Malleys Ltd v J W Tomlin Pty Ltd [1961] HCA 77; (1994) 180 CLR 120 (30 November 1961)

HIGH COURT OF AUSTRALIA

MALLEYS LIMITED v J. W. TOMLIN PTY. LIMITED [1961] HCA 77; (1994) 180 CLR 120
Designs

HIGH COURT OF AUSTRALIA
TAYLOR, MENZIES AND OWEN JJ

Designs - Registrable design - Novelty - Originality - Individuality of appearance - Function - Infringement - Imitation - Fraudulent imitation - Designs Act 1906 (Cth), ss. 17, 30.

HEARING

1961, SYDNEY, November 8-10, 30
30:11:1961

DECISION

TAYLOR, MENZIES AND OWEN JJ The respondent, who was the plaintiff in the suit, on 27 May 1957, obtained registration under the Commonwealth Designs Act 1906 of a design in respect of what is perhaps euphemistically called "Bottom for toilet pan" which McLelland CJ in Eq. found was valid and had been infringed by the appellant, who was the defendant in the suit. An injunction was granted and an inquiry into damages ordered. The appellant, upon this appeal from this decree, has called into question both findings of his Honour.

2. The representation of the design depicted upon the certificate of registration shows diagrammatically three views of what is presumably a round piece of metal. The first is a perspective view of the topside of the bottom; the second is a perspective view of the underside of the bottom; and the third is a sectional view of one half of the bottom bisected across its diameter. No dimensions are indicated. From these three drawings it can be gathered that the bottom consists of a circular plate, a diametrical section of which reveals a "J" at its outside edge and, inside the "J" a flat portion, the width of which is about one-third of the diameter of a low central dome which it surrounds. The so-called "J" represents the sectional shape of the circumferential rim or edge. The perspective views give no idea of the height of the dome but from the diametrical section it would seem that at the centre it is two or three times the height of the flat section that surrounds it and ends at the

(8) [1953] HCA 72; (1953) 88 CLR 278.

(10) (1893) 1 QB 470.

(11) (1887) 4 RPC 39.

(12) (1893) 11 RPC 35.

(13) (1889) 14 App Cas 550.

head of the hook of the "J". The height of the shaft of the "J" is approximately half that of the dome. What has been set out is the most that can be gathered from the drawings and the first question is whether there has been disclosed a new or original design for the bottom of a toilet pan.

3. The Act authorizes the registration of a new or original deign applicable to the purpose inter alia of the shape or configuration of an article which, before the application for its registration, has not been published in Australia (ss. 4, 17).

4. The evidence did warrant the conclusion which McLelland CJ in Eq. reached that no bottom for a toilet pan had been made of the shape described before the date of the respondent's application for registration nor had there been earlier any publication of a description or representation of the bottom of a toilet pan of that shape. It was argued, however, that because an arrangement of the three sections of the design which has been described (that is, the rim, dome and the annular portion between them) was not indicated with any precision, the so-called deign was altogether too vague to qualify for registration. The same contention was put somewhat differently in the form of an argument that any person inspecting the certificate of registration, although shown the features of the design, could not know the extent to which a different arrangement of those features would be protected by the registration of the design. The answer to these contentions lies, we think, in the recognition of what is essential to distinguish a design from a mere shape. It is, of course, true that every shape is not a design; there must be "sufficient individuality of appearance" to distinguish it from what Russell-Clarke in Ch 2 of his book Copyright in Industrial Designs aptly describes as "the fundamental form" of an article. Furthermore, the existence of that sort of individuality is to be determined by the eye and not by measuring dimensions. It follows that a design need not have the precision of a working drawing; it concerns the shape or configuration of an article, as it appears to the eye. If a deign applied by another has the features that are characteristic of the registered design and are so arranged that to the eye the resulting shape is substantially the same, there is infringement, whereas if the same features are arranged so that to the eye the resulting shape is different, there is, in the absence of fraudulent imitation, no infringement. In deciding one way or the other the proportions of common features may be of the utmost importance, but acceptance of this does not involve deciding that to be registrable the representation of the design must be represented so that its proportions can be accurately calculated; it is sufficient if it shows a shape with enough individuality of appearance to distinguish it and to enable it to be determined by visual comparison whether the shape of an article is either the same as, or nothing more than an imitation of, that disclosed by the registered design. If, for instance, a crescent were a new or original design for a light reflector, it could be registered although the representation depicted did not specify the degree of the curve, and if the question ever arose whether a reflector in the shape of a crescent but with a curve that by measurement was not the same as that represented would constitute an infringement, a comparison of the sort already indicated would then have to be made. Applying these principles to the shape of the bottom for a toilet pan that has been registered as a design, we consider that, taking the various features that are disclosed and their general arrangement, there is sufficient individuality of appearance to justify registration if the design was new or original.

