FEDERAL COURT OF AUSTRALIA Minquip Pty Ltd v Mining Supplies Australia Pty Ltd [2001] FCA 1378 COPYRIGHT AND DESIGNS – designs – unopposed 'appeal' from decision of delegate of Registrar of Designs not to extend period of registration of design on basis lacking in newness or originality – hearing de novo by Federal Court – whether design new and original and not an obvious adaptation. Designs Act 1906 (Cth) ss 4, 17, 23, 27A, 40J 3D Geoshapes Australia Pty Ltd v Registrar of Designs and Another (1994) 30 IPR 474 referred to Kaiser Aluminium & Chemical Corporation v Reynolds Metal Co (1969) 120 CLR 136 referred to Brickwood Holdings v ACI Operations Pty Ltd [1983] 2 VR 587 referred to Farbenfabriken Bayer AG v Bayer Pharma Pty Ltd (1959) 101 CLR 652 referred to Caroma Sales v Philmac Pty Ltd (1972) 46 ALJR 324 referred to 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 applied Shimano v Silstar (1991) 20 IPR 451 referred to Australian Building Industries v Woodman McDonald (1986) 7 IPR 91 referred to Dart Industries v Decor (1989) 15 IPR 403 referred to Minnesota Mining & Manufacturing v Beiersdorf (Aust) (1980) 144 CLR 253 referred to Samuel Heath and Sons Ltd v Rollason [1898] AC 499 referred to Lahore Copyright and Designs [66,2000] Ricketson The Law of Intellectual Property [21.20] Mining Equipment Pty Ltd v Mining Supplies Australia Pty Ltd S90 of 1999 ALLSOP J SYDNEY 28 SEPTEMBER 2001 IN THE FEDERAL COURT OF AUSTRALIA SOUTH AUSTRALIA DISTRICT REGISTRY S90 of 1999 BETWEEN: MINING EQUIPMENT PTY LTD APPLICANT AND: MINING SUPPLIES AUSTRALIA PTY LTD RESPONDENT JUDGE: ALLSOP J DATE OF ORDER: 28 SEPTEMBER 2001 WHERE MADE: SYDNEY THE COURT: 1. orders that the appeal be allowed; 2. orders that the decision of the Delegate of the Registrar of Designs given on 11 October 1999 be set aside; 3. declares that as between the appellant and the respondent Mining Supplies Australia Pty Limited, the Registered Design No 131967 is new or original for the purposes of s 17 of the Designs Act 1906 (Cth); 4. orders that the period of registration of the Registered Design No 131967 be extended from 6 November 1998 to 15 April 2003; and 5. grants liberty to apply for 3 months to either party and to the Registrar of Designs in order that any procedural step thought to be appropriate by any of those parties may be taken, including the formal joinder of the Registrar to these proceedings. 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 S90 of 1999 BETWEEN: MINING EQUIPMENT PTY LTD APPLICANT AND: MINING SUPPLIES AUSTRALIA PTY LTD RESPONDENT JUDGE: ALLSOP J DATE: 28 SEPTEMBER 2001 PLACE: SYDNEY (Heard in Adelaide) REASONS FOR JUDGMENT 1 Before the Court is an 'appeal' pursuant to subs 27A(11) of the Designs Act 1906 (Cth) (the Act) arising from a decision of a delegate of the Registrar of Designs (the Registrar) given on 11 October 1999 to refuse an application for extension of the registration period of an Australian Registered Design number 131967 (the Design). 2 In his decision the Registrar decided: 1.1 that the applicant's design number 131967 ('the registered design') was an obvious adaptation of a known design in respect to a Surelock coupling; 1.2 that the registered design was therefore not new or original; 1.3 that the application by the applicant for an extension of the period of registration of the registered design be refused; and 1.4 that the applicant pay the costs of the application referred to in paragraph 1.3 hereof. 3 The Design relates to a coupling having application in the mining industry for connecting hoses used to channel air in pneumatically powered machinery and to channel water in hydraulically powered machinery. 4 I set out in conjunction and in summary form below the procedural history and statutory framework of this matter. For the reasons there apparent, the respondent was not represented at and did not participate in the hearing before me. Although entitled to, the Registrar also elected not to appear and be heard. I consider below the effect, if any, of this on the approach to be adopted to the resolution of the matter. 5 On 15 April 1997 the applicant (Minquip) lodged an application under the Act to register the Design. This date is the priority date for the purposes of the Act: subss 21(1) and (2) of the Act. The Act provides (subs 27A(1)) that registration of a design is deemed to have come into force on the date of the lodgment of the application, and, subject to the Act, the registration ceases to be in force on the expiration of a period of 12 months from the date on which registration is made in the register. During this initial registration period, application may be made for extension of registration (subs 27A(2)), and objection can be taken to the registration by a person filing a notice setting out any matter that, inter alia, the person considers relevant to the question whether the design was not, at the priority date, one that was new or original (para 27A(4)(b)). 6 On 6 November 1997 the Design was registered. Therefore, the period of the registration was deemed to have commenced on 15 April 1997 and was to last until the end of the period of 12 months after 6 November 1997. Prior to this initial period of registration ceasing (6 November 1998), Minquip applied for an extension of the registration period. The respondent (Minsup) on 6 October 1998 filed a notice under subs 27A(4) opposing the extension of registration of the Design. The opinion of the Deputy Registrar of Designs was sought. Material was filed by each party. In late March 1999 the parties were advised that the Registrar proposed not to extend the registration period. The parties were given reasons. The opinion given was that the Design was an obvious adaptation of a known design and was not a new or original design, so that the period of registration should not be extended beyond 6 November 1998. On 23 April 1999, in response to this opinion, Minquip requested a hearing. 7 On 10 June 1999 a hearing took place before a delegate of the Registrar at which each of Minquip and Minsup was represented and made submissions. (I note that there does not appear to be any provision as such in the Act for the hearing of an application for an extension under s 27A; cf 3D Geoshapes Australia Pty Ltd v Registrar of Designs and Another (1994) 30 IPR 474, [4].) 