That drawing, apparently, was sent to Izumi; Izumi made some comments on it which led to alterations, particularly a slight increase in the width of the handle. Further exchanges took place between Izumi and Remington about various aspects of the design. On behalf of Izumi, the correspondence was conducted principally by Mr Masumi Suzuki, Izumi's Chief Representative in New York; involved on the Remington side were Dr Elaine Barber, then a Vice President of Remington and Mr Edward Szymansky, the Vice President Engineering. Mr Sulik was involved in some discussions with Mr Suzuki; Mr Gaines was involved in internal discussions within Remington; the President of Remington, Mr Kiam, was given copies of at least some of the material. The only particular aspect of the exchanges which requires mention at this point is that, whereas Mr Sulik's design did not include a "waist", one was added by Izumi. According to Mr Sulik's account, he asked Mr Suzuki why this had been done and was told that it was necessary in order to distinguish the design further from Norelco shavers. Mr Sulik noted on an Izumi drawing (on which he had written "Mr Suzuki phone call 1.20.93") the words, "To distinguish from Norelco. OK. JMS. 1.20.93" with an arrow pointing to the "waist".
76 By March 1993 the design work was complete. At least two models of shavers were manufactured and sold in the United States in accordance with the design, known as the DT35 and the DT45; later a model known as the DT50 was added to the range. There are no relevant differences between those models. An example of the DT45 is in evidence.
77 The evidence as to the circumstances leading to the production of the DT55 is considerably more sketchy. The only officers of Remington called who had any knowledge of the process, Mr Sulik and Mr Szymansky, each claimed to have had only a passing involvement. To some extent the gaps are filled by the evidence of Messrs Izumi, Asawa and Sato. What happened is clear enough in outline. In about July 1993 Mr Asawa asked Mr Sato to design a wet/dry electric shaver in which Izumi could use common parts with the Sears model 6810. Mr Sato produced a design which looked very like the 6810, which he gave to Izumi. He later received from Mr Narai, an assistant to Mr Asawa, a copy of his drawing on which an outline of a revised design had been drawn, together with a memorandum explaining what was wanted: in substance, the design should be similar to that of the DT45; the angle between the head and the handle should be 125° and the handle should be oval. Mr Sato prepared a further design which took those matters into account and was undoubtedly sent to Remington, because in about October 1993 it was given to Mr Sulik with a request that he "do something with the design to improve it and render it more attractive". Mr Sulik was also given a Sears shaver model 6810. He was told, and his own inspection confirmed, that Mr Sato, starting with the 6810, had eliminated the "hump" at the back of that model by moving the handle back to the rear of the head base and, by altering the angle which the axis of the head base bore to the axis of the handle, had "created the basic relationship between the handle and the head on the RR‑55". Mr Sulik took the view that there was little he could do to improve the appearance of the shaver but he made changes to the design which he described as follows:
"(a) I narrowed the handle to 45mm and consequently narrowed the control panel on the front face of it;
(b) I created hand grip grooves on the rear face of the handle;
(c) I grooved the head to reduce the appearance of bulk somewhat;
(d) I widened the radius of the chin of the RR‑55 to soften the line formed by it."
78 Further correspondence led to some more, relatively minor, changes. By the end of March 1994 the design process was substantially complete. In due course the DT55 went into production.
79 Thus, in short, the original source of inspiration for the design of the Remington product was the Sears model 6810; the design based on that product was then substantially modified, the principal purpose and effect of the modifications being to assimilate the Remington product, in a number of respects, to the DT45: the angle between the head base and the handle was the same; there was no hump at the back of the head base, but (similarly to the DT45) there was a "chin" effect at the front, where the head base met the handle. There were also differences, among them a substantially larger head base (necessary because of the need to waterproof the wet/dry machine), a narrower and somewhat rounder handle; and, instead of the waist, there was what may be described as a slope inwards on each side at the junction between the head and the narrower handle. The DT45 was in turn derived, through the process which I have described, from the WR‑6.
