Z CATCHWORDS Design - Registrable design - Whether a feature of dimension can be part of design - What constitutes infringement - Tests to he applied for infringement. DESIGNS ACT 1906 ss.4, 17(1), 18, 20(4), 20(5)(a) and 401(1). No. G36 of 1985 DALGETY AUSTRALIA OPERATIONS LIMITED Appellant - and - F.F. SEELEY NOMINEES Pry. LIMITED Respondent No. G37 of 1985 F.F. SEELEY NOMINEES PTY. LIMITED Appellant - and - DALGETY AUSTRALIA OPERATIONS LIMITED Respondent CORAM: FISHER, NEAVES AND BEAUMONT JJ. ADELATDE 25 FEBRUARY 1986. one IN THE FEDERAL COURT OF AUSTRALIA) ) SOUTH AUSTRALIA DISTRICT REGISTRY) ) GENERAL DIVISION ) NO. G36 OF 1985 ON APPEAL FROM THE SUPREME COURT OF SOUTH AUSTRALIA BETWEEN: DALGETY AUSTRALIA OPERATIONS LIMITED Appellant AND: F.F. SEELEY NOMINEES PTy. LIMITED Respondent MINUTE OF ORDER JUDGES MAKING ORDER FISHER, NEAVES & BEAUMONT JJ. WHERE MADE ADELAIDE DATE OF ORDER 25 FEBRUARY 1986 THE COURT ORDERS THAT: 1. The appeal be dismissed. 2. There be no order as to 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) ) SOUTH AUSTRALIA DISTRICT REGISTRY) ) GENERAL DIVISION ) No. G37 of 1985 ON APPEAL FROM THE SUPREME COURT OF SOUTH AUSTRALIA BETWEEN: F.F. SEELEY NOMINEES PTY. LIMITED Appellant AND: DALGETY AUSTRALIA OPERATIONS LIMITED Respondent MINUTE OF ORDER JUDGES MAKING ORDER FISHER, NEAVES & BEAUMONT Jd. WHERE MADE oe ADELAIDE DATE OF ORDER 25 FEBRUARY 1986 THE COURT ORDERS THAT: 1. The appeal be dismissed. 2. There be no order as to 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 SOUTH AUSTRALIA DISTRICT REGISTRY ~~ wre rew GENERAL DIVISION No. G36 of 1985 ON APPEAL FROM THE SUPREME COURT OF SOUTH AUSTRALIA BETWEEN: DALGETY AUSTRALIA OPERATIONS LIMITED Appellant AND: F.F. SEELEY NOMINEES PTY. _ LIMITED Respondent No. G37 of 1985 BETWEEN: F.F.SEELEY NOMINEES PTY. LIMITED Appellant AND: DALGETY AUSTRALIA OPERATIONS LIMITED Respondent CORAM Fisher, Neaves and Beaumont JJ. oo DATED: 25 February, 1986 REASONS FOR JUDGMENT: FISHER J.: These are two appeals from the Supreme Court of South Australia brought to this Court pursuant to the provisions of sub-s. 40I(1) of the Desiqns Act 1906 ("the Act"). The two appeals were directed by order of the Court to be heard at the Z. same time. For my part I would dismiss both of the appeals being of the opinion that Bollen J. was correct in his finding that the design in question was validly registered under the Act by Dalgety Australia Operations Limited ("the appellant") and that 1t had not heen infringed by F.F. Seeley Nominees Pty Limited ("the respondent"). In arriving at this conclusion I have had the benefit of reading in draft form the reasons for judgment of Beaumont J. I agree with him that the appeals should be dismissed and generally with the substance of his reasons, There are however a few observations which I wish to make upon the most persuasive of the arguments presented hy counsel on behalf of the parties. In so doing I will adopt the background facts as stated by Beaumont J. and only repeat them where unavoidable. The Act was substantially amended in 1981, consequent upon the report of the Franki Committee and the amendments took effect by proclamation on 1 April 1982. All of the High Court authorities and most of those of the Supreme Courts referred to by counsel were decisions given in relation to the legislation prior to the amendments. However no significance need he attached in these proceedings to this fact, particularly as Parliament in enacting the amendments substantially adopted the language used by the Courts when construing the legislation. A crucial feature of this matter 1s that the appellant sought to register and gain a monopoly in respect of the design 3. for features of shape and configuration applicable to the article 1rllustrated in photographs accompanying its application. These photographs have been helpfully reproduced in the reasons of Beaumont J. There was no statement of monopoly by the appellant which identified the features of the shape or configuration for which it did or did not claim a monopoly. The design as registered applies to the appearance as a whole of the air conditioner (D. Sebel & Co Ltd v. National Art Metal Co. Pty Ltd (1965) 10 F.L.R. 224 per Jacobs J. at p.228). It did not relate to any pattern or ornamentation thereon. On the question of validity of registration and infringement regard must be paid to the shape or configuration considered as a whole in relation to the article illustrated in the photographs and I agree with the emphasis which Mr Doyle Q.C. placed on this aspect of the matter. The design consists of the totality of the visual features of the air conditioner. In Re Clarke's Registered Design (1896) 13 R.P.C. 351 Lindley L.J. said at p.358 in relation to design for shape or configuration: "This Act is confined to designs applicable to manufactured articles, and to the application of such designs to such articles. Again, the Act does not apply to the things to which a design is applied; the Act applies to the design applied to them. The distinction is obvious enough when the design is for a pattern or ornament; but when, as in this case, the design is for the shape of a thing, the distinction is reduced to the difference between the shape of a thing and a thing of that shape. A design applicable to a thing for its shape can only be applied to a thing by making it in that shape. A design for the shape of something is what is meant by section 60 when shape is in question; and a registered design for a shape of a thing is infringed if that thing is made in the shape shown by the registered design." The respondent challenged in its appeal the finding of Bollen J. that the design illustrated by the photographs was validly registered. In this regard it may fairly be said that its counsel pressed upon us virtually every objection that was open under the Act and argued on matters of considerable detail and with the benefit of hindsight. It is of course necessary for the shape to have individuality of appearance and such individuality 1s provided by "the various features that are disclosed and their general arrangement" (Malleys Ltd v. Tomlin Pty Ltd (1961-62) 35 A.L.J.R. 352 at p.353). On the question of benefit gained from reliance upon hindsight counsel for the appellant referred us to a passage in the judgment of Aickin J. in Minnesota Mining & Manufacturing Co. v. Beiersdorf (Australia) Ltd (1980) 144 C.L.R. 253 at p.293 which I adopt as appropriate, although said in a different context: "It is in relation to this process that the misuse ef hindsight is most common. When once an idea Or an object or a process or a _ combination, admittedly novel, has been published, it is very @asy to say after perhaps months of search and study in the Patent Office and the public libraries that the integers into which the patent might be dissected could be found scattered amongst the prior documents by a person who already knew the solution to the problem and therefore knew what to look for and what to discard. But that process does not demonstrate lack of an inventive step. The opening of a safe is easy when the combination has been already provided." 