CATCHWORDS

Intellectual Property - roof ventilator - first applicant's patent - first respondent working for applicants' distributor - respondents thereafter causing their roof ventilator to be manufactured and installed - issues of patent, copyright and design pleaded as well as false representations and passing-off.

Designs Act 1906 (Cth)

Copyright Act 1968 (Cth)

Patents Act 1952

Trade Practices Act 1974 (Cth)

Fair Trading Act 1987 (W.A)

Listening Devices Act 1978 (WA)

Rodi & Wienenberger AG v Henry Showell Ltd (1969) 86 RPC 367 at 391

Olin Corporation v Super Cartridge Co. Pty Ltd (1976-77) 14   ALR 149

Nobel's Explosives Co. Ltd v Anderson (1894) 11 RPC 115

Bunning v Cross (1978) 141 CLR 54

Miller v Miller (1978) 141 CLR 269

Erven Warnink Besloten Vennooteschap v J Townend & Sons (Hull)     Ltd [1979] AC 731

Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1980] 2    NSWLR 851.

Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Pty Ltd (1977-1978) 140 CLR 216

Hogan v Pacific Dunlop Ltd (1988) 83 ALR 403

Pacific Dunlop Ltd v Hogan (1989) 23 FCR 553

General Electric Co (of U.S.A) v General Electric Co Ltd[1972] 1 WLR 729

Reckitt and Colman Products Ltd v Borden Inc [1990] 1 WLR 491

H P Bulmer Ltd and Showerings Ltd v J Bollinger SA and Champagne Lanson Pere et Fils [1978] 95 RPC 79

Australian Woollen Mills Ltd v F S Walton & Co Ltd (1939) 58 CLR 641

Saville Perfumery Ltd v June Perfect Ltd and F W Woolworth & Co Ltd (1941) 58 RPC 147

Norman Kark Publications Ltd v Odhams Press Ltd [1962] 1 WLR 38

Trade Practices Commission v TNT Management Pty Ltd (1984) 56 ALR 647

L B Plastics Ltd v Swish Products Ltd [1979] RPC 551 at 619

Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1     All ER 465

S W Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466

Blackie & Sons Ltd v Lothian Book Publishing Co Proprietary   Ltd (1921) 29 CLR 396

In Re Wolanski's Registered Design (1953) 88 CLR 278

Bondor Pty Ltd v National Panels Pty Ltd (1991) 102 ALR 65

AURELIUS ALESSANDRO CARBONE and MAN MADE PTY LTD  Applicants

- and -

BRADLEY NEVILLE GILLAM and ADAM BARKER (also known as TAHA BASHIR) trading as "SKYFORCE"                                    Respondents

O'LOUGHLIN

ADELAIDE

28 JULY 1995

IN THE FEDERAL COURT OF AUSTRALIA  )

                                   )

SOUTH AUSTRALIAN DISTRICT REGISTRY )

                                   )

GENERAL DIVISION                   )   No. SG120 of 1993

                   BETWEEN:  AURELIUS ALESSANDRO CARBONE and MAN MADE PTY LTD

                                                  Applicants

                   AND       BRADLEY NEVILLE GILLAM and

                             ADAM BARKER (also known as TAHA BASHIR) trading as "SKYFORCE"

                                                 Respondents

                      MINUTES OF ORDER

JUDGE MAKING ORDER             :        O'LOUGHLIN J.

WHERE MADE                     :        ADELAIDE

DATE OF ORDER                  :      28 JULY 1995     

THE COURT ORDERS THAT:

1.   The applicants file and serve short minutes of order within fourteen days of this date.

2.   Thereafter any party be at liberty to apply to relist the matter for mention on seven days notice.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA  )

                                   )

SOUTH AUSTRALIAN DISTRICT REGISTRY )

                                   )

GENERAL DIVISION                   )   No. SG120 of 1993

                   BETWEEN:  AURELIUS ALESSANDRO CARBONE and MAN MADE PTY LTD

                                                  Applicants

                    AND      BRADLEY NEVILLE GILLAM and

                             ADAM BARKER (also known as TAHA BASHIR) trading as "SKYFORCE"

                                                 Respondents

                    REASONS FOR JUDGMENT

Coram:    O'Loughlin J.

Place:    Adelaide

Date :    28 July 1995

     The first named applicant, Aurelius Alessandro Carbone ("Mr Carbone") and his wife Christine Tomaras Carbone were, at all times material to these proceedings, the only directors and shareholders of the second named applicant, Man Made Pty Ltd ("Man Made"), a company duly incorporated in the State of South Australia.  On 25 February 1983, Mr Carbone was granted Letters Patent No: 564597 ("the patent") over an invention in the category of device known as a flue cap ("the invention").   The patent was therefore sealed whilst the Patents Act 1952 (Cth) was in force and before the commencement of the Patents Act 1990 (Cth).  That last mentioned Act commenced on 30 April 1991; however, with some qualifications which are not germane to the issues in this case,  sub-s233(1) of the 1990 Act provides that this statute applies in relation to a patent granted under the 1952 Act as if granted under the 1990 Act.

     I am satisfied from the evidence adduced on behalf of the applicants, as well as the failure on the part of the respondents to deny relevant assertions in a Notice to Admit Facts and Authenticity of Documents dated 19 July 1994 ("the Notice to Admit"), that the patent has been subsisting and in full force and effect since 25 February 1983 and that Mr Carbone, from about that date, assigned his rights as patentee to manufacture, distribute, sell and install the invention to Man Made.

     The invention is distributed throughout Australia but these proceedings are limited to the activities in Western Australia of the respondents Bradley Neville Gillam and Adam Barker.  The invention is marketed under the name of the "Condor Terminal" as a flue cap or roof ventilator for both domestic and commercial premises.  Its primary use is for cooling purposes: it draws up hot air out of the roof space between the ceiling and the roof.  At all times material to these proceedings, a Western Australia company, Air Transfer Systems Pty Ltd ("Air Transfer"), of which the witness Mr Ritchie was the managing director, was Man Made's distributor in that State for the "Condor Terminal".

     During the months of January, February and March 1993, the first named respondent, Mr Gillam, was engaged by Air Transfer as a sub-contractor fitter; his work included the fitting of "Condor Terminals" to the roofs of premises of those persons who had purchased ventilators from or through Air Transfer.  In sub-par 11.2 of the Notice to Admit, the respondents were called upon to admit for the purposes of these proceedings only that:

     "11  During the period of his engagement by Air Transfer Systems as a sub-contractor fitter Gillam:

          11.1 ...

