said that it is well established the novelty of a design is a matter of fact to be decided by the eye: at 530. The role of expert evidence is to enable the Court’s eye to be an ‘instructed eye’: LJ Fisher & Co Ltd v Fabtile Industries Pty Ltd (1979) 1A IPR 565 at 572 per Fullagar J; Dart at 408-409.
(3) A design can be registered if it consists of, or includes, features of shape or configuration that serve, or serve only, a functional purpose: s 18(1) of the 1906 Act. The functionality of the features of a design is irrelevant to the question whether the design is registrable: British Franco Electric Pty Ltd v Dowling Plastics Pty Ltd [1981] 1 NSWLR 448 (‘British Franco’) at 457 per Wootten J. However, a novel design must have sufficient individuality of appearance to distinguish it from the fundamental form of an article: Malleys at 123 per Taylor, Menzies and Owen JJ.
(4) When the design concerns commonplace articles, subtle differences may be enough to achieve sufficient individuality of appearance to qualify for registration: D Sebel & Co Ltd v National Art Metal Co Pty Ltd (1965) 10 FLR 224 (‘Sebel’) at 227 per Jacobs J; and Dalgety Australia Operations Ltd v FF Seeley Nominees Pty Ltd (1986) 10 FCR 403 (‘Dalgety’) at 416-417 per Beaumont J.
(5) Features which can be found in the prior art can be combined to produce a novel visual result: Conrol at 529 per Lockhart J; Sebel at 227 per Jacobs J; Dalgety at 409 per Fisher J; and Australian Building Industries Pty Ltd v Woodman McDonald (Glass) Pty Ltd (1986) 84 FLR 454 at 459 per Kelly ACJ. The same point was made very clearly by Laddie J in the following passage in Household Articles Ltd’s Registered Design [1998] FSR 676 (‘Household Articles’) at 686:
‘A design can be novel even if it is made up entirely by blending together a number of old designs provided the resulting combination itself has a sufficiently distinctive appearance. It is only where all the features have been used before, and used commonly (or are immaterial), that the Act deems them to be novelty-destroying.’

24 None of these propositions is controversial and the trial judge specifically referred to each of them. The appellant accepted the accuracy of each of these propositions, as stated by the trial judge. In oral submissions, senior counsel for the appellant specifically accepted the accuracy of the passage I have quoted from Household Articles.

RELEVANT DESIGN FEATURES - THE APPELLANT’S CONTENTIONS

25 The appellant principally relied on the second limb of s 17(1)(a). It contended that the trial judge erred in failing to give proper weight to the evidence advanced by the appellant at trial which demonstrated, it said, that the principal features of the registered design were features which were commonly used in the wardrobe door trade.

26 The appellant contended that the principal features of the first design are:

(1) a u-shaped channel;
(2) arc-like arms to retain a rubber buffer;
(3) nibs to locate a roller wheel; and
(4) a finger grip.

The appellant then asserted, without analysis or substantiation, that these four features and nothing else purported to confer the requisite novelty on the registered design.

27 The appellant argued that each of these four features could be found, in various dimensions, shapes or configurations, in one or other of the drawings that constituted the prior art. Throughout its analysis of the prior art drawings, the appellant described the features it wished to emphasise in functional terms, using expressions such as u-shaped channel, arc-like arms, nibs and finger grip.

28 The appellant submitted that the evidence established that these four principal features were commonly used in the trade within the meaning of the second limb of s 17(1)(b). It also argued that insofar as the features of the registered designs depart from the prior art, the differences were mere trade variants which any skilled workman might employ.

29 The way in which the appellant advanced these arguments can be illustrated by extracting several passages from its written submissions:

‘23. The basic form of the door panel stile is to be found in WD-11 which is a panel stile that was sold was extensively by Dias around Australia before the priority date. WD-11 exhibits the following features:

(i) u-shaped channel;
(ii) arc-like arms to retain a rubber buffer; and
(iii) finger grip.

24. The u-shaped channel which is a feature of WD-11 exhibits ribs or grooves (serrations) to grip the glass, mirror or panel board which is inserted into the u-channel. The serrations are not formed as an integral part of the inside walls of the channel. However, it is clear that continuously since about 1986, aluminium extrusions which included a u-shaped channel with serrations formed as an integral part of the inside walls of the u-shaped channel were sold in substantial numbers by Noyes Bros widely throughout Tasmania. This is shown in the drawing which is AE 820. The wardrobe components shown in both U6113R and E34404 exhibit a u-shaped channel which includes serrations formed as an integral part of the inside wall of the u-shaped channel.

25. The retaining arms of the kind which appear in WD-11 can also be found in:

(i) D2630 (ABP);

Mr Wright gave evidence that substantial sales of the Dowell stile were made continuously from the late 1980’s.

(ii) E34404 (Comalco)

Mr Begley gave evidence that Comalco stile E34404 had been used in Stegbar wardrobes since 1989 continuously to the current date.

26. The only difference in the retaining arms employed in WD-11 and E34404 is that they employ slightly differing degrees of curvature.

...

30. The Uzit door panel stile, which was widely sold throughout Western Australia from 1987 exhibits the following features:

(i) u-shaped channel;
(ii) roller wheel location section (nibs); and
(iii) curved finger grip.’

