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[1984] ZASCA 36
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Homecraft Steel Industries (Pty) Ltd. v S M Hare & Son (Pty) Ltd. and Another (38/84) [1984] ZASCA 36; 1984 (3) SA 681 (A) (29 March 1984)
IN THE SUPREME COURT OF SOUTH AFRICA
(
APPELL
A
TE
DIVISION
)
In the matter between:
HOMECRAFT STEEL INDUSTRIES
(PROPRIETARY) LIMITED
appellant
and
S M HARE & SON (PROPRIETARY
)
LIMITED
1st respondent
UMDLOTI STRAND HOTEL
(PROPRIETARY) LIMITED
2nd
respondent
Coram
: CORBETT, KOTZE et VILJOEN, JJA, GALGUT et HOWARD AJJA.
Date heard
: 8 March 1984
Date of judgment
: 29 March 1984
JUDGMENT CORBETT
JA:
The appellant is the proprietor of a design
/
registered
2
registered in terms of the Designs Act 57 of 1967 ("the Act") in class
25 (building units and construction elements) and having the
registration number
70/0448A. In terms of s 4(8) of the Act appellant's design was registered as
from 9 June 1970. In August 1978
appellant instituted action against first
respondent, S M Hare & Son (Pty) Ltd, in the Transvaal Provincial Division
(the "TPD")
alleging infringement by first respondent of appellant's registered
design and claiming an interdict, damages, an order for the delivery
up for
destruction of all infringing articles in first respondent's possession and
costs of suit. Thereafter, in February 1980 appellant
instituted a similar
action for
/ infringement
3
infringement in the TPD against second respondent,
Umdloti
Strand Hotel (Pty) Ltd. After each respondent had pleaded to the appellant's
particulars of claim appellant obtained an order
from the TPD consolidating the
two cases. It appears that in November 1978 second respondent purchased the
shares in first respondent
and then proceeded,under the name S M Hare & Son,
to carry on the business formerly conducted by first respondent. The alleged
infringements occurred in the course of the business operations conducted prior
to November 1978 by first respondent and thereafter
by second respondent: hence
the two actions and the consolidation thereof.
In its plea first respondent admitted the
/ acts
4 acts of infringement alleged by appellant, but denied that
such acts constituted an infringement of appellant's
registered design. First respondent alleged furthermore
that in any event the registration of appellant's design
was, and at all
material times had been, invalid on the
grounds (i) that the design was not a
"design" within
the meaning of the definition contained in s 1 of the
Act,
and (ii) that the design was not new or original in that
it had been anticipated by a construction element used
continuously in the
Republic of South Africa from at
least 1956 by Samuel Osborn (SA) Ltd
("Samuel Osborn").
I shall refer to this element as the "Osborn
element"
or the "Osborn design", depending on the context.
/Second
5 Second respondent raised the, same defences as did first respondent. It
denied that the construction
elements made and sold by it infringed the
registered design and it alleged that the registration of the appellant's
design-was invalid
on grounds (i) and (ii) above. In addition second respondent
pleaded in effect that, in the event of it being held that it had infringed
appellant's registered design, the latter was not novel in that it had been
anticipated by construction elements manufactured in
the Republic of South
Africa since 1969 by Ventco Engineering (Pty) Ltd ("Ventco Engineering"). I
shall refer to this element as
the "Ventco element" or the "Ventco design",
depending on the context.
/ Although
6 Although each of the respondents denied
appellant's averment that the design registration was
"valid and subsisting", the only grounds advanced in the
pleas for it not
being valid and subsisting were the
grounds of invalidity detailed above. In view of the
relationship between the two respondents (the one being in
effect the successor to the other), the identity of their
interests and the similar defences raised by them, I
shall henceforth not treat them separately, but regard
them for practical purposes as if they were a single
party to the
consolidated proceedings.
