Richsell Pty Ltd v Khoury D. [1995] FCA 781

CATCHWORDS

DESIGNS - design registration in the shape and configuration of articles of furniture - furniture varied only slightly from prior art - whether designs were "new or original" within the meaning of s.17(1) Designs Act 1906 (Cth) - whether registration could be limited to features noted in the statement of novelty - registration under s.17(1) Designs Act "in respect of an article" - backrest cushion not "made separately" with the meaning of "article" in s.4(1) Designs Act - whether variations from prior art were mere trade variations - whether distinctiveness of appearance over prior art - weight to be accorded by an appellate court to a trial judge's findings

Designs Act 1906 (Cth) - s. 4(1), s.17(1), s.28

British Franco Electric Pty Ltd & Anor v Dowling Plastics Pty Ltd (1981) 1 NSWLR 448

Dalgety Australia Ltd v F F Seeley Pty Ltd (1986) 10 FCR 403

Dart Industries Inc & Anor v The Decor Corporation Pty Ltd (1989) 15 IPR 403

Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 103 ALR 239

S W Hart and Co Pty Ltd v Edwards Hot Water Systems (1985) 59 ALJR 729

Macrae Knitting Mills Limited v Lowes Limited (1936) 55 CLR 725

Malleys Ltd v J W Tomlin Pty Ltd (1962) 180 CLR 120

J Rapee & Co Pty Ltd v Kas Cushions Pty Ltd (1989) 15 IPR 577

D Sebel & Co Ltd v National Art Metal Co Pty Ltd (1965) 10 FLR 224

Turbo Tek Enterprises Inc v Sperling Enterprises Pty Ltd (1989) 15 IPR 617

Wanem Pty Ltd v John Tekiela (1990) 19 IPR 435

RICHSELL PTY LTD v DAVID KHOURY

QG5 of 1995

Davies, Spender & Whitlam JJ

25 September 1995

Brisbane

IN THE FEDERAL COURT OF AUSTRALIA )

)

QUEENSLAND DISTRICT REGISTRY ) No QG5 of 1995

)

GENERAL DIVISION )

On appeal from a decision of a single judge of the Federal Court of Australia

BETWEEN: RICHSELL PTY LTD

Appellant

AND: DAVID KHOURY

Respondent

Coram: Davies, Spender & Whitlam JJ

Date: 25 September 1995

Place: Brisbane

MINUTES OF ORDER

THE COURT ORDERS THAT

The appeal be dismissed with costs.

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

IN THE FEDERAL COURT OF AUSTRALIA )

)

QUEENSLAND DISTRICT REGISTRY ) No QG5 of 1995

)

GENERAL DIVISION )

On appeal from a decision of a single judge of the Federal Court of Australia

BETWEEN: RICHSELL PTY LTD

Appellant

AND: DAVID KHOURY

Respondent

Coram: Davies, Spender & Whitlam JJ

Date: 25 September 1995

Place: Brisbane

REASONS FOR JUDGMENT

Davies & Whitlam JJ: This is an appeal from a judgment of a judge of the Court (Kiefel J) in which Her Honour dismissed a claim for design infringement and ordered that three design registrations of the appellant, Richsell Pty Ltd ("Richsell"), be expunged from the Register of Designs.

Richsell's designs, the subject of the proceedings, related to a range of lounge furniture marketed under the brand name "Sherwood". Richsell sought to restrain the respondent, David Khoury, from producing a similar range of furniture called the "Berlina". Richsell alleged that there had been an infringement of its design monopoly in the
"Sherwood" range and it sought an account of profits or damages. At the trial, Mr Khoury was successful in his cross-claim as to the validity of the registration of Richsell's designs. The learned trial Judge held that the three registered designs constituted only a slight variation of a previously existing range of chairs called the "Apollo". Her Honour concluded that the "Sherwood" designs had not, at the priority date, possessed the requisite distinctiveness of appearance and ordered that the entries on the Register be expunged. As a consequence of her Honour's decision, the question whether the respondent's "Berlina" range breached the registered designs was not considered.