30 The argument directed towards the second design involved essentially the same steps. The appellant submitted that the second design exhibited the same principal features as the first design except that:

(1) the finger grip is absent; and
(2) the smooth curve of the left hand channel wall is replaced with a Z-like configuration which, together with a squaring off of the top left hand corner of the u-shaped channel, creates a disjointed effect.

31 The appellant contended, again without any substantiation, that only these features purport to confer the requisite novelty on the registered design and they were all commonly used in the trade. The appellant added that, insofar as the features of the second design depart from the prior art, the differences are mere trade variants which any skilled workman might employ.

32 The appellant conceded that the Z-like configuration in the second design was not a feature exhibited in the prior art. But, as to this feature, the appellant submitted that the trial judge should have found that it constituted an immaterial difference or a mere trade variant over the features exhibited in the prior art.

33 As to the first limb of s 17(1)(a), the appellant did not develop its case at any length. However, its submissions tended to focus on the same principal design features that it emphasised in its second limb argument. It contended that all of these features could be found in the prior art, and that the other features of the registered designs were immaterial details.

THE PROPER CONSTRUCTION OF S 17(1)(a)

34 In its submissions, the appellant drew a marked distinction between the way in which the first and second limbs of s 17(1)(a) are to be applied. The distinction essentially concerns the extent to which the overall visual appearance of a design is to be considered in applying each limb of s 17(1)(a).

35 The appellant’s approach to the application of the first limb is uncontroversial. It submitted that the initial inquiry is to compare and contrast the features of the registered design with the prior art to determine whether there are visually significant differences, or whether from a visual perspective the registered design ‘differs only in immaterial details’. In contrast, the appellant contended that the second limb involves a visual comparison of the registered design with the prior art in a very limited sense only. For instance, in its written submissions, the appellant submitted that the trial judge’s conclusion that the first design had ‘significant and substantial visual appeal over and above both the functional form and the prior art’ is not a matter that goes to the second limb of s 17(1)(a); it could only go to the issue of immaterial differences under the first limb of the subsection. In the course of oral argument, senior counsel for the appellant submitted that once attention moves to the second limb of s 17(1)(a) and one identifies those components of the registered design that owe their existence to trade variance, such as the nibs, serrations and the like, it can be seen that it ‘either robs or all but robs the design of the requisite novelty without recourse to visual differences that might be the subject of the inquiry under the first limb’. To the extent to which the second limb admits of any overall visual comparison of the registered designs with the prior art, the appellant appeared to argue that the comparison should focus on those aspects of the design which may have been commonly used in the trade.

36 The appellant contended that the different approaches to the first and second limbs of s 17(1)(a) were justified by the following statements by Gummow J in J Rapee & Co Pty Ltd v Kas Cushions Pty Ltd (1989) 90 ALR 288 (‘Rapee’) at 301-302:

‘Both this case and Lloyd-Jacob J’s decision in Sebel & Co Ltd’s Application (No 2) [1959] RPC 19 at 24, indicate that a feature of a design which is not an immaterial detail may still be a variant commonly used in the trade. In what follows, as to validity, I direct attention to common trade variants.

I bear in mind both that each of the designs must be looked at as a whole and that a design is not invalid merely because it contains a number of elements of similarity to earlier designs, if there are other elements that are different: D Sebel & Co Ltd v National Art Metal Co Pty Ltd (1965) 10 FLR 224 at 227, per Jacobs J.

...

What has happened here may properly be described as the adoption of features commonly used in the trade and the registration of designs for combinations thereof. It is true, as the witnesses agreed, that no particular one of the publications relied on sufficiently discloses chair pads of the squarish shape of the designs with tufting points effected by circular stitching. But this method of tufting was well known and used with other cushions and chair pads, for example, the Eos product (Ex 8). The use of this method of tufting rather than buttoning and straight stitching, in my view, would not present an effect which went beyond the impression of a substitution of a known alternative: cf Sebel & Co Ltd’s Application (No 2), supra, at 24.’

37 Insofar as the appellant contended that the visual appearance of the registered design (in which I include all features of shape, configuration, pattern or ornamentation that can be judged by the eye), in comparison to the prior art, is irrelevant to the application of the second limb of s 17(1)(a), that contention is not supported by Gummow J’s statements in Rapee. Moreover, I consider that the contention that differences of substance which make a visual impression, and which can be judged by the eye, are to be put wholly to one side in applying the second limb of s 17(1)(a) is inconsistent with the plain language and structure of s 17(1)(a).

38 The two limbs of s 17(1)(a) can be regarded as a sub-set of the overarching test of novelty or originality in s 17(1). Para (a) of s 17(1) is preceded by the words ‘in particular’. As Burchett, Lindgren and Lehane JJ said in their joint judgment in Conrol Pty Ltd v Meco McCallum Pty Ltd (1997) 80 FCR 264 at 273, para (a) of s 17(1)(a) is expressed as a particular application of the general proposition that a design is not to be registered unless it is new or original. Whether consideration is being given to the first or second limb of s 17(1)(a), the designs in question must be looked at as a whole; it is not appropriate to disregard configuration and shape: see Macrae Knitting Mills Ltd v Lowes Ltd [1936] HCA 43; (1936) 55 CLR 725 at 730-731 per Dixon J. The 1906 Act as a whole is concerned with the protection of ‘one particular individual and specific appearance’: see Re Wolanski’s Registered Design [1953] HCA 72; (1953) 88 CLR 278 at 279-280 per Kitto J.