At a pre-trial conference held in terms of
Rule
37(1) of the Uniform Rules of Court it was agreed
by the parties that all
questions of damages would stand
/ over
7 over pending the determination of the issues of infringement and
invalidity. The matter accordingly went to trial on these two main
issues. The
trial Judge (VAN REENEN J), having heard the evidence and arguments, held that
appellant had failed to establish infringement
and that respondents had failed
to prove anticipation. He estimated that the latter issue had occupied one day
of the hearing. He
accordingly gave judgment for respondents with costs (but
excluding the costs of one day's hearing), such costs to include the qualifying
fees of an expert witness, a Prof. Rallis, and (erroneously, for appellant was
represented by only one counsel) the costs of two
counsel. The trial Judge does
not appear to have dealt in his judgment with the other grounds of
/invalidity
8
invalidity pleaded.
Appellant appealed against the judgment and
order of
the trial Court, save for that part relating
to and holding that the issue of anticipation failed
and that the costs of
one day's bearing should be excluded
from the costs awarded to respondents.
Respondents, on
the other hand, cross-appealed against the decision of
the
trial Court that they had failed on the anticipation issue
and that
they, therefore, were to be deprived of the
costs of one day's hearing.
With that introduction I turn to the facts.
The facts
Appellant's design was registered, as I have indicated,
/ in
9
in class 25, which is headed "Building units and construction elements"
and comprehends the following: Building material and elements,
such as beams,
tiles, slates, panels, etc; windows, doors, blinds, etc; sections, angles and
channels; houses, garages and all other
buildings; civil engineering elements;
and miscellaneous. (See reg. 4, read with schedule 3, of the Designs
Regu-lations, 1968.)
In appellant's application for regis-tration of the design
it is stated that —
"the novelty claimed resides in the shape and/or configuration of an
elongated constructional element having an end profile substantially
as shown in
the representation".
The "representation" referred to is what is described
as a "three dimensional view". It shows an oblong
/ piece
10
piece of material which has flanges top and bottom and the
face of which has been shaped by the introduction of five horizontal and
parallel flutings. The end profile of the element shows that the flanges are set
approximately at right angles to the main portion
of the element (which I shall
call - as the trial Judge did -the "main element"). The bottom flange has, in
addition, a narrow return
which gives it a channel-like profile or U-bend. The
flutings have a curved profile and are separated by fairly wide slightly curved
valleys. The crests of the middle and two outer flutings have approximately the
same radius of curvature, while the crests of the
two inner flutings have about
the same radius of curvature. The radius of curvature of the
/former
11
former is larger than that of the latter. The general effect
of these flutings, crests and valleys, is a sinuous, undulating one.
A copy of
the three-dimensional representation which forms part of the registration of
appellant's design is attached to this judgment
and marked "Fig. 1".
The evidence shows that appellant, which carries on business as the
manufacturer of sheet metal products for the building industry,
utilised the
registered design in the manufacture, by a rolling process, of a metal fascia
boarding. It commenced marketing this
product towards the end of 1970. It was
sold in lengths of up to 10 m. At the time of the trial appellant was selling
about 40 to
50 tons of this fascia boarding per month.
/ A fascia
12
A fascia board is used to hide or cover the open ends of the
purlins of the roof of a building and generally to finish off the edge
of the
roof. Samples of appellant's fascia boarding were put in as exhibits (exhs. C
and P).
The infringement alleged by appellant is that respondents have for some time
been making and vending lengths of fascia board embodying
appellant's registered
design or "a design not substantially different from" the registered design.
According to the respondents'
own evidence first respondent commenced making and
selling a rolled metal fascia board in about 1977; and it and its successor,
second
respondent, continued to do so up to the time of the trial. This is not
disputed. What is disputed is whether this fascia
/ board
13 fascia board embodied appellant's registered design or a design not
substantially different from the registered
design.