Richsell's three designs were registered separately. Registered design no. 114864 was a design in respect of an upholstered lounge suite. Registered design no. 115706 related to the single seater chair of the suite. Registered design no. 115707 related to the two-seater lounge of the suite.

The applications for each of the designs 115706 and 115707 included a statement of novelty. In respect of 115706 it was:

"Novelty resides in the shape and configuration of the backrest cushion which includes a plain lower lumbar support portion "A" separated from an upper backrest 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 armrests with the base of the seat."

In respect of 115707 it was:

"Novelty resides in the shape and configuration of the backrest cushion which includes a plain lower lumbar support portion "A" separated from an upper backrest portion "B" which diverges downwardly between the padded ruffled sections, each padded and 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 armrests with the base of the seat."

The priority date for the designs was 30 December 1991.

Section 17(1) of the Designs Act 1906 (Cth) provides:

"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 adaption 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."

"Design" is defined in s.4(1) as:

"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" is defined in s.4(1) as:

"in relation to a registered design, means the exclusive right to apply the design to an article in respect of which the design is so registered."

All three of the design applications claimed a monopoly in "the shape and configuration" of the articles of furniture "as illustrated in the accompanying representations". As Her Honour found, the representations were "of the front, back and side perspective of each of the chairs therein depicted. The whole of the chair [was] thereby disclosed."

The trial Judge concluded:-

"I turn then to the applicant'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 imparting the character of novelty, a distinctiveness or individual appearance, such 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 is of slight variation of the "Apollo". There is 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." (emphasis added)

Mr Morris, counsel for Richsell, has submitted that the monopoly was limited by the statement of novelty being the features of the backrest cushion noted in the statement of novelty. However, the effect of the registrations was to accord to Richsell the exclusive right to apply to furniture the features of shape and configuration of furniture as disclosed by the representations of the designs. The monopoly related to the furniture as a whole: see Macrae Knitting Mills Limited v Lowes Limited (1936) 55 CLR 725 at 730-731; Fisher & Paykel Healthcare Pty Ltd v Avion Engineering Pty Ltd (1991) 103 ALR 239; D Sebel & Co Ltd v National Art Metal Co Pty Ltd (1965) 10 FLR 224 at 228; Dalgety Australia Ltd v F F Seeley Pty Ltd (1986) 10 FCR 403 at 406; Wanem Pty Ltd v John Tekiela (1990) 19 IPR 435 at 439-440; Turbo Tek Enterprises Inc v Sperling Enterprises Pty Ltd (1989) 15 IPR 617 at 636. The registration of each design therefore signified that the furniture so described was distinctive as a whole, owing to the features of novelty identified in the statement. If the registration of a design of furniture, considered as a whole, is not supported by s.17 Designs Act, then the registration may cancelled: Macrae Knitting Mills Limited v Lowes Limited.

In Malleys Ltd v J W Tomlin Pty Ltd (1962) 180 CLR 120, the Court considered that a "substantial difference" was required between the prior art and the design in order for it to be considered "new". In Dalgety Australia Operations Ltd v F F Seeley Nominees Pty Ltd Beaumont J, with whom Neaves J agreed, referred with approval to the trial judge's assessment that a registered article was significantly different from the fundamental form of the article. In other cases the "distinctiveness" of the article over the prior art has been considered the appropriate test: see Macrae Knitting Mills Ltd v Lowes Ltd at 731; British Franco Electric Pty Ltd & Anor v Dowling Plastics Pty Ltd (1981) 1 NSWLR 448,461; Dart Industries Inc & Anor v The Decor Corporation Pty Ltd (1989) 15 IPR 403. In J Rapee & Co Pty Ltd v Kas Cushions Pty Ltd (1989) 15 IPR 577 as 588 Gummow J expressed the principle to be applied in this way:-