39 Section 17(1)(a) cannot be applied without regard to the definition of ‘design’ in s 6 of the 1906 Act. When s 17(1)(a) speaks of a design that ‘differs only ... in features commonly used in the relevant trade from a design that ... was registered, published or used in Australia in respect of the same article’ before the priority date of the registered design, it is using the word ‘design’ in its defined sense. Furthermore, when s 17(1)(a) refers to ‘features’ commonly used in the relevant trade, it is using the word ‘features’ in the same sense in which it is used in the definition of ‘design’, ie, to refer to features of shape, configuration, pattern or ornamentation applicable to an article that, in the finished article, can be judged by the eye. It is not referring to functional features which are simply aspects of the fundamental form or to features which do not make a visual impression and cannot be judged by the eye.

40 The point can be illustrated by reference to several cases. The decision in Sebel was directed to the requirement of the 1906 Act, as it stood in 1965, that a design must be new and original to be registered. In 1965, there was no provision equivalent to s 17(1)(a). Jacobs J pointed out that there was nothing new or original to his eye in some of the main features of the chairs in question. Yet, when his Honour considered the design as a whole, he rejected the claim that there was no novelty or originality disclosed by the design (at 227):

‘However, it seems to me that on the evidence it is not shown that there was previously a conjunction of the various features which appear in this metal chair frame. There is to me a distinctive splay of the two legs which, taken with the in-setting of the supports of the back rests, the simplicity of outline and the general proportions, gives a distinctive character to the design within the small compass to which I have already referred. It is true that except for the splay and the curve of the legs, there is nothing which does not appear in some other designs of an earlier date. It is also true no doubt that a mere conjunction of old features does not necessarily result in a new design. However, it may do so and it seems to me that when one is dealing with furniture design, with the obvious limitations that exist in the addition of new features, one should not be astute to deny novelty upon the ground that there is not some wholly new feature of design incorporated. Design in such a field is a subtle thing and, provided it is distinctive to the trained eye, I think that registration should not be denied in view of the element of subtlety which is involved in the combination of old features in a particular way and the manner in which they are combined.’

In my view, this reasoning process is apposite when one is applying s 17(1)(a), regardless of which limb is being considered.

41 The issue in Household Articles was whether a design for a coffee maker was ‘new’ within the meaning of s 1(2) of the Registered Designs Act 1949 (UK). Section 1(2) provided that a design can only be registered if it is ‘new’. This provision was supplemented by s 1(4), which contains language which is similar to that found in s 17(1)(a). Section 1(4) relevantly provided:

‘A design shall not be regarded as new for the purposes of this Act if it is the same as a design –

(a) registered in respect of the same or any other article in pursuance of a prior application; or
(b) published in the United Kingdom in respect of the same or any other article before the date of the application,

or if it differs from such a design only in immaterial details or in features which are variants commonly used in the trade.’

Laddie J stressed (at 685) the significance of the word ‘only’ in s 1(4):

‘Even when the prior art design is not identical to the design in suit, it is deemed to be novelty-destroying where the differences between them "only" reside in immaterial details or features which are common trade variants. In other words if all the differences between the prior art and the design in suit are immaterial or common trade variants then the design in suit is deemed not to be novel.’ (original emphasis)

As to the reference to ‘variants commonly used in the trade’, Laddie J said at 686:

‘A design can be novel even if it is made up entirely by blending together a number of old designs provided the resulting combination itself has a sufficiently distinctive appearance. It is only where all the features have been used before, and used commonly (or are immaterial), that the Act deems them to be novelty-destroying.’

42 While Laddie J was considering an equivalent but not identical provision in the UK legislation, I consider that the language of s 17(1)(a) supports the proposition (perhaps more strongly than in the case of the UK legislation) that a design can satisfy the novelty requirement under the 1906 Act if it is made up entirely of features found in the prior art, provided those features have been combined to produce a design which has a sufficiently distinctive appearance: Sebel at 227; Dalgety at 416; Macrae Knitting Mills Ltd v Lowes Ltd, supra, at 730-731. The appellant’s submissions did not come to grips with this proposition.

THE FIRST LIMB OF SECTION 17(1)(a) – ‘DIFFERS ONLY IN IMMATERIAL DETAILS’

43 The appellant acknowledged that it faced a very difficult task to demonstrate that the trial judge had fallen into error in her application of the first limb of s 17(1)(a). The appellant accepted that the application of the first limb was classically a matter of fact and impression for the trial judge. In my opinion, the appellant has not established any appealable error by the trial judge in her application of the first limb of s 17(1)(a).

44 The first step in the trial judge’s analysis was to identify the features of a door panel stile which would have to be represented in the fundamental form of the article. She said that those basic features comprised a u-shaped channel, arc-like arms to retain a rubber buffer, nibs to locate a roller wheel section and a finger grip. The trial judge then said that novelty and registration is not to be denied because of functional or purposeful features, such as the basic features just mentioned, if a design which incorporates those features also has features of style or configuration sufficient to give the design individual character or appearance. Applying this principle, the trial judge then held, correctly in my view, that the first design shows sufficient individuality of appearance to distinguish it from the fundamental form. The appellant does not challenge this conclusion.