Specimen sections of the fascia board manufactured and sold by respondents
were produced in evidence (exhs. A and Q). This fascia
board is made of sheet
metal of, it would seem, about the same thickness as appellant's product. The
width (ie from top to bottom)
of the main element of respondents' fascia board
(viz. 225 mm ) is also about the same as the width of the main element of
appellant's
product. Respondents' fascia board also has flanges, top and bottom,
set at about right angles and, as in the case of appellant's
registered
/ design
14 design, the bottom flange has a narrow return. Furthermore,
the face of the main element of respondents' fascia board has been
shaped to
contain three horizontal, trapezoidally-shaped flutes, The valleys between the
flutes are flat and are wider than the crests
of the flutes. The record does not
contain a three-dimensional representation of respondents' product, but only a
drawing, to about
the same scale as Fig. 1, showing the end-profile. A copy of
this is annexed and marked Fig. 2".
It is convenient at this stage to refer to the two other designs which call
for consideration in this case, viz. the Osborn design
and the Ventco
/ design
15 design. A sample of an element, made of stainless
steel by
means of a draw process by Samuel Osborn from about 1956 onwards, was placed
before the Court (exh. N). This element is about
74 mm wide. It has flanges top
and bottom. The main element is shaped so as to contain horizontal fluting. The
fluting has five crests.
The central crest has a larger radius of curvature than
the other crests and occupies about one-third of the width of the element.
The
valleys between the flutings are sharp and narrow. A three-dimensional
representation of this element, drawn to approximately
the same scale as the
drawing of the registered design (Fig. 1) and also Fig. 2, is annexed to this
judgment
/ and
16 and marked "Fig. 3"; According to the evidence the Osborn
element was sold to various refrigeration manufacturers, who used it
in the
construction of the type of open refrigeration counters found in supermarkets
and cafés.
Mr J H Zwieglaer, the managing director of Ventco Engineering, who was called
as a witness by respondents, produced a sample of a
metal fascia board which his
company had been manufacturing by the press brake process since 1969. The sample
itself had been fabricated
towards the end of 1981, shortly before the trial,
but, according to Zwieglaer, the sample was typical of what had been produced
by
the company for years; the
/ profile
17 profile itself was basically the same, but the dimensions
might differ slightly. This Ventco element is (at 270 mm) somewhat wider
than
the other elements. It has flanges, top and bottom, and, like the registered
design and respondents' product, the lower flange
has a narrow return. The face
of the main element contains three horizontal trapezoidally-shaped flutes. The
valleys between the
flutes are flat and are wider than the crests of the flutes.
The flutes are proportionately deeper than those on respondents' product,
but,
that apart and making due allowance for the difference in width, there is very
close resemblance between the Ventco element
and respondents' product. A
three-dimensional
/ drawing
18
drawing of the Ventco design, done to approximately the same
scale as Figures 1, 2 and 3, is annexed hereto and marked Fig. 4.
In describing these designs I have used the words "flute" and "fluting"
generally' to denote the parallel ribs or raised portions
of the main elements.
This may not be strictly in accordance with the dictionary meaning of these
words, but this was the sense in
which they were used by the expert witness who
gave evidence in this case.
I come now to the law.
The Law
S. 4(1) of the Act empowers the Registrar
of
/ Designs
19
Designs, on application made to him by the proprietor
of "any new or original design", to register the design.
The effect of
such registration is stated in s. 15(1),
which reads as follows:
"The person registered as the proprietor of a design shall, subject to the
provisions of this Act and to any rights appearing from
the register to be
vested in any other person, have the exclusive right in the Republic to make,
use or vend any article included
in the class in which the design is registered,
embodying the registered design or a design not substantially different from the
registered design."
The statutory monopoly thus conferred on the proprietor
of a registered
design is infringed by any other
person who unauthorisedly makes, uses or
vends any
article, included in the class in which the design
is
registered, which article embodies the registered
/ design
20 design or a design not substantially different from the
registered design; and the registered proprietor is entitled to enforce
his
rights by suing the infringer in the appropriate division of the Supreme Court
for damages, interdict or such other relief as
the court may deem fit (s. 24(1)
).
Among the defences which a defendant in
an
infringement action may raise are the
following:-
(a) that the plaintiff's registered design is not a "design" as defined in the
Act, with the consequence that the design ought not
to have been registered in
the first place (see s. 24(4), read with s.