5. Beaumont J. in his reasons has dealt with each of the grounds upon which the respondent sought to impugn the registration by the appellant. Subject to the comments which I make hereafter I agree with his rejection of the respondent's arguments and his reasons therefor. The respondent challenged the validity of the registration on the ground that there was no "design" within the meaning of the Act in the appearance disclosed by the photographs. Its counsel contended that this appearance which Bollen J. identified as "slim and upright" was part of the fundamental form of an air conditioner and as such could not be registered as a design. He also contended that this appearance was, in the words of the definition of design, "a method or principle of construction". It is mot in dispute in this matter that both the fundamental form of an evaporative air conditioner prior to 1984 and the then state of the prior art were that the air conditioner was box-like and chunky in appearance. In general it may be said that 1t was necessarily so because of the essential nature of its fan. The discovery and introduction of an axial fan in lieu of a centrifugal fan enabled a departure from this appearance in that the fan could be confined in a narrower box. The manufacturer was thereby enabled to reduce the dimensions of the cabinet and in particular the depth thereof. This reduction meant, as pleaded by the appellant, that it hada "slim-line 6. shape" because its depth from its front face to its back face was considerably less than the corresponding depth of air conditioners on the market at the relevant date. It was also pleaded that it had a depth to height ratio which was considerably less than the depth to height ratio of such air conditioners. The appellant particularised certain other aspects of 1ts registered design which I shall call ""ambellishments"". In his reasons for judgment the learned trial judge found that the appellant's air conditioner had a slim upright appearance. It was said by the respondent's counsel that he made this finding merely by reference to the reduction in depth of the air conditioner which he said was a matter of measurement and not of design and thus necessarily permitted differences in shape. Some support for this submission can be found in his reasons. Having found that the design was productive of a slim, upright air conditioner, his Honour went on to say: "Considering all the issues thus far I have not found it necessary to consider details such as the exact nature of bevelling, of radius, of position of controls, or appearance of front or back of the cabinet. To my eye the slim, upright appearance of itself is so individualistic as to make consideration of these details unnecessary." If by this the trial judge intended to convey that he was concentrating exclusively on the narrowness (to use a neutral word) of depth of the air conditioner produced by the 7. reduction in the measurement of its depth and was excluding consideration of the embellishments I would be inclined to see considerable force in this contention. It could well be said that this change in appearance was not the consequence of the application of a design or alternatively that the "design" was the application of a method or principle of construction. As the High Court said in Malley's Case at p.352 - "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 originality 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 1s to be determined by the eye and not by measuring dimensions." Furthermore to disregard the embellishments, which are features of the design, would be to visualise something other than the total design and something which in itself would be an adjustment merely of the measurements of one aspect of the air conditioner. As such it would arguably not amount to a "design" as understood in this area of the law but toa mere shape determined by measuring dimensions. In Re Clarke's Registered Design (supra) at p.361 Lopes L.J. said of the design under consideration in the case of Le May v. Welch (1885) 28 Ch. D. 24: 8. "The combination was considered too narrow or trifling to constitute a new design. In the Court of Appeal, Bowen L.J. said, 'There must be a substantial novelty in the design, having regard to the nature of the article. It is not every new difference of cut, every change of outline, every change of height, or breadth, or configuration in a simple and familiar article of dress like this which constitutes novelty of design." Speaking of the articles under consideration in the matter before him, Lopes L.J. went on to say: "Put the two lamps or lamp shades side by side, apply the test of the eye to them, and the only difference 15 the curtailment of the chimney in the Respondent's lamp or lamp shade, effecting no substantial change in the shape of the entire apparatus. You cannot, by adding that to, or omitting that from, the shape of a thing, which 1s immaterial and does not substantially alter its shape, make that novel in shape which otherwise would not be novel." However notwithstanding the persuasive arguments of Mr Ellicott Q.C. on this aspect of the matter, I am of opinion that the submission must be rejected. I accept Mr Doyle's submission that the trial judge must have had regard to the embellishments as well as the narrowness of the depth and that what he is saying in the passage above quoted is that the distinctive overall effect 1s so clear that he does not have to spell out in detail the role these embellishments play. In other words, I accept that he has viewed the design as a whole and is basing his conclusion on his view of the totality of its features. It follows that his decision 1s not based solely on