C Fraudulent imitation
341 Since I have come to the view that the design of the Smartascreen is an obvious imitation of Gram's Design it is unnecessary to deal with the claim of fraudulent imitation. However, I will do so as briefly as possible.
342 The authorities to which I referred earlier establish that fraudulent imitation under s 30(1) of the Act requires proof that the infringing design was deliberately based or derived from the registered design. It does not require proof of dishonesty but is closer to, though not entirely analogous with, equitable fraud: Polyaire v K-Aire at [21], [35].
343 It seems to me to follow from what was said in Polyaire v K-Aire, and the earlier authorities to which the Court referred, that the claim is a serious one. It must be proved on the balance of probabilities taking into account the matters referred to in s 140(2) of the Evidence Act 1995 (NSW).
344 What troubles me in the present case is Gram's delay in bringing the proceeding. This has affected the memory of essential witnesses called by Bluescope. Worse still it has prevented a critical witness, Mr Field, from being able to give evidence. He is now very old and in ill health.
345 I am therefore left to decide the question of fraudulent imitation upon the basis of inferences to be drawn from documents and my impressions of the Bluescope witnesses, in particular Ms Marlin, Mr Seccombe, Mr Gallaty and Ms Fathinia, but as I have said, without Mr Field's evidence.
346 Gram submits that as a matter of objective fact it seems inconceivable that the designer of the Smartascreen sheet could have produced a sawtooth sheet which nests, albeit not perfectly, with the GramLine, which has the same number of pans and combination of amplitude, wavelength and angles without copying their GramLine product, which itself substantially embodies the Design.
347 Gram also points, with some force, to the commercial justification given by Bluescope for developing the design and to the many documentary references to the need for a "Gram lookalike" or similar terminology.
348 The essential difficulty that arises is that I must be satisfied that some person or persons on behalf of Bluescope deliberately copied the Design, or based the design on the Smartascreen product or the Design.
349 This requires proof of the requisite degree of knowledge of the Design itself and what amounts to proof of copying. The case is not a straightforward one because it ultimately depends upon the proposition that the combined pressures and instructions communicated by Ms Marlin to the R&D Department brought about a copy of the design.
350 The difficulty is not so much in proof of knowledge, but rather in proof of who (if anyone) actually copied Gram's Design.
351 The critical design period was October to November 2000. It was during that period that Mr Seccombe produced his concept design of 13 October 2000 and Mr Gallaty produced his drawing of 17 November 2000: see [128] and [141] above.
352 I am satisfied that Mr Seccombe was aware of the existence of the Gram product when he prepared his concept drawing. His evidence seems to me to support a finding that he knew of the basic elements of the Gram Design at the time. Notably, drawing number 1 in his 13 October 2000 concept drawings was in a shiplap or sawtooth profile.
353 The effect of Mr Seccombe's affidavit evidence at paras 20, 21 and 23 is that he produced the drawing in response to a briefing or briefings from marketing at about that time to prepare a concept drawing for a new symmetrical fence profile.
354 Mr Seccombe appeared to retreat from this evidence at T 348 but in my opinion the objective probabilities are that the briefing came from Ms Marlin in the terms suggested in Mr Seccombe's affidavit.
355 Ms Marlin was aware of the existence of the Gram product by at least September 2000. She accepted this in cross-examination at T 402. Also, her knowledge of the existence of the product is clear from the notes that were sent to her in late August 2000: see [122] above.
356 Indeed, it seems to me that Ms Marlin, as a senior executive in the Marketing Division, must have been well aware of the existence of the GramLine even earlier than September 2000. In my opinion, her notes for the R&D briefing referred to at [121] above reflect the results of the feedback she received from her travels around the country referred to in paragraph 19 of her affidavit. What was needed in order to meet the serious competition from Gram was to "match or better competitor's product" in terms of visual attractiveness: see [123] above.
357 Whether or not the notes were prepared before the September 2000 briefing, the commercial reality was that Ms Marlin wanted such a product. That was the effect of her evidence at T 408-409. In my view she gave instructions to Mr Seccombe and Ms Fathinia in terms which indicated that the product should be visually attractive and readily saleable in the market.
358 This conclusion is consistent with the evidence of Ms Fathinia. She was aware of the existence of the Gram Design and accepted that the Bluescope product was intended to look something like the Gram product, that is to say, the GramLine or sawtooth style which looked the same from both sides.
359 Although Ms Marlin did not accept that she instructed R&D to design a sawtooth profile or one that looked like Gram's product, in my view that was the effect of her instructions, and that was the way in which Mr Seccombe understood the brief. This is evidenced by the similarity between his shiplap drawing and the GramLine sheet.