5. As has already been indicated, it was not in dispute that no toilet pan bottom of the design registered had previously been made or depicted in Australia, but to support its contention that the design was not new or original the appellant pointed to a number of other articles and to published designs of other articles that were claimed to be analogous to the bottom of a toilet pan. If the "J" rim of the registered design were not part of the design itself it would be open to question whether the earlier existence of articles such as the bottle can lid (Ex. 8(b)), the lids for sanitary pans: "Austral" (Ex. 25(b)) and "Zolner" (Ex. 26(b)), the manufactured part illustrated in Ex. 30 or the dished and flanged heads illustrated in the photostat copy of an article entitled "Sheet Metal Fabrication" by Sachs, did not deprive the respondent's design of novelty, but as none of these have anything corresponding to the "J" rim we do not regard any of them as made in accordance with a design that could be regarded as an anticipation of the respondent's design. McLelland CJ in Eq. dealt with this part of the case somewhat differently. He did not regard the "J" rim as an integral part of the registered design but considering that Ex. Nos. 8(b), 25(b) and 26(b) were the only ones which to the eye revealed a shape similar to that of the registered design he decided that the articles represented were not in any material sense analogous to a bottom for a toilet pan. His Honour treated the "J" rim as not part of the design and as no more than an indication that the bottom would be applied to a cylinder by a wheeling-in process that will be described later. We cannot accept this view. It is not the function of design to indicate a process of manufacture; indeed, anything amounting to a method of construction that would permit differences of shape spells invalidity (14). As Kitto J. said in In re Wolanski's Registered Design (15), when speaking of the subject of registration "it is not an article made according to a particular shape or pattern. Much less is it a method of making such an article, or a method of achieving an end by the use of such an article". The design here is the shape of a pan bottom and the circumferential "J" rim is just as much part of that shape as is the dome in the middle. It is one of the features of the design and cannot be disregarded. A design with a flat edge being no more than an extension of the annular flat section would be a different design from that which was registered. The monopoly, if there be one, is for the particular appearance represented by the drawings and for nothing else. Having, therefore, reached a different conclusion from his Honour about the "J" rim, it is not necessary to consider the correctness of his Honour's conclusion that the articles of earlier manufacture were not analogous to the bottom for a toilet pan or, indeed, to decide whether under the Australian legislation comparison should be restricted to articles of an analogous character.

6. There is, however, one further point which requires consideration before concluding whether or not the design was registrable. The appellant argued that even if what was registered could be regarded as in a sense new, it could not be regarded as an original design because no originality in the sense of making a discovery was involved in the design and that some originality in that sense is requisite for novelty itself. It is not necessary here to explore the difference (if any) between the deign that is new and a design that is original because, as s. 17 was amended in 1934, it is sufficient for a deign to be new or original. It seems clear, however, that the word "new" does not take any colour from the word "original" and that whether or not the design now in question is "original" in any sense beyond its individuality of appearance, it is "new" for the reasons which have already been given, namely, that the design of every bottom for a toilet pan and of every other article to which evidence was directed is substantially different if the "J" rim is to be regarded as an integral part of the design.