10(2));
/ (b) that
21
(b) that the plaintiff's registered design was not new or original at the time
of the application for registration thereof and, therefore,
ought not to have
been registered (see s. 24(4), read with s. 10(2) and s. 4(2));
(c) that the articles made and vended by him did not embody the registered
design or a design not substantially different from the
registered design and
that consequently he was not guilty of
infringement.
These are in fact the defences raised
by the respondents and I shall consider them in the order stated above. Defences
(a) and (b)
strike at the validity of the
/ registered
22
registered design. Defence (c) accepts or assumes the validity
of the registered design, but denies the infringement thereof.
Appellant's registered design not a "design
"
"Design" is defined in s. 1 of the Act to
mean —
"any design applied to any article, whether for the pattern, for the shape or
configuration or for the ornamentation thereof or for
any two or more of such
purposes, and by whatever means it is applied, in so far as such features appeal
to and are judged solely
by the eye: Provided that any feature of an article in
so far as such feature is dictated solely by the function which the article
is
intended to perform and any method or principle of construction shall be
excluded from the rights afforded by this Act;"
/ With
23 With this definition must be read the definition of "article"
in s. 1, viz "any article of manufacture" and including "any part
of an
article". It is also pertinent at this stage to note the provisions of s. 4(5),
which reads —
"Designs for articles which are not intended to be multiplied by an
industrial process shall not be registrable under this Act".
"Design" is thus defined in terms of the features of
pattern, shape,
configuration or ornamentation applied
to an article, either singly or in
combination, "in
so far as such features appeal to and are judged
solely by the eye". The words quoted did not appear
in the corresponding definition which applied prior to
/ the
24
the commencement of the Act (see s. 76 of the Patents,
Designs, Trade Marks and Copyright Act 9 of 1916). Their introduction into
the
definition in the Act may, I think, be attributed to the development of the
English legislation on the subject. In the United
— Kingdom similar words,
requiring the features of the design to appeal to and be judged "solely by the
eye", were inserted
in the definition of "design" for the first time by s. 19 of
the Patents and Designs Act, 1919. It enacted what had already been
stated to be
the law in many decided cases (see
Russell Clarke on Copyright in Industrial
Designs
, 5th ed., p 18), The words were again incorporated in the
definition
/ contained.......
25 contained in the current English legislation (see s.
1(3) of the Registered Designs Act, 1949), which definition is in its essential
features very similar to the definition of "design" in the Act. Useful guidance
as to the meaning of these words - and indeed as
to the meaning of the
definition in our Act as a whole - may, in my view, be derived from
authorutative decisions of the English
and Scottish courts on the topic.
In the leading English case of
Amp Incorporated v Utilux Proprietary
Limited
, (1972) RFC 103, Lord REID discussed the apparent policy of the
legislation relating to registered designs as follows (at pp 107-8):
/ "Those
26
"Those who wish to purchase an article for use are often
influenced in their choice not only by practical efficiency but by appearance.
Common experience shews that not all are influenced in the same way. Some look
for artistic merit. Some are attracted by a design
which is strange or bizarre.
Many simply choose the article which catches their eye. Whatever the reason may
be one article with
a particular design may sell better than one without it:
then it is profitable to use the design. And much thought, time and expense
may
have been incurred in finding a design which will increase sales.
Parliament has been concerned to see that the originator of a profitable
design is not deprived of his reward by others applying it
to their goods."
Lord REID went on to point out that under the legislation in question
protection was given not to everything that could be called
a design, but only
to a design falling within the definition. In the same case Lord MORRIS OF
BORTH-Y-GEST referred in
/ particular
27
particular to the requirement of the definition that
the features in
the finished article "appeal to and
are judged solely by the eye". He said
(at p 112):
"The question is raised as to the sense in which the features in a finished
article are to appeal to and are to be judged solely by
the eye. I think that it
is clear that the particular feature which is in question or under consideration
must be seen when the finished
article is seen. But the words of the definition
point, in my view, to considerations other than that of merely being visible.
