Macrae Maittine Mulls Linnited v Lowes Limited

remaining in these proceedings) has infringed its designs by applying them, or a fraudulent or obvious imitation of them to a suite manufactured by him and called the

"Berlina" and by selling or offering that suite for sale from about March 1992.

The respondent denies infringement and has cross-claimed, impugning the validity of the registration of the applicant's designs on the grounds that they are not

"new" or "original" within the meaning of s.17(1) of the Act.

The Monopoly claimed S.17(1) of the Designs Act provides:

[Registration if new or original design] Subject to this Act, a design shall not be registered unless it is a new or original design and, in particular, shall not be registered in respect of an article if the design -

(a) differs only in immaterial details or in features commonly used in the relevant trade from a design that, before the priority date in respect of the application for registration, was registered, published or used in Australia in respect of the same article; or

(b) is an obvious adaptation of a design that, before the priority date in respect of the application for registration, was registered, published or used in Australia in respect of any other article."

"features of shape, configuration, pattern or ornamentation applicable to an article, being features that, in the finished article, can be judged by the eye, but does not include a method or principle of construction."

"Monopoly" 1s defined as: "mn relation to a registered design, means the exclusive nght to

apply the design to an article in respect of which the design is so registered."

"in relanon to a design, means, a statement relating to the representations of an article to which the design is applied that

(a) those features of the representations in respect of which the application for registration of the design wishes to claim a monopoly, and

(b) those features of the representations that are to be disregarded in considering the extent of the monopoly protection,"

The statements of monopoly appearing on each of the three certificates of registration claim monopoly "in the shape and configuration" of each of the single and double-seated lounge chairs "as illustrated in the accompanying representations". The representatious are of the front, back and side perspective of each of the chairs therein depicted. The whole of the chair 1s thereby disclosed. It would follow that the monopoly

sought was to extend to the design as a whole of the chairs depicted in the accompanying

representations: see Macrae Knitting Mills Limited v Lowes Limited (1936) 55 CLR 725, 730-1, Fisher & Paykel Healthcare Pty Lid v Avion Engineering Pty Ltd (1991) 103 ALR

239; Dalgety Australia Operations Lid v F Seeley Nominees Pty Ltd (1986) 10 FCR 403, 406.

With respect to the novelty claimed, that was however restricted to a

feature of the representation (as s.4(1) "statement of novelty" requires), the shape of the

back rest cushion. The statements of novelty claimed in each of the two relevant designs were in these terms:

(115706) "Statement of Novelty. Novelty resides in the shape and configuration of the back rest cushion which includes a plain lower lumbar support portion "a" separated from an upper back rest portion "b" which includes a padded ruffled centre section "c" raised above and separated from plain end sections "d" by respective boundary lines "e" which converge downwardly towards the visual junction of the arm rests with the base of the seat."

(115707) "Statement of Novelty: Novelty resides in the shape and configuration of the back rest cushion which includes a plain lower lumbar support portion "a" separated from an upper back rest ~ portion"b" which includes two padded ruffled sections "c" separated by a plain central panel "d" which diverges downwardly between the padded ruffled sections, each padded ruffled section being raised above and separated from a respective end section "e" by respective boundary lines "f" which converge downwardly towards the visual junction of the arm rests with the base of the seat."

Whilst the novelty (or new part) identified 1s confined to the backrest depicted, when regard is had to the monopoly claimed, it must be that novelty for the purpose of s.17(1)

is said to arise by reason of the effect of that feature on each of the chairs, viewed as a

whole. Russell-Clarke on Copyright in Industrial Designs Sth edition 1974 at page 38 (referred to with approval by Fisher J in Dalgety's case, 409) states:

"The design may be valid within the Act, although all the parts are old except some particular part only which is new or original. The novelty or originality of the particular part may be sufficient to impart the character of novelty and originality to the whole. (per Chitty J in Walker & Co v A. G, Scott & Co (1892) 9 RPC 482 at 485). And, in fact, a design may well be novel although all the parts are old, and were common general knowledge or were trade variants at the date of registration, for the combination of two or more old and well-known designs or

parts of designs will certainly conshtute novelty, if the effect, that ts the appearance of the combinaton as a whole, is new."