7. For the foregoing reasons we have reached the conclusion that the attack upon the validity of the registration of the respondent's design fails and that McLelland CJ in Eq. was correct in deciding

(14) Pugh v. Riley Cycle Co. Ltd., (1912) 1 Ch 613, at pp 619-620, per Parker J.; Rosedale Associated Manufacturers Ltd. v. Airfix Products Ltd., (1956) RPC 360; (1957) RPC 239.

(15) [1953] HCA 72; (1953) 88 CLR 278, at P. 279.

that the design was a new or original design within the meaning of s. 17 of the Act. This brings us to the question of infringement.

8. An infringement of copyright in a registered design occurs when another person, without the licence or authority of the owner, "applies the design or any fraudulent or obvious imitation of it to any article in respect of which the design is registered" (s. 30(a)). As has already been said, the article in respect of which the design is registered is "Bottom for toilet pan" and if in this case there has been an infringement, it is because the appellant has applied the design or a fraudulent or obvious imitation of it in the making of "articles" designated as bottoms for toilet pans. This can only be determined by looking at the bottoms as fabricated before the process of incorporating them in pans begins and determining whether they are of substantially the same shape as that represented by the registered design.

9. On this part of the case McLelland CJ in Eq. found as follows:

"The plaintiff first made pans with bottoms having an annular portion and a dome early in 1956, marked 'DES RGN PND'. The defendant, before making pans with an annular portion and a dome, had one of the plaintiff's articles in its possession. The first domed bottoms made by the defendant had no embossed cross upon them. On 19 July 1957, the defendant's then patent attorney was informed that a certificate of registration had been obtained. Towards the end of 1958 the defendant sold pans having bottoms with an annular portion and a dome. These had indented upon them a large cross. The letter written by the defendant's new patent attorneys on 5 January 1958, shows that the plaintiff's registered design had been examined on behalf of the defendant an appreciable time before that date. The person responsible for the production of the defendant's design for the bottom of its pan was not called as a witness. In the above circumstances I draw the inference that the defendant based its design on the plaintiff's design and that the embossed cross was added with deliberation to make the appearance of the defendant's article different from the plaintiff's design. No explanation of why the embossed cross was added was given by any witness called on behalf of the defendant."

10. Upon these findings his Honour concluded that "the defendant's deign is an imitation which is based, and deliberately based, upon the registered design, and that the imitation was a fraudulent imitation within the meaning of the section".

11. We agree with McLelland CJ in Eq. that the appellant did not apply the respondent's design or an obvious imitation of it in its manufacture of bottoms for toilet pans. His Honour so found while treating the "J" rim as not an integral part of the design; but if it is, as we think it is, further ground is provided to support the conclusion that there has been no application of the registered design or an obvious copy of it, for, as will appear later, the absence of the "J" rim from the appellant's design itself constitutes a very material difference from the registered design.

12. His Honour did, however, find in effect that the design used by the appellant was deliberately based upon the respondent's design and, disregarding the "J" rim altogether, such differences as there were had been adopted for the purpose of disguising this. This must now be examined, but on the footing that the "J" rim cannot be left out of account.

13. Turning to s. 30 it is apparent that there is infringement in any one of three cases - that is, where the design which has been applied is: - (i) the registered design (ii) an obvious imitation of the registered design (i.e., not the same but a copy apparent to the eye notwithstanding slight differences) and (iii) a fraudulent imitation (i.e., a copy with differences which are both apparent and not so slight as to be insubstantial but which have been made merely to disguise the copying). Visual comparison will establish (i) or (ii) but a finding of fraudulent imitation must require something more because in such a case visual comparison is not of itself sufficient to establish imitation; otherwise it would be an obvious imitation.

14. The finding of McLelland CJ in Eq. was, therefore, that notwithstanding that the design applied by the appellant in its manufacture was not the same as the registered design and that it was not apparent that it was an imitation of the registered design, nevertheless it was an imitation because the evidence showed that it was deliberately based upon the registered design.