The
phrases 'appeal to and judged solely by the eye' denote features which will
or may influence choice
or selection
This does not mean that the 'appeal' or the attraction must be to an
aesthetic or artistic sense - though in some cases it may be.
The features may
be such that they gain the favour of or appeal to some while meeting with the
disfavour of others. Beyond being
merely visible the feature must have some
individual characteristic. It must be calculated to attract the attention of the
beholder".
/ In...
28
In his speech in this case Lord PEARSON said,
with
reference to the definition of "design" (at p 121):
"The emphasis is on external appearance, but not every external appearance of
any article constitutes a design. There must be in some
way a special, peculiar,
distinctive, significant or striking appearance — something which catches
the eye and in this sense
appeals to the eye".
Similar views were expressed by Lord AVONSIDE in the
Scottish Court of
Session in the case of
G A Harvey
& Co. (London) Ltd v Secure
Fittings Ltd
, (1966) RFC
515, in the following terms (at p 518):
"The judge of the design is the eye and the eye alone and to eye it must
appeal. The design to appeal must be noticeable and have
some perceptible
appearance of an individual character. Where, as in the present instance, the
design is for a shape or configuration
of the article as a whole, the only
effective application of the design rests in making an article of that shape or
configuration.
In that situation,
/ in order...
29
in order to achieve application of design to an article, the
article produced must be such as appeals to the eye as possessing, by
reason of
its shape or configuration, features which distinguish it from others of its
type and class."
(This judgment was referred to with approval in the
Amp Incorporated
case,
supra
, at pp 112-3, 119, 121-2.)
These citations give, I think, a general indication of the features which a
design must possess in order to appeal to and be judged
by the eye. And the next
question which arises is : whose eye? This question was discussed at length by
ELOFF J in
Swisstool Manufacturing Co v Omega Africa Plastics
,
1975 (4)
SA 379
(W), at pp 382 F to 383 F. Here reference is made to the
Amp
Incorporated
case (
supra
),
/in
30
in which it was held that the eye in question must
be the
eye of the customer. (See also
Benchairs Ltd v
Chair Centre Ltd
,
(1974) RPC 429
, at p 442-3;
Ferrero's
Design Application
(1978) RPC 473
, at pp
482-3.)
ELOFF J stated (at p 383 B) that it would not be
inconsistent with what had been said in previous
South African cases —
"to hold that while the eye is to be be the eye of the Court, the Court
should view the design through the spectacles of the customer".
I think, with respect, that this statement pithily
expresses what I
conceive to be the correct approach,
viz. that while the Court is ultimately
the arbiter
it must when determining these matters consider how the
/design
31 design in question would appeal to and be judged by
the likely customer of the class of article to which
the design is applied.
This visual criterion is, of course, of cardinal importance not only in
determining whether a design meets the requirements of the
definition, but also
in deciding questions of novelty and infringement.
The proviso to the definition in s. 1 of the Act states in effect what is not
registrable as a design by providing that (i) any feature
of an article, in so
far as such feature "is dictated solely by the function which the article is
intended to perform", and (ii)
any method or principle of construction,
/ are
32
are excluded from the rights afforded by the Act. A similar
provision is to be found in the definition of design in the English Act
of 1949.
As in the case of the English Act, the proviso to the definition in s.l of the
Act incorporates principles which had long
been accepted in the law relating to
designs, namely that a feature which is necessarily determined by the function
of the article
in question is not registrable as a design and that registered
designs must be judged by the eye alone and cannot be made to cover
modes of
manufacture (see
Allen-Sherman-Hoff Co v Registrar of Designs
,
1935 TPD
270
, at pp 272-5; see also
Xactics (Pty) Ltd v Tailored Containers
(Pty)
Ltd,
1971 (2) SA 562
(C), at p 565 E - F;
Swisstool
case,
supra
,
at
/ p 384
33
p 384 B-F;
WRB Enterprises (Pty) Ltd v Plasbox Industrial
Appliances (Pty) Ltd and Another (2)
,
1975 (1) SA 803
(T), at p 804
C-H;
Robinson v D Cooper Corporation of SA (Pty) Ltd
,
1983 (1) SA 88
(T),
at p 93 A - 94 E, the latter all being cases decided in relation to the
definition in the Act). Naturally a design which incorporates
both registrable
and non-registrable features may be registered, but in that case only the
registrable features will enjoy the protection
afforded by registration. This
proviso is of importance not only in deciding whether the design in question
contains features which
make it registrable, but also in determining issues of
novelty.