360 Mr Seccombe accepted the similarity in cross-examination at T 357-358. However he denied that it was intended to look like the Gram product. He insisted that there are only so many ways in which such a profile can be drawn even though the panel size, shape and angle of his drawing look like the Gram product.
361 The proposition that the similarity is a mere coincidence, brought about by the constraints of existing post and rail lengths, is a difficult one to accept. Nevertheless, with some reservations, I have come to the view that Mr Seccombe's shiplap drawing was not deliberately copied from Gram's Design.
362 The reason I have come to this conclusion is that I have taken into account the gravity of the allegation. Although the objective facts, including the commercial reality and the close similarity of Mr Seccombe's drawing to Gram's Design suggest that it was drawn with an eye to the Gram product, I am not persuaded that he deliberately copied the Design.
363 There is an alternative explanation, namely that Mr Seccombe's shiplap drawing was based upon concepts that were developed at an earlier stage of Bluescope's design project. In particular, Mr Field prepared a profile in February 1996 which was in evidence as part of Ex CJS-3 at page 1233 of the Court Book. Mr Seccombe was taken to this in re-examination at T 362. He did not overtly embrace the proposition that his shiplap drawing was based on Mr Field's profile.
364 However, there are similarities between that drawing and, in the absence of Mr Field who was part of the design team, I am reluctant to dismiss as a real possibility any connection between the drawings. I therefore accept, although again with some reluctance, that there is a plausible explanation for the similarity other than that of copying.
365 It is clear in my view that Mr Gallaty was guided by Mr Seccombe's concept drawing of the shiplap design when he prepared his sawtooth drawing of 17 November 2000. That was the effect of his affidavit evidence at paragraph 24. He acknowledged that Mr Seccombe's drawing was typical of the kind he received from Mr Seccombe. Mr Gallaty's job was to make the profile work within the constraints of the existing post and rail dimensions: see T 316.
366 Mr Gallaty's evidence was that he was unaware of the Gram product when he prepared his drawings: T 333-334; T 335-338. Gram submits that this is a surprising assertion and that it should not be accepted.
367 I do not think that Mr Gallaty was a dishonest witness. Mr Catterns submitted that he was obstructive but in my opinion Mr Gallaty was doing his best to answer the questions that were put to him. His difficulty in answering was due to the passage of time and he was not prepared to make concessions unless he had a clear recollection of the matter.
368 In my opinion Mr Gallaty was aware of the existence of the Gram product when he prepared his drawing. That is not to say that he deliberately copied it but the objective facts and the findings I have made about the brief that was given to R&D, suggest that he was told that the product was to look something like Gram's, in particular that it was to be a sawtooth profile that looked the same from both sides.
369 This is borne out in particular by Mr Field's memo to Ms Marlin and Ms Fathinia of 15 November 2000. The memo concludes with the statement that "we" are in the process of designing a "Gram look alike" and a paling type profile for barrel forming as discussed at "our previous meeting".
370 Mr Gallaty could not recall seeing Mr Field's memo. He accepted that he had attended meetings with Mr Seccombe and Ms Fathinia as well as Mr Field. However, he did not recall Mr Field being present at the "previous meeting" referred to in the memo of 15 November 2000: see T 333-334 and T 338.
371 Mr Gallaty is not to be criticised for his lack of detailed recollection of the meetings. The essential question is whether I accept his evidence at T 338 that he was not directed to prepare a profile that was the same as Gram's.
372 The difficulty is determining what Mr Field meant in his statement that "we" are in the process of designing a Gram lookalike. It seems to me that I must find on the balance of probabilities that he discussed that design process with Mr Gallaty. He and Mr Gallaty had adjoining desks at Chester Hill. They were both involved in the design process. Mr Field was Mr Gallaty's senior draftsman. The concluding words of the memo of 15 November 2000 that "we will send you product drawings" of the designs for the Gram lookalike and the paling type product were references to the drawings which Mr Gallaty prepared on 17 November 2000.
373 But the expression "a Gram look alike" does not necessarily connote that it was to be copied from Gram's Design or based on or derived from it. Whilst I accept that Mr Gallaty's drawing was prepared with an eye to the Gram product, a further step seems to me to be involved in making a finding of fraudulent imitation. In order to be so satisfied it seems to me to be necessary to find that it was deliberately copied from the Gram product.
374 Gram points with some force to the similar proportions, dimensions, angles and amplitude of Mr Gallaty's drawings to the GramLine Product. The similarities are striking.
375 Mr Gallaty sought to explain the similarities by constraints imposed by the posts and rails. However, it seems to me that the constraints which dictated the similarity of proportions, amplitude and geometrical appearance came about as a result of the decision to prepare the design drawings with six pans. Once this choice was made, the constraints imposed by the coverage of a 760 mm sheet would necessarily result in a shape or configuration which would closely resembled the GramLine product.