80 Philips' argument that there was copying such that the design applied to the DT55 is a fraudulent imitation of the design in suit involves (at least) the following steps. The Norelco 725 was an embodiment of a United States registered design which is the substantial equivalent of the design in suit. The Norelco 725 had been on sale in the United States since 1990 (thus far, Remington offered no serious contest). Both Izumi, particularly Mr Izumi himself, and Mr Sato were aware of it. The WR‑6 was a thinly disguised copy of the Norelco 725: indeed the copying in the original design of the WR‑6 was so thinly disguised that Mr Izumi and Mr Asawa thought it necessary to add elements to the design to differentiate it from the Norelco product. Equally, Remington was well aware of the Norelco product. Remington, additionally, had adopted the practice of making searches of patents and design patents in the United States and were aware of those which had been registered. The DT45 was deliberately adapted from the WR‑6 as a Philips or Norelco "look‑alike". The DT55 was designed so as, as far as practicable, to replicate the Remington "line" of rotary shavers, represented by the DT45. Thus it, also, should be regarded as a copy, though a less successful one, of the Norelco design.
81 In support of its submissions that I should find fraudulent imitation on that basis, Philips relied on a number of aspects of the evidence. First, there was the similarity between the Norelco 725 and both the WR‑6 and the DT45. One aspect of this similarity, it was said, was especially striking. It may be illustrated by reference to representations 4 and 5 of the design in suit. Those show clearly the "chin" effect, to which I have already referred, where the head base and the handle meet. That is an aspect of the design in suit which was, by comparison with the prior art, clearly novel (that proposition was not in contest). Both the WR‑6 and the DT45 have a chin, though somewhat different from the Philips chin: there is no concavity as there is with the Philips chin (a glance at the representation, earlier in this judgment, of the DT55, whose chin in this respect is similar, will demonstrate what I mean); the Philips chin is higher at the front of the head than the other two; and the chin of the DT45, particularly, is sharper and more abrupt than that of the Philips. Nevertheless, at the time when the WR‑6 was designed there was no shaver on the market, and none represented in the prior art, which had a chin substantially resembling that of the Philips' design and the Norelco 725; but the WR‑6 emerged from the design process with that feature.
82 Secondly, Mr Sato sent Mr Asawa on 6 January 1992 a drawing of his design of "Windmere's Three Eyed Electric Shaver" on which he had written notes. There was no controversy about the translation from the Japanese. On the drawing there is an arrow pointing to what appears to be an indication of the size of the front of the head, at the end of which is the note "the size of the mecha‑box (mechanical box) is large". The note continues "Small Radius", with an arrow pointing to the chin. There are also arrows pointing to the bottom of the handle of the shaver with a note "want to design corners having a smaller radius"; and at the foot of the drawing the following note appears:
"We are having a tough time since a roundish configuration, which is the main point of the request at the beginning, is not easily obtainable. The reason for this is that the mecha box (mechanical box) for the gear section is larger and less attractive than Philips' one, but do you still want to stick with a design like a roundish vehicle?"
83 Mr Izumi was not prepared to concede that Izumi acquired a sample of any new Norelco shaver as soon as it appeared on the market but did accept that there were Norelco shavers in the Izumi factory. In any event, he was aware that the Norelco 725 was available in the market in 1990 or 1991. Mr Sato agreed that he kept himself informed of shavers in the market but claimed not to have been familiar with the Norelco 825 (a successor of the 725 and very similar to it, which was available in the market at the time when his drawing was prepared); he said that he became aware of it after he prepared his drawing. Mr Asawa claimed not to have been aware, at the time he received the drawing, of the Norelco 725. Mr Sato said that the drawing with the notes resulted from a discussion with Mr Asawa; that during the discussion Mr Asawa said that he wanted Mr Sato to incorporate "depressions" in the neck (that is, apparently, in substance what became the "waist"). The point about the notes and arrows concerning the "mecha‑box" was, according to Mr Sato, that its size made it impossible to incorporate depressions of the size Mr Asawa wanted in the part of the handle where he wanted them. There was no discussion during that conversation, he said, of a Philips or Norelco shaver: why Philips was referred to was not explained. Mr Sato firmly maintained that the references to the size of the mecha‑box, the difficulty of including a roundish configuration and of assimilating the design to the curved configuration of a modern motor car had nothing to do with the chin but concerned, rather, the desired depressions.