          11.2had access to and became familiar with advertising literature by Man Made and Air Transfer Systems in marketing the Condor Terminal."

     Provision is made in 0 18 of the Rules of Court for the issue and service of a Notice to Admit.  Sub-rules 2(1) and 2(2) of that order are the only provisions that are relevant to these proceedings; they provide:

     "2(1)  A party to a proceeding may, by notice served on another party, require him to admit, for the purpose of the proceeding only, the facts or documents specified in the notice.

     (2)  If, as to any fact or document specified in the notice, the party on whom the notice is served does not, within 14 days after service, serve, on the party serving the notice to admit facts or documents, a notice disputing that fact or document, that fact or document shall, for the purpose of the proceeding, be admitted by the party on whom the notice to admit facts or documents is served in favour of the party serving the notice."

     When this matter was called on for hearing Mr Gillam did not appear; the second named respondent, Mr Barker  appeared in person, informing the court that Mr Gillam was his brother, that he was unable to attend court because of financial constraints and work commitments in Western Australia, but that he (Mr Barker) had authority to "represent" him.  I informed Mr Barker and Mr McNamara, counsel for the applicants, that I would permit Mr Barker to address the court in the interests of his brother but that he could not bind his brother, nor could he make any admission against his brother's interest. A search of the court file has revealed that the respondents had originally been represented by solicitors and counsel in this matter.  The application was filed on 2 December 1993 and the first return date was 16 December; counsel then appeared on behalf of the respondents.  A defence was filed by solicitors on behalf of the respondents on 1 March 1994 and it was not until 8 August 1994 that those solicitors filed a notice that they had ceased to act on behalf of the respondents.  In the meantime, the applicants had issued the Notice to Admit on 20 July.  It is safe to assume that the respondents would have been served with the Notice prior to their solicitors ceasing to act but I do not think that it could be assumed that they would have received legal advice about the Notice and its consequences within that time.  I have borne that factor in mind when coming to my conclusion that I should nevertheless adhere to the provisions of the Rules of Court and treat the matters identified in the Notice as deemed admissions.

     For his part, Mr Barker acknowledged service of the Notice to Admit and also acknowledged that he had not given notice that he disputed any fact or document that was referred to in the Notice.  The applicants omitted to prove service of the Notice to Admit on Mr Gillam; when my associate drew that matter to the attention of their solicitors I permitted the applicants to re-open their case for the purpose of proving such service.  I was satisfied that this was an accidental slip or omission.  I did not consider it necessary for either respondent to be served with the application for leave to re-open the applicants' case; as to Mr Gillam, because he had not appeared when the action was called on for hearing and as to Mr Barker, because he had already acknowledged service of the Notice to Admit and the question of service of that Notice on Mr Gillam was not his concern.  Based on the failure by the respondents to dispute the assertion in the Notice to Admit, I find that each respondent has admitted that Mr Gillam had access to and became familiar with the applicants' advertising material. 

     Mr Carbone identified the advertising brochure for the "Condor" (Ex AAC2) as the brochure that had been in use since 1992.  He said that the advertising brochure that was exhibited to Mr Gillam's affidavit (Ex BNG4) was an earlier brochure.  He said that it had been part of his business practice to supply his distributors with advertising material; thus it was to be expected that Mr Ritchie and Air Transfer would have had possession, first, of copies of Ex BNG4 and then of copies of Ex AAC2.  However, Mr Gillam, in his affidavit, claimed that he had not previously seen Ex AAC2 and asserted that when he was installing "Condor" units for Air Transfer, he was using the former advertising material, Ex BNG4.  I will deal with this matter in more detail under the heading of "Copyright".

     I also rely on the contents of the Notice to Admit to find that on 26 February 1993 an Application for Registration of a Design was lodged by Mr Barker claiming "a monopoly in the shape and configuration of the ventilated skylight as shown in the representations".  The Registrar of Designs issued a Certificate of Registration of the relevant design (No 116905) on 27 April 1993.  The term of the initial registration was one year commencing on 27 April 1993; no evidence was led with respect to an extension of that initial term, but I am prepared to assume from the statements and submissions from the Bar table that the registered design is still subsisting. Subsequent to the registration of the design for the ventilated skylight, I find that the respondents have caused to be manufactured ventilated skylights that have areas of similarity with the representations in the registered design.  I will discuss the extent of that similarity under the heading "Design").  I am also satisfied that the respondents have, in Western Australia as from late 1993, advertised for sale and sold such ventilated skylights under the name of the "Terminator".  Advertisements for the "Terminator" have appeared in "The Sunday Times", a newspaper circulating in that State.

     The applicants have alleged in these proceedings that they have five causes of action against the respondents.  First, they have claimed that the respondents, in selling the "Terminator", have infringed certain of the claims of the patent for the "Condor".   Secondly, they have claimed that the respondents' conduct has breached certain of the provisions of Part V of the Trade Practices Act 1974 (Cth) (the "TPA") and the Fair Trading Act 1987 (W.A) (the "FTA").  The third claim is that the respondents have been guilty of the tort of passing-off.  Fourthly, it is said that the respondents have infringed the applicants' copyright in some advertising brochures. Finally, the applicants seek an order that Mr Barker's registered design be expunged from the Register of Designs.  Within these five general areas, the applicants have sought numerous declarations, orders and injunctive relief, including a mandatory injunction for the delivery up of infringing copies of literary works.