In the present case it is contended that appellant's registered
design is entirely functional;
that, therefore, it does not fall within the
definition
/ of.
34
of "design"; and that in consequence thereof the registration
was invalid. This contention was aimed at the top and bottom flanges
and the
return on the bottom flange in that they merely provided rigidity to the fascia
board and facilitated its handling, and at
the fluting on the face of the
element in that this provided additional rigidity. 1 do not think that this
contention is well-founded.
While there may be some doubt as to whether the
flanges and the return have more than a functional role in the design, I am of
the
opinion, on the evidence and upon a visual consideration of the design
itself, that the fluting is not solely functional: while it
may perform
/ the
35
the function of imparting additional rigidity to the element,
it also has a definite visual appeal.
Respondents have also attacked the validity of the registered design on the
ground that it amounts to a method or principle of construction.
The meaning and
effect of this aspect of the proviso, as it appears in the definition of
"design" in the English Act, is fully discussed
in
Russell Clarke
(op.
cit
., at pp 27-31; see also LAWSA, vol 8, par 83). It is not necessary to
canvass this topic fully because respondents' argument boiled
down to the
following submission: if the registered design were construed so widely as to
result in respondents' design constituting
an infringement
/ thereof
36 thereof, it would mean that all designs including fluting
would be comprehended in the registered design; and this in turn would
mean that
appellant had been given a monopoly in a mode or principle of construction,
which is not permitted by the Act. I see no
warrant for construing the design as
comprehending all forms of fluting. This basic premise of the argument therefore
falls away
and the argument itself collapses.
The attack upon the validity of the registered design on the ground that it
is not a "design", as defined, accordingly fails.
Novelty: anticipation
As I have indicated, the Registrar
is
/ empowered
37
empowered to register only "new or original" designs (s. 4(1)
); and one of the grounds upon which the" court may order the cancellation
of
the registration of a design and which may, therefore, be relied upon by way of
defence to an infringement action is that the
design "was not new or original"
(see s. 10(2), read with s. 24(4) of the Act). S. 4(2) provides that for the
purposes of the Act
a design shall be deemed to be a new or original design if
on or before the date of application for registration thereof, the design
or a
design not substantially different therefrom was not,
inter alia
, "used
in the Republic".
Respondents aver that the appellant's registered design was not new or
original, primarily on
/ the
38
the ground that the Osborn design was not substantially different from the
registered design and had been used in the Republic since
about 1956, ie for
about 14 years prior to the date of application for the registration of
appellant's design. Respondents also raised
a similar defence of anticipation in
regard to the Ventco design, but this was really on the premise that the
respondents' design
was found to infringe the registered design.
In adjudging the novelty of a design it is important to have regard generally
to the state of the art at the time of registration,
as well as the alleged
anticipation. (See eg
Aspro-Nicholas Limited's
/
Design
.
39
Design Application
, (1974) RFC 645, at 653;
Benchairs Limited v Chair Centre Limited
,
supra
, at pp 436-7;
Xactics (Pty) Ltd v Tailored Containers (Pty) Ltd
,
supra
, at pp
563 H - 564 A.) The feature of appellant's design which is most distinctive
which makes most appeal to the eye — is
the fluting on the main element.
Now fluting, as an architectural and constructional embellishment, is as old as
Western civilization.
