Tang Fun Kee Manufacturing Co Ltd v. Fortuna Plastic Manufactory (A Firm)
Read the full judgment text of HCA 1346/1979 on BabelCite. This High Court CFI judgment.
1. In this action the Plaintiffs Tang Fun Kee Manufacturing Company Limited allege that the Defendants Fortuna Plastic Manufactory have infringed a Registered Design of which they are the registered proprietor and also that the Defendants have infringed their copyright.
Cited by 3 cases
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HCA001346/1979
Coram: Barker, J. Date of Judgment: 10th March, 1980. ----------------- JUDGMENT ----------------- 1. In this action the Plaintiffs Tang Fun Kee Manufacturing Company Limited allege that the Defendants Fortuna Plastic Manufactory have infringed a Registered Design of which they are the registered proprietor and also that the Defendants have infringed their copyright. 2. The Plaintiffs are an old established business in Hong Kong engaged in the making of lamps and lanterns. One of their products was a magnetic Roll light P5 for use in cars and another was a fluorescent lamp P3. According to Mr. TANG Wing Luen a director of the Plaintiffs, in early 1976 he conceived the idea of combining P5 and P3 and of making a lantern with a torch and a fluorescent tube in the one body. It was, he said, solely his idea, uninfluenced by anything he had read or by any other product. Accordingly he, Mr. Tang, instructed Mr. YEUNG Kei Cheung, who was then employed by the Plaintiffs as a designer and who also gave evidence before me, to prepare a design, for a lantern that could be held in the hand. And so Mr. Yeung, a man born bred and living in Hong Kong, set about his task. He produced rough drawings and a non-working mock up, which was not satisfactory as the corners were too square, but eventually, according to him, he produced the final drawings which form pages 20 to 40 of the bundle P2, pages 20, 21, 25 and 26 being the drawings in respect of which copyright is claimed. Most of these drawings were, it was said, completed by the 11th November 1976. Mr. Tang approved them, and moulds were made, some by an outside contractor Mr. CHAN Kai and some by the Plaintiffs own employees. Production started and the first sale of the lanterns was to a customer in Saudi Arabia as is shown by documents pages 6 to 9 of P2. 3. Meantime application had been made by or on behalf of the Plaintiffs to register the design under the Registered Design Act 1949 and a certificate of Registration of Design was issued to the Plaintiffs on the 11th September 1977, the design being registered as of the 4th January 1977. The certificate of Registration, the drawings or representations attached thereto and the Statement of Novelty form pages 1 - 3 of P2. The Statement of Novelty reads "The features of the design for which novelty is claimed are the features of shape and configuration applied to the article as shown in the representations." It will be observed from this Statement that there is no claim to any particular feature and therefore the Registration was for the article as a whole. (See Jones and Attwood v. National Radiator Co. 1928 45 RPC 71 at p.83 per Tomlin J.). 4. The first type of lantern produced by the Plaintiffs was P1, which it will be seen has a Knurled Knob at the bottom. Not many of this kind of lantern were sold and it was superseded by the lantern P4, which has a rather larger plain knob at the base and a different kind of switch. 5. Subsequently, though it is not entirely clear when, since no one from the Defendant firm gave evidence, the Defendants admittedly began to manufacture a combined torch and fluorescent lamp D1 called the Trilite lantern. It is this lantern which the Plaintiffs claim infringes their registered design and their copyright. 6. Attack was made on the evidence given by both Mr. Tang and Mr. Yeung. I was urged not to accept what they said, largely because, so the submission went, their explanation as to the reason why the original rough drawings were not before the Court, namely that they were lost was so suspicious as to taint the whole of their testimony. I reject this submission. I saw and heard both Mr. Tang and Mr. Yeung. They struck me as careful and honest witnesses whose evidence I accept. It follows that I find that the relevant drawings, namely pages 20, 21, 25 and 26 were the drawings from which P1 was made. I further find that Mr. Tang's idea was uninfluenced by any prior art or article. 7. Section 1(1) of the Registered Design Act 1949 provides
By section 7(1)
Section 2 of the United Kingdom Designs (Protection) Ordinance Chapter 44, provides
The effect of this Ordinance is thus to extend the rights and privileges of the proprietor of the Registered Design to Hong Kong. (See Smith Kline and French Laboratories v. the Attorney General 1966 H.K.L.R. 498). 8. The Defendants deny that the Plaintiffs have any claim against them in relation to the registered design. They say, first that the Plaintiffs' design was not validly registered and secondly that assuming that contention fails then article D1 does not infringe the Plaintiffs' design. 9. The original Particulars of Objection were, by leave, amended at the trial to allege certain instances of prior publication. I therefore deal with these particulars. 10. Section 1(2) of the Act of 1949 provides