It is here conceded by the applicant that, save for the design of the back rest, the shape and configuration of the chairs represented were the same as suites such as the "Apollo" and others available to the public for some time before the pnority date. Indeed the "Sherwood" had its genesis in the "Apollo" which was "developed" to become the "Tasman"

Before I turn to the question of novelty, having regard to prior designs of lounge chairs generally, 1t was the respondent's contention that his designer had, coincidentally, designed and constructed a chair having the same back rest shape as in the

applicant's design, and that this chair had been shown to a retailer.

A single-seated chair (but not a suite as alleged) and named the "Hemont" was, I accept, produced by Mr Nievandt who was then the respondent's designer if not by 14 July 1991, then very shortly after that date. That chair was then provided as a sample to a Mr Vann who was described as the "owner" of A Mart and who, it was said by the respondent, was to retain the chair in his office whilst he considered future purchases of suites of that design. It was however returned, on the evidence of Mr Nievandt and Mrs Davison, another employee of the respondent, at a time prior to the respondent's annual Christmas party in 1991 although just when that was is not clear. Mr Vann was not then

interested in it. The coincidence is that through 1991 the applicant's designers had been

applying themselves to the design of a suite to be the successor of the applicant's "Tasman" (which had been produced in January 1991) and it was prior to a research and development meeting on 31 October 1991 that the applicant's designer, Mr Dyer, produced the drawings of the "Sherwood" suite, amongst other suggested modifications, and which, subject to some smal! changes, was shown to retailers about November 1991. In January 1992 it was placed on display at a furmiture show in Brisbane, after the first application for registration of the design had been made. The fact that the two designs were produced within months of each might bear a simple explanation but it 1s not entirely clear. Mr Nievandt had worked for "Comfort Furniture", the proprietor of which business was a Mr Van Der Beld who ts a person having a connection with the applicant company which is now called "Van Der Beld Furniture Pty Ltd". He left the employ of that business in early 1991 and then worked for the respondent. As a testament to the demand for his skills, Mr Nievandt is now again employed by the applicant. Prior to his leaving the employ of Mr Van der Beld, Mr Nievandt spoke with him about further designs to existing suites and some such idea as came to be incorporated in the applicant's

back rest design may have been communicated. An alternative explanation proffered by

Mr Nievandt, is that the backrest design would readily occur to any designer experienced

The question that then arises is whether the applicant's design is the same as, or differs only in immaterial details, from the "Hemont" single-seated chair (s.17(1)(a)). In this respect Mr Morris QC conceded that were I to find that the two-seated chair was an obvious adaptation of the design for the single-seated chair, then the validity of its

registration would stand or fall with the conclusion reached as to the single-seated chair.

The features of the applicant's design of the single-seated chair are essentially the provision of two vertical lines which are angled slightly downwards and inwards. The eye is drawn to an effect of gathering or ruffling. In turn that creates the impression of two side panels made up by a straight vertical line provided by the side of the chair and the slightly angled line I have referred to. On the two-seated chair a central panel is also created, but only by application of the design of the single-seated and there are no new

features to it. It is an obvious application of the same features as the single-seated chair.

Neither a drawing or other representation of Mr Nievandt's design for the "Hemont" chair nor the chair itself are now in existence although I draw no inference adverse to the respondent by reason of this. Mr Nievandt, whose evidence I accept, did not as a practice produce drawings. Once he had determined upon his idea for the back rest, he simply produced it in the form of the chair. In the event that the chair was to proceed to production, he would then draft a pattern from the chair itself. Then, with Tespect to the fate of the chair, it was lkely forgotten when the "Berlina" suite was

produced, and before notification of the applicant's claims.