"From the time of the early decisions construing the British Act of 1883, (which in s 47 authorised registration of new or original designs), the courts have required, initially as something of a gloss upon the statute, `substantial' novelty, having regard to the registerability of new combinations of old design elements: see Le May v Welch (1884) 28 Ch D 24 at 34-5, per Bowen LJ. Allied to this was a reluctance to treat as valid, designs which embodied trade variations. Thus, in Simmons v Mathieson & Co Ltd (1911) 28 RPC 486 at 489, Fletcher Moulton LJ said `It was never intended that persons in their trade, in which they are not only justified in using but bound to use the skill, which they have acquired during years of practice, in making variations of the shape of the articles they produce, should be harassed by persons claiming a monopoly in designs if those are really matters that are open to the public. You must have something new before the law will allow you to get any monopoly at all".

Counsel for Richsell submitted that the two furniture manufacturers, Richsell and Khoury had independently considered that a market existed for a new range of furniture products featuring the backrest design of the "Sherwood" range. This was in the context of a market which already included what her Honour identified as the prior art from which the "Sherwood" was developed, namely the "Apollo" range. There were also other designs in evidence before her Honour including the "Tazman", which came after the Apollo and was partly the basis for the development of the "Sherwood", and also of the "Fjord" and the "Chantel".

Mr Stephen Dyer was a member of the design team for the Sherwood suite at Van Der Beld The Furniture Company ("Van Der Beld"). He described the process in which the "Sherwood" design came into existence, developed as it was from the "Tazman" range which had in turn been based on the frame of the earlier "Apollo" range.

The development process for the "Sherwood" was said to have involved detailed consultation with furniture manufacturers and a gradual development of the final design over a period of months from September through to December 1991. Mr Dyer deposed to a number of research and development meetings held at Van Der Beld in which the design development of the "Sherwood" was discussed. For example, Mr Dyer referred to a research and development meeting held on 15 November 1991 in which he said the "retailers had requested that the moreno version [of the Sherwood] be more wrinkly than the fabric [of the back cushion]." Mr Dyer remembered "later alter[ing] the design of the Sherwood using the moreno vinyl, to make the back cushion more `wrinkly'."

It was in this sense that counsel for Richsell submitted that the working through of the final design of the Sherwood was not a mere putting together of existing design features, but rather one which had involved a degree of thought, preparation and consultation in order to arrive at a product which would have market appeal.

Counsel also referred to the evidence of Associate Professor Vesna Popovic's second report which compared the "Apollo" range with the "Sherwood" single and double-seater chairs. Professor Popovic's report concluded in respect of the double-seater model that:

"In general most of the key global and local features of the ARD design are not incorporated and present in the "Apollo" double-seated lounge chair sample. Key global differences are present. The first is the back of the product sample The backrest cushion is raised more than represented in the ARD designs. The second difference is the ruffled surface on the middle part of the seating support. The difference is shown between the "Apollo" double-seated lounge chair sample and ARD No 115707, "Sherwood" ("D"), "Apollo"("A") and "Chantel" (Decor's version of the "Apollo"). The main difference is shown in on the upper backrest portion which consists of a padded section with a strong horizontal division in the middle. This difference has a strong impact on the overall product appearance."

There was, needless to say, evidence to the contrary, but we need not describe it.

In Dart Industries Inc v Decor Corporation Pty Ltd (1989) 15 IPR 403 at 408-9, Lockhart J described the general approach which the Court should take:-