Cap. 44 requires the words "and in Hong Kong" to be added after "in the United Kingdom" in section 1(2). 11. The first Particular of Objection is that the registered Design was neither new nor original at the date of application for registration by reason of common general knowledge. What is meant by common general knowledge was discussed in the case of Automatic Coil Winder and Electrical Equipment Company Ltd. v. Taylor Electrical Instruments Ltd.(1). The Master of the Rolls said at p.43
But there was before the Court no evidence as to the knowledge a fully fledged practitioner in the making of lantern might have been expected to have a part of his technical equipment. I therefore reject the plea of invalidity on the grounds of common general knowledge. 12. Next it is alleged that the registered Design was not new and original by reason of prior publication. The prior publication relied on was, first, prior art in the form of three editions of a journal known as Hong Kong Enterprise, D3, D4 and D5 in each of which is depicted a fluorescent lamp, and secondly publication by way of sale of lamps of the kind depicted in the journals, one of which was produced to the Court D2, to a customer in July 1976, as evidenced by the contract documents D6. What is said is that P1 is a mere trade variant of D2. If that contention were correct, it would be fatal to this part of the Plaintiffs' case, since, quite apart from the express wording of section 1(2) of the Act, it is well settled that a mere trade variant of a preexisting design is not registrable. (See Phillips v. Harbro Rubbe Co. 1920 37 R.P.C. 233). I have already found that Mr. Tang, who admitted having seen D3 and D4, was in no way influenced by what he read in devising his ideas for P1. But this fact is irrelevant to the Defendants' argument. The question is were the lamps portrayed in D3, 4 and 5 and the lamp D2 substantially the same as P1, and the representation in P2, so as to rob the registered design of its newness and its originality. In my judgment they were not. It was urged by Counsel for the Plaintiff that there was in reality no prior art or publication, and with that submission I agree. The articles depicted in D3, 4 and 5, and D2 are in my judgment substantially different from P1. I therefore reject the Defendants' submission on this point. 13. The third line of attack which the Defendants mount on the validity of the registered design is founded on section 1(3) of the Act, which reads as follows:-
It is asserted by the Defendants that the Plaintiffs' design is dictated solely by the function which the article in that shape or function has to perform. The meaning of section 1(3) was considered by the House of Lords in the case of Amp. Incorporated v. Utilux Pty. Ltd.(2). In that case the phrase "dictated solely by the function", was held to mean "attributable to or caused or prompted by". Where a shape is adopted by a designer upon the sole requirement of functional ends i.e. to make the article work and not to appeal to the eye, then the provision excludes it from statutory protection. In the case of Stratford Auto Components Ltd. v. Britax (London) Ltd.(3) Lloyd Jacob J. said at p.189
Counsel for the Defendants pointed out that the tubular shape, and the length was governed by the fact that the length of the fluorescent tube had been set at 9 inches, and the decision to have six batteries of a particular kind meant that, if wastage of space was to be avoided, and if the article were to be held in the hand, the forms of shape were limited. But Mr. Yeung, whose evidence I accept, said that the article could have been in a book shape, and neither he nor Mr. Tang were satisfied with the shape of the mock up. It is evident that function played a large part in the choice of the final shape, but in my judgment that shape was not dictated solely by the function. 14. Paragraphs 3 and 4 of the Amended Particulars of Objection were not argued before me, and there is no substance in the allegations contained therein. 15. In my judgment the design was validly registered in accordance with the Act. 16. The Defendants nevertheless say that, even so, D1 does not infringe the registered design. Whether it does or not is a matter of fact. I have to judge the matter solely by the eye. In deciding whether or not there has been infringement, I must do so with the inexpert eye of a customer - I must consider solely the shape and configuration and not the object for which the article was made. (See Hecla Foundry Co. v. Walker Hunter & Co. 6 R.P.C. 554). I am entitled to look not only at the registered design but also at the article manufactured therefrom. And I then can lay that side by side with the alleged infringing article and make my comparison. I must also apply what has been called somewhat infelicitously "the doctrine of imperfect recollection". In the case Valor Heating Co. Ltd. v. Main Gas Appliances Ltd.(4) Whitford J. said at p.878:-