the narrowness of the air conditioner as productive of the slim appearance, 9. which narrowness might be said to be the application of a method of construction, but also on his appreciation of the embellishments as enhancing the otherwise physical slimness. All of these features and their general arrangement have produced to my mind sufficient individuality of appearance to distinguish the shape from the fundamental form of air conditioners and I consider the trial judge was correct in so finding. Mr Ellicott Q.C. then contended in the alternative that the design was not reqisterable because the slimness was something which could not be taken into account - it being a "function" of the fundamental form and not a matter of design - and that everything else which had been added, the embellishments were common trade variants (sub.s.17(1)(a)). He also submitted that the alleged design was the consequence of processes which were either obvious or inevitable. I would reject these arguments. The question for determination is whether the shape or configuration taken as a whole 1s new or original. If it is new or original, it is nothing to the point to say that it was inevitable or obvious that eventually such a design would he conceived. The Act makes no reference to concepts of inevitability and obviousness when dealing with registrability except in relation to obvious adaptation (para.17(1)(b)). Furthermore as the author of Russell-Clarke on Copyright in Industrial Designs 5th Edition put it at 5.38 - 10. "The whole of the design need not be new. 'The design may be valid within the Act, although all the parts are old except some particular part only which is new or original. The novelty or originality of the particular part may be sufficient to impart the character of novelty and originality to the whole.' (Per Chitty J., in Walker & Co. v. A.G. Scott & Ca. (1892) 9 R.P.C. 482 at p.485). And, in fact, a design may well be novel although all the parts are old, and were common general knowledge or were trade variants at the date of registration, for the combination of two or more old and well-known designs or parts of designs will certainly constitute novelty, if the effect, i.e. the appearance of the combination as a whole, 1s new." See also the comments of Jacobs J. in D.Sebel & Co, Ltd. v National Art Metal Co. Pty. Ltd. supra at p.227. On the matter of infringement counsel for the appellant contended that the trial judge had erred in law in failing to apply the correct test and that in any event this Court should he prepared in the circumstances to substitute its view as to the appearance, strictly as illustrated in the photographs, of the appellant's Profile and the appearance of the respondent's Convair air conditioner. The submission on the alleged error of law was that the trial judge failed to look at the competing articles as a whole and through the instructed eye of the Court. It was contended that he approached the matter "through the eye of an expert in design, looking at it in detail and, with respect, losing himself 11. in the details". There can be no criticism of the trial judge's statement of the test to be applied. He said: "The comparison is a question of fact for the eye to judge but an eye instructed as to the meaning and identity of the registered design and the features which are to be compared...I must judge by my eye and instructed and assisted by the 'expert witnesses' " The trial judge certainly paid considerable attention to and and was greatly impressed by the evidence of a Mr Redmond, an expert in design. This witness gave evidence in great detail of the differences between the two articles, the Profile and the Convair. However two passages of the trial judge's reasons for judgment satisfy me that he did not merely adopt Mr Redmond's opinion in lieu of making his own judgment. After extracting considerable passages of Mr Redmond's evidence he said: "He spoke of how each appealed to his eye. So far as the differences are concerned I find his evidence acceptable. As I have said he spoke with more detail than I have done. And of course he spoke as a designer. To my eye the design of the Profile and the Convair are markedly different...I think the total appearance of the Convair leads one to think that the designer of it has designed something which, although having some Similarities to the design of the Profile is very different. Each is within the same family but the Convair has a very different appearance to the design of the Profile. I speak of the whole appearance...But taking the whole appearance of the Profile and the whole appearance of that (the Convair) there is no obvious imitation." 12. These passages also satisfy me that his Honour did consider the characteristic features of each article as a whole and that he was in the ultimate not overconcerned with detail. In my opinion counsel's criticisms of his Honour's approach in law are unwarranted and must be rejected. I. can add, should it be of any relevance, that I would have no hesitation in arriving at the same conclusion as the trial judge, at least by the use of the so called "doctrine" of "imperfect recollection" (Benchairs Ltd v. Chair Centre Ltd £19747 R.P.C. 429 at p.502). Counsel also contended that, whether or not there was any error of law, we should be prepared to substitute our view, having seen for ourselves everything that was before the trial judge for his judgment. He said we should not be reluctant to do so, and relied upon the fact that, as he said, the High Court in Malley's Case (supra) substituted its view on infringement for that of the trial judge. Two comments can be made in rejecting this submission. As I read Malley's Case both at first instance and in the High Court it is not clear authority for the appellant's contention. It can fairly be said that the High Court approached the matter on the basis that the trial judge erred in law in considering the question of fraudulent imitation. The latter 13. held that the "J" rim there in question did not form part of the design but of the process of manufacture and therefore should he disregarded. The High Court, in holding that the "J" rim was one of the features of the design and could not be disregarded, said at p.353: "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 1s 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. Pugh v. Riley Cycle Co. Ltd (1912) 29 R.P.C. 196 per Parker Jd. at