No evidence is necessary to establish this well-known
fact. In addition, it appears from the evidence of Mr S E Bellingan, called
by
appellant, that prior to 1970 there were on the South African market imported
wooden fascia boards with various patterns somewhat
similar to the registered
design cut into the wood. And, accord-
/ ing to
40
ing to Mr Hamman, the manager of the aluminium department of
Samuel Osborn, in addition to the Osborn element (exh N), his company
produced
and sold various other metal elements with different profiles consisting of
curved flutings.
In the circumstances it seems to me that the novelty, if
any, of appellant's design must lie in the number and the particular shape
and
arrangement of the flutings contained in the registered design. On the evidence,
the anticipatory design which bears the closest
resemblance to the registered
design is the Osborn design. I have carefully considered these two designs,
adopting a process of comparison
similar to that
/ required
41 required when the issue of infringement is adjudicated
upon, as to which more anon. Clearly the Osborn design is not the same as
the
registered design; and, although it is a border-line case, I am of the opinion
that the Osborn design is substantially different
from the registered design,
or, to put it in the language of s. 4(2), it cannot be said that the Osborn
design is "not substantially
different" from the registered design. The main
differences that strike the eye are (i) the very wide central flute in the
Osborn
design, which occupies about a third of the width of the element; (ii)
the narrow, sharp valleys in the Osborn element, compared
with the wide, flat
valleys of the registered design;
/ and
42
and (iii) the rounded edges of the Osborn element, where the
outside flute runs into the flange, as compared with the sharper, rectangular
edges of the registered design which form part of a valley, not a fluting. In
this connection it is important that any comparison
between the registered
design as embodied in appellant's fascia board (exhs. C and P) and the Osborn
element (exh. N) should make
due allowance for the difference in scale. Of
course no such difference appears in Figs. 1 and 3, which are drawn
approximately to
the same scale.
As to the Ventco design, this is, in my
opinion, very different from the registered design. Since, however, it was
advanced as an
anticipation only in the event of
/ infringement
43 infringement being established and since, for the
reasons which follow,
I am of the opinion that respondents' product did not infringe the registered
design, it is not necessary to
say anything more about the Ventco design.
For
these reasons I am of the opinion that the attack upon the validity of the
registration of appellant's design on the ground that
it was not new or original
must fail.
Infringement
The test for infringement is whether
the
article alleged to infringe embodies the
registered design or a design not substantially different from the
/ registered
44 registered design (s. 15(1) ). This must be decided by
the eye; and in applying this visual test the Court must bear in mind the
reaction of the likely customer. The two designs must be viewed and compared
side by side and also separately. Ultimately it may
be a matter of degree. The
Court may have regard to the expert evidence to the extent and for the purposes
described by TINDALL J
in the
Allen-Sherman-Hoff Co
case,
supra
,
at p 274. The state of the art at the time when the design was registered and
the degree of novelty and originality achieved by
the registered design is also
an important factor. Russell-Clarke (op.
cit
.)
states (at p 85):
/ "If
45
"If only small differences separate the registered design from
what has gone before, then equally small differences between the alleged
infringement and the registered design will be held to be sufficient to avoid
infringement."
and (at p 87):
"Thus, it may be said that a registered design which is possessed of
substantial novelty and originality will have a broader reading
given to the
monopoly which it affords than will a design which is barely novel or original.
In the latter case, where the novelty
is small, the court may refuse to hold
anything to be an infringement, unless it is almost exactly like the registered
design."
These statements appear to be well-supported by the
authorities cited on pages 85-8 (to which might be
added the case of
Valor Heating Co Ltd. v Main Gas
Appliances Ltd
(1973) RPC
871)
; and the principles
/enunciated
46 enunciated appear to me to be sound and logical and of equal application
in our law.
Applying this general approach, I have no doubt that appellant failed to
establish infringement on the part of the respondents. There
are substantial
differences between the fascia board made and vended by respondents and the
registered design. I refer in particular
to (a) the number of flutes, three in
the case of respondents' product and five in the case of the registered design;
and (b) the
angular, trapezoidal shape of the flutes and the valleys in the case
of respondents' product, as compared with the sinuous undulating
flutes of the
registered design. The measure of novelty of appellant's design is small and
the
/ ambit
47
ambit of appellant's monopoly is correspondingly restricted.