45 The trial judge then proceeded to give detailed consideration to each of the prior art drawings upon which the appellant relied to contend that the registered design was not new or original. I will not attempt to summarise the whole of her Honour’s analysis. It will suffice to give a few examples. The trial judge observed that the prior art drawing in WD-11 depicts an article that has a squarish or rectilinear appearance, in contrast to the more elongated appearance found in the registered design. Her Honour said that the Dowell D2630 drawing depicted an article that was more angular and linear than the registered design which was more curved and arc-like. Of the Alcan U6113R drawing, her Honour said that, while some aspects of that drawing were similar to the first design, the sweeping lines of the arms, the obtuse angle of the finger grip blade and the absence of the interior curving arms sufficiently distinguish the two designs. The trial judge described the Uzit WA7647 stile as one that had a quite different appearance: ‘the dominant visual impression left by the Uzit stile results from the "hook" formed by the elongated finger grip and the linear appearance of the straight u-shaped channel walls which sit in parallel. In contrast, the [appellant’s] door panel stile is decidedly curvilinear.’

46 On the issue of novelty of the first design, the trial judge concluded at [71]:

‘Having considered each piece of prior art relied on by the respondent and assuming for the moment that there was publication or use prior to the relevant date, I am not satisfied that Registered Design No. 115996 differs from the prior art examples only in immaterial details. Whilst a u-shaped channel, arms to retain a buffer, a roller wheel location section and a grip are a common base, to which the applicant’s registered design and prior art designs were applied, in other respects the applicant’s registered design is visually distinct and sufficiently so to support novelty; the differences I have described between it and the prior art examples are "differences of substance", as that phrase was used by Jacobs J in Sebel at 228, which is what renders the differences sufficient for novelty purposes.’

The appellant did not make any serious attempt to demonstrate that this conclusion was erroneous. Rather, the appellant’s argument focussed on a submission that the material differences identified by the trial judge are features which were commonly used in the relevant trade. This aspect of the appellant’s argument is considered below.

47 The trial judge followed a similar process of analysis in relation to the second design. Her Honour commenced by posing the statutory question, namely whether the second design differs from the prior art only in immaterial details or in features commonly used in the relevant trade. The trial judge then carefully considered each of the instances of alleged prior art, and compared the visual impression created by each piece of prior art with the second design. Amongst other things, her Honour observed that the disjointed Z-like formation in the second design was strikingly distinctive when compared with the prior art and the first design. In the course of this analysis, the trial judge said at [92]:

‘However, again, the overall visual impression of the applicant’s registered design for its flush mirror stile is distinguishable in the relationship between its curved and straight horizontal blades and to the eye of the Court, the registered design shows differences of substance over each piece of prior art which are sufficient to give it an individual character of appearance. As Beaumont J said in Dalgety at 415 in the ultimate analysis the question of originality or novelty is "one of fact and impression".’

48 The trial judge expressed her conclusions at [95]:

‘Having considered the prior art relied on by the respondent which was prior published and/or used prior to the relevant priority date, I am not satisfied that Registered Design No 123036 differs from the prior art examples only in immaterial details. Whilst the designs in question have a common base already noted above, the applicant’s registered design has sufficient visual distinctiveness to support novelty. The differences between this registered design and the prior art examples are "substantial" (Sebel at 228).’

49 These conclusions are, par excellence, questions of fact and impression that are essentially matters for the trial judge. The trial of this proceeding lasted many days, and the trial judge heard detailed explanations from experts as to the features of the registered designs and the features of the drawings found in the prior art. Through that process, the trial judge had advantages which are not available to the members of an appeal court. On appeal, this Court must give weight to the views of, and advantages held by the trial judge, especially where the essential question of novelty over the prior art is a matter to be determined by the eye: Richsell Pty Ltd v Khoury (1995) 32 IPR 289 at 295-296 per Davies and Whitlam JJ.

50 In any event, independently of the trial judge’s analysis of the prior art, I have carefully considered each piece of prior art and compared it to the registered design. To my eye, compared to the prior art, the two registered designs are special and distinctive; each has an individual and specific appearance that is new or original. The overall shape and configuration of each design is quite different from anything presented by the prior art. I consider that the differences between the two designs and the prior art are differences of substance, judged by the eye, and it is impossible to say that there are only differences in immaterial details.

THE SECOND LIMB OF SECTION 17(1)(a) – ‘DIFFERS ONLY IN FEATURES COMMONLY USED IN THE RELEVANT TRADE’

51 The expression ‘features commonly used in the trade’ is similar to the concept of trade variants that is discussed in the earlier authorities. In Phillips v Harbro Rubber Co (1920) 37 RPC 233 (‘Phillips’), Lord Moulton said at 240:

‘The introduction of ordinary trade variants into an old design cannot make it new or original. For example, if it is common practice to have or not to have spikes in the soles of running shoes, a man does not make a new or original design out of an old type of running shoe by putting spikes into the soles. The working world, as well as the trade world, is entitled at its will to take, in all cases, its choice of ordinary trade variants for use in any particular instance, and no patent and no registration of a design can prevent an ordinary workman from using or not using trade knowledge of this kind.’