84 Mr Sato's explanation of the way in which the design of the WR‑6 came to look like the current Norelco shaver, and of the circumstances in which the design came to incorporate a chin, appears in the following exchange:
"You discussed with Mr Asawa, before you did this drawing, making a shaver like the Norelco shaver you have up there, exhibit A5? - No.
Would you agree that the two shavers, the one you have in your hand and in your drawing, look very similar? - Yes.
Can you offer any explanation to the Court, to his Honour, as to how it came about that you could design a shaver which was so similar to the one you have in your hand? - I was asked to make it compact and also I was asked to make the back straight so that it can be packaged in a blister package. That means I had to push the hump forward. Then I ended up having some dead space here. Then if I had a straighter chin here, it would make it more difficult for user to operate on the switches, so I thought I'd better remove the dead space here.
So Mr Asawa told you to remove the hump, did he? - Yes, he said it doesn't have to stand and it has to be flat here.
He told you that, did he? He said it had to be flat at the back, no hump? - I don't think, Mr Asawa specifically told me to do so, but I knew that it has to be packaged in the blister pack and it doesn't have to stand on its own and also it has to be compact. Taking those requirements into consideration, I [came] up with this design."
85 Mr Sato had previously said that when making his note about the Philips mecha‑box he had no particular Philips model in mind.
86 There are a number of difficulties with that. First, there is the simple coincidence that the design came to incorporate what was the most striking feature of the Philips design, not found in any prior art. Secondly, the note referring to the size of the mecha‑box appears plainly, through its position, to refer to the space it occupied within the head base of the shaver and the arrow from the words "small radius" plainly points to the chin, not the depression. The only other point in the design where a "smaller radius" is referred to and curves appear is at the bottom of the shaver, plainly remote from any mechanical components. The note at the foot of the drawing, referring again to the mecha‑box in the context of a desire to achieve a "roundish configuration", can only sensibly refer to those parts of the top of the shaver to which the note about the size of the mecha‑box and the "small radius" clearly refer. The point becomes all the more obvious when one compares side by side the Norelco product and both Mr Sato's drawing and the actual WR‑6. The chin of the Norelco shaver starts considerably higher in the front of the head (it can do so, presumably, because of the smaller "mecha‑box") and has a considerably less sharp and "rounder" curve. In short, I do not accept the evidence that the reference, incorporating the comparison with the Philips model, was to the depressions: plainly, in my view, Mr Sato was referring to the chin.
87 That conclusion is consistent with evidence given by Mr Sulik. He said that he did not want "a sharper chin"; he wanted one which had "a larger radius to basically go with the form of the rest of the shaver". His explanation of the difficulty appears in the following exchange:
"But there was some component, just under the head of the shaver which you are referring to, under the shaving heads? - There is something inside here, right in the side view, right here in front, that won't let me do what I wanted to do there.
And stopped getting a more roundish configuration on the chin; is that right? - Right.
This component which you are referring to, did Philips have a similar component? - I don't know.
Looking at the Norelco shaver there, they have a rounder chin; it's got a rounder chin. - They may have a component in there, but maybe their drive system is shorter than the Izumi drive system. I don't know.
So, in other words, one possibility is that this particular gear component you are referring to in Philips is more compact, which enables them to get a rounder chin? - Yes …
So the constraint of this component was this, wasn't it, that if you wanted a head size as compact as the one shown in the middle drawing, you needed a sharper chin? - Yes.
You could get a more rounded chin, but you would have to make that head portion a little less compact? - Correct."