p.202; Rosedale Associated Manufacturers Ltd v. Airfix Products Ltd [19561] R.P.C. 360; C1957] R.P.C. 239. As Kitto J. said in In the Matter of Desiqn registered by Wolanski (1953), 88 C.L.R. 278, at p.279, when speaking of the subject of registration '1t 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' yim 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." In my opinion the finding of the trial judge that the "J" rim was part of the process of manufacture and not of the design was an error in his judgment which justified the High Court in disturbing that judgment. (See Hart v. Edwards (infra)). Furthermore the comparison between the two articles in this matter 15 a question of fact, and not of inferences to he drawn from primary facts. Two recent decisions of the High 14, Court and the Full Court of this Court, emphasize that where the test for infringement 1s one of appearance reached by a visual comparison, the question for the Court 1s a question of fact. Those decisions, on questions arising under the Copyright Act in each instance, are S.W. Hart & Co. Pty Ltd v. Edwards Hot Water Systems (1985) 59 A.L.J.R. 729 and Mainbridge Industries Pty Limited and another v. Francis George Sykes and another a decision of the Full Court of this Court delivered on 4 December 1985. In the former case the Chief Justice said at p.733: "The question whether a defence under s.71 of the Act was made out was one of fact and the onus of proving it lay on the respondent. The nature of the issue, involving as it does matters of impression, is one in which particular respect and weight should be given to the decision of the trial judge unless some error in his judgment has been demonstrated. No such error was demonstrated in the judgment of Brinsden J. I, myself, see no reason to differ from his conclusion. In my opinion, his judgment should not be disturbed." Iam, on this aspect of the appeal, as well as on the guestion of the validity of the registration of the appellant's design, of opinion that the trial judge's judgment should not he disturbed. Each appeal must be dismissed and I agree with the view of Beaumont J. that there should be no order for costs of either party on either appeal. I certify that this and the /? preceding pages are a true copy of the Reasons for Judgment of Mr Justice Fisher. Associate MEO logge & Dated: 25 February 1986. TN THE FEDERAL COUPT OF AUSTRALIA SOUTH AUSTPALTA NISTFICT REGISTRY CFPNEPAL DIVISTON ~e eee Na. G 26 a rh ra 'DWw OU APPEAL FRO' THE SUPPEME SuORT OP Perr SISTPALTS PETUCEN : TU_THE PEDEPAL COURT OF ANSTRALTA SOUTH BISPRALTA OLSTPICT REGISTRY GENERAL DIVISTON ww ee TALGETY AWETPALTA OFERATTONS LIMITED Jopellant FLF, SEELEY NOMINEES FTV, LIMITED Recoondent ON APPEAL FROM THE SlPERME COURT _OF SOUTH ANSTRALIA BETWEEN : AND: fF. SEELEY NOMINEES DALCETY 4USTRALTA OPEPATIONS LIMITED Fespandent CAPAM: Fisher, Neaves and Peanumank JT. DATE 25 Fabruary 19946 PPTs PAR MIAGMEN'T Thea facets and atsnes cel ybing fo chase aoneals are oF ot aeLanrin sak rein in Peanmont T cnich T have rau ym has Henene 3 peascns and in hig ceneclusion that the acneals T certify that thae and Fhe precedint page ic a true cony of fhe Reasons For Tidemenr herein af rhe Bonecrarhle Mr Justice Teaves iH Mated: 25 Tahruary 1996 IN THE FEDERAL COURT OF AUSTRALIA ) ) SOUTH AUSTRALIA DISTRICT REGISTRY ) No. G36 of 1985 ) GENERAL DIVISION ) ON APPEAL FROM THE SUPREME COURT OF SOUTH AUSTRALIA BETWEEN: DALGETY AUSTRALIA OPERATIONS LIMITED Appellant AND: F.F. SEELEY NOMINEES PTY. LTD. Respondent No. G37 of 1985 BETWEEN : F.F. SEELEY NOMINEES PTV. LTD. Appellant DALGETY AUSTRALIA OPERATIONS LIMITED Respondent CORAM Fisher, Neaves and Beaumont JJ. DATED: 25 February 1986 REASONS FOR JUDGMENT Beaumont, J. These appeals from the Supreme Court of South Australia, brought under the provisions of the Designs Act 1906 ("the Act"), arise in the following circumstances. On 17 June 1983, Dalgety Australia Limited applied for registration under the Act of a design applicable to an evaporative air conditioner. "Dalgety Australia Limited assigned all its rights and interest in its application to Dalgety Australia Operations Limited ("the appellant") on 30 November 1983. The appellant obtained ts registration of the design on 12 July 1984. In September 1984, the appellant, claiming that F.F. Seeley Nominees Pty. Ltd. ("the respondent") had infringed the statutory monopoly in its registered design by the manufacture at about that time of an evaporative air conditioner. brought proceedings in the Supreme Court to restrain the alleged infringement. The respondent raised the validity of the registration of the appellant's design by way of defence to the infringement action. The respondent also counter-claimed for grectification of the reqister by expunging the entry of reqistration of the design. The Supreme Court (Bollien, J.) dismissed the appellant's claim for infringement and the respondent s claim for rectification of the register, The parties have each appealed against the dismissal of the1rr claims. Before reference 15 made to the relevant legislation, some of the details of the appellant's registration should be noted. The certificate of registration issued in respect of the appellant's design contained a statement of monopoly in the following terms: "The design of an evaporative alr conditioner applicable to the shape and configuration as 1llustrated." The illustration mentioned consisted of three photographs annexed to the certificate of registration - Gia s seeda = 'ty Re 'S 3. The relevant tLeqislation may be summarised as follows. A desiqn shall not be reqistered unless 1t 1s a new or original design and, in particular. shall not be registered in respect of an article if the design - "(a) differs only in aimmaterial details or in features commonly used in the relevant trade from a desian that, before the priority date in respect of the application for registration, was registered, published or used ain Australia in respect of the same article: or (b) 123 an obvious adaptation of a desian that, before the priority date in respect of the application for reqistration, was registered, published or used in Australia in respect of any other article." (s.17(1)). A "design" 1s defined to mean "features of shape, configuration, pattern or ornamentation applicable to an article. being features that. 1n the finished article. can be judged by the eye, but does not include a