Another difficulty on the evidence was that the witnesses' comparisons were drawn between the "Hemonr" and the respondent's later suite, the "Berlina", and not the "Sherwood", 1t no doubt being assumed that there would be a finding that the "Berlina" was an obvious mutation of the "Sherwood". There are indeed very few points of difference between the two, save as to scale and perhaps the quality of finish but not in the shape and configuration of the design of the back rest itself. But it may be that the

respondent, when the "Berlina" was produced, was drawing more upon the lines of the

"Sherwood" suite he had seen and photographed at the furniture exhibition and not the

The respondent himself described the "Hemont" as "similar" to or "very close" to the "Berlina", At best however, his recollection of the features of the chair seemed to me to be poor and unreliable. His evidence generally was tainted with self-interest. Mr Nievandt however was in a different position. He had by reason of the history I have recounted a level of independence and he could be expected to recall features of and points of similarity between the "Hemont" and the "Berlina". He said that the differences between the "Hemont" and the "Berlina" were in its scale (the "Berlina" later being scaled down for one of two possible functional purposes), that different fillings were used on the back cushion; and that side panels had been created on the prototype as separate pieces rather than having been formed from one piece. There was some suggestion of additional stitching having been applied at the base of the back rest cushion and some gathering. These features were not however said to be, nor did they seem in the impression I gained, to have likely altered the appearance of the back rest and apparently the side panels were not detectable as separately fashioned. Mr Nievandt concluded that there was "very, very little" difference between the two and the evidence of Ms Davison, who I also considered to give evidence in a forthright manner, was to similar effect, and that she recalled only a very slight variation in the angle.

It has been said that oral evidence on the issue of prior publication ought to be approached with considerable caution (see Re: Wungate's Design (1934) 52 RPC 126 134; CIG v MWA Holdings Pty Ltd (1970) 44 ALJR 385, 387) and the reason is obvious.

In some cases, the Court cannot have a sufficient level of assurance in recollections or

oral descriptions of matters of design. But here I consider the evidence of Mr Nievandt to be relable and as having conveyed a picture of the "Hemons" with accuracy. One of the reasons that 1s possible, however, and 1s a matter to which | shall later refer, is that the alterations and the shape of the back rest are not complex and are only matters of subtle variation. It seems to me therefore that there was no relevant difference between the "Hemont" and the "Berlina" which in turn incorporated the same design as that of the

Whilst the respondent alleged by his further and better particulars that the "Hemont" was "registered, published and used" in Australia before the priority date, there

The occurrence of or the circumstances i which it was published or used were not pleaded vy the respondent and arose for the first time in cross-examination. That the chair had been provided to Mr Vann of A Mart was however confirmed by Ms Davison and Mr Nievandt. The applicant however contends that the design although applied to the chair, was not shown on the evidence to have been published (or "used" in the sense of having been applied to the article, the chair) within the meaning of s.17(1) since it was not shown to have been disclosed to anyone other than Mr Vann and that would not be a sufficient disclosure for the purpose of the section, and refers in particular

to the additional provisions of s.17(1A) which is in these terms:

"17(LA) [Secret use] For the purposes of sub-s.(1), account shall not be taken

This sub-section was inserted in the 1981 amendments to the Act and reflects a qualification which has long been made "in favour of user which is experimental or secret" (Lengworth v Emerton (1951) 83 CLR 539, 548). Whilst one is able, by reference to the sub-section, to discern that the prior publication or use referred to in s.17(1) is to be non- secret, nothing in the section gives guidance as to the width or extent of the disclosure

