Firmagroup Australia Pty Ltd v Byrne & Davidson Doors

The design resides in the application of the particular shape and configuration to a combination handle and lock for a shutter door as illustrated. The rear face of the handle and lock does not form part of the design. The design may be applied in any suitable manner and by any suitable means. The drawings appearing in the registered design are reproduced in appendix "A" (at 490). The learned trial judge (King J.) described the drawings thus: the attached drawings show a rectangular block with tapering sides and a flat back which engages with a flat face at the bottom of a laterally extending corrugation in a screen. More than one half of the area of the surface of the block is occupied by a recess, which is placed on one side of the said surface, a lock being situated in the remaining part of the said surface. Shutter doors on which combination handle and lock units are used consist of flexible metal screens. They open by sliding upwards, the screen rolling onto a revolving spindle. They are in popular use as garage doors. The appellant manufactured and sold in Australia combination handle and lock units substantially identical with the registered design as part of rolling metal doors. After the effective date of registration of the design (12 May 1976) and before the writ was issued in March 1982, the respondents, knowing of the appellant's product, manufactured, offered for sale and sold combination handles and locks for shutter doors. The appellant, founding on s. 30(1)(a) of the Designs Act 1906 Cth ("the Act"), alleges that the respondents thereby infringed the appellant's copyright in the registered design. The appellant's claim was dismissed by King J. and an appeal to the Full Court of the Federal Court was dismissed by the majority (Fox and Jenkinson JJ., Lockhart J. dissenting) [1] . 1. (1986) 11 F.C.R. 415.

Section 30(1)(a) as it stood at the relevant time provided as follows:

(1) A person shall be deemed to infringe the copyright in a registered design if, while the copyright continues, he, without the licence or authority of the owner of the copyright -

(a) applies the design or any fraudulent or obvious imitation of it to any article in respect of which the design is registered.

That provision has since been amended but the amendment is immaterial to the issues in this case. The question is whether the respondents' article is a "fraudulent or obvious imitation" of the registered design. A representation of the respondents' article appears in appendix "B" (at 490). A visual comparison of the registered design with the respondents' article reveals some points of similarity and some of distinction.

Looking from the front, both the registered design and the respondents' article consist of a flat rectangular plate in which a keyhole is set and, beside the plate, a recessed rectangular handgrip. Before the appellant created the design which was granted registration, the locking units attached to metal roller doors consisted of rectangular plates in which a keyhole was set standing out from the surface of the screen so that a hand could grip the lower or upper surface in order to lift or lower the door. King J. found that the registered design incorporated a "new concept of design in products of its kind", and he identified the "new main features" as "a more elongated rectangular shape than was previously known and a recessed handle". These new features are common to the registered design and to the respondents' article. In both the design and the article, the plate section (containing the keyhole) and the handgrip section are placed side by side horizontally; in both, the upper, lower and front surfaces of the plate and handgrip sections are continuous, extending without a break from one section to the other. King J. found that the respondents consciously adopted "salient features of [the appellant's] design, namely, the recessed handle and a face plate lengthened laterally to accommodate the recess and the lock side by side". Although his Honour found that "salient features of construction" had been taken from the registered design, he held that the respondents had produced a different design distinct from the registered design.

The registered design and the respondents' article are dissimilar in proportion (the design being rather squat, the article much slimmer); in the comparative size of the plate and handgrip sections (the handgrip section being larger than the plate section in the design, the two sections being of the same size in the respondents' article); in the vertical line which, on the respondents' article but not in the design, visually divides the plate section from the handgrip section; in the width of the front surface surrounding the recess of the handgrip (the design showing a rather thick edging, the respondents' article being slender of line around the recess); in the angularity of the recess (in the design the recess is sloped, in the article the recess is virtually right-angled) and in the shape of the ends (the design showing a deep and irregular base designed to fit the corrugation of the panels in the metal screen of the door, the ends of the article being thin and abutting flat onto the metal screen).