And applying all these tests, I must then answer the question, is D1 substantially different from the registered design? I must also take into account the principle that the better known the design the narrower the scope of the protection. (See Saunders v. Wiel 1893 10 R.P.C. 29 and Deans Rag Book Co. v. Pomerantz 1948 R.P.C. 1.) 17. There are undoubtedly differences between D1 and the presentations and P1. The cross section is different - the Plaintiffs' article being basically square whereas the Defendants' article is roughly hexagonal. The tops of the two articles are different - the top of P1 is flat whereas that of D1 is peaked, removable and placeable on the base. The back of D1 is different in profile and position from that of P1. Are these differences of such importance as to cause me to say that the two articles are substantially different? In my judgment they are not. Viewing the articles side by side, comparing D1 with the representations, and applying the doctrine of imperfect recollection, I consider that there has been infringement. The general configurations of P1 and D1 are the same, the strap and the logo and the switch are all in the same position. The question to be answered is, has the substance of the design been taken, and in my judgment it has. 18. I turn then to consider the issue of copyright. Copyright is claimed in pages 20, 21, 25 and 26 of P2. According to Mr. Yeung, he drew these drawings and it was from those drawings that P1 was made. I accept that evidence. It may be that these drawings were not the original drawings, in the sense that there had been prior rough drawings. But as Whitford J. pointed out in the case of L.B. (Plastics) Limited v. Swish Products Limited (5), there can be copyright in a copy. In my judgment the Plaintiffs have established copyright in the relevant drawings, and have further established a causal connection between the drawings and the lantern P1. 19. Has there been infringement of this copyright? Mr. Yam, in a powerful argument on the point for the Defendants, pointed out many differences between the Defendants' article D1 and the Plaintiffs' drawings. I note some of then, the shape of the base - the fact that the sides of D1 are indented whereas those of P1 are not, the top cap is different, the switch is different, the shape of the reflector is different. Nevertheless the similarities in my view are overwhelming. The crinkled top, the longitudinal view, the back, with the strap and the logo, and the fact that there is a Knurled Knob at all on D1 - these matters convince me that the Defendants have infringed the Plaintiffs' copyright. 20. But the Defendants nevertheless rely on section 9(8) of the Copyright Act 1956, which provides
21. I pause to observe that the drawings in P2 are clearly artistic works within the meaning of sections 3(1)(a) and 48 of the Copyright Act 1956. 22. I find section 9(8) an entremely difficult subsection to apply. It involves my finding a prima facie case of infringement but then having to ask the question - having found infringement, does the object in question to my inexpert eye appear to be a reproduction of the artistic work. Lord Salmon in the L.B. (Plastics) Ltd. case at p.635 said of section 9(8) "It is indeed a curious subsection", an observation with which I respectfully agree. In the case of Solar Thomson Engineering Co. Ltd. v. Barten(6) where reliance was placed on section 9(8) when the relevant drawing was a sectional drawing. Buckley L.J. said at p.539
23. In the present case, pages 20 and 21 of P2 are sectional drawings. In my judgment, were I to be given a sectional check piece of D1, I would not on the balance of probabilities be satisfied that D1 was not a reproduction of P2. I put it this way deliberately because the onus under section 9(8) lies on the Defendants. 24. In my judgment therefore the defence under section 9(8) fails. It follows that I find that the Defendants have infringed the Plaintiffs' copyright. 25. There was a claim in detinue and conversion but this was not argued before me, and I say no more about it. 26. By section 9(1) of the 1949 Act and section 17(1) of the 1956 Act it is provided that the Plaintiff shall not be entitled to damages if the Defendant proves that he had no reasonable grounds for suspecting that the design was registered or that copyright existed. The Defendants have called no evidence on this point and I find that they have not established a defence under either section.
Representation: Anthony G. Rogers and Ramesh K. Sujanani (Foo & Li) for plaintiff. David Yam and Daniel R. Fung (Job Young & Co.) for defendant. (1) 61 R.P.C. 41 (2) [1972] R.P.C. 103 (3) [1964] R.P.C. 183 (4) [1973] R.P.C. 871 (5) [1979] R.P.C. 551 at p.568. (6) [1977] R.P.C. 537 |
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