88 I have found that, in drawing his comparison with "Philips' one", Mr Sato was referring to the shape of the chin. That being so, "Philips' one" would naturally be taken as a reference to the only Philips models which had that feature, and which had been on the market for some time, the 725 and the very similar 825. I find, on the balance of probabilities, that Mr Sato was familiar with one or both of those models, that the reference in his note was to one of them and that he expected that the reference would be so understood by the recipients of the drawing. Complete acceptance of Mr Sato's evidence would lead to a finding that he had not seen the Philips model (or at least did not have his attention directed to it, and did not refer to it, for the purpose of his design) but that he received particular instructions from Mr Asawa as to design features which he should incorporate: the design was to be "roundish", like a car, it was to be compact and there was to be no hump at the back. By giving effect to those instructions, Mr Sato produced a design which, fortuitously, looked like the Philips design: so much so that Mr Izumi, at least, thought it desirable to add distinguishing features. The note on the drawing about "Philips' one" would be found to refer to no particular Philips model and, although the making of the note followed conversations with Mr Asawa, a discussion of Philips shavers to have formed no part of those conversations; and what was referred to as dictated by the size of the mecha‑box to be not the configuration of the chin but the size and position of the depressions forming the waist. That seems to me, in any event, implausible; but, for reasons which I have already sufficiently explained, it is contrary to the inferences clearly to be drawn from the drawing and the notes and arrows on it.
89 The finding that Mr Sato referred, in his note, to the Philips 725 or 825 and expected that his readers would understand the reference leads to further findings that Mr Sato had the Philips design in mind when he prepared his design and that he was concerned that the size of the mecha‑box meant that the necessary size of the head base made it look less attractive than the Philips shaver and gave rise to difficulties in producing a design with a "roundish configuration". The proper inference, in my view, is that Mr Sato was seeking, within the constraints imposed by the size of the Izumi components, to replicate essential features of the Philips design. To adapt the words of Lockhart J in Dart Industries Inc v Decor Corporation Pty Ltd (1989) 15 IPR 403 at 412 (but omitting an important element, to which I shall return), I find that Mr Sato's design was knowingly, consciously or deliberately based on or derived from the design of the two Philips shavers.
90 The evidence discloses very little about the circumstances in which Remington came to adopt the WR‑6, with the dual track feature, as the starting point for a design of its own shavers. Mr Sulik's account began with Mr Gaines showing him models of two Izumi shavers marked IR6 and IR7. He gave no account of the circumstances which had led Mr Gaines to do that. Mr Szymansky did not throw any light on those circumstances and no other Remington witness was called to do so. Mr Izumi gave affidavit evidence that in January 1992 he met Mr Kiam and Dr Barber at the Chicago Housewares Show and showed them models of the WR‑6, WR‑7 and WR‑8 shavers which Izumi was then developing for Windmere. When, however, during cross‑examination Mr Izumi realised that, given the dates when Mr Sato produced his drawings, he could not have had a "waisted" Windmere model at the 1992 Chicago Housewares Show, he gave evidence that his recollection must have been at fault and that it must have been at the 1993 Show that he showed the models to Mr Kiam and Dr Barber; but, of course, by January 1993 the process of designing the Remington shavers was already substantially advanced. I do not doubt the truth of Mr Sulik's evidence that, though there were Norelco shavers at Remington's premises, he did not refer to any of them in the course of preparing his drawings based on the WR‑6. What is clear from Mr Sulik's evidence - and there is nothing surprising about it - is that marketing executives of Remington, including Mr Gaines and his superiors, were consulted in relation to the design and had a significant influence on its final form as embodied, for example, in the DT45. Senior counsel for Philips devoted a good deal of attention, both in cross‑examination of Mr Sulik and Mr Szymansky and in final address, to two inter‑office memoranda, of which Mr Gaines was one of the authors, written substantially after the event: one dated 26 July 1995 addressed to a number of senior officers of Remington, including the President, and the other, addressed to a similar group, dated 8 February 1996. Both related, in general terms, to future directions in the development of Remington's electric shavers. The former included the following comments about Remington's rotary shavers, among them the DT45:
"Our current rotary line has a very contemporary and consumer appealing styling. After all, it is replicated after the Norelco design.
