Sunbeam Corporation v Morphy-Richards (Australia) Pty Ltd [1961] HCA 39

High Court of Australia Windeyer J. Sunbeam Corporation v Morphy-Richards (Australia) Pty Ltd [1961] HCA 39

Cur. adv. vult.

J Windeyer delivered the following written judgment: —

July 3 Windeyer J

This is an action for the infringement of a patent for an electric frying pan. The patent is Australian patent No. 202,159. The first plaintiff, Sunbeam Corporation, a company incorporated in the State of Illinois in the United States of America, is the patentee within the meaning of the Patents Act 1952 Cth. The second plaintiff, Sunbeam Corporation Ltd., a company incorporated in New South Wales, is an exclusive licensee. The patent is a convention patent, the basic application having been made in the United States by the inventor, Ivar Jepson, an officer of Sunbeam Corporation on 2 December 1953, and having issued in United States patent No. 2,744,995 of 8 May 1956. The Australian specification was published on 26 May 1955; but it was later amended and in these proceedings only the amended specification need be considered: the drawings attached to the original specification were unaltered; and the amended specification, including the claims, must be read by reference to them. The priority date is 2 December 1953. The defendant, Morphy-Richards (Aust.) Pty Ltd, is a company incorporated in New South Wales. The infringements alleged are sales by it of frying pans of its manufacture, alleged to be made in accordance with the plaintiffs' patent. The defendant did not dispute these sales, but it denied that its frying pan is an infringement; and it claimed that the plaintiffs' patent is invalid, and by a counterclaim applied for its revocation.

The evidence established that, as indeed is well known, electricity was commonly used to provide heat for cooking long before 1953. Electric stoves, and various electric appliances, such as hot-plates, toasters, kettles, urns and waffle-irons were known and were in common domestic use, both in the United States and in Australia. The heat was engendered by a resistance element. But electric frying pans were not known in Australia before 1953; neither, it seems, had they then come into use in America. They were first put on the market by the Sunbeam Corporation. Its article, known by the trade name of a Sunbeam "frypan", has become well known in America and in Australia. It has been a great commercial success and there has been an increasing demand for it in Australia. It is correctly described as a frying pan. But, partly because of its depth, which relatively to its area is somewhat greater than many frying pans of the ordinary kind, and partly because it is supplied with a lid or cover for use when needed, it can be employed not only for frying but for various other cooking operations that would not ordinarily be called frying, for example, stewing or even roasting. Among its features are the following: its heating element is built in, so that standing as it does on legs it can be used wherever it can be plugged into a domestic electric power point: a thermostatic control enables it to be kept at an even temperature: and this can be selected from a range of temperatures as that one suitable for the operation of cooking some particular foodstuff: the pan can be cleaned as a frying pan is ordinarily cleaned by washing; for the pan can be immersed in water, and with it portion of the handle adjacent to the pan. The pans sold by the defendant resemble the Sunbeam frypan in outward appearance and in essence their mechanism is the same. The comparison that has to be made is between the claims of the plaintiffs' specification and the defendant's article. And to fix attention on the particular article — alleged to be an embodiment of the invention — that the plaintiffs are making and selling is merely misleading.