52 After quoting this passage from Phillips, the learned authors of Russell-Clarke and Howe on Industrial Designs, 7^th ed, Sweet & Maxwell, 2005, concluded at [3-156]:

‘A trade variant is, therefore, some embellishment (useful or otherwise) which is known, and sometimes, though not always, used in connection with a particular class of article or class of work.’

53 In Conrol, Lockhart J said that what constitutes a variant commonly used in the trade is a question of fact: at 530. Lockhart J added that a trade variant must be one commonly known and used in connection with a particular article or class of article: Aluminium Specialities Pty Ltd v Ibis Building Products Pty Ltd (1982) 42 ALR 127; and Re Travers Ltd’s Application (1951) 68 RPC 255 at 258.

54 It seemed to be common ground between the parties that the ‘relevant trade’ for the purposes of applying the second limb of s 17(1)(a) is the trade of designing and manufacturing wardrobe doors.

55 There was also no dispute between the parties as to the meaning to be given to the expression ‘commonly used’. It was accepted that common use requires more than a production of isolated examples: Household Articles at 686; Richsell Pty Ltd v Khoury [1994] FCA 1538; (1994) 30 IPR 129 at 134-135 per Kiefel J. For instance, it has been held that ‘common usage’ of a design feature will not be satisfied by mere disclosure of the feature in a single cited publication of a trade catalogue: Re Britvic Ltd’s Application [1960] RPC 201 at 204-205 per Lloyd-Jacob J; cf Rapee at 590 per Gummow J.

56 The appellant submitted that the trial judge did not properly consider or apply the test set out in the second limb of s 17(1)(a). The appellant submitted that the crux of the trial judge’s reasoning (in relation to the first design) was to be found at [75] and [76] of her reasons for judgment:

‘75. There was other anecdotal evidence of prior use of cited designs, which were essentially recollections of sale of parts a significant time ago. Prior use of the Uzit stile was proven but no part was produced. There was no production of any parts on the market at any identifiable time or any photographs of them. There was no documentary evidence of sales. Although the applicant’s part WD-11 was admitted to have been sold before the priority date there was no evidence that it contained features in "common use" at the relevant time. A number of witnesses were unable to distinguish between functional and visual similarity and it was not possible to reach safe conclusions when certain changes were made to certain drawings, which may have affected the recollections of those giving evidence of sale of parts. None of this evidence enabled me to conclude there were features in "common use" in the wardrobe door trade, which would bar the applicant’s claims to novelty.

76. As I have already stated the articles in question have functional features and whilst these features were in common use, the design in question had significant and substantial visual appeal over and above both the functional form and the prior art. I have already stated that, to my eye, there are differences of substance between each piece of prior art and the design in question. It can be noted there were extensive submissions from the applicant criticising Mr Doonan for his partiality in giving evidence on behalf of the respondent. In addition he was criticised for not having any relevant trade experience at the relevant time. Mr Davies was also criticised for partiality. The criticisms have been considered when weighing evidence given by them. The respondent has not established, on the evidence of prior publication and/or prior use, that the features which were materially different over the prior art examples were features commonly used in the wardrobe door trade. The material differences were not demonstrated to be mere trade variants which any skilled workman might employ.’

57 As to the trial judge’s reasoning at [75], the appellant submitted that her Honour’s criticisms of the evidence concerning common use were made in error. The appellant said that there was ample evidence that the designs depicted in the prior art drawings were commonly used in manufacturing components of wardrobe systems that were extensively marketed and sold before the priority date of the first design. The appellant submitted that the last two sentences of [76] disregarded the evidence, or at least did not give proper weight to the evidence, that was before the Court concerning trade variants. I will return to this ground of appeal but, for reasons that will become apparent, I consider it to be an issue of secondary importance.

58 As I have already noted, the appellant argued that the trial judge’s statement that the first design had ‘significant and substantial visual appeal over and above both the functional form and the prior art’ is not a matter that goes to the second limb of s 17(1)(a); rather, it said, it goes to the issue of immaterial differences under the first limb of the subsection. I do not accept this argument, as it pays scant attention to what I consider to be a very important feature of the provision. The second limb precludes registration of a design if that design differs only in features commonly used in the relevant trade, from a design that was registered, published or used in Australia in respect of the same article before the priority date. Laddie J drew attention to the crucial importance of the word ‘only’ in Household Articles at 685-686. In s 17(1)(a) of the 1906 Act, as in s 1(4) of the Registered Designs Act 1949 (UK), the word ‘only’ makes it clear that all of the differences between the prior art and the design in suit must be immaterial details or features commonly used in the relevant trade (ie common trade variants) before the provision applies to deem a design not to be new or original.

59 This point has been made in other cases. In Phillips v Harbro Rubber Co (1919) 36 RPC 79 at 85, Swinfen Eady MR referred to a design that was ‘merely’ a combination of features found in different goods already on the market. In the same case, Scrutton LJ referred at 87 to a design where ‘all’ the elements of that design had been used by predecessors. In Conrol, Lockhart J said at 529 that the element of public policy that lies behind the second limb of s 17(1)(a) is that no trader should be entitled to gain a monopoly in a design which is merely a variant of standard designs in the trade.