     In their defence the respondents denied infringement and alleged that the "Condor" was "materially different from the claims defining the invention set out in... the Statement of Claim".  That latter allegation was never particularised nor was it the subject of evidence during the course of the trial.  As the respondents carried the evidentiary burden with respect to this positive allegation and have failed to meet it, it will not be necessary to consider this claim further.  The respondents further claimed in their defence that, as a result of a series of letters passing between their respective patent attorneys, a settlement had been reached prior to the institution of proceedings whereunder, for consideration, Mr Carbone "agreed to forebear to sue the Respondents for the remedies sought in the Statement of Claim...".  The evidence at trial did not support such an assertion.  At one stage, during the course of the trial, it seemed from remarks made by Mr Barker that the respondents were also asserting that the applicants' claims with respect to patent infringement were bad for want of novelty: that was not a matter that had been pleaded in the defence.  Despite the protests of Mr McNamara, counsel for the applicants, I gave Mr Barker the opportunity to consider his and his brother's position, but he later informed the Court that no claim of lack of novelty would be pursued.  The balance of the applicants' claims were met with simple denials

     The "Condor Terminal" that is used for domestic purposes sells for a price averaging approximately $455 (including installation).  I was told by Mr Barker, from the courtroom floor, that only 13 "Terminators" could possibly be classified as infringing articles; that assertion was not, however, accepted by counsel for the applicants.  There was no evidence of the profit element in the sale of a "Condor", but if it transpires that there has been infringement and there were only 13 infringing sales or thereabouts, one would have to question the need for such expensive and protracted proceedings as have been prosecuted in this case.  Counsel assured me that there is, as can often be the case, much more material to place before the court in the event of there being a finding of "liability" in favour of the applicants.  I accept counsel's assurance but nevertheless note that in the course of his opening, he informed the court that the applicants had elected to seek an account of profits only and were abandoning any claim for damages.  Apart from achieving some measure of satisfaction, one can only wonder what practical value will flow to the applicants from findings (additional to infringement) of breaches of the TPA and FTA and passing-off.  The alleged breach of copyright basically complains that the advertising material for the "Terminator" breaches the applicants' copyright in the advertising material for the "Condor"; if the applicants succeed in their infringement action and are not seeking damages, it hardly seems worthwhile to engage in the copyright exercise.  That then leaves the registered design.  As to that, Mr Barker made a statement in open court that he was (to use his words) "prepared to withdraw the design" but the applicants' reaction was to press for the relief that they had sought in their application.  No attempt was made to explore the possibility that Mr Barker's advice might be converted into a formal undertaking with liberty to apply to have the matter brought back on for orders in the event of the undertaking not being fulfilled.

     The witnesses for the applicants were Mr Carbone, his patent attorney, Mr Catt, Mr Ritchie, the managing director of Air Transfer, and Ms Mitchell.  Ms Mitchell was called to give evidence of the circumstances under which she and her husband bought and had installed a "Terminator" and what the seller had said to her about the "Condor" at the time when she placed the order for the "Terminator".  This was a contrived transaction in the sense that Ms Mitchell arranged the purchase at the request of Mr Ritchie's girlfriend, Ms Denning, and, presumably, with his knowledge, so that evidence could be gathered against the respondents.  The conversation involving the "Terminator's" seller, a Mr Field, was secretly recorded and a question arose as to the admissibility of that conversation.

     Neither respondent gave evidence nor did they call any evidence.

The Patent

     The first area of concern is the patent with respect to the flue cap or roof ventilator; that was referred to, throughout the trial, interchangeably, as the "Condor", the "Condor Terminal" and the "Condor Roof Terminal".  I will continue to refer to the invention as the "Condor".  Mr Carbone explained:

     "We make a number of them depending on their use and their purpose.  Anything from two deflectors to five deflectors." (T.46)

The differing models vary in diameter; in addition, some are made with a solid top while others have a transparent or translucent top.  Another variation is the distance between the respective deflectors; that distance is described as the "axial spacing".

     The claims defining the "Condor", as contained in the complete specification for the patent, are as follows:

     "1.  A flue terminal comprising a plurality of deflectors, each deflector having sloping walls which converge in an upward direction, and elongate retaining means retaining said deflectors in a vertical array, but with respective air spaces between adjacent deflectors, said retaining means extending internally of the flue terminal and interconnecting the upper ends of the deflectors, so arranged that when horizontally moving air encounters the deflectors, it is deflected thereby to flow upwardly within the flue cap.

     2.   A flue terminal according to claim 1 wherein each said deflector is a hollow conical frustum, the upper circular edge of which lies approximately in the horizontal plain of the lower opening of an adjacent said deflector.

     3.   A flue terminal according to claim 1 or claim 2 further comprising cover means at or near the upper end of the flue cap arranged to inhibit the ingress of rain downwardly through the terminal.

     4.   A flue terminal according to claim 3 wherein said cover means comprise a pair of vertically spaced part-circulated plates each extending over a respective portion of the central passageway extending through the terminal.

     5.   A flue terminal according to any one of claims 1 to 4 wherein said retaining means comprise a plurality of circumferentially spaced straps, said deflectors terminating at their upper ends in circular flanges which are secured to said straps.

     6.   A flue terminal according to claim 5 wherein each said strap is of sheet metal and extends continuously along the length of the terminal.

     7.   A flue terminal substantially as hereinbefore described with reference to and as illustrated in Figs. 1 and 2 of the accompanying drawings."

     It was apparent from the oral and documentary evidence that the "Condor" is, as pleaded in par6 of the Statement of Claim, "designed to form the end section of any ducting or
flue arrangement...".  In that paragraph it was further pleaded that the "Condor" operates by an application of "the Venturi principle".  That principle is, perhaps, better known in its application to the design of the wings of an aircraft.  The air flowing over an upper curved surface moves faster than the air below thereby creating a greater pressure underneath; in the case of a roof ventilator this has the effect of drawing out (or pulling upwards) the hot air that is trapped inside a roof.  Mr Carbone described the Venturi principle (T66) by reference to air or liquid in a conduit when a vacuum is created.  He explained that when a higher pressure was exerted, the volume of air or water "will be drawn up and out through the top, as that high pressure is moving across it.  Very much - the same principle as in say, the carburettor of a car or in a spray gun." 

     Exhibit A2 is a "Terminator" unit.  It has three conical sections (that is, three deflectors) and it was fixed by three vertical straps.  Mr Carbone identified it as a unit that Mr Ritchie had sent to him and as a unit that was identical to the "Terminator" that he saw on display at the Perth "Home Ideas Centre".  Mr Carbone's evidence was that he had only seen one other "Terminal"; that was in commercial premises at an address which he could not now remember.

     It was Mr Carbone's evidence that at the time when his company commenced marketing the "Condor" terminal it was unique; he said that there was no product similar to the "Condor" on the market in Australia. (T58)  He added that the "Condor" was "the first type manufactured and sold in Australia..." I do not take that evidence to mean that the "Condor" was the first ever form of roof ventilator or the first ever form of flue cap: rather, as I understand the position, Mr Carbone was asserting the uniqueness of his particular product and asserting that the "Terminator" had copied his product.  As he explained, the uniqueness of the "Condor" was that it was static; other ventilators, of which the "Whirly Bird" was an example, relied on moving parts to create the necessary draught to draw out air.  On the other hand, Mr Carbone conceded that he had seen other static ventilators "since these proceedings began" (T63) but the evidence did not establish whether such ventilators had or had not existed prior to the commencement of the proceedings.

