Lewis v Hall

REASONS FOR JUDGMENT THE COURT: 1 This is an appeal from a judgment of the Supreme Court of Western Australia entered on 21 October 2004 under which, inter alia, the court declared that the appellant had infringed Letters Patent No. 684592 ("the Letters Patent") granted to the first-named respondent ("Hall") under the Patents Act 1990 (Cth) ("the Patents Act") and had infringed Design No. 120181 ("the Registered Design") of which Hall was registered as owner under the Designs Act 1906 (Cth) ("the Designs Act"). The court also declared that Design No. 143028 of which the appellant was the registered owner under the Designs Act was invalid and liable to be removed from the Register of Designs. The court further ordered that the appellant be restrained from infringing the Letters Patent and the Registered Design; that the appellant deliver up to the respondent all material in the possession of the appellant that constituted an infringement of the Letters Patent or the Registered Design; and that the appellant's counterclaim be dismissed. 2 The proceeding in the Supreme Court commenced in January 2001. That court was a "prescribed court" under the Patents Act and the Designs Act having jurisdiction in matters arising under the Patents Act and Designs Act in respect of which a proceeding could be started in that court. A proceeding in respect of infringement of the Letters Patent or infringement of the Registered Design, or in respect of rectification of the Register of Designs, was a proceeding that could be started in the Supreme Court. (See: Patents Act ss 3, 120, 155; Designs Act ss 4, 31, 32, 39, 40G(1B)). 3 The Designs Act was repealed on 17 June 2004, the date of commencement of the Designs Act 2003 (Cth) ("the New Designs Act"). Under s 151(2)(a)(i) of the New Designs Act the Registered Design was taken to be registered under the New Designs Act from that date. Transitional provisions set out in s 155(1) of the New Designs Act provided that a proceeding under the Designs Act that was pending immediately before commencement of the New Designs Act was to be determined as if the Designs Act had not been repealed. Therefore, when the proceeding in the Supreme Court came on for hearing in September 2004 it was a proceeding to which s 155(1) of the New Designs Act applied. 4 Jurisdiction to hear an appeal from the judgment of the Supreme Court in this matter is conferred on this Court as an exclusive jurisdiction by s 158(1), (4) of the Patents Act, s 40I(1), (4) of the Designs Act and s 87(1), (4) of the New Designs Act. However,the provisions of s 4(1) of the Jurisdiction of Courts (Cross-vesting) Act 1987 (Cth) ("the Cross-vesting Act") appear to invest a concurrent, although qualified, appellate jurisdiction in the Supreme Court. (See: Cross-vesting Act s 7(5), (7), (8)). It is unnecessary to consider whether the appellate jurisdiction now exercised by the Court has been conferred by the Designs Act or the New Designs Act. 5 On 2 November 2004 the appellant commenced an appeal in the Supreme Court. On 2 March 2005 the Supreme Court made an order, by consent, that the appeal be transferred to this Court and that the costs in the appeal be costs in the cause of "the transferred proceeding". 6 Section 157 of the Patents Act, s 40H of the Designs Act, and s 86 of the New Designs Act give the Supreme Court power to transfer both the originating proceeding and the appeal proceeding to this Court. It should be assumed, however, that the power of transfer exercised by the Supreme Court was that provided by s 7(5), (7) of the Cross-vesting Act and that the only proceeding transferred to this Court is the appeal proceeding. It is to be noted that the parties to the appeal did not include another party to the originating proceeding bound by the judgment of the Supreme Court and, therefore, that further party has not subscribed its consent to the order of transfer. 7 The judgment of the Supreme Court was an interlocutory judgment limited to questions of liability, the further rights of the parties being left for determination at a later date. (See: Computer Edge Pty Ltd v Apple Computer Inc (1984) 54 ALR 767). Section 24(1A) of the Federal Court of Australia Act 1976 (Cth) provides that an appeal to this Court shall not be brought from such a judgment unless the Court gives leave to appeal. The appellant sought that leave when the matter came on for hearing. The respondent did not oppose the grant of leave. The Court extended the time within which the appellant could make such an application and granted leave to appeal from the interlocutory judgment. All steps taken by the parties prior to the grant of leave, whether in this Court or in the Supreme Court, were taken to be steps in the appeal. 8 A short summary of the relevant facts upon which the learned Commissioner's decision is based is as follows. Between 1992 and 1993 Hall developed an idea for an article of headwear to provide protection from the sun for the head, face and neck of the wearer and be able to withstand wind and rain. Hall's idea consisted of a visor to which material was attached to cover the top of the head and hang down at the sides and back of the head and neck, being held to the head by an adjustable headband. Fastening devices were attached to the pendant material to allow it to be fixed across or under the face or held at the back of the head and away from the face. Prior art existed for a number of the elements of the foregoing idea. 9 Hall instructed a firm of patent attorneys to lodge an application for registration of a design under the Designs Act and to lodge a patent claim specification under the Patents Act. Registration of the Registered Design and grant of the Letters Patent followed in due course. 10 The Letters Patent granted Hall a monopoly of use of the invention for a term of 20 years from 6 January 1995, the priority date being 10 January 1994. The title of the invention set out in the Letters Patent is "an article of headwear". The article in respect of which the Registered Design is registered is said to be "a hat". The application for registration of the Registered Design was lodged on 10 March 1993 and it was registered on 4 May 1994, the priority date being the date of lodgement of the application. In the course of the hearing of the appeal the Court was informed that the rights of use and reproduction under the Letters Patent and the Registered Design had been assigned to the second-named respondent. 11 Pursuant to the Letters Patent and the Registered Design the respondent began to manufacture and sell an article of headwear, under the trade name "Araphat", as an embodiment of the invention and an application of the Registered Design. The respondent appointed the appellant to act as distributor of the "Araphat" hat in Western Australia. By the end of 1999 sales of the "Araphat" hat represented 80% of the business of the appellant. Shortly thereafter the relationship between the respondent and the appellant was terminated. The appellant then purported to "create her own hat" and began to manufacture and sell a hat under the name "Le Hood". 12 The respondent claims that the manufacture and sale of the "Le Hood" hat infringed the respondent's rights under the Letters Patent and the Registered Design. The appellant contends that the "Le Hood" hat differs in a material respect from an article manufactured pursuant to the monopolies granted by the Letters Patent and Registered Design. 13 Numerous points of defence raised by the appellant at trial are no longer live questions in the appeal. The appellant defines the questions to be determined in the appeal as follows: (a) the proper construction of the words "a plurality of fastening means" as used in the principal claim of the Letters Patent; (b) whether the appellant's product is an obvious imitation of the Registered Design; (c) whether the Registered Design is invalid by reason of the terms of s 22B of the Designs Act.