8 Subsection 27A(9) provides that the Registrar may, having regard to any matter that has come to his notice in connection with a design in which there has been filed a notice under subs 27A(4), refuse an application for an extension of the period of registration on the ground that the design was not, at the priority date, a design that was new or original. Subsection 17(1) of the Act is in the following terms: 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; or (b) is an obvious adaptation of a design that, before the priority date in respect of the application for registration, was registered, published or used in Australia in respect of any other article. 9 The delegate delivered a decision on 11 October 1999 refusing to extend the registration period of the Design. The delegate concluded that while the Design differs from all prior designs exhibited by more than immaterial details and was distinct from features commonly used in the trade, and so satisfied para 17(1)(a), it was an obvious adaptation of a known design in respect of another type of coupling and so failed to meet the test in para 17(1)(b). I return to the Registrar's decision below. 10 Minquip lodged the present appeal against the Registrar's decision in this Court on 29 October 1999. Minsup filed a notice of contention in respect of the notice of appeal. Before the matter was ready to be brought on, Minquip and Minsup entered into negotiations and an arrangement. On 5 April 2001, the respondent, Minsup, notified the Court that it did not intend to further participate in the proceedings and, in particular, would not oppose the order sought by Minquip nor seek to prosecute its notice of contention. The applicant seeks an order under Order 20 Rule 2 of the Federal Court Rules that the notice of contention be dismissed. On 12 June 2001, Minquip and Minsup entered into a deed, a copy of which is in the evidence before me, to the effect that Minsup would not take any further step in the proceeding save as may be necessary to comply with any order made. 11 On 30 April 2001, an appearance was made on behalf of the Registrar in which the Court was formally notified that the Registrar had decided not to exercise the right under Order 58 Rule 3 of the Federal Court Rules to appear in the proceeding, and that the Registrar "will abide by any decision of the Court" in the proceeding. 12 Thus neither the respondent nor the Registrar participated in the hearing before me. 13 In these circumstances, Mr Nicholson for the applicant put to me at the hearing an argument, which was not advanced in the written submissions, that the Court has the power, without embarking on a substantive determination of the appeal, to allow the appeal (in these particular circumstances) on the basis of the lack of opposition to it, and on the basis that the burden of showing that a design was not capable of registration (and so not capable of extension of the registration period) would lie with Minsup and, if appearing in opposition, the Registrar. 14 Mr Nicholson put forward the following arguments in support of my adopting this approach: · The respondent's decision not to participate in the hearing was a considered one made with full understanding of the issues. The respondent was at all times fully represented and advised. · The Registrar was aware of the respondent's non-participation and nevertheless decided not itself to participate. This election by the Registrar has accounted for any concerns as to the public interest and public record in registering designs. In this regard the existence of a power in the Court anyway to direct Registrar to appear (s 46B of the Act) is to be noted. No such direction has been made. · The nature of such an 'appeal' is that of a hearing de novo : para 40J(a) of the Act and Order 58 rule 8 of the Federal Court Rules; Kaiser Aluminium & Chemical Corporation v Reynolds Metal Co (1969) 120 CLR 136, 142; and 3D Geoshapes, supra, at [16]. [I note that the 'appeal' is an exercise of the original jurisdiction of the judicial power: Farbenfabriken Bayer AG v Bayer Pharma Pty Ltd (1959) 101 CLR 652.] Mr Nicholson referred also to Brickwood Holdings v ACI Operations Pty Ltd [1983] 2 VR 587, a patents case, in which King J allowed an appeal on the basis of a lack of opposition to it without embarking on a substantive determination of the matter (cf Caroma Sales v Philmac Pty Ltd (1972) 46 ALJR 324). · The cases establish that the onus in such matters is on the respondent: D Sebel & Co Ltd v National Art Metal Co Pty Ltd (1965) 10 FLR 224, 226; Dalgety Australia Operations Ltd v FF Seeley Nominees Pty Ltd (1986) 10 FCR 403, 415-16; Shimano v Silstar (1991) 20 IPR 451, 466; though cf Australian Building Industries v Woodman McDonald (1986) 7 IPR 91. In these circumstances, the applicant's evidence is sufficient to establish a prima facie case and by the respondent's non-appearance the onus to show the design is not new or original has not been discharged. Moreover, the effect of subs 26(3) of Act is that the certificate of registration of 6 November 1997 is prima facie evidence of the facts stated therein and of the validity of the design and of its novelty. · The Design would not be rendered inviolable by any order of the Court order since infringement actions would still be open to any other party under s 32 of the Act. 15 On the other hand, as Mr Nicholson I think acknowledged, the registration of designs involves, to some degree, an element of the public interest, registration being an entry on the public record. In this light I proceeded to hear the evidence. At the hearing of the matter I indicated to Mr Nicholson that I would hear the evidence in the case and decide the question of summary disposal as part of my reasons. On reflection, and in the light of my view of the evidence, I do not see a need to embark upon on a consideration of the competing principles that may be involved in allowing an 'appeal' in the summary fashion urged upon me. It is unnecessary for me to deal with the question of onus. I propose to deal with this matter on the evidence. 16 The orders sought by Minquip in the notice of appeal are relevantly: 2.1 orders setting aside each of the decisions referred to in subparagraphs 1.1 to 1.4 inclusive hereof; [see para [2] above] 2.2 a declaration that the registered design is new or original; 2.3 an order extending the period of registration of the registered design from 6 November 1998 until 15 April 2003; 2.4 in the alternative to paragraphs 2.2 and 2.3, an order that the application referred to in paragraph 1.3 hereof be remitted to the Registrar for re-consideration according to law; 17 Under the Act, 'design' means 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 (s 4). Subsection 18(1) provides that an application for registration of a design shall not be refused, and a design is 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. The registration of a design is deemed to be registration in respect of an article specified in the application (subs 23(3)). Section 23 of the Act provides that if satisfied that the design in respect of which application has been made is one which may be registered under the Act, and the applicant is entitled to make the application, the Registrar may (subject to the Act) register the design. (It does not appear to have been in dispute before the Registrar that Minquip is the proprietor of the Design. It is therefore entitled to make the application (subs 20(1)).) However, a design shall not be registered unless, inter alia, it is new or original (subs 17(1), set out above). 