     Mr Carbone first became aware of the existence of the "Terminator" in October 1993 as a result of Mr Ritchie sending to him a copy of a brochure advertising the "Terminator" (Ex AAC3).  He flew to Perth and, in the company of Mr Ritchie and Ms Denning, visited "The Home Ideas Centre" on 8 October 1993 where he saw the "Terminator" on display.  In his affidavit dated 1 December 1993 Mr Carbone said of the "Terminator":

     "I examined it.  The basic design was identical to that of the Condor Terminal.  The materials from which 'The Terminator' was made however, were not of the same standard as those used in the assembly of the Condor Terminal but to a casual observer there would be no appreciable difference."

     He also said that he obtained, during the course of his visit to "The Home Ideas Centre", a copy of the brochure advertising the "Terminator".  It was the same as the brochure (Ex AAC3) that had earlier been forwarded to him by Mr Ritchie.   On the following day, 9 October, Mr Carbone, in the company of Mr Ritchie and Ms Denning, visited both respondents at their place of business.  His efforts to have them agree to withdraw the "Terminator" were unsuccessful as was Mr Catt's subsequent letter of 18 October 1993.  That letter was addressed to "Skyforce", as to which the respondents were called upon to make, and are now deemed to have made, the following admissions:

     "12.During the period 15 May 1990 - 25 May 1992 and 9 October 1992 - 28 April 1993 Gillam was the registered owner of the business name 'Sky Force'.

     13.  During the period 25 May 1992 - 9 October 1992 and from 28 April 1993 to date and continuing the respondent Adam Barker (also known as Taha Bashir) ('Barker') was the registered owner of the business name 'Sky Force'."

Exhibit AAC8 to the affidavit of Mr Carbone includes a copy of an undated letter which was addressed to Mr Catt's firm, R.K. Maddern & Associates; I find that it was written in answer to Mr Catt's letter of 18 October.  The letter was typed and there appeared, in the top right hand corner of the first page, the following particulars:

                   "Hexane Pty Ltd T/A

                   SKYFORCE

                   2/939 Albany Highway

                   E'Vic Park WA

                   (Bradley Gillam)"

     The letter concluded with the typed details:

                   "B. Gillam

                   Skyforce"

     There then followed a signature which appears to be "B Gillam".  In view of the failure on the part of the respondents to dispute the contents of the Notice to Admit, I disregard the reference to Hexane Pty Ltd.  The assertion in par13 of the Notice to Admit that the respondent, Mr Barker, was the registered owner of the business name "Skyforce" from 28 April 1993, coupled with the evidence of Mr Carbone of his meeting with both respondents and Mr Gillam's reference to that meeting in the undated letter, satisfies me that in October 1993 and thereafter both respondents were materially involved in the use of the name "Skyforce" and any business that was conducted under that name.

     The case for the applicants included the allegation that there were two versions of the "Terminator"; one had a solid top and the other had a transparent or translucent top.  The applicants acknowledged that, on a date prior to 22 November 1993, the respondents changed the design of the "Terminator" with the solid top by removing the vertical elongated straps and replacing them with a series of horizontal connections.  The applicants now acknowledge that the new version does not constitute an infringement of the patent.  However, it is the case for the applicants that the design of the "Terminator" with the translucent or transparent cover has not changed.

     The case for the applicants is that the respondents' "Terminator" has, like the "Condor", been manufactured, marketed, sold and installed as a roof ventilator or flue cap and that the respondents have, as a consequence, infringed claims 1, 3, 5 and 6 of the complete specification of the patent.The patent has given to the applicants the exclusive rights, during the term of the patent, to exploit the invention: Patents Act 1990 (Cth) s13; and the applicants will succeed in establishing infringement if they prove that the respondents' product, the "Terminator" has taken "each and every one of the essential integers" of the applicants' claim: Rodi & Wienenberger AG v Henry Showell Ltd (1969) 86 RPC 367 at 391; Olin Corporation v Super Cartridge Co. Pty Ltd (1976-77) 14 ALR 149 at 157.

     The evidence of Mr Catt (T.82ff) has satisfied me that the "Terminator", as manufactured, incorporated numerous features of the "Condor" constituting its essential integers.  In particular, as Mr Catt pointed out, both ventilators contain the following features, each of which is to be found within one or other of claims 1, 3, 5 and 6.

-    a plurality of deflectors with each deflector having sloping walls which converge in an upward direction and terminate at the upper end in circular flanges;

-    so arranged in the horizontal that when moving air encounters a deflector, it is deflected thereby to flow upwardly within the flue cap or roof ventilator;

-    elongated retaining means comprising a plurality of circumferentially spaced sheet metal straps ("the straps") extending continuously along the length of the flue with the deflectors secured to the straps;

-    the straps extending internally of the flue terminal and intra-connecting the upper ends of the deflectors;

 -   A cover means at or near the upper end of the flue arranged to inhibit the ingress of rain downwardly.

     I am satisfied that this evidence has established that the respondents' original "Terminator" took each of the essential integers of the "Condor"; the applicants have met the test laid down in Nobel's Explosives Co. Ltd v Anderson (1894) 11 RPC 115 at 128:

     "In order to make out infringement, it must be established, to the satisfaction of the court, that the alleged infringer, dealing with what he is doing as a matter of substance, is taking the invention claimed by the patent: not the invention which the patentee might have claimed if he had been well advised or bolder, but that which he has in fact and substance claimed on a fair construction of the specification."

I find that the respondents and each of them, in causing the original two versions of the "Terminator" to be manufactured, and in marketing, distributing, advertising for sale, selling, supplying and installing those versions of the "Terminator" have infringed claims 1, 3, 5 and 6 of the complete specification of the patent.

The TPA and the FTA

     The applicants further claim that the respondents' conduct from October 1993 has amounted to breaches of ss52, 53 and 55 of the TPA and to breaches of ss10, 12 and 17 of the
"FTA", the equivalent State legislation.  Those legislative provisions, so far as they might be relevant to these proceedings are as follows:

     s52(1)(Cth)

     "A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive".

     s10(1)(WA)

     "A person shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive."

     s53(Cth)

     A corporation shall not, in trade or commerce, in connexion with the supply or possible supply of goods or services -

     (a)  falsely represent that goods are of a particular standard, quality, value, grade, composition, style or model or have a particular history or particular previous use;

          ...