When a design satisfies the statutory definition of "design" by reason of its applicability "to the purpose of shape, or configuration, of an article", the monopoly conferred by registration does not extend to the features of the design which do not determine the article's unique shape or configuration, and this is so although the design may be applied to make a new and useful article. The Act is concerned with shape and configuration, not function [2] . Specificity of shape and configuration must be conveyed by a registrable design; features of a design which do no more than convey the idea of a general shape appropriate to the function which the article is intended to perform and which are consistent with a variety of particular shapes in articles copying those features are not amenable to protection by the Act. In Pugh v Riley Cycle Co. Ltd. [3] ; Parker J. said:

The difficulty arises where the conception, thus arrived at, is not a definite conception as to shape or configuration, but only a conception as to some general characteristic of shape or configuration, necessitated by the mode or principle of construction, the definite shape or configuration, being, consistently with such mode or principle of construction, capable of variation within wide limits. To allow the registration of a conception of such general characteristics of shape or configuration might well be equivalent to allowing the registration of a conception relating to the mode or principle of construction. The principle is stated in Russell-Clarke on Copyright in Industrial Designs [4] , in a passage which has been judicially approved: What he gets a monopoly for is one particular individual and specific appearance. If it is possible to get several different appearances, which all embody the general features which he claims, then those features are too general, and amount to a method or principle of construction. [5] 1. Macrae Knitting Mills Ltd. v Lowes Ltd. (1936), 55 C.L.R 725, at p. 730, per Dixon J. 2. [1912] 1 Ch. 613, at pp. 619-620. 3. 5th ed. (1974), p. 27. 4. See In re Wolanski's Registered Design (1953), 88 C.L.R. 278, at pp. 279-280; Kestos Ltd. v Kempat Ltd. (1935), 53 R.P.C. 139, at p. 151.

The definition of "design" was amended by the Designs Amendment Act 1981 Cth and now expressly excludes "a method or principle of construction". But that exclusion, which was contained in s. 93 of the Patents and Designs Act 1907 UK (see now s. 1(3) of the Registered Designs Act 1949 UK), gives statutory expression to what was previously implied in the true conception of a design in the earlier statute law [6] . The notion that a feature which does no more than identify a general characteristic of shape is a method or principle of construction and is therefore outside the protection of the Act appears in what this Court said in Malleys Ltd. v J.W. Tomlin Pty Ltd [7] :

It is not the function of design to indicate a process of manufacture; indeed, anything amounting to a method of construction that would permit differences of shape spells invalidity. 1. Stenor Ltd. v Whitesides (Clitheroe) Ltd. , [1948] A.C. 107, at p. 121. 2. ante, p. 124.

The only design features that are susceptible of protection are those features which convey the idea of "one particular individual and specific appearance", to repeat the phrase from Russell-Clarke . No design should be so construed as to give to its proprietor a monopoly in a method or principle of construction. The registration of the appellant's design thus gives no monopoly for the making of an article combining a plate in which a keyhole is set and a recessed handgrip; nor in our opinion does it give a monopoly for the making of an article combining a rectangular plate in which a keyhole is set and a recessed rectangular handgrip placed alongside horizontally. The idea of shape or configuration conveyed by those features is altogether too general to attract statutory protection. lf the appellant's design was no more precisely specified than that, registration ought to have been refused.

But the appellant's registered design does convey a particular idea of the shape of a particular combination unit, though the features which convey that idea are not the features on which the appellant relies to establish that the respondents' article is an infringing imitation of the registered design. The particular idea of shape conveyed by the registered design is of a rather squat combination unit with the surface of the plate section extending into a broad surround of the recessed handgrip, a sloping recess in the handgrip, an absence of symmetry between the plate and handgrip sections of the unit and ends which are thick and irregularly shaped. These features, however, serve to distinguish the registered design from the respondents' article. What the respondents took from the registered design were not design features susceptible of protection; they were features which, although intended to make an article to which they were applied more useful than similar articles then in use, were insufficiently precise to convey an idea of unique shape or configuration. Such general functional features are not protected by the Act, however novel, useful and commercially significant they may be. Section 30(1)(a) of the Act does not expand the protection conferred by registration so that an article which copies such general functional features is held to infringe the monopoly granted by registration. As the points of similarity between the registered design and the respondents' article are general functional features, the article is not an "imitation" of the registered design within the meaning of that term in s. 30(1)(a).

Special leave was granted in this case chiefly to consider the distinction between "obvious" and "fraudulent" imitations. On analysis, that question does not arise. However, nothing that was submitted in argument before this Court casts doubt upon the brief but accurate description of obvious and fraudulent imitations in Malleys Case.

In our opinion King J. correctly summed up the position in these findings:

My conclusion is that although there are common features of construction in the compared designs, it must appear, to find fraudulent imitation, that the overall distinctive appearance of the registered design has been taken. In this case salient features of construction are taken, but the whole unit has been so redesigned to incorporate them that a different design has been produced. Thus the change in balance of the features and the lengthening of the article are not mere disguise but are themselves salient features of the defendants' design which are novel and unique in that design.