"The design is the mental conception conveyed to the mind by the eye; it is the mental picture of the shape, configuration, pattern or ornament of the article to which the design has been applied: Pugh v Riley Cycle Co (1912) 29 RPC 196 per Parker J at 202. For a design to be protected there must be a special or distinctive appearance, something in the design which captures and appeals to the eye. To have that effect, the design must be noticeable and have some perceptible appearance of an individual character: AMP Incorporated v Utilux Pty Ltd, supra. In Firmagroup Australia Pty Ltd v Byrne & Davidson Doors (Vic) Pty Ltd, supra, at 37-8 I discussed the cases dealing with the meaning of design and the manner in which the effect of its infringement is to be judged. I there referred to some divergence in the authorities as to whether the matters are to be judged by the eye of the court or by the eye of somebody else, such as an expert witness, or people in the trade or business which deals with the article made from or by the application of the registered design, or the eye of the ultimate consumer of the product. I stated that in my view, the law in Australia concerning that question was that it is for the court to determine the meaning of a design in proceedings under the Act, whether the central question be the meaning of the design, novelty or infringement. I observed that, while some designs are simple so that the court needs no expect evidence to interpret them, other designs are complex and judges require technical assistance in order to understand them. Such evidence is plainly admissible, but ultimately it is for the court to rule on the meaning of a design. Similarly, prior art may be a fairly simple matter in
a particular case, requiring little or no technical evidence. On the other hand, the understanding and interpretation of prior art may call for expert assistance to be provided to the court for similar reasons. I see no objection in an appropriate case to evidence being received from persons in the relevant trade or industry or members of the public directed to the question of infringement; but it is for the court to determine that question with or without such evidence."

Counsel for Richsell relied upon the remarks of Jacobs J in D Sebel & Co Ltd v National Art Metal Co Pty Ltd (1965) 10 FLR 224 at 227 that:-

"It is also true no doubt that a mere conjunction of old features does not necessarily result in a new design. However, it may do so and it seems to me that when one is dealing with furniture design, with the obvious limitations that exist in the addition of new features, one should not be astute to deny novelty upon the ground that there is not some wholly new feature of design incorporated. Design in such a field is a subtle thing and, provided it is distinctive to the trained eye, I think that registration should not be denied in view of the element of subtlety which is involved in the combination of old features in a particular way and the manner in which they are combined."

However, our own impression of the designs, limited as it is to the examination of mere photographs and representations, accords entirely with the conclusion reached by the trial Judge. The Sherwood designs appear to be identical with the Apollo designs save as to the back cushion. The structure of the furniture is identical and those elements in the structure which gave the Apollo suite a quite distinctive look were incorporated into the Sherwood design. The difference with the Sherwood is in the design of the upper-back cushion. The overall dimensions appear to have remained about the same. However, the Apollo cushion has a horizontal line drawn across much of the centre of the cushion, achieved by pulling the fabric in. A semi-division of the cushion was achieved in this way. The upper backrest cushion of the Sherwood design omits this horizontal feature. This cushion on the Sherwood lounge has two padded ruffled centre sections divided by plain central and end sections, the separations being effected by converging vertical lines. The cushion on the chair omits the centre division but is otherwise similar. The differences
in the design, therefore, appeared in the upper backrest cushion above the armrests on the chairs and the lounge.

This change did not alter the principal basic features which made the Apollo distinctive. Looking at the photographs, it seems to us that the designs of the Sherwood and Apollo chairs and lounges are the same, save that the Sherwood has adopted a trade variant for the upper back cushion. We use the term "trade variant" as referring to a variation which a competent craftsman could achieve if he or she wished to do so. The upper back cushions are certainly different but the Sherwood cushion does not strike us as being a particularly distinctive feature. It may be that the design of the Sherwood cushion is novel, in the sense that the precise combination has not previously been achieved. But the elements, nevertheless, are not surprising, unusual or unfamiliar. The impression we have is that the fundamental design of the Apollo is unchanged, merely that there has been a change in appearance to one part of the articles. Even the feature of ruffling of the fabric was maintained, even enhanced in the Sherwood designs.