     (c)  represent that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have;

          ...

     s12(1)(a)(WA)

     "A person shall not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services -

     (a)  falsely represent that goods are of a particular standard, quality, grade, composition, style or model or have had a particular history or particular previous use;

     ..."

     s55(Cth)

     "A person shall not, in trade or commerce, engage in
conduct that is liable to mislead the public as to the nature, the manufacturing proceeds, the characteristics, the suitability for their purpose or the quantity of any goods."

     s17(WA)

     "A person shall not, in trade or commerce, engage in conduct that is liable to mislead the public as to the nature, the manufacturing process, the characteristics, the suitability for their purpose or the quantity of any goods."

     The particulars that were pleaded by the applicants in respect of each alleged breach of these statutory provisions were identical; they appear in par26 of the Statement of Claim and are as follows:

     "On 22 November 1993 a servant or agent of the respondents one Dennis Field falsely represented to a potential purchaser of 'the Terminator' at Munster in the State of Western Australia:

     26.1      That the parent company of Condor Ventilation is American

     26.2      That the Condor Terminal was originally patented in America following which it was registered in Australia.

     26.3      That 'the Terminator' is patented.

     26.4      That the Condor terminal is constructed of mild ungalvanised steel and that if the paint is removed from the Condor terminal it will rust.

     26.5      That 'the Terminator' has a better cyclone rating because the Condor terminal is two rings higher.

     26.6      That 'the Terminator' is resistant to cyclonic winds of up to 360 kilometres per hour.

     26.7      That 'the Terminator' has a higher wind rating and cyclone resistance than the Condor terminal and can withstand winds up to 100 kilometres per hour greater than the Condor terminal."

     I accept Mr Carbone's evidence that he and his wife are, and have been, the only shareholders in Man Made and that he was personally instrumental in having the "Condor" terminal originally patented in Australia.  The first two representations, if made, were therefore false as was the third, that is, that the "Terminator" was patented.  Mr Catt explained that he had caused his staff to conduct the necessary searches to verify that no patent had been granted for the "Terminator".  However, I do not regard any of these representations as having any legal consequences.  No evidence was led that would explain how assertions that the "Condor" had an American origin and an American  parent would amount to an actionable breach of any of the statutory provisions that have been particularised - and the same observation can be made  about the false claim that the "Terminator" was patented.  Ms Mitchell's evidence made it clear that her purchase of the "Terminator" was not induced by anything that Mr Field said; nor did she, in anyway, rely on anything he said.  She deliberately engaged in a ploy, at the request of a friend, in the belief - or, at least, in the expectation - that she would be assisting in proving a case of patent infringement.  She did not want any ventilator on her roof - neither the "Terminator" nor the "Condor".  She thought them ugly and thought that they, with a strong wind, might cause damage to her roof. To compound the difficulties of the applicants, it transpired that the version of the "Terminator" that she purchased was the second version with the horizontal straps - the version which, on the applicants' concession, did not infringe the patent.  The last three representations must be dismissed as being, in all probability, mere puffery; the applicants made no attempt to lead any evidence that the "Terminator" was not capable of performing the feats attributed to it by Mr Field; in fact, they abandoned these three claims during the course of final submissions.

     That leaves only the complaint that Mr Field told Ms Mitchell that the "Condor" was constructed of mild ungalvanised steel and that it was susceptible to rust in the circumstances as pleaded.  I accept Mr Carbone's evidence that the "Condor" is constructed of galvanised steel with a non-aging core.  Acceptance of his evidence means that an assertion that it was constructed of mild ungalvanised steel is false.  But that was the extent of the evidence.  In particular, no evidence was advanced about the rust resistant qualities of galvanised steel; that is not a matter that can be classified as coming within the concept of judicial knowledge.  No detailed evidence was led about the "particular standard, quality, grade, composition (or) style" of the "Terminator" nor was any such evidence led that could justify a finding that there had been a false representation that the "Terminator" had "a performance characteristic it does not have".  In my opinion, the evidence does not warrant a finding that there has been a breach of the relevant provisions of either the TPA or the FTA. 

     I have reached this conclusion without considering the
question of the admissibility of Ms Mitchell's evidence.  Having regard to Mr Barker's objection to me receiving this evidence, I set out my reasons why I consider it admissible.  The relevant statutory provisions are to be found in the Listening Devices Act 1978 (WA).  Subsection 4(1) of that Act makes the use of a listening device a punishable offence in certain cases; it states:

     "(1)A person shall not -

          (a)  use any listening device to overhear, record, monitor or listen to any private conversation to which he is not a party; or

          (b)  except in the course of any legal proceedings or in accordance with the provisions of subsection (2) of this section, communicate or publish the substance or meaning of any private conversation overheard, recorded, monitored or listened to by the use of any listening device, whether he was a party to the private conversation or not,

     without the consent express or implied of the parties to the private conversation.

     Penalty: Five thousand dollars or imprisonment for twelve months."

     The term "private conversation" is earlier defined in s3 in these terms:

     "... 'private conversation' means any conversation carried on in such circumstances as may reasonably indicate that the parties to the conversation desire it to be confined to those parties, but does not include a conversation made in any circumstances in which the parties to the conversation ought reasonably to expect that the conversation may be overheard."

     It transpired that there was some doubt, as a result of
Ms Mitchell's evidence, about the identity of the person who "used" the listening device to record Mr Field's conversation. I accept that it was Ms Mitchell who was the principal player; she was the individual who had been requested by Ms Denning to record the conversation; the recording was conducted in the kitchen of her home and, although her husband made some occasional remarks, she was the major participant along with Mr Field in the conversation.  But the listening device that was used was her son's "Ghetto Blaster" and it was her son who activated the machine for the purpose of recording the conversation.  Mr McNamara sought to dismiss this as a matter of no consequence, submitting that the son's action was merely the physical manifestation of his mother's decision and her control of the situation.  There is force in this submission but the matter is not free from doubt; consider what might have been the situation in a criminal context where the party who activated the listening device was (say) a police officer!  The age of Ms Mitchell's son was not stated but the extent of his involvement in the transaction was limited to activating the machine and then leaving the kitchen with his brother.  Probably, it was Ms Mitchell who, as a matter of law, was the person who used the device and in that case she became the person who recorded a private conversation to which she was a party.  Should I be wrong however, and in the event that it was her son who "used" the device, then there is the potential for the commission of an illegal act; the son was not a party to the conversation.  In those circumstances I would exercise my discretion, notwithstanding the illegality and receive the tape recorded conversation into evidence:  Bunning v Cross (1977-1978) 141 CLR 54; Miller v Miller (1977-1978) 141 CLR 269.

