Stenor Ltd v Whitesides (Clitheroe) Ltd

 

Stenor Ltd v Whitesides (Clitheroe) Ltd

INTELLECTUAL PROPERTY; Designs

COURT OF APPEAL

LORD GREENE MR, DU PARCQ AND MORTON LJJ

1, 2, 5, 6, 7, 8 NOVEMBER, 11 DECEMBER 1945

Designs – Registration – Design for fuse for use in vulcanising machine – Novelty claimed only for shape of fuse – Fuse only for use in a particular type of

machine – Shape dictated solely by functional considerations – Whether “a mere mechanical device” – Size of article to which design has been applied not

relevant – Patents and Designs Acts, 1907–1938, ss 49(1), 93 – Designs Rules, 1932–1938, r 17.

S Ltd was a company engaged in marketing vulcanising machines for repairing tyres and other articles. On 25 January 1939, the design for a metal cut-out or

fuse for use in these machines was registered by them under the Patents and Designs Acts, 1907–1938, and the Designs Rules, 1932–1938. The claim of

novelty indorsed on the application for registration was in regard to “the shape or configuration of the cut-out or fuse as shown in the representations.” The

fuse to which the design was actually applied was very small, being little more than half the average thumb nail in length. In an action brought by S Ltd

against W (C) Ltd for infringement of their copyright in the design, W (C) Ltd challenged the validity of the design and counterclaimed for rectification of the

register of designs by its removal therefrom. The trial judge dismissed S, Ltd’s action and made an order on the counterclaim for the register to be rectified by

the removal therefrom of S, Ltd’s design on the ground that it was not a “design” within the Acts, (a) because it was not a “new or original design,” as required

by sect 49(1), and (b) because of the small size of the articles to which it was applied. On appeal, it was contended by S Ltd (i) that the design was within the

definition contained in sect 93 of the 􀂭 176􀀉 Acts; (ii) that the size of the articles to which the design had been applied was irrelevant. On behalf of W (C)

Ltd it was contended that the design was not a “design” within the definition in sect 93 of the Acts, because it was “in substance a mere mechanical device.”

On the evidence of S, Ltd’s witnesses, it was found that the shape shown in the registered design was dictated solely by functional considerations and the fuses

to which it was applied were intended solely to operate a vulcanising machine which could be operated by these fuses and by no others. It was not clear,

however, whether the vulcanising machine which was to be operated by a fuse made according to the design was already in existence when the design was

registered on 25 January 1939, or whether it then existed only in the designer’s mind:—

Held – (i) The design in question was in substance a mere mechanical device, because novelty was claimed only in regard to the shape or configuration of the

fuse and that shape or configuration was dictated entirely by the function which the fuse had to perform in a particular machine. Whether the particular

machine in which the fuse was to be used had been manufactured at the date when the design was registered, or whether it existed only in the designer’s mind,

was immaterial.

(ii) since S, Ltd’s design was “in substance a mere mechanical device,” it was not a “design” within the definition in sect 93 of the Patents and Designs

Acts, and it was not, therefore, a proper subject for registration under the Acts.

(iii) [per Morton LJ] the fact that a design had been applied only to articles of small size would not affect its registration.

Dover Ltd v Nurnberger Celluloidwaren Fabrik Gebruder Wolff distinguished.

Notes

This case illustrates the distinction drawn by Luxmoore J, in the Kestos case between a patent and a design, namely, that an article produced for a particular

purpose may be the subject of a patent but not of a registered design. In the case of a design it is a mere mechanical device, the features of which are solely

functional. The validity is to be determined at the time of application to register, and it is immaterial that at the time of such application the function which it

is intended to perform cannot be carried out because the machine in which it is to be used is not yet constructed. No objective test of whether a design is

registrable can be devised, and the matter may have to depend upon facts which were only known to the person submitting the design for registration.

Morton LJ, refuses to accept the size of the design as a test of whether it is capable of registration, but as regards a design which cannot be inspected

without a magnifying glass he reserves consideration until the question actually arises.

As to Registrable Designs, see Halsbury, Hailsham Edn, Vol 32, pp 682–688, paras 994–999; and for Cases, see Digest, Vol 43, pp 246–248, Nos

884–893.

Cases referred to in judgments

Tecalemit Ltd v Ewarts Ltd (No 2) (1927), 44 RPC 503, 43 Digest 247, 892.

Kestos Ltd v Kempat Ltd, and Vivian Fitch Kemp, Re Kestos Ltd Registered Design (No 725,716) (1935), 53 RPC 139, Digest Supp.

Re Bayer’s Design (1907), 24 RPC 65, affd, sub nom Bayer v Symington, Re Bayer’s Design (1907), 25 RPC 56, 43 Digest 246, 886.

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Dover Ltd v Nurnberger Celluloidwaren Fabrik Gebruder Wolff [1910] 2 Ch 25, 43 Digest 251, 914, 79 LJCh 625, 102 LT 634.

Appeal

Appeal by the plaintiffs from an order of Romer J, dated 18 May 1945. The facts are fully set out in the judgment of Morton LJ.

K E Shelley KC and James Mould for the appellants.

Kenneth R Swan KC and G H Lloyd-Jacob KC for the respondents.

