Case: Greenfield Products Pty Ltd v Rover-Scott Bonnar Limited [1990] FCA 154
Outcome: cited
Consistent with long established principle, some aspect of visual appeal to the eye has been critical to a design. Although AMP Incorporated v Utilux Pty Limited (1971) FSR 572 suggested a shape 'chosen' solely to perform functional requirements of an article did not qualify as a design under the United Kingdom legislation, the Australian position from the outset (that is, enactment of the Designs Act 1906) has been that a design was not rendered invalid simply because a particular shape selected by the designer assisted a functional purpose ( Hosokawa Micron International Inc v Fortune (1990) 26 FCR 393 at p 429-430; Interlego AG v Croner Trading Pty Ltd (1992) 39 FCR 348 at p 375). The Designs Act 1906 was amended by Act No. 42 of 1981 (perhaps as a result of the Utilux decision) to provide that a design would not be incapable of registration by reason that the features of shape serve only a functional purpose. Although qualification as a design has been discussed in the authorities in the context of registrability , qualification as a design depends simply on the definition of design, not the Designs Act's further requirements for registrability ( Greenfield Products Pty Ltd v Rover-Scott Bonnar Limited [1990] FCA 154 at p 25; (1990) 17 IPR 417 at 431-432). In other words, what are the features that inhere in a contended design and what is the role of the exclusion in the definition? 234 In Muscat v Le 60 IPR 276, Finkelstein J was prepared to proceed on the assumption that the application of a design to an article involved a determination of whether each component (namely, five components for a pattern) making up a garment ought to be addressed separately in terms of an embodiment of a design rather than simply looking to the assembled garment as an article although in that case the patterns were not articles of manufacture. In Edwards Hot Water Systems v S W Hart &amp; Co Pty Ltd (supra) at p 633, Franki J noted the appellant's argument that in considering the application of a design to an article, the court had to look not only at the completed article (in that case the whole of the solar panel) but also to each individual component depicted in the drawing for the solar panel. In that case, the primary Judge was not satisfied that the individual components were articles for the purposes of the Designs Act 1906. However, Franki J noted that the conclusion of the primary Judge depended upon legislative provisions (subsequently repealed) and further noted that 'the amendment to the definition of "article", whereby an article includes part of an article if made separately, may be a significant change' . It seems to me the change is significant. That approach of testing the question by reference to the components and not just the assembled finished article, is consistent with the approach adopted by Pincus J in Greenfield Products Pty Ltd v Rover-Scott Bonnar Limited (supra) where his Honour considered the application of a design to five component parts (central bearings, shafts, clutch-fork, clutch plate and pulleys) of a drive mechanism for an assembled article namely a ride-on lawnmower, for use in parks and gardens and not simply the ride-on mower itself. 235 The third feature of a design is whether the features of shape satisfying the first limb of the term 'design' inherent in the artistic work once applied to an article of manufacture (the second limb) are features that are capable of being judged in the finished article. It seems to me an inescapable conclusion on the facts of this case that the finished article exhibits the features of shape apparent to the eye. 236 The third matter of contention [228] involves the notion that there can be no corresponding design because the plans are not registrable as a design. However, the question is not whether the plans are registrable as a design but whether a corresponding design inherent in the drawing exhibits features of shape or orientation which would qualify for registration because it satisfies the definition of 'design'. The question is not whether the plan can be lodged and registered as a design.