Passing off

     The characteristics of the tort of passing off are stated in the decision of the House of Lords in Erven Warnink Besloten Vennooteschap v J Townend & Sons (Hull) Ltd [1979] AC 731.  At p742, Lord Diplock said:

     "... later cases make it possible to identify five characteristics which must be present in order to create a valid cause of action for passing off: (1) a misrepresentation (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill or another trader (in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so."

     A year later, the Privy Council addressed the subject of passing-off in Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1980] 2 NSWLR 851.  Lord Scarman, in delivering the advice of the Privy Council referred to various United Kingdom authorities, including Warnink v Townend (supra) and the decision of the High Court in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Pty Ltd (1977-1978) 140 CLR 216.  His Lordship then said:-

     "The width of the principle now authoritatively recognized by the High Court of Australia and the House of Lords is, therefore, such that the tort is no longer anchored, as in its early 19th century formulation, to the name or trade-mark of a product or business.  It is wide enough to encompass other descriptive material, such as slogans or visual images, which radio, television or newspaper advertising campaigns can lead the market to associate with a plaintiff's product, provided always that such descriptive material has become part of the goodwill of the product." (p858)

     Later his Lordship added at p859:

     "As always in a 'passing-off' action the ultimately critical question was one of fact.  The critical question in this case proved to be: were customers or potential customers led, by the similarities in the get-up and advertising of the two products, into believing that 'Pub Squash' was the Cadbury-Schweppes product.  Or, if no deception be proved, was there a real probability of deception?"

     Unlike the "Pub Squash" case, consumer evidence of deception or confusion was not led in this case.  However, such evidence, whilst it might be of assistance, is not essential, for it can never be conclusive: Hogan v Pacific Dunlop Ltd (1988) 83 ALR 403 at 415 per Gummow J and, on appeal, sub.nom. Pacific Dunlop Ltd v Hogan (1989) 23 FCR 553 at 561 per Shepherd J.  The explanation for this is to be found in the speech of Lord Diplock in General Electric Co (of U.S.A) v General Electric Co Ltd [1972] 1 WLR 729 at 738:

     "But where goods are sold to the general public for consumption or domestic use, the question whether such buyers would be likely to be deceived or confused by the use of the trade mark is a "jury question".  By that I mean: that if the issue had now, as formerly, to be tried by a jury, who as members of the general public would themselves be potential buyers of the goods, they would be required not only to consider any evidence of other members of the public which had been adduced but also to use their own common sense and to consider whether they would themselves be likely to be deceived or confused.

     The question does not cease to be a 'jury question' when the issue if tried by a judge alone or on appeal by a plurality of judges.  The judge's approach to the question should be the same as that of a jury.  He, too, would be a potential buyer of the goods.  He should, of course, be alert to the danger of allowing his own idiosyncratic knowledge
or temperament to influence his decision, but the whole of his training in the practice of the law should have accustomed him to this, and this should provide the safety which in the case of a jury is provided by their number.  That in issues of this kind judges are entitled to give effect to their own opinions as to the likelihood of deception or confusion and, in doing so, are not confined to the evidence of witnesses called at the trial is well established by decisions of this House itself."

     It is not essential for the applicants to prove that the respondents misrepresented the "Terminator" as being the applicants' "Condor".  As Lord Jauncey explained in Reckitt and Colman Products Ltd v Borden Inc [1990] 1 WLR 491 at 510-511:

     "It is sufficient that he misrepresents his goods in such a way that it is a reasonably foreseeable consequence of the misrepresentation that the plaintiff's business or goodwill will be damaged."

     Thus the facts in Hogan v Pacific Dunlop (supra), which dealt, in the main, with a television advertisement for shoes and a claimed relationship to the lead character in the film "Crocodile Dundee", led Gummow J to emphasise that the passing-off action -

     "... is concerned with misrepresentation, and with a particular type of misrepresentation involving use of the image or indicium in question to convey a representation of a commercial connection between the plaintiff and the goods or services of the defendant, which connection does not exist." (p426)

This emphasis upon a commercial connection can be traced back, indirectly, to the remarks of Goff LJ in H P Bulmer Ltd and Showerings Ltd v J Bollinger SA and Champagne Lanson Pere et Fils (1978) 95 RPC 79 at 117 -

     "Not every kind of connection claimed will amount to passing off; for example if one says that one's goods are very suitable to be used in connection with the plaintiff's.  On the other hand in my view there can be a passing off of goods without representing that they are actually the well-known goods which the plaintiff produces or a new line which he is supposed to have started.  It is sufficient in my view if what is done represents the defendant's goods to be connected with the plaintiffs in such a way as would lead people to accept them on the faith of the plaintiff's reputation...

     Of course, in order to found a case in passing off the plaintiff must prove that the name or get-up on which he relies has acquired a reputation with the public, or some appreciable section or part of the public, as denoting his goods or business, though it is not necessary that they should know who he is or who carried on the business, or even where..."

     I am satisfied that the applicant's "Condor" had acquired, well before 1993, a reputation with an appreciable section of the public; I accept Mr Carbone's evidence on this subject.  That evidence included an impressive list of some of his bigger commercial customers.  The oral and documentary evidence that was tendered established that the "Condor" had an established place in the roof ventilation market.

     I return then to the Lord Diplock's characteristics of a passing-off action.  In these proceedings it would seem that it is the first, a misrepresentation, and the fifth, damage to the business or the goodwill of the applicants, that are the issues that require consideration.  If it be found that the respondents made the relevant representation it can safely be assumed that they did so as traders to prospective customers, thus satisfying the second and third tests.  It would also probably be safe to assume that such a representation was calculated to injure the business or goodwill of the applicants, thereby satisfying the fourth test.  It was a reasonably foreseeable consequence, because of Mr Gillam's previous involvement for three months with Air Transfer, that the respondents entry into the roof ventilation market as a competitor would be calculated to injure the business or goodwill of the applicants; there had been a strong commercial connection between "Condor" and Mr Gillam.  I hold therefore that the fourth test has been met.