The one exception is the RR‑55 Wet/Dry model. We believe the product is oversized and clunky looking. It lacks the attractive styling of the rotary line.
Also, relative to Norelco, we feel our pop‑up trimmer does not elevate high enough up to provide good user visibility."
91 The second memorandum described what his authors called the "general product design platform" as "Norelco look alike". Both Mr Sulik and Mr Szymansky gave evidence that what was said by Mr Gaines simply represented his opinion, stated some time after the event, and that they did not agree with it. I do not place any particular weight on the fact that neither Mr Sulik nor Mr Szymansky protested, at the time, that there was an inaccuracy (and, in Mr Sulik's case, a defamatory one) in the statements in the memoranda. It does seem to me significant, however, that such statements, particularly the earlier one, appeared, as what the authors seemed to regard as statements of accepted fact, in documents distributed widely among senior executives of Remington. There is no other evidence about the considerations which led Remington to take the WR‑6 as its starting point. The DT45 is in many respects strikingly similar to the Norelco 725 and 825; Mr Sulik agreed that its chin had substantially the same visual effect as the Philips chin. A particular feature - the waist - was adopted in the design of the DT45 explicitly to distinguish it from the Philips products. Remington had samples of the Philips products. It also had a lively appreciation of the existence of registered designs owned by Philips and of the need to avoid infringement. That is well established by documentary evidence; and Mr Szymansky agreed that at the commencement of the process which resulted in the design of the DT45 he ensured that a search was undertaken of Philips registered designs for shavers and that "probably" that search revealed the existence of US registered design no. 306360. The appropriate conclusion is, I think, that Remington's design, embodied in the DT45, and with the WR‑6 as its starting point, was knowingly, consciously or deliberately based on or derived from the Philips design.
92 This case, however, is about the design of the DT55, not the DT45 or any other model. Unquestionably, Mr Sato's commencement point for the design of the wet/dry shaver was the Sears model 6810: naturally enough, because of the desire to use, to the maximum extent possible, the components of that product. However, there is no doubt on the evidence that the changes which were made, radical in a number of respects, were designed to give the DT55, so far as possible, the "Remington look": that is, to make it visibly part of the range of shavers which included the DT45. For present purposes, therefore, in my view the DT55 is to be treated as based on or derived from the same design as the DT45.
93 The passage in the reasons of Lockhart J in Dart Industries at 411, 412, which I have adapted, should perhaps be quoted more fully; I shall omit his Honour's citations of authority:
"A design may be an obvious imitation within the meaning of s 30(1)(a) of the Act notwithstanding that the person who puts the obvious imitation on the market may not know of the registered design. By contrast, a fraudulent imitation presupposes a knowledge of the registered design and making use of it by the author of the alleged infringing design: … It follows that, whereas visual comparison will establish whether the article alleged to infringe the registered design applies the registered design or an obvious imitation of it, something more is required to establish whether there has been a fraudulent imitation.
As I observed in [Firmagroup Australia Pty Ltd v Byrne & Davidson Doors (Vic) Pty Ltd (1986) 67 ALR 29 at 41] the use of the word "fraudulent" in the Act is perhaps somewhat unfortunate since fraudulent in this context does not necessarily connote dishonesty. The essence of fraudulent imitation is that the respondent's design has knowingly, consciously or deliberately been based on or derived from the registered design and neither dishonest intent nor deliberate or conscious intention to copy is a necessary element: … ."
