Case: LJ Fisher &amp; Company Ltd v Fabtile Industries Pty Ltd (1978) 1A IPR 565
Outcome: followed
LJ Fisher &amp; Company Ltd v Fabtile Industries Pty Ltd (1978) 1A IPR 565 , 571-72, Fullagar J said: I am clearly of opinion that a registered design in order to be valid, must be reasonably "clear and succinct"; that is to say the design sought to be monopolised by copyright must appear with reasonable clarity, and without necessity for unreasonably prolonged or complicated series of deductions, from the registered representation of an article to which the design has been applied. In argument in Phillips v Harbro Rubber Co (1920) 37 RPC 233 , Sir Duncan Kerly KC said: A design may be valid for any form that is new, subject to this, that it must be distinct and present an appearance that strikes the eye as being different from any previously existing shape. [Emphasis added.] ... But in design law I think that the design is addressed to a person of some skill who might be called a person skilled in the art, but that a person skilled in the art is not necessarily familiar with particular methods of manufacture per se; I think he knows the prior art articles and the prior art registered designs and knows as much about manufacture as he would reasonably be expected to deduce from a study of those designs and articles, but not necessarily any more. ... I do think that if a design, depicted by reference to an article to which it has been applied, appears difficult to construe, evidence is admissible from persons familiar with those articles and with methods of applying designs to them, at all events where the design is as here confined to configuration. In what follows I use the expression "person skilled in the art" as a shorthand for a person with the elementary knowledge that I have above indicated; that is to say a person in the circumstances of this case, who is familiar at least with the shape and appearance and (so far as obvious) constituents of prior art roof tiles composed wholly or chiefly of metal, as known at the priority date of the registration. (Emphasis added.) Much of the cross-claimants' arguments proceeded from the premise that no sufficient representation of each Design appeared on IP Australia's website. The cross-claimants submitted that the visual features of the Designs were hard to discern when looking at the pink drawings. Mr Garrard, a consultant to the automotive electrical industry, was called to give evidence by the cross-claimants. He looked at the pink drawings on the IP Australia website and in the Certificates of Registration produced by the Designs Office tendered in evidence and initially said he had difficulty in understanding the features of the Designs such as the side profile of the base and the degree of rounding of the lens. In cross-examination, he modified that evidence to the extent of acknowledging that he was able to discern features of the Designs except for the curved ends. Other witnesses gave evidence about the pink drawings and what they could and could not discern from them. It is therefore necessary to examine the validity of the cross-claimants' premise that no sufficient representation of each Design appeared on IP Australia's website with some care. As I noted earlier, printed representations of some of what was displayed when IP Australia's database was searched were tendered in evidence. Five different views of each Design were tendered. Even if one of those views were to be thought insufficient to convey to the observer all of the relevant features of the Design it by no means follows that the combination of images is necessarily deficient in that respect. In my view, it is possible to discern from the printed representations the visual features of the Designs, including the two particular matters to which Mr Garrard drew special attention, the side profile of the base and the degree of rounding of the lens. Adopting the language of Fullagar J, I consider each Design to be reasonably "clear and succinct" . It may be said that the pink drawings are not perfect or that they could be better or clearer. However, each Design does appear with reasonable clarity, and without necessity for unreasonably prolonged or complicated series of deductions, from the registered representation of an article to which the design has been applied . It is necessary to record, however, that the documents that were tendered show a particular magnification and resolution of the representations appearing in the database. Because the data is held electronically and displayed on the IP Australia website (in Adobe Reader as PDF documents), it is possible, within limits, to reproduce the representations at greater magnification than may first be displayed on the screen. That is, the printed exhibits cannot be taken as necessarily indicating the largest magnification or best resolution of what appears in the database and is accessible by the public. Again, it is possible to observe on IP Australia's website the five different views of each Design. When those views are displayed at higher magnifications, the details and specifications of each Design appear not just with reasonable clarity, but with great clarity. However, when I asked the parties after the hearing whether it would permissible for the Court to have regard to the magnified displays on the website (which were not tendered into evidence by way of printed or electronic copy), the Respondents contended that there was no evidence that the representations on the IP Australia website could be or were in fact magnified by any witness or that a member of the public seeking information as to a registered design would be expected to electronically magnify the online representations. I reject both contentions. First, there was evidence that witnesses had accessed the Designs on the IP Australia website and magnified the representations to some extent.