18 Thus the matter before me thrown up by the 'appeal' concerns the newness or originality of the Design for the purposes of s 17, and in particular especially insofar as the decision was to the contrary, whether it is or is not an obvious adaptation of a design registered, published or used in Australia in respect of any other article, for the purposes of para 17(1)(b). 19 Paragraph 40J(a) of the Act allows for this Court to admit further evidence. It is clear that this Court sits in its original jurisdiction in hearing the 'appeal' and this is properly characterised as a fresh hearing, the Court not being restricted to a function of judicial review. The applicant read a number of affidavits sworn for the purposes of this proceeding. The applicant also tendered some of the statutory declarations sworn for the purposes of the decision of the Registrar's delegate. I also have before me the decision of the delegate. Finally, received into evidence, as physical exhibits in the proceeding, were a number of couplings of various types. 20 The Design relates, as I have said above, to a coupling for joining hoses for the conduct of compressed air or water. The statement of novelty that accompanied the application for registration claimed that the novelty lies in the internal toroidal cavity of the coupling. 21 The primary inquiry is as to the appearance in fact of the Design, including by reference to designs used in Australia (see ss 4 and 17). Given that the novelty, or more particularly here for the purposes of para 17(1)(b), the obviousness of the Design is relevant to whether it is registrable, and given that this has been raised as an issue by the objection to extension and the outcome before the delegate (to the extent that that finding is relevant to a hearing de novo), it is necessary to consider some of the background in the field in question leading to the application for registration of the Design. 22 A number of distinct couplings were in use in the Australian mining industry at the priority date including what are known in the industry as the type A, type B and Surelock. Mr Peter Butcher, the mining superintendent at Pasminco's Broken Hill mine, has 35 years experience in the mining industry. His evidence (Exhibit A2 – a statutory declaration read before the delegate) was that while superficially similar, the various types are quite different in fact, and these differences are well known, and thus I infer well perceived, in mining circles. Moreover, the different types were not interchangeable, so that a mine would generally adopt and retain a particular type for many years, the cost and difficulty of re-fitting being substantial. I return to the significance of this fact below. 23 The coupling process itself involves identical halves with claws or catches so that the two halves are interlocked by rotation of one half relative to the other. The various types of couplings available in this country all have an annular or circular cavity into which a rubber seal ring is inserted. The seal in each half projects outside that half and abuts the seal of the other half. 24 The applicant refers to its Design as the new type A. In evidence as a complete piece, in cross section and in diagram is an example of the coupling known in the industry as the type A (and I will refer to it as the old type A) (Exhibit DB 28). The recess inside the barrel to accommodate a seal in the old type A is square shouldered. The seal used in the old type A is a stiff solid rubberised ring which allows, when pressed manually, of virtually no compression (Exhibit DB 34). 25 Mr Warren Spencer, an employee of the applicant who was employed by the respondent between about 1980 and 1994 in various positions, says in his affidavit that since 1969 (when it was first registered) the only improvement to the old type A coupling - which was designed and produced by the respondent - was the introduction of a peripherally extending lug on the head of the coupling which carried through it an axial aperture allowing the insertion of a locking pin. Mr Butcher also deposes that the various couplings that have been in existence in his 35 years in the industry have changed little, the hole for a locking pin being the last significant change to both the old type A and the respondent's later coupling, known as the Surelock. Each of the various registered designs obtained by the respondent in respect of the type A coupling had lapsed by 1981. 26 The Type B coupling (Exhibit DB 31), like the old type A, has a squared-off recess. There is little evidence upon which to remark upon its development, save that, as the evidence led tells one, it is not compatible for use with type A couplings, so that a mine would generally outfit with one or the other, or another type altogether. 27 The Surelock coupling was developed by Minsup (the respondent). It is different in appearance from both the old type A and type B. It is likewise not compatible with either old type A or type B, so that upon its introduction mines either retained their old type A or type B couplings or changed over entirely to the Surelock. A physical example of the Surelock was not in evidence. However, I proceed on the applicant's assurance that the applicant's Safetylock, which was Exhibit DB 32, is identical to the respondent's Surelock. By appearance, the Safetylock (Surelock) is noticeably larger in diameter across the head of the coupling than the old type A or type B. The recess inside the barrel of the coupling head is cylindrical or curved. The Surelock incorporates a different seal to the old type A. This is known as a bellows seal (Exhibit DB 33). It is a solid rubberised ring which, unlike the type A seal, allows of some degree of compression when depressed. It is perceivably larger in diameter than the old type A seal. It is the evidence of Mr Butcher that the larger size of the Surelock coupling head relative to either the old type A or type B coupling (for the same size of hose attachment) allows for the use of the larger bellows seal. I should point out that in terms of the issue before me, it is the nature of recessed cavity only, and not the qualities of the coupling head, that is relevant. 