60 In my opinion, the approach which the appellant adopted to the meaning and application of the second limb of s 17(1)(a) is not consistent with these authorities or with the language of the provision.

61 The appellant’s whole argument commenced with the assertion that the only features of the registered design that made it special or distinctive were the u-shaped channel, the arc-like arms to retain a rubber buffer, the nibs to locate a roller wheel section, the finger grip (which only existed in the first design) and additionally, in the case of the second design, the Z-like configuration which existed to satisfy the functional requirements of a flush mirror panel. The appellant made no effort to justify or substantiate these assertions, whether by way of submissions or by reference to any evidence. It simply assumed that if the evidence demonstrated that the particular features it had chosen were novelty-conferring features which were commonly used in the relevant trade before the priority date, then s 17(1)(a) would apply to deny registrability. In my opinion, this argument cannot be sustained.

62 First of all, it is important to note the nature and character of the features identified by the appellant. In its submissions, it invariably described the particular features upon which it relied in functional terms. The trial judge pointed out, correctly in my view, that the features relied upon by the appellant were aspects of the fundamental form of a door panel stile, ie they were functional features. I agree with her Honour’s statement at [57]:

‘Novelty (and registration) is not to be denied because of functional or purposeful features, such as a channel, arms to retain a buffer, a roller wheel location section and a finger grip, if a design which incorporates those features also has features of style or configuration sufficient to give the design individual character or appearance.’

The appellant did not criticise this statement of principle. There is ample authority to support it: see British Franco at 457; Sebel at 227; and Malleys at 123. It is hardly surprising that examples of u-shaped channels, arc-like retaining arms, nibs and a finger grip can be found in the prior art as they are simply aspects of the fundamental form of the article.

63 In the registered designs and in a number of prior art designs, the u-shaped channel exhibits ribs or serrations to grip the glass, mirror or panel board that is to be inserted into the u-shaped channel. The presence of serrations within the u-shaped channel was not asserted by the appellant to be one of the principal features of the registered designs that conferred novelty upon them. No doubt this view is correct. The trial judge said that the use of the serrations on the inside of the u-shaped channel in the registered designs, and in various designs found in the prior art, could not be regarded as a distinctive or novel feature. Specifically, the trial judge said that ‘the use of that particular feature would not appear to be novel or original as it stems from a functional requirement to securely hold the door panel.’ The trial judge might have expressed the same point by saying that the use of serrations is a feature commonly used in the relevant trade and does not distinguish the registered designs from the prior art.

64 Instead of inquiring into the existence of standard functional features, there are more relevant questions. Accepting that the prior art is likely to contain similar functional features, does it contain any of those features in a style, pattern or configuration that, when judged by the eye, anticipates the equivalent features found in the registered design? Even if one or other piece of prior art contains a particular feature that is similar to that found in the registered design, does the blending together of a number of features of that kind, alongside other features of style, configuration or pattern, result in a combination that has a special and distinctive appearance which is new or original? The appellant’s argument in relation to the second limb of s 17(1)(a) did not address these questions.

65 Secondly, the appellant’s arguments did not address all of the features of shape and configuration in the registered designs that gave those designs their special and distinctive appearance. Consequently, the appellant’s case did not address the statutory question whether the registered designs differed only in features commonly used in the relevant trade from designs found in the prior art. It confined its attention to certain features that suited its case, and which, because they were functional features, were likely to be found in the prior art.

66 The trial judge did not confine her analysis to the ‘principal features’ identified by the appellant when she came to apply the second limb of s 17(1)(a). Taking the trial judge’s analysis of the first design as an example, the trial judge accepted at [76] that the articles in question had functional features which were in common use. The functional features to which she referred were those she identified earlier in her reasons, namely the u-shaped channel, arc-like arms to retain a rubber buffer, nibs to locate a roller wheel section and finger grip. However, the trial judge went on to state that the first design had significant and substantial visual appeal over and above both the functional form and the prior art. To her eye, the differences between each piece of prior art and the design in question were differences of substance. These two statements refer back to, and effectively incorporate, her Honour’s earlier detailed consideration of the significant design differences between the first design and each of the prior art drawings relied upon by the appellant. As I read her Honour’s reasons for judgment, this was the principal basis upon which she concluded that the second limb of s 17(1)(a) did not preclude registration. In other words, having regard to the significant and substantial differences in shape and configuration between each piece of prior art and the first design, the trial judge was not satisfied that the registered design differed only in features commonly used in the relevant trade from the designs found in the prior art. Nor was she satisfied that all of the material differences were mere trade variants which any skilled workman might employ.

67 Much of the prior art relied upon at trial was common to both designs, so the trial judge’s conclusions regarding the second design naturally built on her analysis of the first design. At the risk of repetition, it is helpful to set out the three paragraphs in which the trial judge concluded that registration of the second design was not precluded by either the first or second limb of s 17(1)(a):

‘95. Having considered the prior art relied on by the respondent which was prior published and/or used prior to the relevant priority date, I am not satisfied that Registered Design No 123036 differs from the prior art examples only in immaterial details. Whilst the designs in question have a common base already noted above, the applicant’s registered design has sufficient visual distinctiveness to support novelty. The differences between this registered design and the prior art examples are ‘substantial’ (Sebel at 228).