376 Notably, Mr Seccombe's drawing of 13 October 2000, whilst not containing dimensions, made reference to "cover - 762". Mr Gallaty accepted the relationship between this amount of cover and the typical size of a section of manufactured sheet of about 820 mm.
377 It is not possible to base the relationship between Mr Gallaty's sawtooth drawing of 17 November 2000 to the Millennium drawings. As I said at [113] the profiles, including profile 27B which Mr Gallaty liked, had different profiles and different numbers of pans. What those drawings show is that it would have been possible to draw a zig-zag profile without a close similarity to Gram's configuration, proportions and angles, provided, that a six pan configuration was not selected.
378 Bluescope sought to meet this difficulty by submitting that there was nothing novel in six repeating uniform repeating pans in fencing products. Bluescope pointed to the fact that the Multiline 900 had six uniform Z-shaped pans. But this was a roofing product and neither Mr Seccombe nor Mr Gallaty said that the Multiline formed the basis for the Cascade 2000 or for their drawings of 13 October 2000 and 17 November 2000.
379 The same comments apply to Bluescope's attempts to link the choice of six repeating Z-shaped pans to the drawings prepared by Mr Seccombe and his team during the period from 1994-1995. This is illustrated by Mr Cobden's cross-examination of Mr Wightley about a drawing that was prepared by Mr Seccombe's team in December 1995. The drawing, which became Ex 7, has six pans and depicts micro-fluting.
380 However, whilst it is possible by a process of reverse engineering to point to similarities between Mr Gallaty's drawing of 17 November 2000 and earlier drawings prepared during previous stages of Bluescope's design project, neither Mr Seccombe nor Mr Gallaty sought to make that connection to their drawings.
381 Nevertheless, having regard to the same matters I took into account when addressing Mr Seccombe's drawing, I am not persuaded that Mr Gallaty's sawtooth drawing of 17 November 2000 was deliberately copied from, or derived from or based upon Gram's Design.
382 It is a conclusion which I have reached with some reservation because the striking similarities to which I referred above were not satisfactorily explained in Bluescope's evidence. I have no doubt that the drawing of 17 November 2000 was designed to look something like the Gram product. It was, as Gram submitted, designed with an eye to the GramLine sheet. However, it is plain that Mr Field was involved in the process. This appears from the concluding remarks of his memo of 15 November 2000. Ultimately, it is his absence from the witness box which precludes me from reaching the view that the process of designing a Gram lookalike was one which entailed copying the Gram design.
383 I should add that I do not consider that anything turns on Mr Field's statement in the 15 November 2000 memo that the design process was being undertaken for the purpose of manufacturing the panels by the barrel formation method. That method was eventually discarded because it did not produce the necessary sharp lines that were required for a sawtooth design that looked like Gram's product. It was the desire for the sharp Z-shaped or sawtooth lines which underlay the design process undertaken by Mr Gallaty in which Mr Field was also involved.
384 The events which followed from November 2000 to sign-off in about mid-2001 do not lead to a different conclusion.
385 The high point of Gram's case is the point in Ms Marlin's Discussion Paper on 26 April 2001. The document describes in graphic detail the competitive pressures on Bluescope to produce a symmetrical infill sheet that looked like Gram's product.
386 The GramLine was said to be widely perceived to be the best sheet currently available on the market.
387 The Discussion Paper stated that two preferred options had been selected. But what is critical is that the Cascade 2000 was said to have a similar appearance to the GramLine sawtooth style and would therefore be readily accepted in the market. It was the cheaper alternative and was regarded as a "quick fix" to Bluescope's commercial predicament.
388 The statements made by Ms Marlin in her Discussion paper coupled with the striking similarity between the Smartascreen panel and the GramLine panel are capable of giving rise to an inference of deliberate copying. However, for reasons stated above when addressing the drawings of 13 October 2000 and 17 November 2000, I am not persuaded that I should draw that inference.
389 I should add that, apart from providing further evidence of Bluescope's awareness of Gram's design, nothing turns on the intellectual property clearance that was given by Mr Munt of Griffith Hack. This is because Mr Munt was not provided with any details of Bluescope's objectives as set out in Ms Marlin's Discussion Paper. Thus, if I were prepared to draw an inference of deliberate copying, Mr Munt's clearance would not have provided an answer to the claim of fraudulent imitation.
390 Nor does Mr Munt's conclusion provide an answer to the finding of obvious imitation. That finding is one which is to be made by the Court on a visual comparison. I have explained my reasons for coming to the view that the design of the Smartascreen product is an obvious imitation of Gram's Design.