28 I was informed that none of the other couplings under consideration thus far: the old type A, type B or Surelock, at present retain a registered design or patent. 29 There is before me a sample, and another in cross-section, of the applicant's 'new type A' coupling (Exhibits DB 29 and 30). On inspection, the internal cavity wherein the seal is fitted is cylindrical or rounded, that is, toroidal. The overall head size appears to be the same as that of the old type A coupling. The effect of the evidence is that, by comparison with the old type A, the toroidal cavity of the new type A allows a different type of seal to be inserted, being a bellows seal of the sort used in the Surelock design. 30 The obviousness of adaptation is of a design used in respect of "any other article". The applicant submitted that the appropriate comparison was whether there was an obvious adaptation of the old type A. Were the old type A or the type B the only couplings that were used (for the purposes of s 17), prior to the application, I feel that by what I can judge to be the differences as to the shape of the seal cavity from a visual inspection, I should have no difficulty determining that the applicant's Design would be capable of registration notwithstanding s 17. However, as I think this submission acknowledges, the provision in subs 17(b) is wide, so that "any other article" would sensibly require comparison for novelty and obviousness purposes not only with the old type A and type B but also with the Surelock design. Indeed, the delegate found that it was an obvious adaptation of "a known design in respect of the Surelock coupling". 31 To the extent that what follows is relevant to a determination of the novelty or originality of a design, the applicant has attempted to show that the functional design problem faced was essentially this. It was known that the bellows seal (Exhibit DB 33) (with its degree of give) allows for easier coupling in operational conditions, whereas the old type A couplings were, by reason of the seal type, difficult to connect. However, it was known that the bellows seal of the Surelock does not seal as well as the rigid seal of the old type A coupling (DB 34). The problem that Mr Byrne, who designed the applicant's coupling, faced, was to design a coupling that would accommodate a bellows seal (for ease of coupling) while maximising sealing qualities. It was apparently thought that the use of the bellows seal would lead to inferior performance unless one had a head size of the Surelock, since it was thought that there was insufficient wall thickness in the head of the type A to allow for a curved recess and so accommodate a bellows seal. As I have said (and as is observable), the Surelock has a larger head size overall and, thus, a thicker wall. The advantages of the new design, it is said, are (in combination) first, the ease of coupling, secondly, the sealing quality, that is non-leakage and performance under pressure, and thirdly compatibility with systems fitted out with the old type A coupling. 32 Mr Byrne's affidavit evidence (and that contained in Exhibit A1 - a statutory declaration read before the delegate) is that when he established the applicant company he knew that because of the dominant position that the respondent held in the Australian market for couplings of this sort, a better product would be needed. He wished to enter the market covered by the old type A while providing a coupling with minimal leakage characteristics. The old type A coupling was considered to have somewhat of a leakage problem in the industry. He said that he initially focused on type A couplings and in particular on improving the seal within these couplings including using another rubber compound, but essentially retaining the existing square-walled cavity. He said that he was unable to formulate a seal that had the requisite properties to allow ease of assembly while at the same time reducing leakage. 33 The Surelock coupling, which was then on the market, also leaked, although not as badly as the type A coupling. However, it was easier to put together than the type A coupling. Mr Byrne states that he contemplated adapting the type A coupling so as to accommodate the seal used in the Surelock coupling, in order to make the couplings easier to put together. He said that the advantages of the Surelock coupling stemmed mainly from the use of the bellows seal. This was because the bellows seal provided for much greater compression and thus the coupling halves were more readily pushed together to permit coupling or uncoupling. His concern at the time, he says, was that because of the head dimensions of the type A coupling being smaller than the dimensions of the Surelock coupling head, he believed he might not be able to design a (type A size) coupling with both a toroidal cavity (to house a bellows seal), and sufficient surface area to provide an effective seal. The recess for the seal in the Surelock coupling meant a coupling head of much greater dimension than the corresponding type A coupling head, to compensate for the poorer sealing qualities of the bellow seal. The total surface area of the relevant portion of the cavity was considerably smaller for the type A coupling compared to the Surelock type. Mr Byrne therefore doubted whether a bellows seal could be incorporated into an type A coupling since sealing capacity is critically dependent upon the available surface area for sealing; the capacity of the Surelock bellows seal to withstand pressure did not leave much room to reduce the sealing capacity and still be acceptable to customers. 34 He says that the approach that he ultimately adopted, the outcome of which is the Design, was not his first choice approach. He was uncertain of the approach, he says, given that the Surelock coupling leaked, and that working off the basic type A coupling would give a smaller surface area with which to work and to machine out a curved recess wall that retained sufficient thickness. 