We draw a conclusion similar to that drawn by Gummow J in J Rapee & Co Pty Ltd v Kas Cushions Pty Ltd. In that case, his Honour held designs not to be valid as all of the features were well known and commonly used in the trade prior to the priority date. At 590-1, his Honour said:-

"What has happened here may properly be described as the adoption of features commonly used in the trade and the registration of designs for combinations thereof. It is true, as the witnesses agreed, that no particular one of the publications relied on sufficiently discloses chair pads of the squarish shape of the designs with tufting points effected by circular stitching. But this method of tufting was well known and used with other cushions and chair pads, for example, the Eos product (Ex 8). The use of this method of tufting rather than buttoning and straight stitching, in my view, would not present an effect which went beyond the impression of a substitution of a known
alternative: cf Sebel & Co Ltd's Application (No 2), supra, at 24. As I have said, something may not be a not immaterial detail but may still be a variant commonly used in the trade."

This view is also supported by some of the expert evidence. For example, Mr S.A. Nievandt, who had at one time been employed by Mr Khoury but was at the time of the proceedings employed by the manufacturer of the Sherwood suite, gave this evidence:

"Are you saying that there are other suites which have the features which are common to the Sherwood and to the Berlina?---Well, the Sherwood is just an Apollo suite just with a small facelift, that's all it is.

...

And are you aware of any other models which would have those features which are common to the Sherwood and the Berlina as regards the back rest?---Well, that back cushions - there's several suites out there with configuration of a gathered section at the centre of the head rest. After all you don't need an IQ of 150 to work out that small feature on the suite. It's a simple feature that probably if you got a line of 10 designers, and designers gave them that same frame and same arms and the same back, I'd guarantee probably six out of 10 designer would come up with that exact same back cushion. It's just the standard requirements.

...

No. What is the answer to it?---Oh, the answer is that it is not unique in its own look. Okay? There is plenty out there ---"

This was strong evidence as it came from a designer who had been working in the field and was well acquainted with the Apollo, Sherwood and Berlina designs.

We agree with the conclusion reached by the trial Judge. It is to be kept in mind, moreover, that an appellate court should give particular weight to the finding of a trial judge who has had an opportunity to view and compare the subject articles as her Honour did. This Court has had the benefit only of photographs of the chairs and
lounges. Her Honour was able to inspect the furniture. As Gibbs CJ said in S W Hart and Co Pty Ltd v Edwards Hot Water Systems (1985) 59 ALJR 729 at 733:-

"The nature of the issue, involving as it does matters of impression, is one in which particular respect and weight should be given to the decision of the trial judge unless some error in his judgment has been demonstrated."

It follows that Richsell's designs should be expunged from the register as they were neither new or original as at the priority date.

Counsel for Richsell has submitted that, were the Court to be of the opinion that the registrations of the designs should not stand in their current form, then the Court should make an order under s.28 of the Designs Act to confine the registrations to a monopoly in the design of the backrest cushion. This submission necessarily fails. In the first place, there was no application before the trial Judge to amend the registration. Secondly, there was no finding by her Honour that the design of the upper back cushion was new or novel at the priority date. Thirdly, under s.17, a design may only be registered "in respect of an article". "Article" is defined in s.4(1) as "any article of manufacture and includes a part of such an article if made separately." The relevant cushion in respect of which registration was sought was simply an integral part of the chair and of the lounge. It was not made separately. The extension to "a part of such an article if made separately" is intended to deal with items such as buttons and handles which are made separately but are intended to be incorporated into other articles. It is therefore unnecessary to consider whether there are circumstances in which the Court could order under s.28 that an amendment be made to a registered design or to the specification of the article in respect of which the design was registered.

For these reasons, the appeal should be dismissed with costs.

I certify that this and the preceding pages

are a true copy of the reasons for judgment of

the Honourable Justices Davies & Whitlam.

