Sonway Manufacturers Ltd v. Wai Fat Electronics Co (A Firm)

HCA005085/1980

S.7 of Registered Designs Act 1949 as applied to Hong Kong - there is no infringement unless the article complained of corresponds to the article for which the design was registered according to the words used in the certificate of registration - Court not satisfied that those words did not embrace the defendant's article - since on the facts the defendant's article embodied a design which was substantially different from the protected design the action failed.

IN THE SUPREME COURT OF HONG KONG

HIGH COURT

___________

BETWEEN

____________

Coram: Hon. Fuad, J.

Date: 14 July 1982

____________

JUDGMENT

____________

1. This is an action for infringement of a registered design in respect of a combined headphone and radio receiver. The design was registered (number of registration 961264) in the United Kingdom as of the 5th February 1973, as evidenced by a certificate dated the 2nd May 1973; the registration has been extended from time to time and is still in force. It is common ground that the Registered Designs Act 1949 of the United Kingdom ("the Act") applies and that the plaintiff company has the copyright in the design and therefore the exclusive rights set out in s.7 of the Act, but in relation to Hong Kong. The alleged infringement relates to a headphone (I will use a neutral term for the present) admittedly manufactured and sold lay the defendant firm under its trade designation Monita model No. HP9000AP(P2). Counsel agreed that I should also look at a manufactured article (another headphone) embodying the design (P1) although as it happens, P1 does not in fact embody one feature of the design.

2. There was in the event no challenge to the validity of the registration, and the sole issue before me was the allegation of infringement. At the conclusion of the hearing on the 8th July 1982 I dismissed the plaintiff's claim and now give my reasons (o.42 r.5A).

3. Mr. Litton for the defendant firm contended that the plaintiff's claim should fail in limine because it had not been established that the article complained of was an article in respect of which the design was registered. There could, he submitted, be no infringement unless the defendant's article corresponded to the article of or which the design was registered according to the certificate of registration. This was plain from the wording of s.7(1) of the Act which gave the proprietor of a registered design exclusive rights in relation only to "any article in respect of which the design is registered". It was not in dispute that the defendant's P2 was merely a headphone with a radio in it, and could not be used as an ordinary headphone to receive sound from an independent source, whereas the plaintiff's certificate spoke of a registration "in respect of the application of such design to a combined headphone and radio receiver". While acknowledging that the decision in Bourjo Ltd. v. British Home Stores Ltd. ⁽¹⁾ was made in interlocutory proceedings, Mr. Litton suggested that in the absence of any other authority, it was a useful illustration of the proposition he sought to advance. In the Bourjois ⁽¹⁾ case he English Court of Appeal upheld the decision of the judge at first instance n declining to grant an interlocutory injunction to restrain infringement on the grounds that there was doubt both as to validity and infringement. I can do no better than to set out the summary of that case in Russell-Clarke on Copyright in Industrial Designs (Fifth Edition) at page 90 for it is a succinct statement of somewhat complicated facts -

"There, the article for which the design was registered was 'a container for a perfume bottle'. The container consisted, as the representations showed, of a bucket with a removable top simulating ice with a champagne bottle which formed part of the top sticking out of it. In articles sold according to the registered design a bottle of perfume was secreted in the bucket beneath the top, and was therefore invisible and formed no part of the article registered. The defendant's article, which was alleged to infringe,consisted of a bucket with an actual bottle of perfume in the shape of a champagne bottle lodged in some packing simulating ice. The defendant contended that there was no infringement as this article did not embody 'a container for a perfume bottle.' Upon a motion, an application for an interlocutory injunction was refused."

4. Looking at s.7 (and I agree with Mr. Litton that in this context the provisions of s.1 (2) are important) it does seem to me to be quite clear that there is no violation of the plaintiff's rights if the article complained of does not conform. to the article (in the words of the certificate) for which the design is registered. However, in my judgment, for Mr. Litton to succeed on this point, I must be satisfied that by any fair use of language the words "a combined headphone and radio receiver" could not be understood to embrace the defendant's article (P2) which are headphones with a radio inside them. The wording employed does not seem to me unequivocally to describe headphones which both include a radio receiver and retain what I would call their primary use. I do not think the matter is capable of much further elaboration and I will content myself by indicating that I cannot be so satisfied.

5. The parties called evidence as to how they came to design and market their respective radio headphones. However no suggestion of deliberate copying was made and I will merely mention that I accepted all this evidence as the truth and came to the conclusion that the plaintiff's Pl and the defendant's P2 were independently conceived and that P2 owed nothing to the design.

6. I now turn to consider the scope of the monopoly. The statement of novelty put forward by the plaintiff and attached to the certificate of registration was in the following terms : "Novelty resides in the shape and configuration of the article as shown in the representations". Since no  claim is made in respect of any particular feature, I am bound to consider the design as a whole. It is also clear that features dictated solely by function must be ignored. On the facts of this case, in regard to "the eye" mentioned in s.l(3) of the Act (which defines the expression "design") I have to bear in mind three sets of eyes - the eyes of exporters, the eyes of foreign buyers and the eyes of ordinary purchasers, both at home and abroad. I do not think that very much turns on this.