35 In terms of the cavity Mr Byrne stated that the effectiveness of a seal being held in place under pressure of air or water is determined by the depth of the cavity and the curvature of the shoulder (and thus the radius of the cavity). The deeper the cavity the greater the resistance of the seal to 'blowing out'. The depth of the cavity is limited by the amount of metal available in the casting between the apex of the cavity and the outside of the casting, or head, the dimensions of which are fixed by the need to remain type A size. There is therefore a limitation to the extent of the depth of the cavity available. It is optimal to provide a larger radius so that the sealing characteristics as against the cavity are maximised by reason of the larger surface area, as well as a greater capacity for flexibility of the bellows seal. Given then the larger dimensions of the Surelock coupling and the fact that it leaked, Mr Byrne states that it was far from certain that a type A coupling with a toroidal cavity and a bellows seal would function at a workable level. Mr Byrne annexed to his affidavit test results conducted on behalf of the applicant in support of his evidence to the effect the surface area available for sealing does impact on the level of leakage from the coupling. 36 In the course of attempting to machine a curvature into the cavity of an A type coupling (with a traditional square-walled seal cavity) Mr Byrne found that the old type A couplings, by virtue of the available head size, did not allow for a satisfactory curvature in the sealed cavity such as to house a bellows seal. He said that he made approximately 100 different attempts to design a suitable toroidal cavity out of a type A coupling head. While it amounts to a submission in his case, Mr Byrne in his affidavit gives expression to his belief that the incorporation of a toroidal seal cavity into the type A coupling was not an obvious adaptation. He states that while this may have been technically achievable, until the developments were undertaken, as it turned out successfully, it was unlikely that the coupling that resulted from such adaptation to an old type A would have a workable seal, since the type A coupling was already prone to leakage: putting a curved cavity to hold a bellows seal would have increased the level of leakage, he says, and in all probability have rendered the coupling not workable. He says that it was unlikely that a satisfactory seal could have been provided given the significant decrease in the surface area of the cavity that could feasibly be carved in a type A coupling head. The Surelock coupling, with the greater contact area, leaked, and if it leaked to a greater extent would be unworkable. It was therefore likely that any type A coupling with a toroidal cavity holding a bellows seals would be simply unworkable. 37 Mr Byrne concludes his statement by saying (in effect, submitting) that if the design was an obvious adaptation and obviously technically feasible then at least the respondent, if not one of the six or so other competitors in the market, would surely have undertaken such adaptation given the problems with existing seals and existing couplings on the market. 38 Mr Pat Evers has sworn an affidavit. He is employed by Pasminco Mining Limited at Broken Hill as the underground superintendent of production. He says that he has personally used or supervised the use in operations of old type A couplings for 25 years. Until 1996, Pasminco used the old type A couplings. In his experience, these were always difficult to fit together because the rubber seals did not compress easily and considerable effort was required to put them together, and they leaked to some degree. These problems were widely acknowledged in the industry and there was, he says, certainly a need for improvement. While he was aware prior to 1996 that couplings with a bellows seal (that is, the Surelock) were available and were an improvement on the old type A in particular as to ease of coupling, they were not suitable since Pasminco's operations were fitted out to use old type A couplings. Pasminco continued to use these, because of the anticipated cost and disruption of changing all couplings to Surelock. 39 Since 1996, Pasminco has used the applicant's coupling (the subject of the Design). Mr Byrne had at that time approached Mr Evers who had agreed to evaluate some couplings under operational conditions. Mr Evers says in his affidavit that the applicant's coupling is a substantial improvement on the old type A coupling, and being compatible with the latter, was easy to incorporate into operations. Mr Evers also deposes to a belief that he says he held, until introduced to the applicant's coupling, as to why the acknowledged problems with the old type A had not been overcome. This was that the bellows seal is larger than the square seal, thus requiring a larger cavity. The Surelock has an overall larger head size than the type A so as to accommodate the larger seal / cavity, while the old type A head size was not large enough to do so. For this reason, he says that it was not obvious in 1996 that a change in the shape of the type A cavity to a rounded or toroidal shape would result in a workable coupling. He says that until 1996 he thought that the old type A was as good a coupling as one would get in the endeavour always to compromise between sealing qualities and ease of coupling. 40 Mr Dominic Posavec's affidavit evidence is to the same effect as Mr Evers as to the difficulty in connection and the leaking of the old type A coupling, due, he says, to the seal that this type houses. Mr Posavec is the engineer-in-charge at a mine owned by Powercoal Pty Ltd and has responsibilities relating to machinery and equipment. He has worked in the mining industry for 20 years at various levels. Couplings, primarily type A couplings, are he says a part of the everyday equipment used throughout his time in the industry. In 1996, Powercoal evaluated the applicant's coupling and found them easier to connect and disconnect and that they had greater sealing qualities, such that Powercoal now stipulates the applicant's couplings only on tenders. I was also taken to Mr Ian Donaldson's declaration (Exhibit A3). He is also employed by Powercoal. His declaration was made for the hearing before the delegate. In it he states that his operation has switched to using the applicant's coupling because of the improved seal and ease of connection qualities. Mr Posavec says that the change of shape in the new coupling is an excellent step forward. He offers the opinion that the applicant's coupling was not an obvious adaptation of any other coupling since it met a well-known need in the industry, and were it obvious, one would have expected the improvement to have been made some 25 years earlier, being the length of time over which the poor performance of the old type A has been recognised. 