Associate:

Date: 26 September 1995

IN THE FEDERAL COURT OF AUSTRALIA )

QUEENSLAND DISTRICT REGISTRY )No. QG5 of 1995

GENERAL DIVISION )

On appeal from a decision of a single judge of the Federal Court of Australia

BETWEEN : RICHSELL PTY LTD

Appellant

AND : DAVID KHOURY

Respondent

CORAM: Davies, Spender & Whitlam JJ

PLACE: Brisbane

DATE: 25 September 1995

REASONS FOR JUDGMENT

Spender J:

I have had the benefit of reading in draft form the reasons for judgment of Davies and Whitlam JJ. However, I have a different opinion as to the disposition of the appeal. I would allow the appeal and remit the matter to the primary judge for determination of the issues of infringement and damages if infringement is established.

Richsell is the owner of three registered designs concerning the lounge suite which is marketed under the name "Sherwood". The respondent manufactured a suite called the "Berlina" and has sold and offered that suite for sale from about March 1992. The respondent's cross-claim claimed that the registration of the applicant's designs were invalid on the ground that they were not "new or original" within the
meaning of s. 17(1) of the Designs Act 1906 (Cth) ('the Act'). This claim succeeded below.

The sole question on the appeal is whether the conclusion by the primary judge that the appellant's registered designs were not "new or original" within the meaning of the Designs Act was correct.

The statement of novelty required by s. 4(1) of the Act was with respect to the shape of the back rest cushion. The statements of novelty 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. "

A design may be valid within the Act, although all the parts are old except some particular part only which is new or original.

Fisher J in Dalgety Australia Operations Ltd v F. F. Seeley Nominees Pty Ltd (1986) 10 FCR 403 at 409 approved the statement in Russell-Clarke on Copyright & Industrial Designs 5th Ed. 1974 at p. 38, where the learned author said:

" 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 constitute novelty, if the effect, that is the appearance of the combination as a whole, is new. "

This observation is important in the present case.

The registered designs are in respect of mass produced items of domestic furniture. The monopoly conferred by the Designs Act is in relation to design. 'Design' is defined in s. 4(1) of the Act as:

" 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; "

This definition focuses on the fact that design is a question of aesthetics: it is not a question of function. The monopoly which the Act gives is to a new or original design. The words of the Act define the requirements for the grant of the monopoly. The term "substantially new" can only have a valid use consistent with the words of the Act if it is understood as disqualifying from novelty only designs that are immaterially different or designs which otherwise fall within the disqualifications in s17(1) of the Act. A design is either new or not new; original or not original; and s. 17(1) of the Designs Act makes plain that only if a design differs merely in an immaterial detail or in immaterial details, or consists of features commonly used in the relevant trade, or if the design is an obvious adaptation of a design that has been previously registered, published or used in Australia, does the design not be a new or original design.

The focus in the definition of design on "features...that...can be judged by the eye" indicates that the concept of design is a concept concerned with appearance and with appearance only. The essential requirement for a design to be registrable is that it departs from the prior art in a manner that is perceptible. The view of Lord Herschell in Samuel Heath & Sons v Rollason [1898] AC 499 at 503 is apposite in the present case.

" ...the two designs are not to my mind the same. They may produce upon the eye a different effect, and the one may be thought to be a more attractive design than the other. It is not possible to give reasons for the conclusion at which one arrives in a case of this sort - you cannot analyze the difference. You might find many differences and yet come to the conclusion that the designs were the same. You might find but few differences and yet come to the conclusion that the designs were different. In the present case, looking at the two designs and comparing the one with the other without going into any details, I think the applicant's was a new and original design such as to entitle him to registration under the Designs Act. Of course in the present day it is very difficult to register any design that does not contain in it something which has been done before. Very often a very successful design may be one in which the difference from previous designs can on analysis be shewn to be very slight, where nevertheless the result is to make the one so much more pleasing than the other that it is a successful design. Whilst on the one hand we certainly ought not to give protection to a design in which the variations are trivial and unimportant so that it is substantially the same design as one already registered or known, on the other hand we ought not to refuse it where the design is practically a different one which may be more attractive. Although I quite admit that it is a matter on which opinions may differ, different minds being differently affected in considering a case of this sort, nevertheless I have come to the conclusion that the Court of Appeal were right in saying that this was a 'new or original design'. "

Lockhart J said in Dart Industries Inc v Decor Corporation Pty Ltd (1989) 15 IPR 403 at 408:

The Court said in Malleys Ltd v J. W. Tomlin Pty Ltd (1961) 35 ALJR at 352 at 353:

" There is...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.

