Benmax v Austin Motor Company Ltd

JurisdictionUK Non-devolved
JudgeViscount Simonds,Lord Morton of Henryton,Lord Reid,Lord Tucker,Lord Somervell of Harrow
Judgment Date20 January 1955
Judgment citation (vLex)[1955] UKHL J0120-1
Date20 January 1955
CourtHouse of Lords
Austin Motor Company Limited

[1955] UKHL J0120-1

Viscount Simonds

Lord Morton of Henryton

Lord Reid

Lord Tucker

Lord Somervell of Harrow

House of Lords

Upon Report from the Appellate Committee, to whom was referred the Cause Benmax against The Austin Motor Company Limited, that the Committee had heard Counsel, as well on Monday the 8th, as on Tuesday the 9th, Wednesday the 10th and Thursday the 11th, days of November last, upon the Petition and Appeal of Sydney Benmax, of 85 Watchfield, Chiswick, in the County of London, praying, That the matter of the Order set forth in the Schedule thereto, namely, an Order of Her Majesty's Court of Appeal of the 17th of November 1953, might be reviewed before Her Majesty the Queen, in Her Court of Parliament, and that the said Order might be reversed, varied or altered, or that the Petitioner might have such other relief in the premises as to Her Majesty the Queen, in Her Court of Parliament, might seem meet; as also upon the Printed Case of The Austin Motor Company Limited, 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 17th day of November 1953, complained of in the said Appeal, be, and the same is hereby, Affirmed, and that the said Petition and Appeal be, and the same is hereby, dismissed this House: And it is further Ordered. That the Appellant do pay, or cause to be paid, to the said Respondents the Costs incurred by them in respect of the said Appeal, the amount thereof to be certified by the Clerk of the Parliaments.

Viscount Simonds

My Lords,


I have had the privilege of reading the Opinion which my noble and learned friend, Lord Morton of Henryton, is about to deliver and I agree so fully with it that I think it necessary to add nothing except on one question of general importance which has once more been raised on this appeal.


Learned Counsel for the Appellant urged in the forefront of his argument that the existence of an inventive step was a question of fact which had been decided by the trial Judge, Lloyd-Jacob J., in favour of the Appellant, and therefore that the Court of Appeal should not have reversed his decision except for certain reasons which clearly were not present in this case. I think it convenient therefore to state my view on this question, though I am aware that it does not entirely agree with observations made in this House by noble Lords for whose Opinion I have the highest regard. 50 years ago in Montgomerie & Co., Ltd. v. Wallace-James, [1904] A.C. 73, Lord Halsbury said:

"But where no question arises as to truthfulness, and where the question is as to the proper inferences to be drawn from truthful evidence, then the original tribunal is in no better position to decide than the judges of an Appellate Court."


And in Mersey Docks and Harbour Board v. Procter, [1923] A.C. 253, Lord Cave said:

"The procedure on an appeal from a judge sitting without a jury is not governed by the rules applicable to a motion for a new trial after a verdict of a jury. In such a case it is the duty of the Court of Appeal to make up its own mind, not disregarding the judgment appealed from and giving special weight to that judgment in cases where the credibility of witnesses comes into question, but with full liberty to draw its own inference from the facts proved or admitted, and to decide accordingly".