41 Mr Butcher's evidence is that (in his view or experience) the use of a bellows seal (which is not used in any other coupling besides the applicant's and the Surelock) is a major development in the industry with 'very appreciable advantages to very long-felt wants'. Like Messrs Evers and Posavec, he attests to the difficulty, in working conditions, in joining the old type A couplings with the solid seal these have. While a bellows seal makes this process easier, he says, until the applicant's coupling only the Surelock used such seals, and it was incompatible with many existing set-ups, being type A set-ups. 42 Mr Butcher stated in his affidavit that he was surprised when he discovered the applicant's type A coupling using a bellows seal, as he had assumed that there was insufficient wall thickness to allow for a bellows seal in a type A coupling. That is to say, he thought that the limited head size indicated that it could not be done without increasing the head size as was done with the Surelock coupling, thus rendering the new coupling incompatible with existing type A couplings. Type A couplings are, Mr Butcher said, by far the most common type in Australia such that if a bellows seal was obviously useable with a type A coupling, this would have been previously suggested. Moreover, he says (in effect), if a toroidal cavity in a type A coupling were an obvious adaptation it would have made sense for the respondent to undertake it with respect to its own old type A, rather than introducing the larger Surelock, as it did. I must say that to the extent this is relevant, there appears to be much force in this. He says that on top of ease of coupling, the new type A offers considerably improved sealing performance compared with any other type; he says that he is unsure why this is so but assumes it has something to do with the seal. Other affidavit material was directed towards showing the commercial success that the applicant's coupling has achieved in the industry since 1997. 43 The relevant part of the delegate's reasons for decision were, in summary, as follows. (In setting this out I am of course conscious that the nature of the 'appeal' before me, including where fresh evidence has been filed, is such that the delegate's reasons are more by way of an illustrative aid than the framework through or platform from which the appeal is to be resolved. I do not therefore propose to approach the matter necessarily by reference to the findings, or alleged errors, of the delegate.) 44 While neither of the first two findings made give rise to issues on appeal, they assist in understanding the approach taken by the delegate. First, under the heading "Immaterial Details", the delegate found that there was no material showing the existence of a type A coupling with an internal toroidal cavity prior to the application date of the Design, and that this feature was a major departure from the square-shouldered cavities previously provided for type A couplings; the internal cavity is a major part (which I take to mean a significant feature) of the head portion of the coupling, and the variation of cavity structure is clearly evident in the Design as a whole; where there is knowledge in the industry of the incompatibility between different coupling types, to a person in the field the appearance of toroidal cavity in a type A coupling would be easily noticed, and the coupling would appear distinctly different from a Surelock coupling. The toroidal cavity (within a type A coupling) is thus more than a variation in an immaterial detail (cf para 17(1)(a)). I see no reason to depart in any way from this approach and these conclusions. 45 Secondly, the delegate rejected the respondent's submission that since Surelock couplings with bellows seals were widely known and used before the application in relation to the Design, and were to be seen as a well-known trade variant for these types of couplings, and since type A couplings are well-known, it should be found that the Design (being a type A with a toroidal cavity) differs from known type A couplings only in respect of a feature commonly used in the trade (cf para 17(1)(a)). Instead, the delegate found, inter alia, that since toroidal and square-shouldered cavities are each respectively specifically associated (in the industry) with particular types of couplings, the cavity in the Design was more than just a variation of a feature commonly used in the trade. I see no reason to depart in any way from this approach and these conclusions. 46 Thus, the injunction against otherwise valid registration that is contained in para 17(1)(a) does not apply. 47 The third finding, the relevant finding for this appeal, was based on an acceptance by the delegate that it was an obvious adaptation (for the purposes of para 17(1)(b)), to have taken the well-known Surelock (toroidal) cavity and apply it to a type A coupling. The delegate found to be unhelpful the submission based on the stated expressions of surprise of Messrs Byrne and Butcher that the incorporation of a bellows seal into a type A coupling could be achieved, and that this was indicative of there being nothing obvious about the development of the Design. The delegate said that their evidence related more to recognition of industry needs and the functionality of different types of coupling. This reliance on functionality, the delegate found, was misplaced. The delegate determined that since the registration of designs relates to appearance rather than function, he (the delegate) should not be concerned with the function of a toroidal cavity or seal in a type A coupling or whether such an arrangement would work. The delegate found: In spite of the various differences highlighted previously between the three types of couplings, they are not so different in appearance to suggest that a skilled but unimaginative person in the trade could not readily modify the couplings to use various seals from different coupling types. In any case most of the highlighted differences relate to external appearance rather than internal cavity structure for a seal. In this light I expect a person in the coupling field would not find any real difficulty requiring any real mental activity to modify the internal cavity of the type A coupling to accommodate a toroidal seal. 48 In relation to the claim that, in effect, it had previously been assumed that there was insufficient wall thickness in a type A coupling to accommodate the toroidal cavity or seal used in the Surelock type (the Surelock having greater overall diameter), and that this suggested the type A could not be obviously adapted to accommodate this, the delegate said that there was ample case law to the effect that "precise mathematical comparisons of dimensions are not to be applied in assessing the newness or originality of designs". The delegate found it significant that, along with changing the shape of the internal cavity, the redesign of the internal dimensions of the type A was the only variation made to it to arrive at the Design. The delegate then stated again that it could be expected that a person in the relevant field would readily redesign the type A in shape and dimension to adopt a toroidal cavity without exercising any real mental activity, and that the Design involved a combination, not requiring such mental activity, of old, known features. 