method or principle of construction" (s.4(1)). An application for registration of a design shall not be refused, and a registered design 1s not invalid. by reason only that the design consists of, or includes, features of shape or configuration that serve, or serve only, a Functional purpose (5.18). The owner of a design is entitled to make application for the registration of the design (s.20(1)). An application for registration of a design shall be in accordance with a prescribed form and shall be accompanied by the prescribed number of representations of an article to which the design 15 applied (5.20({3)). The priority date in respect of an application for registration of a design 1s the date on which the application is lodged (5.21(2)). The certificate of registration shail be prima facie evidence of the facts stated therein. and of the validity of the registration (s.26(3)). An application under s.20(3) may be accompanied by a statement of monopoly in respect of the design to which the application relates (s.20(4)). <A "statement of monopoly" means a statement relating to the representations of an article to which the design 15 applied that indicates - "(a) those features of the representations in respect of which the applicant for registration of the design wishes to claim a monopoly; and (b) those features cr the representations that are to be disregarded in considering the extent of the monopoly protection" (see 3.4(1)). '"Monopoly" in relation to a registered design, means' the exclusive right to apply the design to an article in respect of which the design 1s so registered (s.4(1).) subject to 5.25A, which deals with co-ownership, the owner of a registered design has a monopoly in that design (3.25). A person shall be deemed to infringe the monopoly in a registered design if he, without the licence or authority of the owner of the design, inter alia, "applies the design or any fraudulent or obvious imitation of it to any article in respect of which the design 15 registered;" (s.30(1)(a)). It 1s convenient to deal first with the respondent's attack on the appellant's registration. The respondent, before the learned Judge and this Court, challenged the validity of the reqistration on several grounds. Amongst other matters, it contended that no "desiaqn" within the meaning of the Act was involved in the present case; alternatively, it argued that the appellant's design was neither "new" nor "original" for the purposes of s.17(1). In the particulars of infringement given in its statement of claim, the appellant described the features of shape and configuration applied to 1ts evaporative air conditioner as follows: "The plaintiff's Registered Design depicts an evaporative air conditioner which has:- (i) a 'slim line' shape, that is having a depth from its front face to its back face which 1= considerably less than the corresponding depth of evaporative air conditioners on the market prior to the date of the said application; {il) a depth to height ratio which 1s considerably less than the depth to height ratio of evaporative air conditioners on the market prior to the date of the said application; (iii) corners which are generally rounded or bevelled: (iv) a front griil which wraps round the ends of the unit; (vy) control knobs positioned in one upper front corner of the unit; (vi) prominently defined panels; and (vii) a four-legged base set on castors and connected to the unit by one upright pole." In upholding the appellant's contention that its design was "new or original", the learned Judge found that earlier designs applied to evaporative air conditioners produced "quite large cabinets on stands...{whichd to [his] eye...Cwerel] not attractive...They were box-like' and 'chunky'"". His Honour further found that none of the prior art had the "slim and upright" characteristics of the appellant's design and that the "fundamental form" of evaporative alr conditioners prior to the appellant's design "was a 'box-like' or 'chunky' cabinet ona stand, the whole being unattractive." The learned Judge also found that "elegance" was a characteristic of the appellant's design which was not evidenced in the prior art: "None of the air conditioners in use before the priority date has to my eye any elegance. Nor has any other appliance. Some have a measure of attractiveness, but not elegance. The photographs in Pl Ci.e. the photographs annexed to the certificate of reqistrationd of themselves and as applied to F6 [i.e. an evaporative air conditioner to which the appellant''s design had been applied] show something which 15s not only slim but upright. They depict a piece of furniture which stands up 3traight, slim and with a measure of elegance. That was not the fundamental form whatever the earlier fundamental form might have been. If it be said that experts say that many others in evidence have a slim upright appearance, I say they have not to my eye." The learned Judge concluded that the "slim, upright" appearance of the appellant's design was "distinctly individualistic" and very different from earlier designs. In seeking to impugn the appellant's registration, the respondent first submitted that "slim and upright appearance", as found by the learned Judge, was no more than a principle of construction and thus outside the definition of "design" in s.4(1) of the Act (see Pugh v. Riley Cycle To. Ltd. £19123 1 Ch. 613 at pp.619-20; In the matter of Design Registered by Wolanski (1953) 88 C.L.R. 278 at p.279). In my opinion, the argument should be rejected. What is registered here 15 no more than the design consisting of the features of shape and configuration allustrated in the photographs annexed to the certificate of registration. Those features are not there described as a method or principle of construction nor, inmy view, would 1t be appropriate to infer from those representations of the design any such method or principle which would necessarily permit differences of shape and thus spell invalidity (see Malleys Ltd. v. J.W. Tomiin Pty. Ltd. (1961) 35 A.L.J.R. 352 at p.353). It was also suggested on behalf of the respondent that the appellant s registration should be characterised as a description of an evaporative air conditioner made thinner because the parts within 1t can be confined to a lesser depth. Thus, putting essentially the same argument ina different way, it was said that the entry on the register was no more than a description of the object