94 Fraudulent imitation, as Lockhart J pointed out, presupposes (by contrast with obvious imitation) knowledge of the registered design: one cannot copy, or consciously base one's own design upon, another design of which one is ignorant. But, in my view, it is not a necessary element of fraudulent imitation that the imitator know that the design imitated is an Australian registered design. The Full Court held in Turbo Tek Enterprises Inc v Sperling Enterprises Pty Ltd (1989) 23 FCR 331 at 348 that it was sufficient that the imitator had reason to believe that an application for registration of the design was pending. And in Elconnex Pty Limited v Gerard Industries Pty Limited (1991) 32 FCR 491 at 503 Burchett J said this:
"It seems to me that what makes conduct of the relevant kind fraudulent is the infringer's dishonest concealment of the reality of copying in order to evade being held legally responsible for it. That form of dishonesty can only arise where the copier knows or suspects that his copying will infringe another's legal rights. But in cases where the nature of what is done makes more than one form of intellectual property right relevant, I cannot think it would be a defence to a charge of dishonest concealment of an imitation of a registered design for the infringer to say that he actually had the other right in mind and was not thinking of design rights. If it was an infringement, his misapprehension would not make it any less so, nor would the particular reason for concealment affect its fraudulent nature. In these days of trans‑national industries, any other view might have strange consequences for a case where an infringer of an Australian registered design was quite without knowledge or suspicion of that registration, but perfectly aware of a registration in another country of the same design, of which he produced a fraudulent imitation for marketing in Australia."
95 I shall return to what his Honour says about the nature of the "fraud" which is involved. In this case, however, Remington, I find, was aware of the registration of the design, the substantial equivalent of the design in suit, in the United States of America. Applying what was said by Burchett J, that knowledge is sufficient if the other elements of fraudulent imitation are made out.
96 Burchett J spoke, in the context of the case with which he was dealing, of fraudulent conduct, dishonest concealment and evasion and cited the reference by the Full Court in Turbo Tek at 349 to "fraudulent intention". Language of that kind is, however, used in these cases in a somewhat special sense. It is not an infringement to produce a product as close in design to a registered design "as the law might be forecast to allow" (L J Fischer & Co Ltd v Fabtile Industries Pty Ltd (1979) 49 AOJP 3611 at 3621; Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 22 IPR 1 at 13) if the design of the product is not an imitation of the registered design. It will be an imitation, if the element of "fraud" is proved, if it is "a copy with differences which are both apparent and not so slight as to be insubstantial but which have been made merely to disguise the copying" (Malleys Ltd v J W Tomlin Pty Ltd (1961) 180 CLR 120 at 127; Firmagroup Australia Pty Ltd v Byrne & Davidson Doors (Vic) Pty Ltd (1987) 180 CLR 483 at 489; Gerard Industries Pty Ltd v Auswide Import Export Pty Ltd (1998) 40 IPR 119 at 126, 127). But if there are substantial differences of a material kind between the article and the registered design, there will be no imitation and no infringement (Malleys at 128). And the smaller the differences between the registered design and the prior art, the smaller are the differences between the design of an article and the registered design which will be regarded as material or substantial: Dart Industries at 409.
97 There was some discussion in argument as to whether it was an essential element of the test of fraudulent imitation, propounded in Malleys, affirmed in Firmagroup and applied on many occasions subsequently, that the differences between the registered design and the allegedly infringing article "have been made merely to disguise the copying". The question has some significance in the present case, because one of the differences - indeed the most striking difference - between the design in suit and the Remington product is the considerably greater size of the Remington product's head base. The evidence - particularly that of Mr Sulik and the two notes of which Mr Gaines was an author - establishes that Remington would greatly have preferred a smaller head but could not achieve it because of the size of the internal components and the need to waterproof the machinery. That difference thus exists not because Remington wished to disguise any copying but because the character of the particular machine dictated it.
98 In that respect, this is an unusual case and gives rise to a question which, so far as I know, no court has previously had to consider. If, literally, it was a requirement of fraudulent imitation that any changes to the design be introduced merely to disguise copying, it would follow that, where there is a design based on a registered design, where the designer earnestly wishes to get as close to the registered design as possible but is, in some respect, prevented by some mechanical imperative and is forced to introduce a change on that account, the design is not a fraudulent imitation however clearly it may fall within the established tests of "imitation". I am not convinced that that conclusion, which does not strike me as particularly sensible, is required by authority. There is much to be said, I think, for the view that the essential questions are, first, whether the allegedly infringing design is based on or derived from the registered design and, then, whether the differences are so substantial that the result is not to be described as an imitation. Frequently, of course, probably usually, changes will have been introduced for the purpose of disguising copying or, perhaps, because of a conscious desire to come as close as possible to the registered design while avoiding infringement. But, as this case illustrates, particular changes may be introduced for other compelling reasons; and there is no obvious reason why that should defeat a claim of fraudulent infringement. As will become apparent, however, it is not necessary for me to reach a final conclusion about that.