For the foregoing reasons we have reached the conclusion that the attack upon the validity of the registration of the respondent's design fails and that McLelland C.J. in Eq. was correct in deciding that the design was a new or original design within the meaning of s. 17 of the Act. "

In this case the registered monopoly relates to the furniture as a whole and the claim to registration asserts that the furniture is distinctive as a whole because of the feature of novelty identified in the statement of novelty, namely, the shape of the back rest cushion. The words of Jacobs J in D Sebel & Co Ltd v National Art Metal Co Pty Ltd (1965) 10 FLR 224 at 226 are of central application in the present case:

" I think that it is most important to bear in mind in relation to such an article as a chair, that one cannot and should not expect to find some startling novelty or originality. The element of novelty or originality will of necessity be likely to be within a small compass. I do not mean thereby that any difference of shape, outline, proportion or placement of components will thereby constitute novelty of design, but provided I can see a substantial difference from the fundamental form and from the development in the trade up to the time of the application for registration, then I do not think that it is sufficient to point to a number of elements of similarity to past design in order to show that the design is not new or original. "

On the design in issue in that case, his Honour said at 227:

" There is to me a distinctive splay of the two legs which, taken with the in-setting of the supports of the back rests, the simplicity of outline and the general proportions, gives a distinctive character to the design within the small compass to which I have already referred. It is true that except for the splay and the curve of the legs, there is nothing which does not appear in some other designs of an earlier date. It is also true no doubt that a mere conjunction of old features does not necessarily result in a new design. However, it may do so and it seems to me that when one is dealing with furniture design, with the obvious limitations that exist in the addition of new features, one should not be astute to deny novelty upon the ground that there is not some wholly new feature of design incorporated. Design in such a field is a subtle thing and, provided it is distinctive to the trained eye, I think that registration should not be denied in view of the element of subtlety which is involved in the combination of old features in a particular way and the manner in which they are combined. "

The further observations by Jacobs J concerning the subtleties in the field of design ought constantly be borne in mind. His Honour said:

" I do not accept the submission of the defendant that novelty and originality of design in such articles as chairs can only exist when some quite different style or type of chair is invented. To accept such a proposition would deny to designers the benefit from that subtlety which represents great skill and much thought and experience. Therefore, having examined the registered design and the earlier examples, I see a considerable difference brought about by the combination of old features and the addition of a splay and curve to the legs which, whether or not it be good designing, has a noticeable overall effect on the general appearance. "

Design in all its forms is an extensive field where the subtleties of differences play a very large part. Good design, as his Honour indicated, "represents great skill and much thought and experience", and the essence of design is not to be denigrated by the humble nature or ubiquity of the item or article of design.

The evidence in this case indicates that considerable time, money and effort was put into the development of the designs for which registration was obtained, and there was a significant degree of thought, preparation and consultation so as to arrive at a product which has market appeal.

The evidence of Mr Edwin Codd, an architect and principal of Edwin Codd & Partners, who describe themselves as "Architects, Engineers, Project Managers, Industrial Designers", in my opinion, indicates a fundamental misunderstanding of the Designs Act and the monopoly which it confers. The salutary warning of Jacobs J in Sebel has not been heeded. In his report Mr Codd said:

" ...time and usage can have a considerable impact on the way we perceive originality. As a result some designs become universal and to a certain extent anonymous. A bicycle and a carving knife would fit this definition. "

The implication of this statement is that it would not be possible to have a registered design for either a bicycle or a carving knife. Such a proposition, in my opinion, is simply and fundamentally wrong. His report continued:

" With regard to furniture products good examples might be represented by a 'chesterfield' and a 'squatters chair'. The "chesterfield" common in Australian homes in the 30's, 40's and 50's was produced by a number of manufacturers with only slight variations. It was a universal design. While there are various models of 'squatters chairs' it would not now be possible to argue that a design which generally follows the concept was new and registrable. "

Again, this view is wrong.