96. There was no evidence which would permit a safe conclusion that the features which were materially different from the examples in the prior used were features which were commonly used in the wardrobe door trade. It was not demonstrated that they were mere trade variants.

97. The case of invalidity of Registered Design No. 123036 was not made out.’

68 At [96], the trial judge was addressing ‘the features which were materially different from examples in the prior [art] (sic)’. On my reading, this is a reference back to all of the materially different features which the trial judge identified in the course of analysing the prior art at [88]-[94]. Her Honour said at [95] that these same features were substantial differences and had sufficient visual distinctiveness to support novelty. They were features of shape and configuration which, judged by the eye, were substantially different from anything found in the prior art. This conclusion was directed towards all of the features that contributed to the visual appearance of the second design as a whole. The trial judge was not referring at [95] and [96] merely to the functional features upon which the appellant relied.

69 As I read the trial judge’s reasons, her Honour concluded that there was no evidence establishing that the second design differed only in features commonly used in the relevant trade from designs found in the prior art. The trial judge stated that there was no evidence that the features that conferred sufficient visual distinctiveness to support novelty were commonly used in the wardrobe door trade, or that they were mere trade variants. The trial judge was directing herself to different features from those relied upon by the appellant. There is no inconsistency between this conclusion and her Honour’s earlier observation that the functional features identified at [57] were in common use.

70 The appellant seemed to suggest that the trial judge could have expressed her reasons concerning the application of the second limb of s 17(1)(a) more clearly or completely than she did at [76] and [96] of her reasons for judgment. While this might possibly be so, I do not consider that the criticism has any real substance. When the judgment is read in context, it is acceptably clear that the trial judge was referring back to, and relying upon, her earlier analysis of the features of each registered design that gave it substantial visual distinctiveness when compared to the prior art. Quite correctly, her Honour then had regard to all the distinctive features of the registered design when she posed, and answered, the question set by the second limb of s 17(1)(a).

71 On my own analysis of the prior art, and my comparison of the prior art with the registered designs, I would reach the same conclusion as the trial judge. Each of the designs does not differ only in features commonly used in the relevant trade; when considered as a whole, they each display features of shape and configuration that are not found in the prior art. To my eye, it cannot be said that either of the designs differs only in the features that the appellant contends were commonly used in the relevant trade.

72 In any event, I reject the appellant’s argument that the second limb of s 17(1)(a) must be applied only by reference to the features which the appellant identified in argument. All of the features of shape and configuration that potentially give the design a special and distinctive appearance as a whole must be considered in applying each limb of s 17(1)(a).

EVIDENCE OF COMMON USE

73 As I read the trial judge’s reasons for judgment, she advanced two distinct and independent reasons for rejecting the challenge to validity based on the second limb of s 17(1)(a). The first, and most important ground, is the one I have already addressed. Quite independently of that ground, her Honour criticised the evidence of common use that was presented at trial, and held that none of that evidence enabled her to conclude that there were features in common use in the wardrobe door trade that would bar the registration of the two registered designs. In my opinion, it is clear that even if the trial judge had concluded that there was sufficient evidence to support the appellant’s contention that the particular features upon which it relied were in fact in common use in the wardrobe door trade before the priority date of the registered designs, she would have reached the same conclusion concerning the inapplicability of the second limb.

74 The trial judge accepted the evidence of Mr Begley, a research and development manager at Stegbar Pty Limited, that there were sales of articles made in accordance with the Comalco E314404 and Alcan U6113R drawings, and that this evidence constituted evidence of some use of the designs in respect of such articles. The trial judge also accepted that there was evidence that articles were made and sold in accordance with the Dowell D2630 drawing, although there was an unresolved issue about the precise form of articles that were sold because of amendments to the relevant drawing. In relation to the Uzit WA7647 drawing, the trial judge said that there was no documentary evidence of sales, and that no manufactured part, or any photograph of a part, was produced. As for the WD-11 drawing, the trial judge said that there was no evidence that it contained features in common use at the relevant time. The trial judge also referred to the fact that a number of witnesses were unable to distinguish between functional and visual similarity. Having regard to these matters, the trial judge concluded that none of this evidence enabled her to conclude that there were features in common use in the wardrobe door trade which would bar the applicant’s claim to novelty. The appellant challenges these evidentiary findings.

75 In relation to the Comalco and Alcan drawings, Mr Begley gave the following evidence in his affidavit:

‘(a) Comalco drawing E34404 original drawing dated 23^rd May 1989. An extrusion to the shape shown on this drawing has been used in the manufacture and installation of Stegbar wardrobes since 1989 continuously through to the current date. For a period prior to 1989 it was supplied to Stegbar by Villante Industries/Anacoters. The extrusion was supplied to Villante by Dowell Extrusions (now Crane) to the extrusion drawing D6405. The extrusion E34404 was redrawn from D6405 as noted at the foot of E34404. I have been unable to locate a copy of the earlier drawing D6405. The Dias registered designs 115996 and 123036 exhibit the features of the Stegbar E34404 door panel stile.