49 The delegate therefore concluded that the Design is an obvious adaptation of a known design in respect of the Surelock coupling. 50 The delegate noted that while Mr Butcher's evidence about the perceived problem of the wall thickness in the type A may suggest that the type A could not obviously be adapted to accommodate a toroidal seal, "precise mathematical comparisons of dimensions are not to be applied in assessing the newness or originality of designs". The delegate referred to Dart Industries v Decor (1989) 15 IPR 403. This was an infringement case. In relation to the comparative test to be applied for infringement, the Full Court there said (at 412) that precise mathematical comparisons or matters of measurement or ratios, which form no part of the mental picture which the eye conveys to the brain of the shape or configuration suggested by the design, are not to be applied. It may be that that principle can be of use in cases such as the present, to the extent that designs deal with features of shape, etc., that "can be judged by the eye" (s 4). However in my view the purported application of it by the delegate here does not advance this particular inquiry nor, in the manner in which it was done, support the conclusion made. Mr Butcher's evidence was not simply as to the precise mathematical details of relative thicknesses and diameters, but to the difficulties in design that may be relevant to the obviousness or otherwise of any adaptation. Sufficient wall thickness, in a limited head size, to accommodate a carved-out toroidal cavity is easily comprehended and seen and is not comprehended only by recourse to precise mathematical measurement. 51 Mr Nicholson was not aware of any authority dealing with obvious adaptation in this context. He made reference to what is said to be an apparent divergence as between the authors Lahore Copyright and Designs para [66,200] and Ricketson The Law of Intellectual Property para [21.20] to the effect that the test for obvious adaptation of a design is yet to be settled. The former suggests that a visual test is to be applied, and "that functional skill in applying an old design to a new article is not relevant without visual significance." [emphasis added.] The latter says that the test for obvious adaptation is to be taken from patent law so that the relevant question is whether the adaptation would be obvious to a skilled but unimaginative craftsman possessed of the common general knowledge in that area and faced with the task of conceiving a design to apply to a particular article (following the approach in Minnesota Mining & Manufacturing v Beiersdorf (Aust) (1980) 144 CLR 253). It is not appropriate that I endeavour to resolve any such question of principle, unless it be necessary. As discussed below, my view is that whichever test is taken the Design does not fall foul of para 17(1)(b). 52 The submission put by Mr Nicholson is essentially that the question of novelty or originality is one of fact and visual impression, to be judged by the eye (see Dalgety Australian Operations Ltd v F F Seeley Nominees Pty Ltd (1986) 10 FCR 403, 415), but that I may take into account, as being relevant, the evidence (as to visual impression) of persons well-experienced in the relevant field. I agree with Mr Nicholson that while registration relates to features of shape, etc (s 4), to which appearance rather than functionality is relevant, given the relationship between the design claimed and the article as registered, it is appropriate to examine the historical background and certain of the evidence that has been led as to functionality and the design problem. That is, such matters are thrown into relevance to some extent by the necessary enquiry into the obviousness and / or newness of the Design. They may also inform as to the development in the trade up to the time of application for registration: cf D Sebel & Co Ltd v National Art Metal Co Pty Ltd (1965) 10 FLR 224, 226. The differences, if any, between Lahore and Ricketson (and I need not express a view as to whether they are different and in what respects) do not, it seems to me, throw doubt upon the proposition that the eye which judges the visual differences is to be trained: Jacobs J in Sebel, supra at 227 and Dalgety, supra at 416-417. For that purpose the developments in the trade are relevant to understand. 53 In Dalgety, supra, Beaumont J (Fisher and Neaves JJ agreeing) noted the injunction of Jacobs J in Sebel, supra (at 226),that, in relation to an article such as a chair (as in the Sebel case), one cannot and should not expect to find some startling novelty or originality. I am prepared to make a similar observation, as indeed Beaumont J did in Dalgety, of the type of article in this case, being a coupling. Jacobs J said (at 226): 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 application for registration, then I do not think it is sufficient to point to a number of elements of similarity to past designs in order to show that the design is not new or original. 54 Beaumont J went on to make reference to what was said by Lord Herschell as to the approach to novelty and originality under the English Patents, Designs and Trademarks Act 1883 in Samuel Heath and Sons Ltd v Rollason [1898] AC 499 where his Lordship said (at 503): In the present day it is very difficult to register any design that does not contain in it something which has been done before. Very often a very successful design may be one in which the difference from a previous design can on analysis be shewn to be very slight, when nevertheless the result is to make the one so much more pleasing than the other that it is a successful design. 