He later said of some earlier designs:

" I believe these earlier designs provided the basis for the registered designs nominated above as well as a whole range of similar lounge suites including the Apollo and the Sherwood by van der Beld.

In my opinion these designs had already reached a level of usage in so many parts of the world that they could not be regarded as original and registering the design was akin to registering the design of a 'squatter's chair' or a 'chesterfield'. "

The heresy implicit in these statements is far reaching, not only reflecting a misunderstanding of the requirements of the Designs Act but reducing almost to irrelevance the intellectual challenge of good design.

Ultimately the issue on the appeal has to be one of impression.

The question of whether the registered design was new or original is not one to be considered in the abstract. The respondents sought to establish that the designs were not new or original having regard in particular to the design of the "Apollo" double-seated chair.

I have examined photographs of the "Sherwood" and "Apollo" ranges. I attach to these reasons a front perspective of the double-seated lounge chair in the "Sherwood" range (for which a design was registered and which was the subject of successful attack below ) and, underneath it, a photograph of the "Apollo" double-seater chair.

The case below did not succeed on the basis that the "Sherwood" was a trade variation of designs in use, although that view seems to find some favour with Davies & Whitlam JJ.

The primary judge's conclusion was that the effect conveyed to her by the registered design incorporated in the "Sherwood" double-seater chair was of a slight variation of the "Apollo". The fact that that variation is slight does not necessarily mean that the design lacks newness or originality. In my opinion, the variation or difference, in respect of which s. 17 denies registration of a design, is a difference
that is only in immaterial details. The fact that a difference is slight does not mean it is immaterial.

It seems to me that the fact that, as Davies and Whitlam JJ say:

" The Sherwood designs appear to be identical with the Apollo designs save as to the back cushion,"

does not advance the question for determination. The Sherwood double seated lounge chair, so far as the back cushion presents to the eye includes a plain lower lumbar support portion and an upper backrest portion having "two padded ruffled centre sections" separated by a plain central panel. The padded ruffled sections are raised above and separated from the end sections and each back panel "converges downwardly towards the visual junction of the armrests with the base of the seat", adapting the description in the statement of novelty. My impression of the "Apollo" double-seated lounge chair is that the upper back rest portion "consists of a padded section with a strong horizontal division in the middle" to adopt part of the description of Associate Professor Vesna Popovic, who gave evidence for the appellant below. The "Sherwood" has a concentration in the mind's eye by its panelling and raised surfaces that has an emphasis in the vertical plane; the visual impression of the "Apollo" double-seated lounge chair, particularly conveyed by the back rest cushion, is essentially horizontal. They are visually different.

Particularly having regard to the pleadings, in my opinion on comparing the design incorporated in the "Sherwood" with the design incorporated in the "Apollo", the registered design represented in the "Sherwood" lounge furniture is new or original within the meaning of s. 17 of the Designs Act.

The visual impact of the "Sherwood" and of the "Apollo" chairs suggests to me that the differences in the designs of the respective chairs are not to be explained as "features commonly used in the relevant trade" nor is the difference properly to be characterised as differences only in immaterial details.

In my respectful opinion, the appeal should be allowed with costs and the matter remitted to the Primary Judge for determination of the other issues in the case.

I certify that this and the preceding eleven (11) pages are a true copy of the reasons for judgment herein of the Honourable Justice J.E.J. Spender.

(Sgd) David Wise

Associate

Date: 25 September 1995

Counsel for the appellant : Mr A.J.H. Morris QC

instructed by : Barwicks

Counsel for the respondent : Mr J.D.M. Muir QC

instructed by : Goodfellow & Scott

Date of hearing : 28 April 1995

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