which results from applying a principle 9. of construction. Although the history of the development of the appellant's design may largely be explained by reference to the introduction of an axial fan, this 15 no part of the registration of the design. The illustrations annexed to the certificate of registration do no more than depict the features of the design. In my view they are not capable of the interpretation contended for by the respondent. A related submission put on behalf of the respondent was that there was not here "sufficient individuality of appearance" to distinguish the appellant's shape from "the fundamental form" of an evaporative air conditioner 'see Mallevs Ltd. v. J.W. Tomlin Pty. Ltd... supra, at p.352). It was suggested by the respondent that the "fundamental form" of an evaporative aur conditioner 1s a rectangular box-like shape which contains the parts but has openings for the intake and outflow of air and that, in the case of a conditioner with an axial fan, this rectangular box-like shape would, as a matter of course, be slim and upright. Thus, it was argued, the slim and upright character of the conditioner 15 dictated by the nature of the article and not by the skill or otherwise of the designer. The respondent's contention that the appellant's design embraced only the fundamental form of the article cannot, in my view, be accepted. In the ultimate analysis, the question is one of fact and impression. The learned Judge found that the features of the appellant's design went significantly beyond the 10. basic form of evaporative air conditioners as that form existed at the relevant date. Particular respect and weight should be given to that finding (see S.W. Hart & Co. Pty. Ltd. v. Edwards Hot Water Svstems (1985) 59 A.L.J.R. 729 per Gibbs, C.J. at p. 733). Having sighted the material before Bollen. J., I share his Honour's impressions. The respondent further argued that the appellant's design lacked the novelty or originality required by s.17(1). The argument was put inanumber of ways but the respondent's principal contention was that all the features of the design which were alleged to be new, including its slim and upright appearance, were features common to the trade or immaterial details or, alternatively, an "obvious adaptation" of an earlier design within the meaning of s.17{1)(a). But the learned Judge found that the features of the earlier desiqns of evaporative air conditioners were very different from those of the appellant's design. His Honour also found that there was "more to the design than mere trade variants. The design 1s not one to which a designer could have come by applying well-known design techniques." Again, as a question of fact and impression, to be judged by the eye, particular respect and weight should be given to the finding of the trial Judge. The onus of proof inthe attack on the appellant's registration lies on the respondent '(see s.26(3); D. Sebel & Co. Ltd. v. National Art Metal Co. Pty. Ltd. (1965) 10 F.L.R. 224 at ll. p.226). In Sebel, Jacobs, J. reminded us that, in relation to an article such as a chair, one cannot and should not expect to find some might be made of an evaporative air conditioner in 1983. startling novelty or originality. A similar observation J. went on to say (at p.226): novelty and Trade Marks Act 1883 in Samuel Heath & Sons Limited v. "The element of novelty or originality will of necessity be likely to be within a small compass. I do not mean thereby that = any difference of shape, outline, proportion or placement of components will thereby constitute novelty of design, but provided I can see a substantial difference from the fundamental form and from the development in the trade up to the time of the application for registration, then I do not think that it 13s suffici1ent to point toa number of elements of similarity to past design in order to show that the design 15 not new or original." Jacobs, Lord Herschell had earlier adopted a similar approach to originality under the English Patents, Designs, and Rollason C18983 A.C. 499, saying at p.502: "Of course in the present day it 18S very difficult to reqister any design that does not contain in 1t something which has been done before. Very often a very successful design may be one in which the difference from previous designs can on analysis be shewn to be very slight, where nevertheless the result 15 to make the one so much more pleasing than the other that 1t 15 a successful desian. Whilst on the one hand we certainly ought not to give protection to a design in which the variations are trivial and unimportant so that it 415 Substantially the same design as one already registered or known, on the other hand we ought not to refuse it where the design 15 practically a different one which may be more attractive." 1c. In my opinion, the observations of Jacobs, J. and of Lord Herschell are in point in the present case. Like Bollen, J., I am not satisfied that there 15 no novelty or originality in the appellant's design. I respectfully agree with Bollen, J. that there are features of that design of shape and configuration which distinguish 1t from the characteristics of earlier designs. First and foremost are the overall slim impression of shape and upright appearance of the design. I accept the submission of Mr. Doyle, Q.C. on behalf of the appellant that, when compared with the prior art, that impression is brought about, to some extent, by the reduction of the dimensions from front to back of the article and by its height-depth ratio. The impression is enhanced by the use of a bevelled edge at the top of the front face of the unit and by the bevelled or sloping edges of the rear face, both sides and the top of the rear of the unit. I also accept Mr. Doyle's submission that the distinctive appearance of the appellant's design 15 further enhanced by the small wrap-around of the front grill; this contributes to a narrow centre panel, visible on the view from the side, which appears to be and 15, relatively narrow. The slim, upright appearance 1s further enhanced, as Mr. Doyle suggested, by the use of a pedestal stand rather than a four-legged stand and by the use of rounded corners and edges horizontally and vertically. The respondent sought to point to the earlier presence in other articles of a number of the features of the appellant's design. Instances were given of the use, in the design of evaporative air conditioners