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 is substantially the same design as one already registered or known, on the other hand we ought not to refuse it where the design is practically a different one which may be more attractive. 55 While it may be said that the features of shape and configuration which distinguish the applicants coupling from earlier designs are features adapted from the best of both the old type A and the Surelock, it is appropriate to bear in mind what Jacobs J held in Sebel, supra at 227 (as approved of in Dalgety, supra, at 417) that: Of course a mere conjunction of old features does not necessarily result in a new design. However it may do so and … 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 on 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 … 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. 56 Again, I am prepared to hold for present purposes that the limitations that exist in respect of the addition of new features, as referred to by Jacobs J above, would exist in the field to which the Design relates. Moreover, simply to say that on a visual comparison the applicant's coupling appears to an untrained eye to be an obvious adaptation of features from both the old type A and the Surelock, or simply an obvious adaptation of the Surelock (as the delegate held) would be to ignore the evidence, or such evidence as is before me, of experienced persons in the field as to the absence of obviousness in fact of arriving at the Design and the subtlety, perhaps, of what was involved in arriving at the result. In any event, the evidence of those the applicant has called is that the combination of cavity features of the Surelock into the type A size head is distinctive to the trained eye. 57 As the delegate found, referring to knowledge in the trade, the applicant's coupling would appear "distinctly different" from the Surelock coupling. The evidence before me of persons in the field is that the visual difference between the old type A and the applicant's coupling, and between the applicant's coupling and the Surelock, is readily apparent. Also, the design relates to a feature of shape and to my eye the couplings are noticeably different. The new type A has a toroidal cavity to the square-walled one of the old type A, but is noticeably smaller than the Surelock. 58 Using the 'Lahore test' and applying a visual test to the determination of 'obvious adaption', I think there are visual differences between all the couplings, in particular between new type A and old type A and new type A and Surelock. These differences are apparent and more apparent to those in the industry. To the extent it is sought to be said that there is an obvious adaptation, the industry evidence assists in understanding, from the point of view of the trained eye, that there was nothing obvious visually about the changes from either the old type A or the Surelock. 59 Using the 'Ricketson test', the evidence is clear that the design was not obvious to a skilled and imaginative (so, a fortiori, an unimaginative) craftsman. Byrne had real doubts whether it could be done. Evers believed it could not be done. Posavec did not see it as an obvious adaptation. Butcher was surprised that it could be done. The dangers of hindsight should always be guarded against: Minnesota Mining & Manufacturing v Beiersdorf, supra at 293, and Dalgety, supra at 407. 60 Thus, in my view, on the evidence before me the Design does not fail the strictures of either para 17(1)(a) or (b). 61 As is clear from the above, it is unnecessary for me to deal with any difference of principle or approach thrown up by Lahore and Ricketson. In a case argued without a contradictor that would not be appropriate, unless it were essential which I do not think to be the case. However, as can be seen from this case, the difference between a visual assessment of an "obvious adaptation" or copy (taking care to train the eye with the industry art) and an assessment as to whether it would be obvious to a skilled but unimaginative craftsman in the field possessed of the industry common knowledge and faced with the task of designing the article, may not be very different. 62 Accordingly the orders and declarations which I propose to make are: 1. that the appeal be allowed; 2. that the decision of the delegate of the Registrar of Designs given on 11 October 1999 be set aside; 3. that as between the appellant and the respondent (Mining Supplies Australia Pty Limited) the Registered Design No 131967 is declared to be new or original for the purposes of s 17 of the Act; and 4. that the period of registration of the said registered design be extended from 6 November 1998 to 15 April 2003. 63 The Registrar did not attend. The respondent did not attend at the hearing. It filed a notice of appearance on 11 November 1999. When the matter was approaching a hearing it withdrew indicating that it did not wish to take any further part in the proceeding. It filed no evidence in the proceeding. It may be arguable that there was "no party in opposition to the party bringing the appeal" for the purposes of Order 58 Rule 3 by reason of the effective withdrawal of the respondent, notwithstanding its remaining on the record as a respondent. If that is so the Registrar may by force of Order 58 Rule 3 have become a party. 64 The above is relevant because of the orders which I propose to make. I only intend the declaration to be made as between Minquip and Minsup. Others may challenge the Design. I do not think it appropriate to give any cause for argument that the Registrar is bound by such a declaration, if challenge by others were to occur. However, I have made an order that the period of registration be extended. That is in effect an order directed to the Registrar. The Registrar has in effect submitted to any order of the Court. In case anyone, including the Registrar, thinks it appropriate that any further procedural step be taken in the light of the orders, I propose to allow liberty to apply within three months for any such procedural steps to be taken, including the formal joinder of the Registrar to the proceedings, if that be thought appropriate. 65 Minquip does not seek costs. I therefore make no order for costs. 66 In the circumstances I see no need specifically to deal with the notice of contention. I certify that the preceding sixty six (66) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Allsop. Associate: Dated: 28 September 2001 Counsel for the Applicant: Mr K G Nicholson Solicitor for the Applicant: Cosoff Cudmore and Partners Date of Hearing: 25 June 2001 Date of Judgment: 28 September 2001