One may infer from s.47, by the creation of an exception in relation to certain exhibitions, that othermse exhibiting in public would be a sufficient disclosure, which would mean that the design (whether in the features of shape, configuration, pattern or ornamentation) has been available to be seen by the public. That was held not

to be made out in Re Wolanski's Registered Design (1953) 88 CLR 278 since the neck tie

support was not able to be seen, although it had been worn in public, on occasions. What

will suffice for such availability is, as Gummow J noted in J Rapee & Co Pty Ltd v Cas Cushions Pty Ltd & Anor (1989) 90 ALR 288, 297, a matter of some difficulty. However

if the circumstances relevant to the document or article in question are such that one may reasonably infer that the public were able to take advantage of and become acquainted

with the features of the design that would be sufficient. This would appear to accord with

the views expressed in Longworth v Emerton and Australian Gold Recovery Co Ltd v The Raydawn PC Gold Mining Co Ltd (1902) St R Qd 123, 149. But it will not in all cases be

necessary, for the occasion to be described as "public" or "open", that a large number of

persons have or have likely been able to avail themselves of the opportunity to comprehend the design in question: see Skedelsky & Anor v Underwood & Anor (1990) I P R 161, 170 per Lockhart J.

A publication or use will however maintain relative secrecy if it 1s made in circumstances of confidence and this has been acknowledged by the Courts (Longworth v Emerton 552; Griffin v Isaacs, noted in 1938 12 ALJ 169, 170; and Papersacks Pty Limited v Cowper (1936) 53 RPC 31) and by s.46A(a) which provides that a registered design is not to be invalid where the Court is satisfied that publication or use took place without the knowledge and consent of the applicant or owner. Whether a relation or obligation of confidence has in the first place arisen such that the publication or use can

be said to be one not within s.47(1) will be a question of fact in each case.

In the present case, the chair was shown to Mr Vann but the respondent did not say upon what basis. Mr Vann was not called by either party and I know nothing of the number of employees and their or any other person's access to his office. Whilst I am able to speculate as to whether employees or other persons in the course of business may have seen the chairs, I could not, in the absence of further evidence, be satisfied about it. Mr Nievandt's evidence as to the use to which he thought the chair might have been put by Mr Vann, namely to be shown to other competitors to establish the cheapest price for which it might be produced, was I consider coloured by his feelings toward Mr Vann, and in any event is not in the circumstances likely to have occurred since Mr Vann, at least then, showed no interest in the chair. Ms Davison said that she believed the chair would have been provided in confidence, an inference which might be thought to have

some basis given the competitive nature of this market for this type of furniture, but it

was little more than an assumption. The critical question was the basis upon which Mr Vann received the chair and about which there was simply no evidence. The applicant submits that it is incumbent upon the respondent to prove publication or use within s.17(1) which, as I have said, would require that 1t be shown to have been available to persons to see in circumstances where they are likely to have been able to avail

The certificates of registration are prima facie evidence of the facts stated in them and as to the validity of their registration: s.26(3). It is not however conclusive and it is therefore a "good answer" if it is shown that the design is not registrable: Macrae Knitting Mills Ltd v Lowes Ltd (1936) 55 CLR 725, 728. It would follow in principle that the onus of establishing that it was not registrable for the reason that it was not new or original or because of prior publication or use would lie upon the respondent (and see D Sebel & Co Lid v National Art Metal Co Pty Ltd (1965) 10 FLR 224, 226, Dalgety Australia Operations Lid v F Seeley Nominees Pty Ltd, 415, 416; and Shimano Industrial Company Lid v Silstar Australia Pty Ltd (1991) 20 IPR 451).

Whilst those cases do not also refer to "secret use" as a matter which must be negatived by the respondent, it is not I consider necessary to approach the matter by reference to the effect of exceptions or qualifications upon a section. Under s.17(1) it remains the case that the respondent must establish a prior use within the meaning of s.17(1)(a) or (b) and that will require the respondent to plead and prove that the

publication or use was disclosed to the public in the sense I have referred to above.