It appears to me that these statements are consonant with the Rules of Court which prescribe that "An appeal to the Court of Appeal shall be by way of re-hearing" and that "the Court of Appeal shall have powers to draw inferences of fact and to give any judgment and make any order that ought to have been made". This does not mean that an Appellate Court should lightly differ from the finding of a trial judge on a question of fact and I would say that it would be difficult for it to do so where the finding turned solely on the credibility of a witness. But I cannot help thinking that some confusion may have arisen from failure to distinguish between the finding of a specific fact and a finding of fact which is really an inference from facts specifically found, or, as it has sometimes been said, between the perception and evaluation of facts. An example of this distinction may be seen in any case in which a plaintiff alleges negligence on the part of the defendant. Here it must first be determined what the defendant in fact did and secondly whether what he did amounted in the circumstances (which must also so far as relevant be found as specific facts) to negligence. A jury finds that the defendant has been negligent and that is an end of the matter unless its verdict can be upset according to well established rules. A judge sitting without a jury would fall short of his duty if he did not first find the facts and then draw from them the inference of fact whether or not the defendant had been negligent. This is a simple illustration of a process in which it may often be difficult to say what is simple fact and what is inference from fact, or, to repeat what I have said, what is perception, what evaluation. Nor is it of any importance to do so except to explain why, as I think, different views have been expressed as to the duty of an Appellate Tribunal in relation to a finding by a trial Judge. For I have found on the one hand universal reluctance to reject a finding of specific fact, particularly where the finding could be founded on the credibility or bearing of a witness, and on the other hand no less a willingness to form an independent opinion about the proper inference of fact, subject only to the weight which should as a matter of course be given to the opinion of the learned Judge. But the statement of the proper function of the Appellate Court will be influenced by the extent to which the mind of the speaker is directed to the one or the other of the two aspects of the problem.


In a case like that under appeal where, so far as I can see, there can be no dispute about any relevant specific fact, much less any dispute arising out of the credibility of witnesses, but the sole question is whether the proper inference from those facts is that the patent in suit disclosed an inventive step, I do not hesitate to say that an Appellate Court should form an independent opinion, though it will naturally attach importance to the judgment of the trial Judge. I ought not to conclude this opinion without saying how much I have owed in the preparation of it to certain writings by Professor Goodhart.


I would dismiss this appeal.

Lord Morton of Henryton

My Lords,


The Appellant is the registered proprietor of Letters Patent No. 586058 in respect of an alleged invention for "Improvements in or relating to the upholstering of furniture". The application date was the 4th September, 1944, and the complete specification was accepted on the 5th March, 1947.


The action out of which this appeal arises was brought by the Appellant for an injunction to restrain the Respondents from infringing the Appellant's patent and for damages and other relief. By their defence the Respondents denied infringement and alleged that the Appellant's patent was invalid for reasons set out in their Particulars of Objections. They counter-claimed for revocation of the patent and for other relief.


The only objections to the validity of the patent which were relied upon in your Lordships' House were those set out in section 32 (1) ( e) and ( f) of the Patents Act, 1949, namely—

"( e) that the invention, so far as claimed in any claim of the complete specification, is not new having regard to what was known or used. before the priority date of the claim, in the United Kingdom;

( f) that the invention, so far as claimed in any claim of the complete specification, is obvious and does not involve any inventive step having regard to what was known or used, before the priority date of the claim, in the United Kingdom."


These objections failed before Lloyd-Jacob, J. but the objection under subparagraph ( f) was upheld by a unanimous judgment of the Court of Appeal, and it was ordered that the Appellant's patent be revoked.


The complete specification opens with the statement that the invention "relates to the upholstering of furniture and more particularly to frames for upholstered articles of furniture, for example, easy chairs and settees, and to upholstered articles of furniture comprising such frames". Later it is stated that "although the invention is illustrated in the drawings only as applied to an easy chair, it may be applied equally well to other types of chairs, settees and other articles which are partially or completely upholstered. including theatre seats and vehicle seats." The description of the invention in the specification is in the same terms as the first claim and is as follows:—

"A frame for an upholstered article of furniture, for example, an easy chair or settee, having teeth, prongs or the like thereon stamped out of the material of the frame integral therewith for the attachment of fabric or other upholstery material thereto, said teeth pointing in the direction of application of the material so that the tension in said material when applied to the frame tends to pull the material on to the teeth and prevent its release".


My Lords, I call attention at once to two matters arising from the specification, first, that the claim is limited by the words "for an upholstered article of furniture", and, secondly, that, to quote the Master of the Rolls, "the teeth or prongs point in a direction opposite to that of the natural pull of the fabric to be put on to the frame". For the sake of brevity I shall follow the...

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