Stenor Ltd v Whitesides (Clitheroe) Ltd
| Jurisdiction | England & Wales |
| Judge | Viscount Simon,Lord Porter,Lord Simonds,Lord Uthwatt |
| Judgment Date | 02 July 1947 |
| Judgment citation (vLex) | [1947] UKHL J0702-2 |
| Date | 02 July 1947 |
| Court | House of Lords |
[1947] UKHL J0702-2
House of Lords
Viscount Simon
Lord Macmillan
Lord Porter
Lord Simonds
Lord Uthwatt
My Lords,
This is an appeal from an Order of the Court of Appeal (Lord Greene, M.R., du Parcq and Morton, LJJ.) which confirmed (though for different reasons) the judgment of Mr. Justice Romer whereby he ordered the removal from the Register of Designs of the Appellants' Design No. 833097. The action was brought in the Chancery Division of the High Court by the present Appellants against the Respondents, claiming relief in respect of alleged infringement by the Respondents of the Appellants' copyright in this registered design. By their Defence the Respondents denied the infringement and further relied upon the provisions of Section 54 (1) of the Patents and Designs Act 1907. They also alleged that the registration of the said design was invalid and counterclaimed for the rectification of the Register accordingly.
On the issues of infringement and on the defence raised under Section 54 (1) the Learned Judge found as a fact that the sale by the Respondents of articles alleged to infringe the Appellants' copyright occurred in circumstances which would in any case disentitle the Appellants to recover any penalty or damages, and he further held ( a) that at the time of its registration the design was not a "new or original design not previously published in the United Kingdom" within Section 49 (1) of the Act and (b) that it was not a "design" at all within the meaning of the Act because it was so minute that its shape could not be adequately apprehended by ordinary human vision, unassisted by a magnifier.
As to this second reason, it is enough to say that the drawings annexed to the Certificate of Registration 833097 do not include any indication of dimensions, nor do existing Regulations so require, but that the drawings themselves measure several inches in length, while the actual object produced by the Appellants as embodying the design, though very small, being about the length of an ordinary thumb-nail, was not found by the Court of Appeal to be so tiny that its shape could not be apprehended by the eye. The Court of Appeal therefore did not agree with the view of the trial judge that the alleged design was not registrable because it was intended to be applied to an article of so small a size. This topic has not been the subject of argument before us. The question of how far, if at all, minuteness in the object to which a design is applied affects the registrability of the design must be regarded as reserved for decision if and when a future case raises the point.
Before the Court of Appeal the Appellants did not seek to challenge Mr. Justice Romer's decision that their action should be dismissed, but confined themselves to appealing against the Order on the counterclaim directing that the Register of Designs should be rectified by removing from it Design No. 833097. The Learned Judge's view that this Order should be made because the design was not "new or original" was of course discussed on the appeal, but the ground on which the Court of Appeal decided to uphold the cancellation was a different one, raised in the pleadings but not dealt with by Mr. Justice Romer, viz., that the alleged design was not registrable because, as applied to the article specified in the Certificate, it was something "which is in substance a mere mechanical device," and thus was not included in the definition of "design" in Section 93 of the Act.
Before this House both the ground taken by Mr. Justice Romer and the ground taken by the Court of Appeal have been fully examined, and though a decision adverse to the Appellants on one of these grounds would render it unnecessary to deal with the other, I think in the circumstances it would be of value if the House were to deal with both.
First, as to the contention that the design is not "new or original." The definition in Section 93 states that "design" means only "features of shape, configuration, pattern, or ornament applied to any article by any industrial process or means��.which in the finished article appeal to and are judged solely by the eye." In the present case it is the "features of shape" which are relevant. The drawing attached to the certificate shows a cylindrical rod carrying at each of two places along its length a bevelled collar, which increases the diameter of the rod where it occurs by about a third. The two collars are similar to one another and are placed symmetrically from one or other end of the rod at a distance which is somewhat less than a third of the rod's length. The middle section of the rod is slightly thicker between the two collars than it is where it protrudes beyond either of them. The Certificate of Registration describes the design as "in Class One" and as being "in respect of the application of such design to a metal cut-out or fuse for use in a vulcanising apparatus." The statement that the design is applied to a metal cut-out or fuse satisfies the requirement of the statutory definition that "design" means the "features of shape��.applied to any article." The additional statement that the article is "for use in a vulcanising apparatus" is no part of the statutory requirements, but Rule 17 of the Designs Rules (S.R. & O. 1932 No. 872) made under Section 86 (1) ( a) of the Act purports to authorise the Comptroller to require the applicants to state for what purpose the article to which the design is to be applied is used. In the present case, they did so voluntarily.
Class I in the classification of goods contained in the Third Schedule of the Designs Rules consists of "articles composed wholly of metal or in which metal predominates, and jewellery". There is thus a vast variety of objects included in the class, and inasmuch as the features of shape in the registered design are substantially the same as the features of shape in rollers in rolling mills or in a bicycle crank axle, both made of steel and thus in the same Class, which were well known at an earlier date, the Respondents contended at the trial that this was enough to prove that the Appellants' design was not "new or original". If it be enough to disprove novelty or originality to show that any other article in Class I, though used for quite a different purpose, was already known to be made according to a design with the same or substantially the same features of shape, then this is clearly proved in the present case and the Appellants' claim to retain their design on the Register fails on this ground. The Appellants contend, however, that identity of shape previously applied to articles of quite a different type, though falling within the same Class, is not enough to destroy the validity of their claim that the design they have registered is "new or original". Mr. Shelley seeks to limit the field within which it is relevant to ask whether a design as defined in the Act has been anticipated to an area which is not so wide as that of the class, though I have found it difficult to grasp with precision what are, according to him, the metes and bounds of the relevant field within the class. His contention, as I understand, is that no previous application of the design to another article in Class I should be regarded as an anticipation unless this previous article is "analogous" to the article mentioned in the certificate, and by analogous is meant made for a similar use or purpose. Similarly, the contention is that there is no infringement of the Appellant's monopoly unless another person subsequently makes an article of readily fusible metal in the same shape adapted for the same use, viz., for use in a vulcanising apparatus. In other words, the shape may have been already applied to other articles in the same Class, but that is (according to Mr. Shelley's argument) no reason why registration should not be granted in respect of the novel application of the same shape to another and different article in that Class.
In deciding whether this contention is correct, our first duty is to examine the language of the Statute itself. By Section 53 the registration of a design gives copyright in it to the proprietor during five years from the date of registration. By Section 93 "copyright" means the exclusive right to apply a design to any article in any Class in which the design is registered�in the present case in Class I. Indeed, it is not obvious what is the purpose of providing for a classification of goods unless it be to indicate the area within which the monopoly would exist. I cannot construe the words "any article in any class" otherwise than as embracing all the articles in that class whatever may be the differences of use or purpose among them. If this is so, the bicycle crank axle must be an example of "any article" in Class I and the copyright which would be given to the Appellants by registering the design 833097 would include the exclusive right to apply their design to a bicycle crank axle. But this shape as applied to a bicycle crank axle has been used and published long before 1939, and it follows that the Appellants' design is not "new or original".
I am fully alive to the fact that this construction greatly cuts down the instances in which, on another view, a design may be validly registered. But the truth is that this particular design is of the most ordinary character: its general features of shape are to be found in numerous and well-known products of engineering. It has no significance whatever except in connection with the use to which the object to which it is to be applied is to be put. The shaping of collars on metal bars and rods has long been practised for various purposes and is a matter of common knowledge.
The only ground on which, as it seems to me, such a...
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