15. At this point it is necessary to come back to the "J" rim of the registered design. As to this, his Honour said:

"A good deal of evidence was placed before me relating to the 'J' shaped rim shown in the design. The ordinary method of fastening a bottom to a sanitary pan and like objects is by a process known as a wheeling-in process. The cylinder to which the bottom is to be applied has an 'L' shape at the end. The bottom has a rim on which the bottom of the 'L' lies. Upon application of pressure from wheels in a series of processes, the rim of the bottom is first bent over the bottom of the 'L' of the cylinder and then both pieces are bent in towards the side of the cylinder until finally the extreme end of the rim is locked into the bent portion of the 'L' and both are pressed firmly against the side of the cylinder. A separate rim known as a wearing rim is then placed round and over the joint of the bottom with the cylinder. If the 'J' on the rim of the bottom were treated as an integral part of the design it was said on behalf of the plaintiff that at one stage of the operations on the bottom carried out by the defendant, the rim assumed the shape of a 'J', and for the defendant it was said that at no stage did the rim assume a 'J' shape and certainly never a 'J, shape of the proportions shown in the design. I am satisfied that sometimes at any rate during the wheeling-in operation carried on by the defendant the rim assumed a shape in which the end of the rim was a little higher than the surface of the bottom but did not assume a 'J' shape of the proportions indicated in the design if it be taken as accurately showing proportions. However, I am of opinion that this part of the drawing which illustrates the design would, to an informed eye, simply indicate that the bottom would be applied to the cylinder by a wheeling-in process or some similar process and that it is not an essential part of the design, and I shall deal with the case on that basis."

16. His Honour's finding that at no time in the course of its manufacture of toilet pans did the rim of the bottom assume a "J" shape is fully borne out by Ex. Nos. 1 and 18, but, as we have already indicated, the time at which the comparison must be made is when the bottom is completed and before the next step in the manufacture of pans commences. At the critical time the appellant's articles did not have a "J" rim. This appears from Ex. 18.

17. The presence of the "J" rim in the registered design and its absence from bottoms of the appellant's manufacture is, we think, of decisive importance. Accepting fully his Honour's findings that the appellant's final design was arrived at after an examination of the registered deign and that the respondent's idea of a bottom with a flat section around a dome was taken by the appellant and conceding that the embossed cross could be regarded as no more than as an element of disguise and that apart from this and the Ili" rim there was, despite the fact that the proportions were not identical, no substantial difference between the shape of the registered deign and that of the bottoms made by the appellant and are nevertheless forced to conclude that there is a substantial difference of a material kind between the shape of a pan bottom with a "J" rim and one without a "J" rim and that the design applied by the appellant in its manufacture was not an imitation of the registered design but a different design which embodied some of the features of the registered design. There is, however, no copyright in an idea and it was the respondent's idea that the appellant took, not its design.

18. The conclusion just stated is reinforced by an examination of Ex. 1, which illustrates the various stages of the appellant's wheeling-in process and which makes it apparent that to have bottoms with a "J" rim as shown in the registered design would not fit into that process at any stage. Furthermore, in dealing with this aspect of the case it is not without importance to notice that the drawing of the diametrical section which forms part of the representation of the registered design, although no more than diagrammatical, does seem to indicate that the "J" there depicted is such that the cylinder of the can which fits into it has no "L" section at the foot such as would be necessary for a wheeling-in process of the sort adopted by the appellant. The design applied by the appellant in its manufacture was, it seems to us, not only different but, to be workable, was necessarily different from the registered design. Although in considering whether a shape is a deign mechanical advantage is immaterial, it is material in considering whether there has been an infringement to find that an article, made according to the registered design, would not be workable in circumstances in which the article, in respect of which infringement is alleged, is workable. To adopt a design which differs from a registered design by the substitution of what we may call a workable for an unworkable feature resulting in a different appearance may well be, and in this case is, in our view, not to imitate the registered design but to use its creator's ideas in devising a different design.

19. We have therefore reached the conclusion that the appellant has not infringed the respondent's copyright and his Honour's decision that it has should be reversed. On this ground we allow the appeal.

20. Appeal allowed.

21. Decree of the Supreme Court of New South Wales discharged and in lieu thereof order that the suit be dismissed with costs.

Solicitors for the appellant, Perkins, Stevenson and Linton.
Solicitors for the respondent, Manning, Riddle and Co.