(b) Alcan drawing U6113R dated 28/08/87 for Sliding Wardrobe Doors. Extrusions to this drawing were supplied to Stegbar by Villante Industries/Anacoaters in the period 1987 to 1989.’

When cross-examined about Alcan drawing U6113R, Mr Begley said that Stegbar sold articles that were manufactured in accordance with that drawing in different States.

76 In relation to the Dowell drawing D2630 and Boral drawing D7407, Mr Wright, a divisional manager employed by Dowell, identified design drawing D2630 as a die drawing for a profile used in Spacesaver wardrobe systems that were sold by Dowell in the late 1980’s. He also confirmed that products made in accordance with the drawings were sold by a division of Dowell in the later 1980’s. He identified Boral drawing D7047 as a die drawing for a profile that was used in the Spacesaver wardrobe system sold by Dowell from 1992 until at least December 2000 (he explained that Boral acquired Dowell in 1988). Again, he confirmed that products made in accordance with that drawing were sold in late 1991 or early 1992. In his oral evidence, Mr Wright said that hundreds of thousands of dollars worth of extruded product was made in accordance with drawing D2630. In relation to drawing D7047, Mr Wright said that he could not recall a specific date when component parts were made in accordance with that drawing, but his expectation would be that it would be early in 1992. Otherwise, Mr Wright could not recall any details.

77 Mr Paterson gave evidence that parts manufactured in accordance with drawing WD-11 were part of the Spacemaker wardrobe door system marketed by the respondent from about 1987. Mr Paterson said that the Spacemaker system has been sold continuously since about 1987 and that components manufactured in accordance with the drawing were still available for sale. He also said that the Spacemaker wardrobe door system represented about 50 per cent of the respondent’s turnover which was about $8 to 10 million in 1994 when Mr Paterson joined the company.

78 The evidence concerning the Uzit drawing was given by Mr Goldman, the managing director of Design Investments Pty Ltd. It conducted a business known as ‘Comsupply’ which supplied aluminium extrusions to the architectural market in Western Australia. The company had a significant market share in Western Australia. He gave evidence that drawing WA7647 is a die drawing for a wardrobe door stile produced by his company for Uzit Products WA, a Western Australian wardrobe manufacturer. He said that the Uzit stile, manufactured in accordance with the WA7647 drawing, was sold widely throughout Western Australia by Uzit from 1987 until 1992 or 1993. In his oral evidence he elaborated that the Uzit stile was sold in thousands in the period from 1987 until 1992 or 1993. This evidence was based on his personal knowledge having been directly involved in selling the product during that period of time. He said that the product was recognised as being quite a prolific seller.

79 I am prepared to accept that this evidence, despite some deficiencies, does establish that the designs referred to in the drawings for the Comalco, Alcan, Dowell, WD-11 and Uzit stiles were in common use in the wardrobe door trade over a period of some years before the priority date of the registered designs.

80 In my view, it was not essential that there be documentary evidence of sales, or that actual component parts, or photographs of them, be produced. Evidence of the manufacture and sale of components in accordance with design drawings is probative of the fact that the features in the drawing were used in the relevant trade at about the time that the components were manufactured and sold. Whether the evidence is sufficient to establish common use depends on the extent of manufacture and sale. I am prepared to assume that the evidence led at trial was sufficient to establish that the features found in the relevant prior art drawings were commonly used in the relevant trade. On this assumption, it would follow that the trial judge’s evidentiary conclusions, as set out at [73] to [75] of her reasons for judgment, were not supported by the evidence that was before her.

81 I have concluded, however, that if the trial judge did make evidentiary errors of the kind I have assumed, they do not impugn her Honour’s conclusion that the second limb of s 17(1)(a) has no application. Even accepting that component parts were manufactured in accordance with the Comalco, Alcan, Dowell, WD-11 and Uzit drawings, and that the manufacture and sale of such components involved a common use of the features of those designs in the relevant trade, it does not follow that all of the features of the two registered designs were commonly used in the relevant trade before the priority date. Expressed in the language of s 17(1)(a), it does not follow that the registered designs differ only in features commonly used in the relevant trade from designs that were registered, published or used in Australia in respect of wardrobe door systems before the priority date of the registered designs.

82 In my opinion, the trial judge was correct in concluding that s 17(1)(a) did not, by virtue of either of its limbs, preclude the registration of the two designs. This conclusion stands independently of any error made by the trial judge in assessing the sufficiency of the evidence concerning the common use in the trade of the designs for the Comalco, Alcan, Dowell, Uzit and WD-11 stiles.

83 For the above reasons, I would dismiss the appeal with costs.

I certify that the preceding eighty-three (83) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Young.

Associate:

Dated: 18 July 2006

Counsel for the Appellant:	B Caine SC with M Goldblatt
Solicitor for the Appellant:	Hunt & Hunt Lawyers
Counsel for the Respondent:	C Golvan SC with Dr S Ricketson
Solicitor for the Respondent:	Middletons Lawyers
Date of Hearing:	4 May 2006
Date of Judgment:	18 July 2006

ANNEXURE A

ANNEXURE B



ANNEXURE C