Necessarily that will involve proof of a non-secret use. Attention may never need to be focused upon the matter of secret use and it is perhaps best illustrated by reference to how the matter would properly be pleaded. It would I consider be necessary for a respondent to plead the occasion of and circumstances of the prior publication and use relied upon with full particulanty and not, as here, the mere conclusion stated by the section itself. In doing so, it ought necessarily be disclosed whether the publication or use involves a disclosure to the public or was a merely secret use. In the latter event, the question might be resolved on a point of law on the pleading. If however the respondent's pleading showed that the document or article was sufficiently available to the public then the evidentiary burden might shift to the applicant. That is the point made by Buckley J in Dunlop Holding Limited's Application (1979) RPC 523, 542. In that case it was held that in the circumstances where the opponents to the grant of the patent had pleaded sufficient, and there being no contention raised against it, no issue arose as to the

In the present case, the respondent by his further and better particulars alleged that the "Hemont" had been "registered, published or used" before the priority date. The only reference to the circumstance of the publication or use, in the absence of any particulars, arose in the respondent's affidavit in answer to that of the witness, Alcorn. Mr Alcorn had said that the respondent, in discussing the "Berlina" suite with him in March 1992 said, "the reason why it is in my office is that it is in effect a prototype model. We are just starting to supply this suite to A Mart." (which was the case). To this the

respondent replied, denying that he had referred to that suite as a "prototype" and went

"The prototype of my suite was at A Mart in October 1991. I did not mention this to the mvestigator in any particular way"

And it was not until cross-examination of the respondent that it appeared that the

prototype "Hemont" chair had been supphed to Mr Vann of A Mart.

Senior Counsel for the applicant contended that the rule in Browne v Duna (1894) 6 R 67(HL) ought to be here applied, but I do not think that resort to it 1s appropriate or necessary. The witness, Alcorn was not alleging the contrary of the facts relevant to the delivery of the suite or chair. His evidence had not even touched upon it. It may have been prudent for the respondent to ask the accountant for A Mart, who gave evidence as to the sales and deliveries of the "Berlina" suite in 1992, whether he had seen the chair, and an inference that his answer might not have been favourable might be drawn if I were satisfied that the witness could have commented upon the matter. But in

any event it seems to me that the matter is resolved more simply. The respondent pleaded prior publication and use and in this case the burden remained upon him to establish that. It was not I consider discharged by reference to one delivery to a person

at A Mart in circumstances which were not disclosed and where more than one inference as to the extent of publication thereafter is open. The evidentiary onus did not shift to

the applicant and the respondent has simply failed to discharge his burden of proof.

Mr Nievandt, who may have first turned his mind to altering the backrest

cushion, himself discounted any inventiveness in the design and whilst that would not

conclude the question whether it be "original" it was not here submitted for the applicant that such a question arose in this case. Nor I should add, does Mr Nievandt's description of the process applied and the variations available to a designer bring the design within the description of a mere "trade variation". The applicant's case was that the design was "new", there being no other identical suite previously in existence. In Malleys Lid v J] W

Tomlin Pty Ltd (1962) 35 ALIR 352, 353 the Court held:

"There is, however, one further point which requires consideration before concluding whether or not the design was registrable. The appellant argued that even if what was registered could be regarded as in a sense new, it could not be regarded as an original design because no originality in the sense of making a discovery was involved in the design and that some originality in that sense is requisite for novelty itself. It is not necessary here to explore the difference (if any) between the design that is new and a design that is original because, as s 17 was amended in 1934, it is sufficient for a design to be new or original. It seems clear, however, that the word "new" does not take any colour from the word "original" and that whether or not the design now in question is "original" in any sense beyond its individuality of appearance, it is "new" for the reasons which have already been given, namely, that the design of every bottom for a toilet pan and of every other article to which evidence was directed is substantially different if the "J" rim is to be regarded as an integral part of the design."

Technically speaking any difference, even in the slightest respect, constitutes newness:

Aspro-Nicholas Limited's Design Application (1974) RPC 645, 651. In that case, that was

considered a ground for holding that the words "new or original ought not be read disjunctively, but that "or" should be seen to connect the words "which are intended in their context to denote the same or a very similar qualification" (651), an approach which has attraction. However Malleys case does not permit one to import any concept of

inventiveness in considering the meaning of the word "new" and constrains this Court.