99 The monopoly claimed in the design in suit is stated as follows:
"Those features of the representations in respect of which the applicant for registration of the design wishes to claim a monopoly are the features of shape and configuration."
100 No monopoly is claimed, thus, for features of pattern or ornamentation. There is no statement of novelty. There was some argument about whether certain features both of the design in suit and of the Remington product were to be regarded as features of shape or configuration or, on the other hand, of pattern or ornamentation. Philips claimed that a number of matters said by Remington (and Professor Redmond, an expert witness called by Remington) to be significant were in fact irrelevant because they were not features of shape or configuration. These included ribbing and a clover leaf pattern on the head fascia of the design in suit (apparent on representation 1), what were described as "rebates" on the back of the Remington product, the "separate base feature" of the Remington product, the lines on the side of the head base of the Remington product and the concave line above its switch fascia panel. That, I think, represented a somewhat extreme position. Equally extreme, I think, was Remington's submission to the effect that any three‑dimensional feature is necessarily a feature of shape or configuration, not of pattern or ornamentation.
101 In my view, though in the end I doubt that it matters, the clover leaf on the head of the design in suit is a feature of shape or configuration, but the ribbing (and likewise the lines on the side of the head fascia of the design in suit) is a feature of pattern or ornamentation; the "rebates" on the back of the Remington product, on Mr Sulik's evidence put there to assist the user to maintain a firm grip while using the machine under the shower, are a feature of shape or configuration but the separate base feature and the lines on the side of the head base of the Remington product are features of pattern or ornamentation; and the concave line above the switch panel of the Remington product is, I think, a feature of shape or configuration.
102 There is one comment which should be made before leaving this perhaps unproductive topic. There was some difference between the witnesses as to the effect of the lines around the head base of the Remington product which I have concluded, accepting the submission of senior counsel for Philips, are to be regarded as a feature of pattern or ornamentation. Mr Sulik's evidence was that the purpose of the lines was to mitigate the visual effect of the considerable size of the head base of the Remington product. Mr J R Brown, an expert industrial designer called by Philips, thought that the lines had that intended effect. Professor Redmond, however, thought that the lines might accentuate the visual effect of the head's size, which might be less striking if they were eliminated. Therefore, senior counsel for Philips suggested, the lines, not being part of the monopoly claimed, ought to be disregarded in assessing the size of the head as it strikes the eye. The answer, surely, is that that, in practical terms, is impossible. The exercise which the Court is required to perform is one of comparison between the design and the Remington product; the Court cannot adjust its eye so as to eliminate the effect of the lines (whatever, hypothetically, that effect may be). It is not legitimate to look at something other than the Remington product, for example, a drawing or a cut out pattern of it from which the lines have been eliminated.
103 Mr Brown acknowledged the existence of a number of differences between the Remington product and the design in suit; but he regarded the differences as not visually distinctive and his overall conclusion is, I think, summed up in the following two introductory paragraphs of his affidavit:
"5. I regard the RR(DT)55 and the product depicted in ARD105780 as coming from the same 'family' of shavers. They appear in my view to have an identical product image. I use the expression 'product image' in the same way as the expression 'corporate image' is used in relation to that used [sic] in the commercial world. Each product uses what I would describe as the same 'visual vocabulary', that is, the same appearance design and range of design elements.
6. In design practice a common visual vocabulary is used to ensure that two products may be identified as being part of the same range and from the same manufacturer."
104 Professor Redmond, on the other hand, expressed the view that:
"The difference in the parts of the design, when viewed as a total design, establish the design applied to the article in the ARD # 105,780 as different to the design applied to the same article in the Remington DT55."