and other articles, of a horizontal rectangular face and of a horizontal grill; of a wrap-around front grill; of bevels and radiuses; and of a single pedestal base. But, as Jacobs, J. held in Sebel, supra, at p.227: ',..a mere conjunction of old features does not necessarily result in anew design. However, it may do so and....when one 15 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 1s not some wholly new feature of design incorporated. Design in such a field 13 a subtle thing and provided it 1s distinctive to the trained eve,....registration should not be denied in view of the element of subtlety which 1s involved in the combination of old features 1n a particular way and the manner in which they are combined." The respondent instanced a number of the features of design applied to many earlier articles in this comnection. I will not endeavour to catalogue them. Perhaps the strongest example of the prior art from the standpoint of the respondent was an evaporative air conditioner marketed by the appellant in 1981 known as the "Bonaire 1000 Deluxe". It was depicted ina photograph in evidence as follows: 14. rae ry, iN (td Tp Se ae nee ape TH Ne cael emai led obegt Worn cretertheneersanbyy ieroer a Pa TRA CURES Be Se eR ay? ee age 15. It may be accepted that this earlier design of the appellant does have some features, e.g. the horizontal grill and the single pedestal base, which are also utilised in the present registered design. But it does not follow that the subject design lacks novelty or originality. In my view, the reasoning of Jacobs. J. in Sebel in the passage cited above (at p.227) 13 apposite in this connection. When the matter in question 1s to be judged by the eye, 1t will inevitably be difficult to express verbally the process or reasoning leading to the conclusion that the appellant's design represented a departure from the prior art: "the eye..-has 1ts reasons that reason does not know" tper Kitto, J. in Wolanski, supra, at p.28). Having made a visual comparison of the subject design and its predecessors, I agree with the finding of Bollen, J. that the appellant's design had characteristics which distinguished it from the prior art. These features are best. 1f imperfectly, indicated by reference to the overall slim impression of shape and upright appearance of the appellant's design. I also agree with Bollen, J. that the appellant's design did more than differ from previous designs only ain "immaterial details or in features commonly used in the....trade" (s.17(a)). Nor 1s the appellant's design an "obvious adaptation" of an earlier design (s.17(1)(b)). On the contrary, the appellant's design seems to my eye to represent a significant departure from the prior art. 16. In my view, the respondent has failed to establish that the appellant's design was not "new" or "original" for the purposes of 5.17 (cf. Mallevys Ltd. v. J.W. Tomlin Pty. Gtd. (1961) 35 A.L.J.R. 352 at p.353). I would reject this defence to the appellant's claim and accordingly [I would dismiss the respondent's appeal. There remains' the question of infringement. The appellant's case before the learned Judge was that the respondent had infringed 1ts statutory monopoly by an "obvious imitation" of the appellant's design in the form of an evaporative air conditioner manufactured by the respondent in the latter half of 1984. The respondent's product was depicted in the following photographs which, along with the unit itself, were in evidence before Bollen, J.: in nae ac 17. 18. ' Salt VAAN ' AA, oh Soe , . VN \ YN AN SAY Xt . ae 1 \ eer NR \\LGs gill my l te, thie yl eae eta Cy cy VN l ees, Hy j 39 5 a Pe naa Ra ; 19. re 2h sf PAE aH 20. In the case of an alleged infringement by "obvious imitation", the test to be applied 1 Lo} again one of visual comparison. In Mallevys Ltd. v. J.W. Tomlin Pty. Ltd., supra, an "obvious" imitation" of the registered design was held to be "not the same but a copy apparent to the eye notwithstanding slight differences" (at p.354). Although Bollen, J. found that there were "some Zimilarities" in the respectiv designs of the parties, he held that there were also "sianificant differences" hetween them. The learned Judge said "To my eye the design of the Profile CEthe appellant's productd and the Convair (Cthe respondent's product] are markedly different. I endorse Mr. Redmond's view that the plaintiff's design 18 'a very regular symmetrical form' whereas the Convair 15 asymmetrical. To my eye the defendant's article, the Convair, has an even slimmer and more upright appearance than has the desiaqn of the Profile. [I think it is more 'stream-lined' than 1s the design of the Profile. I too am impressed by the difference created by the circular air deflector in the grill of the Convair. This is an outstanding difference. The appearance or configuration which it gives to the whole makes i1t markedly different to the configuration of the Profile. The appearance of the controls in each 1s markedly different. I think that there is generally a greater tapering down of the Convair than exists in the Profile. No doubt this 15 part of its looking, to my eye, 'slimmer' and more streamlined'. I think that the total appearance of the Convair leads one to think that the designer of it has designed something which, although having some similarities to the design of the Profile, 1s very different. Each 18 within the same family but the Convair has a very different appearance to the design of the Profile. I speak of the whole appearance. But in fact I think that the al. very prominent air deflector in the Convair ('the circle') as of itself enough to make the one markedly different from the other. It causes one to think and see that the 'second' desiqner has designed something different to that designed by the 'first' designer. But taking the whole appearance of the design of the Profile and the whole appearance of that, there 13 no 'obvious' imitation. The Convair looks like that which Mr. Seeley said it was 1.e. (using my words) something different designed with the Profale in mind but designed to he different from and to 'beat' the Profile." Once again, particular respect and weight 15 to be given to the findings of the trial Judge on such a question of impression. Again, having myself sighted the material in evidence before his Honour, I share his reaction as a matter of visual comparison. Here also, 1t 15 difficult to articulate with precision the