It is very much bound up with the particular arrangement and design of
the
flutings on its design. Consequently, relatively small differences would, in my
opinion, take a design out of the ambit of that
monopoly. The differences in
respondents' design cannot even be described as relatively small: they are far
more substantial than
that. In fact, in my view, there is a close resemblance
between the respondents' design and the Ventco design. As far as the Ventco
design fails to qualify as an anticipation of the registered design, so far also
does the respondents' design, as incorporated in
its product, fail
to
constitute an infringement of the registered design.
/ For
48
For these reasons, I hold that appellant failed to
establish infringement.
In the result I agree with the conclusions reached by the trial Judge on both
the main issues, viz. infringement and invalidity. There
was no criticism by
either party of the costs order, as such, made by the Court a
quo
. Both
the appeal and the cross-appeal must consequently be dismissed, As regards the
costs of appeal and cross-appeal, appellant's
counsel submitted that the
combined costs should be apportioned; while respondents' counsel argued that his
clients should be awarded
all their costs on both appeal and cross-appeal. In my
opinion, it is convenient that the costs
/of
49
of appeal and cross-appeal be combined and, in that event, I
do not think that respondents, who failed on
the cross-appeal, are entitled
to all their costs. In all the circumstances, I think it would be equitable if
appellant was ordered
to pay 80% of respondents' combined costs of appeal and
cross-appeal.
In the Court below appellant asked that, in the event of the attack on the
validity failing, a certificate of contested validity be
granted in terms of s.
25(1) of the Act. The Court a
quo
failed to grant such a certificate, but
gave no reasons for so doing: in fact the judgment does not mention this point.
Appellant's
counsel submitted that should
/ this
50
this Court dismiss the cross-appeal a certificate of contested validity
should be granted. Respondents' counsel contended that no
such certificate
should be granted. The issue of invalidity, on the grounds pleaded by
respondents, was fully canvassed at the trial.
This Court has held that the
contention that the appellant's registered design is not a "design", as defined
in the Act, is not well-founded.
This is largely a question of applying the
visual test to the design and considering the design in the light of the
relevant legal
principles. I cannot see that any further evidence could affect
this decision. The other ground of invalidity advanced, viz. lack
of novelty on
the ground of anticipation, has
/ also
51
also failed. This issue was strenously contested by both
parties and it seems unlikely that there were other more pertinent anticipations
than those put forward by the respondents. In the circumstances, I think that
the discretion which the Court is given by s. 25(1)
ought to have been exercised
in appellant's favour (cf. the remarks of LLOYD-JACOB J in
The Aberdale Cycle
Coy Ltd v The County Cycle Coy
,
(1950) 67 RPC 168
, at p 170). From the
absence of any mention of a certificate of contested validity in the judgment a
quo
I can only conclude that VAN REENEN J overlooked the matter. This
Court is, therefore, entitled to exercise the discretion which
in the first
place ought
/ to
52
to have been exercised by the trial Judge; and for
the
reasons stated the discretion should be exercised in appellant's favour.
To this extent, therefore, the order of the Court a
quo
must be varied;
but this variation will not affect the proposed order as to costs.
It is ordered as follows:
(1)
Subject to paragraph (2) of
this order, the appeal is dismissed.
(2)
The
order of the Court a
quo
is amended by
the
addition of the following:
"It is certified that the validity of the registration of appellant's design
no. 70/0448A was contested in these proceedings."
(3) The cross-appeal is dismissed.
/ (4) The appellant....
53
(4) The appellant is to pay 80% of the
respondents' combined costs on appeal and
cross-appeal.
M M CORBETT
KOTZé JA)
VILJOEN JA) CONCUR.
GALGUT AJA)
HOWARD AJA)
FIG. 1: APPELLANT'S REGISTERED DESIGN
FIG. 2: RESPONDENTS' DESIGN.
55
PIG. 3: OSBORN DESIGN
FIG. 4: VENTCO DESIGN