Amp Inc. v Utilux Pty. Ltd
| Jurisdiction | England & Wales |
| Judge | Lord Reid,Lord Morris of Borth-y-Gest,Viscount Dilhorne,Lord Donovan,Lord Pearson |
| Judgment Date | 27 October 1971 |
| Judgment citation (vLex) | [1971] UKHL J1027-3 |
| Date | 27 October 1971 |
| Court | House of Lords |
[1971] UKHL J1027-3
House of Lords
Lord Reid
Lord Morris of Borth-y-Gest
Viscount Dilhorne
Lord Donovan
Lord Pearson
Upon Report from the Appellate Committee, to whom was referred the Cause Utilux Pty. Limited against Amp Incorporated, that the Committee had heard Counsel, as well on Tuesday the 20th, as on Wednesday the 21st, Thursday the 22d, Monday the 26th and Tuesday the 27th, days of July last, upon the Petition and Appeal of Utilux Pty. Limited, of 14/24 Commercial Road, Kingsgrove, New South Wales, Australia, praying, That the matter of the Order set forth in the Schedule thereto, namely an Order of Her Majesty' Court of Appeal of the 18th of March 1970, might be reviewed before Her Majesty the Queen, in Her Court of Parliament, and that the said Order might be reversed, varied or altered, and that the Petitioners might have the relief prayed for in the Appeal, or such other relief in the premises as to Her Majesty the Queen, in Her Court of Parliament, might seem meet; as also upon the Case of Amp Incorporated, lodged in answer to the said Appeal; and due consideration had this day of what was offered on either side in this Cause:
It is Ordered and Adjudged, by the Lords Spiritual and Temporal in the Court of Parliament of Her Majesty the Queen assembled, That the said Order of Her Majesty's Court of Appeal of the 18th day of March 1970, complained of in the said Appeal, be, and the same is hereby, Reversed, and that the Judgment of the Honourable Mr. Justice Lloyd-Jacob of the 2d day of April 1969 thereby Discharged, be, and the same is hereby, Restored: And it is further Ordered, That the Respondents do pay, or cause to be paid, to the said Appellants the Costs incurred by them in the Court of Appeal, and also the Costs incurred by them in respect of the said Appeal to this House, the amount of such last-mentioned Costs to be certified by the Clerk of the Parliaments: And it is also further Ordered, That the Cause be, and the same is hereby, remitted back to the Chancery Division of the High Court of Justice, to do therein as shall be just and consistent with this Judgment.
My Lords,
The Respondents manufacture electrical apparatus including terminals which are used to facilitate the assembly of electrical apparatus. Hoover manufacture large numbers of washing machines each of which contains fairly elaborate electrical apparatus. They thought that the use of terminals would help them and they consulted the Respondents. The Respondents found that none of their existing range was exactly suitable and as Hoovers would need many millions of these small articles they designed a new terminal to meet Hoover's requirements. Then it occurred to them that the design of this new terminal could be registered under the Registered Designs Act 1949, so they had it registered in 1960. In 1966 one of their representatives saw exhibited for sale by the Appellants on a stand at a technical exhibition a terminal which appeared to be an exact copy of their terminal. So they immediately raised an action against the Appellants on the ground of infringement of their registered design. In their defence the Appellants pleaded that the Respondents' registration was invalid on a number of grounds, and sought rectification of the Register by cancellation of the Respondents' design.
After hearing evidence Lloyd-Jacob J. dismissed the Respondents' action and ordered their design to be expunged from the Register. On appeal the Court of Appeal held that the registration was valid and that the Respondents' copyright had been infringed. The Appellants now seek to have the judgment of Lloyd-Jacob J. restored.
The registered design consists of five sketches of the terminal from different angles together with the statement "the novelty resides in the shape or configuration of the article as shewn in the representations". If it is desired to make a good electrical connection between two wires without having to solder them, one wire is attached to a plug or male terminal and the other is attached by crimping to one end of this terminal, being held by ears in a conductor channel. At the other end of this terminal is a receptacle so made and shaped that the male terminal is inserted and firmly held. Everything except the insertion of the male terminal is done cheaply and rapidly by automatic or semi-automatic machinery. A large number of different terminals made by different manufacturers were exhibited. No two are alike in appearance but as they all serve the same purpose there is great similarity between them. All this was explored in great detail in the evidence but I do not think it necessary to set out farther facts because in the end the case turns in my view on the proper construction of the definition of "design" in the 1949 Act. If the Respondents' construction is right the appeal must be dismissed. If the Appellants' construction is right the judgment of Lloyd-Jacob J. must be restored.
"Design" is defined by section 1 (3):
"In this Act the expression 'design' means features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged solely by the eye, but does not include a method or principle of construction or features of shape or configuration which are dictated solely by the function which the article to be made in that shape or configuration has to perform."
There had been protection of new or original designs against infringement in a succession of statutes for over a century before 1949. The present definition dates in part from 1919 and in part from 1949. I get little assistance from the way in which it has evolved. It remains obscure in several respects. Before considering its terms I would enquire what is the problem and what is the apparent policy of the legislation.
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. But it has not given protection under the 1949 Act to everything which could be called a design. To be protected the design must come within the definition. Designs which do not come within this definition may or may not be protected by other legislation. We are not concerned with that in this case. The question in this case is whether this terminal has a design which comes within this definition.
The definition includes features of shape, configuration, pattern or ornament. We are not concerned with pattern or ornament. Configuration may have a meaning slightly different from shape: no point is made of that in this case. The first requirement is that the shape is "applied" by an industrial process. "Applied" is an appropriate word for pattern or ornament but is an awkward word with regard to shape. The idea must be that there can be two articles similar in every respect except shape, and that the novel feature of shape which is the design has been added to the article by making it in the new shape instead of in some other shape which is not novel.
Then there come the words "being features which in the finished article appeal to and are judged solely by the eye". This must be intended to be a limitation of the foregoing generality. The eye must be the eye of the customer if I am right in holding that the policy of the Act was to preserve to the owner of the design the commercial value resulting from customers preferring the appearance of articles which have the design to that of those which do not have it. So the design must be one which appeals to the eye of some customers. And the words "judged solely by the eye" must be intended to exclude cases where a customer might choose an article of that shape not because of its appearance but because he thought that the shape made it more useful to him.
In the case of finished articles sold to members of the public for use by them I doubt whether this limitation is of much importance. The onus is on the person who attacks the validity of the registration of a design. So he would have to shew on a balance of probability that an article with the design would have no greater appeal by reason of its appearance to any member of the public than an article which did not have this design. Looking to the great variety of popular tastes this would seem an almost impossible burden to discharge.
But the definition of "article" in section 44 of the Act includes any part of an article made and sold separately. So it includes components like these terminals which are sold to manufacturers to be incorporated in the machines which they make. In such a case it might well be possible to prove that no manufacturer who wanted to buy terminals to use as components would be influenced by their appearance: he would only be influenced by their suitability for the use which he proposed to make of them.
In the present case this was not fully explored in evidence and I do not intend to consider whether the Appellants might have succeeded on this ground.
I must, however, say something about a more limited meaning of this provision which has obtained considerable support. It has been said that it merely means—being features...
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