7. When deciding the crucial issue in this action (whether the defendant's P2 embodies a design not substantially different from the protected design - s.7(1) of the Act) I accept the contention of Mr. Rogers that in view of the prior art which has been exhibited this is not a case  where only small differences separate the registered design from what has gone before, so that equally small differences between the alleged infringement and the registered design will be held sufficient to avoid the infringement - slightly to paraphrase Russell-Clarke on Copyright in Industrial Designs at page 85.

8. Despite the valiant efforts of Counsel to assist me, when comparing the defendant's P2 with the registered design Z have not found it easy to describe the various parts of the rival   headphones. Before I make such an attempt, I accept, in the words of the learned author of Russell-Clarke (at page 84) that "the task of the Court is to consider infringement not merely on the basis of side by side comparison but to view the articles in question (or the representation and the articles) together and separately and each as a whole; the eye for this purpose will be the eye of the customers." I also accept that the doctrine of "imperfect recollection" must be applied.

9. I would list the following distinct differences (in no particular order of importance) between the plaintiff's registered design - assisted by Pl - and the defendant's article, P2 -

	Plaintiff's design		Defendant's P2
1.	Presence of two antennae at the sides of the headband.		None.
2.	Headband solid.		Headband made up of two strips.
3.	Top part of connection bracket straight and in the same plane with the lower part of the bracket.		There is acurve outwardsat the top part of the bracket.
4.	The part of the bracket linking up with the plastic casing of the headphones is in wire form, the thickness being consistent throughout.		This part of the bracket is a flat piece of metal into which the two pieces of wire forming the top part of the bracket is inserted.
5.	The bracket is in one plane i.e. in a straight line viewed from the side.		The bracket is not in a straight line; side view shows a distinct bend.
6.	Clip between bracket & headband -		This is an entirely different component.

	(a)	from side view thicker on the upper part & thinner on the lower part.		(a)	Even thickness all throughout from side view.
	(b)	From front view - the impression is that it is longer than it is wide.		(b)	From front view, much wider than it is long.
	(c)	From front view -there is a raised plateau with sharp edges.		(c)	From front view there is a cylindrical knob.
	Plaintiff's design			Defendant's P2
	(d)	Front view shows a trapezoid flat surface big enough for a name plate.		(d)	No such feature.
	(e)	There are four trapezoid supporting surfaces focussing on the flat trapezoid surface.		(e)	No such feature.
	(f)	There are no screws visible from front view.		(f)	Two obvious metal screws from the front view.
7.	The two plastic casings of the headphone; side view not symmetrical.			Side view symmetrical.
8.	Front view of plastic casing of headphones: (registered design only shows perspective view) the impression is that the two casings are roughly rectangular from the front view.			Obvious trapezoid & much wider as a whole.
9.	Front of casing of headphones has an obvious indentation - thus marking out sharp edges at the two sides of the identation and lower part of the indentation. This indentation occupies a large proportion of the whole surface.			No such feature.
10.	Indented part of the casing of headphones is plain (the registered design does not show the texture of the material).			Front of each casing has seven sunken stripes.
11.	One of the headphone casings has two knobs: the other has no knobs.			One knob on each casing, in the middle and they are proportionately bigger.
12.	Presence of two windows on the front of one of the casings.			No such feature.
13.	The two windows last mentioned are sunken through the name plate with sharp slanting edges into the interior part of the casing.			No such feature.
14.	Lower part of one of the two plastic headphone casings has a sharp angular "step-in" feature.			On both casings there are similar recesses but the angles made by the recess are not sharp.
	Plaintiff's design			Defendant's P2
15.	The bottom part of the casing slants and tapers off.			Bottom part of both casings relatively flat and the bottom line of each casing from the side-view is roughly parallel with the overhang.
16.	Smooth padding.			Padding has a sewn hem-line.
17.	From the side view, the profile of the two casings describes a gradual angle tapering off towards the top.			In profile, about 1/2 the top of the casing is almost flat, and the rounding off is therefore more acute.
18.	The two sides of each casing are soft - that is, curved.			The sides are on a flat plane.
19.	The general appearance of the article is long and slim.			The general appearance is solid and bulky.

10. Having regard to these differences, taken as a whole, in my view (and I use the words on this occasion quite literally) it could not be said that the defendant's article has substantially the same appearance as the plaintiff's registered design. To me they look not merely substantially different, but quite different. I might remark here that my conclusion would have been the same if the plaintiff had sought to protect by registration a design in respect of which novelty resided in the shape and configuration of the ear phones alone and not the whole article

11. It was for these reasons that I found that infringement had not been made out and accordingly dismissed the plaintiff company's claim.

(1)    (1951) 68 R.P.C. 280

Representation:

Anthony Rogers (Johnson, Stokes & Master) for Plaintiff.

Henry Litton, Q.C. & Edward Chan (Woo, Kwan, Lee & Lo) for Defendants.