     There is no evidence about the extent of the sales of "Terminator" products since they entered the market.  Roof ventilation is not a specialty business that had been the exclusive province of the applicants.  Incidental references were made to the existence of other competing lines.  And even if one infers that the mere entry into the market by the "Terminator" would, by its sales, cause actual damage to the "Condor", there was no evidence of any misrepresentation.  For example, the  evidence of Ms Mitchell, as a purchaser, had the unexpected effect of establishing that, in her case, there was no passing-off; she knew the difference between the two products.  I am not prepared to find, on the balance of probabilities, that the fifth test has been met; I am not satisfied that it has been proved that the respondents' entry into the market caused actual damage to the business or goodwill of the applicants. 

     As I have said, it is not essential for the applicants to prove that the respondents misrepresented the "Terminator" as being the applicants' "Condor".  It will be sufficient if the "Terminator" was presented in such a way that it would have been a reasonably foreseeable consequence that the applicants would suffer damage.  The difficulty that confronts the applicants in these proceedings is the lack of evidence about the manner in which the respondents presented their "Terminator".  If they presented it in the manner in which Mr Field presented it to Ms Mitchell then there would not have been any misrepresentation.  There was evidence of other sales but there was no evidence of the circumstances surrounding those sales; it is not even clear whether the sales were of infringing or non-infringing versions of the "Terminator".  The degree of proof that is required is not great.  A visual examination of the two products shows up their striking similarity and "... when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive": Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at 657 per Dixon and McTiernan JJ.  But the evidence has failed to meet this threshold.

     It is not necessary to prove that substantially all persons would be deceived nor is it a defence to a passing-off action to prove that some were not deceived:  Saville Perfumery Ltd v June Perfect Ltd and F W Woolworth & Co Ltd (1941) 58 RPC 147 at 175-6; Norman Kark Publications Ltd v Odhams Press Ltd [1962] 1 WLR 38.  But there was insufficient evidence to satisfy me that there was a real probability that a significant number of uninformed members of the public would be deceived and confused.  I know only that the "Condor" and the "Terminator" look alike, that there were two versions of the "Terminator", one of which infringed the "Condor" patent and one that did not and that there had been sales of the "Terminator" (presumably both versions).  But that is the limit of the evidence.  I do not consider that to be sufficient to find the tort of passing-off established.

Copyright

     Exhibit AAC2 is the brochure that has been used by the applicants to advertise the "Condor" since late 1992.  Its predecessor was Ex BNG4; that brochure was exhibited to an affidavit that Mr Gillam had filed in these proceedings during an interlocutory dispute.  I received that exhibit and the relevant passages from the affidavit as evidence in the trial upon the application of counsel for the applicants: Trade Practices Commission v TNT Management Pty Ltd (1984) 56 ALR 647.  In his affidavit, Mr Gillam said that the "Condor" brochure with which he was familiar, while working for Air Transfer in early 1993, was Ex BNG4.  I do not think that this is a matter of concern; counsel for the applicants prepared a very helpful summary which summarised and compared the contents of Ex AAC2 and Ex BNG4.  The former is substantially the same as the latter; it is very easy to accept it as a subsequent "edition".  For practical purposes, the applicants' case is neither advanced nor retarded by choosing to compare the brochure that was compiled by the respondents (the "Terminator" brochure") with either Ex AAC2 or Ex BNG4.

     As an example, the following passage appears in both of the applicants' brochures:

     "Healthy living and well being is primarily dependent on oxygen which can only be present in fresh replacement air."

An example of a variation in the two "Condor" brochures can be appreciated by comparing the following passages; the first is from the earlier edition, Ex BNG4 and the second comes from the later version, Ex AAC2. 

     "The ventilator is called a Condor Terminal and has no moving parts. The Condor's ability to convert wind energy using the Venturi principle is unique, to the extent that an Australian Patent has been granted preventing unauthorised copy".

In the new brochure that subject was presented with the following modifications:-

     "The Condor roof ventilator's ability to convert wind energy using the Venturi principle is unique and revolutionary to the extent that an Australian Patent has been granted preventing unauthorised copy.

     The roof ventilator is called a Condor Terminal".

     Mr McNamara, in his closing address, submitted an aide memoire that compared the contents of the "Terminator" brochure with Ex AAC2; I will, likewise, rely on Ex AAC2 and the "Terminator" brochure for the purpose of investigating the alleged infringement of copyright.

     The applicants have pointed to six passages of prose in the two brochures, as well as to some diagrams, arguing that they are sufficient to warrant an inference of copying.  That the diagrams are virtually identical is not surprising in view of the earlier finding of patent infringement.  The passages in the respective brochures are as follows:-

     There are, as is readily apparent, adroit changes in terminology and construction of these comparable passages, but it is abundantly clear that they address a common subject in language that is substantially the same.  In some respects that is to be expected because both brochures relate to the same object and the principles of heat, energy and wind dynamics, being relatively common place, do not permit of much variation.  But when one adds to the similarity of the literature, the finding of patent infringement, the respondents' admission of access to the applicants' advertising material, the identical pictorial representations of the "Condor" and of the "Terminator" and virtually identical "wind-flow" diagrams, one leaves the bounds of coincidence and enters the field of plagiarism.  As counsel for the applicants submitted, access to the applicants' material and the striking general similarity between the two works makes out a prima facie case of infringement; an evidentiary onus then shifts to the respondents to displace that prima facie case: L B (Plastics) Ltd v Swish Products Ltd (1979) 96 RPC 551 at 619 and 624-625.  The respondents failed to meet that onus: nor did they put into evidence any art work or working papers suggesting any independent origin for their brochure.

     Whether the brochure is properly described as an "artistic work" as asserted by the applicants, or as a "literary work", s31 of the Copyright Act 1968 (Cth) identifies "copyright" as the exclusive right to reproduce the relevant work in a material form.Section 36 of the Act deals with the subject of infringement.  It provides as follows:

     "36(1) Subject to this Act, the copyright in a literary... or artistic work is infringed by a person who, not being the owner of the copyright, and without the licence of the owner of the copyright, does in Australia, or authorises the doing in Australia of, any act comprised in the copyright."