impression obtained upon inspection. But I agree with Bollen, J. that the presence in the respondent's design of an air deflector in the form of a rotating grill is a prominent feature of the design which 15 absent from the appellant's design. Given its prominence that feature 1s, to my eye, of decisive importance in distinguishing the two designs (cf. Malleys Ltd. v. J.W. Tomlin Pty. Ltd., supra, at p.355). The appellant sought to diminish the prominence of the rotating grill by showing that it was less obvious to the eye when rotated into a position where its grills were in line with the other grills on the front of the unit. It may be accepted that, viewed in this position, the air deflector is less prominent than the photographs of the respondent's article shown above would suggest. But even in that position, the air deflector is an obvious point of departure from the appellant's design. The decision of Lloyd-Jacob, J. in Schmittzehe v. Roberts (1955) 72 R.P.C. 122 relied upon by the appellant may be distinguished for present purposes. The plaintiff there obtained registration of a design in respect of a toy figure, the predominating material being paper, cardboard, millboard or strawboard. It was held that since the toy figures sold by the defendant, which were made of flexible material. resembled the registered design in regard to clothing and features and could be manipulated intc the position shown in the representation of the design, their manufacture and sale constituted an infringement. Lloyd-Jacob, J. said (at p.125): "There 1s no question that that figure can readily be manipulated into positions similar to those which form the illustration to the design registration, and 1f s0 manipulated they are in substance aindistinguishable from that which forms the Plaintiff's monopoly; but Mr. Whitford, Counsel for the Defendant, has submitted that unless the Defendant can be fixed with knowledge of such manipulation of her figures as to resemble the illustrations in the design registration, the Plaintiff has not made out a case of infringement. In my judgment that submission proceeds upon a mistaken appreciation of the scope of the Registered Designs Act. A registration, i1f valid, gives to the registered proprietor an exclusive right in relation to articles to which the registered design, or a design not substantially different from 1t, has been applied, and in my judgment, the manufacture and offer for sale of a figure which, qua its characteristic features 1s aindistinguishable from the registered design, 1s sufficient to establish infringement of the statutory monopoly, wholly irrespective of whether by manipulation the precise attitude chosen for the purposes of representation can be avoided." This reasoning cannot be applied in the present case. There 18s no question here of any flexibility in the shape or configuration of the two designs, even if their appearances are less readily differentiated when the respondent's circular grill 15 moved to a certain position. Even ain that position, the deflector 15 readily visible and, to my eye, itis itself sutficiently prominent to distinquish the two designs. The appellant sought to criticize the trial Judge's reasoning process onthe infringement issue by suggesting that his Honour concentrated too much on differences of detail and individual features. It was said that a aqlobal or overall approach was more appropriate and that Bollen. J. should have given more weight, on this issue, to his earlier findings as to the novelty and originality of the appellant's design. In my opinion, these criticisms should be rejected. For one thing, the issues of registrability of the design and its aunfringement raise quite distinct questions of principle. Further, although the ultimate question on the infringement issue 1s one of impression, 1t was appropriate that the learned Judge expose his reasoning process by explaining the significance, to his eye, of the several features which, he held, distinguished the two designs. More important, Bollen, J. did in any event make a visual comparison of the two designs by taking into account, as he put ait, their "whole appearance". His overall impression led him to reject the suggested infringement. The appellant. both in the Supreme Court and in this Court, sought to put 1ts case on infringement ina slightly different way by submitting that the test for infringement was whether the two designs were "substantially different". These words donot appear in 35.30, although they are found in the authorities (see, e.g. Malleys Ltd. v. J.W. Tomlin Pty. Ltd., Supra, at p.355). Although, in some contexts, "substantial" can be aword of uncertain content (see Day v. Pinglen Pty. Ltd. (1981) 148 C.L.R. 289 at p.299), 1t 15 clear from a reading of the whole of the reasons in Malleys Ltd. v. J.W. Tomlin Pty. Ltd., supra, that when the High Court there spoke, for example, of "a substantial difference of a material kind" (at p.355), it was intending to apply the notion of "obvious imitation" in 5.30(1)(a) as the Court had previously explained it; that is to say, the test of infringement for present purposes 1s whether, given that the respondent's design is not the same as the appellant's design, it 1s nonetheless a "copy apparent to the eye notwithstanding slight differences" (see (1961) 35 A.L.d.R. at p.354). When compared visually wath the appellant's design, the respondent's design dces not, to my eye, appear to be a "copy...notwithstanding slight differences". My impression, both overall and in the details recounted by Bollen, J., 1s that the designs may be readily differentiated. if aa - I should add that. ain this respect, I agree with the 25. learned Judge that differences in colour are not material, especially where, as here, the claim for monopoly is restricted to the shape and configuration of the appellant's design. The position may well have been different if the claim had extended to features of pattern or ornament ('see Caider Vale Manufacturing Co. v. Lappeh Manufacturing Co. (1935) 52 R.P.C. 117; Lahore, Garnsey & Dwyer, Intellectual Property in Australia at 21610-1611). In the result, I would dismiss both appeals. In the circumstances, it 15 appropriate that no order be made in respect of the costs of either appeal. _———— amend —— unes tars and the ay WAS ot ] preceding pages are a true copy of he our ~eagons for Judgment herein of his Honou Tea wo, Justice REASONS .,