Section 17 itself requires that the difference between the design in question and the pnor art be more than "only in unmatenal details" which however does not supply a full meaning to the word "new" in this section. In Malleys the requirement was held to be that of a substantial difference. Other cases have translated the substantial or marked

difference which is to appear to the eye as one of "distinctiveness" in the design when

compared with the prior art: see eg Macrae Knitting Mills Ltd v Lowes Ltd (1936) 55 CLR 725, 731; Bntish Franco Electnc Pty Ltd & Anor v Dowling Plastics Pty Lid (1981)

1 NSWLR 448, 461; Dart Industries Inc & Anor v The Decor Corporation Pty Limited (1989) AIPC 90-569, 38,975. In many cases one might think that this could only be

achieved by some measure of inventiveness. In Dart, Lockhart J (38,975) considered that the appearance achieved, to warrant the protection of the design, must be "special or distinctive" "something in the design which captures and appeals to the eye" (although I do not take His Honour to mean it need "appeal to" in some pleasing or satisfactory way, but rather that a strong impression is created). His Honour went on:

"..To have that effect, the design must be noticeable and have some perceptible appearance of an individual character..."

In a case where, as here, novelty is to be imparted by the provision of the backrest to the whole of the chair I consider that the impression to be conveyed is that the single-seated and double seated chair are by that means able to be clearly distinguished and set apart

Mr Morris QC for the applicant submitted that one ought not however

approach the matter expecting to find some startling novelty and relied upon the words of

caution expressed by Jacobs J in D Sebe] & Co Lid v National Art Metal Co Pty Lid (1965) 10 FLR 224, 226-7. One may accept that some features of design will be subtle

and that it may be, as seems to be the case here, that where a particular suite has evolved in design, with a number of variations to different features of the chair, that any further variations or additional features will necessarily be limited. The fact that there has not been shown to be such an identical suite with this back rest feature published or available before does not I consider determine the question of "newness". In Sebel's case (266) Jacobs J also pointed out that it will not be '"any" difference of shape that will suffice for novelty, and that what was necessary was "a substannal difference that one could see from the fundamental form and from the development in the trade up to the time of the

I turn then to the apphicant's designs for the chairs and to the photographs of those which pre-dated it, to consider whether the application of the backrest design (or the top part of it) has the effect of umparting the character of novelty, a distinctiveness or individual appearance, suci: that the chairs, viewed as a whole, could be considered so different as to be set apart from prior models. The "Apollo" and the "Chantelle", which are almost identical, combine features which are clearly discernible in the "Fjord" from the "McCann Collection". The only difference created by the applicant's design is the creation of an effect of gathering in the centre of the top section, which is more pronounced on the two-seated chair. The effect to me 1s of slight variation of the "Apollo". There 1s a difference, but not one which to me, viewing the chairs overall, suggests that one is no longer viewing an "Apollo" chair, but something quite different.

There is not I consider the necessary distinctiveness of appearance.

The respondent has therefore succeeded on his counter-claim to the extent that I will order that the Register of Designs be rectified by expunging the entries of

registration of design numbers 115706, 115707 and 114964.

The applicant's application will be dismissed and the applicant will be ordered to pay the respondent's costs of these proceedings. Whilst the respondent also sought damages in his pleading, there was no evidence as to this and the matter was not taken up in the proceedings before me. I am not disposed to permit an adjournment for further hearing on this issue, unless there be some reason for the approach taken with

which I am not familar. I will hear counsel as to this matter.

I certify that this and the preceding seventeen pages are a true copy of the reasons for judgment herein of the Honourable

Justice Kiefel. Date: 8 December 1994 MM Pelton Associate

Counsel for the applicant: Mr AJ Morns QC and Mr A Musgrave Solicitors for the applicant: Barwicks Counsel for the respondents: Mr J Lee Solicitors for the respondents: Goodfellow & Scott