Infringement of a literary or artistic work will occur when there is an unauthorised act; one such act can be the reproduction of work in a material form (subpars31(1)(a)(i) and (b)(i)); another unauthorised act with respect to a literary work can be the adaptation of the work (subpar31(1)(a)(vi)).  And, any reference to reproduction or adaptation extends to the reproduction or adaptation of a substantial part of the relevant work (par14(1)(b)).  What is substantial for the purposes of the Act is determined on a qualitative basis rather than a quantitative basis: Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 All ER 465 per Lord Reid at p469; per Lord Pearce at p.481; S W Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466 at 474 (per Gibbs CJ).

     A comparison between the two brochures shows that there are areas of difference.  But that fact alone will not prevent a finding of infringement.  In Blackie & Sons Ltd v Lothian Book Publishing Co Pty Ltd (1921) 29 CLR 396 Starke J found that the defendant had infringed the plaintiff's copyright notwithstanding -

     "... that the defendant's book was the result of some independent knowledge and considerable labour, research and skill on the part of Professor Brereton." (p400)

His Honour went on to point out that it was still possible, "owing to ignorance of the copyright law or carelessness" that the defendant made more use of the plaintiff's book than could be justified.  Both books were annotated copies of Shakespeare's "Henry the Fifth" and both were destined for the "education" market.  Starke J listed, in general terms, those parts of the defendant's work which were not copied from the plaintiff's book - such as the plan and arrangement of the book and the text of the play - and likewise listed those parts which were either copied or taken "under a colourable disguise".  His Honour commented at p403 that the "quantity of notes taken [was] not very considerable"; nevertheless he was still able to find that the appropriation of the plaintiff's labour and research was "substantial and material" (p404).

     In my opinion the applicants have established infringement and are entitled to relief.  The diagrams and the substance and subject matter of the six passages of prose, amount to a "substantial and marterial" appropriation of the applicants' work.

Design

     The final cause of complaint relates to Mr Barker's registered design.     In par42 of the Statement of Claim it was pleaded as follows:-

     "42. The design of "the Terminator" purported to have been registered by Barker:

     42.1contains no novel design features;

     42.2contains no original design features;

     42.3bears close resemblance to 'the Condor terminal'."

This allegation was the basis for the claim that the design of the "Terminator" was not "proper for registration" pursuant to the provisions of s39 of the Designs Act 1906 (Cth).  Paragraph (1)(b) of that section empowers this Court to order rectification of the Register of Designs by (inter alia) expunging "any entry wrongly made in or remaining on the register."

     Section 17 of the Designs Act allows for the registration of "a new or original design".  But registration will not be permitted if the design is (inter alia) "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" (emphasis added).  There are two diagrams annexed to the registered design.  They purport to represent a "Ventilated Skylight" - that being the name given to the article in respect of which the design was registered.  The Statement of Monopoly was in these terms:-

     "I claim a monopoly in the shape and configuration of the Ventilated skylight as shown in the representations."

The applicants mounted two attacks on the design, both of which, in my opinion, must succeed.  First they submitted, because of the earlier existence of the "Condor", that the design contained no new or original design features.  Secondly, they submitted that a close analysis of the two diagrams or representations reveals three major differences sufficient to justify a finding that there were two (not one) designs presented for registration.  It is explicit in the definition of the word "design" and implicit from a consideration of the Act as a whole, that the Designs Act permits of only one design in respect of each application and each registration.

     As to lack of novelty, Mr Catt, in his report dated 7 April 1994 said:-

     "Looking at the prior art of which I am aware, all of which appears to have been published well prior to Mr Barker's filing date of 26th February 1993, I am satisfied that it was known, prior to the relevant date, to manufacture roof ventilators having a plurality of annular conical sections held in vertical alignment by means of three or more elongate metal straps which extend vertically through the interior of the unit.  It was also well known, prior to the relevant date, for the vertical array of conical sections to be supported by a base mounting comprising a tubular support collar or spigot which in turn is supported on a base mounting plate, the shape of which varies according to individual roof requirements and the location of the unit on the roof.  It was also well known for ventilators of the aforesaid type to be fitted to the upper end of a flue which is used in association with an oil heater/gas heater or the like (as is clearly disclosed in Mr Carbone's patent No. 564597)."

In other words, the effect of this evidence, which I accept, is that the subject matter of any claim for monopoly in the registered design was anticipated by Mr Carbone's patent some ten years earlier.  A practical manifestation of this conclusion is the striking similarity between the conceptual designs and the photographic reproductions of both the "Condor" and the "Terminator".

     An examination of the two diagrams or representations that accompanied the application for the registration of the design show material differences.  Mr Catt addressed these differences in his evidence.  He said that he had considered, but rejected, the possibility that these may have been the result of ineptitude in the preparation of the diagrams.  Each was, of course, presented as a two-dimensional representation of a roof ventilator; both depicted a mounting base.  In the first of the diagrams the lateral extremities of this base are noticeably less than the width of the conical deflectors; in the other, the mounting base was almost half as wide again, extending laterally, well beyond the width of the deflectors.  In the first diagram there is provision for three vertical straps but only one appears in the second diagram.  Finally the sides of the conical deflectors change from straight-edge in one diagram to a curve in the other.  The need for certainty in any application to register a design is best explained by quoting from Kitto J in In Re Wolanski's Registered Design (1953) 88 CLR 278 at 279:-

     "...what the proprietor of a design gets by its registration is a monopoly for one thing only, and that is 'one particular individual and specific appearance'."

In my opinion, the two diagrams necessarily permit differences of shape "and this spelled invalidity": Bondor Pty Ltd v National Panels Pty Ltd (1991) 102 ALR 65 at 70.

     I will refrain from entering judgment for the time being so that the parties may have the opportunity of considering the nature of the orders and declarations that will be appropriate in the circumstances; the issue of costs will also have to be considered.  I direct the applicants to file and serve short minutes of order, consistent with the conclusions I have reached, within fourteen days of this date.  Thereafter any party is at liberty to apply to have the matter relisted for mention on seven days notice.

                             I certify that this and the      preceding pages are a true copy of the Reasons for Judgment of Justice O'Loughlin.

                             Associate

                             Dated:

Counsel for the Applicants   :    Mr P. A. McNamara

Solicitors for the Applicants     :    Fisher Jeffries

The Respondent Bradley Neville Gillam did not appear.

The Respondent Adam Barker appeared in person.

Hearing Dates                :    26, 27 and 28 June 1995