Cur adv vult

11 December 1945. The following judgments were delivered.

LORD GREENE MR [read by DU PARCQ LJ]. I have had the advantage of reading the judgment which is about to be read by Morton LJ. I am in

complete agreement with that part of it which deals with the question whether the so-called design is in substance a mere mechanical device, and the question

whether the smallness of the article to which it has been applied is sufficient to prevent the design being a good registrable design. I have a few words of my

own to add on the former topic.

Counsel for the appellant plaintiffs contended that nothing could be a mere mechanical device which was not, so to speak, self-contained: or, in other

􀂭 177􀀉 words, that an article (such as a key or a spanner) intended to operate another article or piece of mechanism would not fall within the expression. I am

quite unable to accept this view, which would lead to a large and obviously undesirable expansion of the class of registrable designs. But his main argument,

apart from his submissions on the facts, was that the test to be applied must be a purely objective one, by which he meant that the question whether or not an

alleged design is, or is not, in substance a mere mechanical device must be answered by reference to the entry on the register considered in relation to facts

known to the public (or the particular branch of the public concerned with articles of the kind in question) at the date of registration, and to nothing else. It is

curious to find that there is no authority in point. But, in my opinion, the argument is unsound. It may be inconvenient, as counsel for the appellant plaintiffs

contended, to have to examine into facts which at the time of registration might well not be known to anyone except the person submitting the design for

registration. But to allow a person to obtain a monopoly in an article designed solely with a view to operating a piece of mechanism invented by him, and

unknown to anybody else, which he subsequently manufactures and puts on the market would lead to an extension of monopolistic rights which the legislature

cannot, I think, have intended. The judgment of Romer J, in the Tecalemit case can usefully be referred to in this connection. It seems to me that the

inconveniences which counsel for the appellant plaintiffs says will flow from the adoption of any principle other than that which he puts forward can to a great

extent be avoided by a strict compliance with the Designs Rules, 1932–1938. By r 17:

‘Every application [for registration of a design] shall state the article or articles to which the design is to be applied and where the Comptroller so

requires, the applicant shall further state for what purpose the article to which the design is to be applied is used …’

One reason why this power to inquire into the purpose for which the article is used was given to the Comptroller may well have been to assist him in deciding

whether the alleged design is in substance a mere mechanical device. An accurate answer to such an inquiry, if made, and (in many cases) the mere statement

of the article to which the design is to be applied, may clearly establish, or at least afford grounds for thinking, that the case is one of a mere mechanical

device. In the present case, we have not seen a copy of the application, but the language contained in the certificate is no doubt based upon what was stated in

it. In the certificate the article is stated to be “a metal cut-out or fuse for use in a vulcanising apparatus.” In truth, the article was more than a fuse. It was a

combined fuse and “key”; and it was (on the facts) intended for use in a particular form of vulcanising apparatus and, moreover, one which could only be made

to work by means of a “key” of this particular shape. If these facts had been brought out, the true nature of the alleged design would at once have been

apparent.

I do not think it necessary to express any concluded opinion upon the matter of novelty dealt with by Romer J in his judgment. It must not be taken from

this, however, that I agree with his reasoning or with the conclusions to which he came upon that matter.

DU PARCQ LJ. I also have had the advantage of reading the judgment of Morton LJ. Although I was much impressed by the proper insistence of counsel

for the appellant plaintiffs on the difficulties which might be occasioned by any departure from what he called an objective test, I have come to the conclusion

that the reasoning by which Morton LJ supports his view that we are here dealing with what is in substance a mere mechanical device is sound and convincing.

As to the reasons given by Romer J for his decision, I wish to associate myself with the observations of the Master of the Rolls.

I agree that the appeal should be dismissed.

MORTON LJ. In their statement of claim in this action the plaintiffs, who are the registered proprietors of design No 833,097, alleged that the defendants

had infringed the plaintiffs’ copyright in their said design. They claimed an injunction and the usual ancillary relief. The defendants denied infringement,

pleaded that if there had been infringement it was innocent 􀂭 178􀀉 and committed without knowledge of the plaintiffs’ alleged rights, and relied upon the

Patents and Designs Acts, 1907–1938, s 54(1), the provisions of which were not, as they contended, observed by the plaintiffs. The defendants also

challenged the validity of the plaintiffs’ design on several grounds, and they counterclaimed for rectification of the register of designs by the removal

therefrom of the plaintiffs’ design. Romer J held that the plaintiffs’ design was invalid because it was not “new or original” within sect 49(1) of the Patents

and Designs Acts. He also held that the design was not a “design” within the meaning of the Acts, because of the small size of the articles to which the design

was applied. He expressed the view that the defendants were altogether unaware of the plaintiffs’ copyright in their design, and that the sale of the articles

which were alleged to be infringements of copyright was effected in all innocence and without any intention of infringing the rights of any other persons. The

action was dismissed with costs. On the counterclaim the judge made an order for the register to be rectified by the removal therefrom of the design No

833,097, and ordered the plaintiffs to pay the defendants’ costs of the counterclaim.

The plaintiffs appeal. Counsel for the appellant plaintiffs conceded that he could not ask this court to reverse the order made in the action; the conduct of

the defendants did not come within sect 60(1)(a) of the Acts and, having regard to the judge’s finding of fact that the defendants had acted innocently, their

conduct did not come within sect 60(1)(b). Accordingly, the plaintiffs could not succeed in the action even if their design were held to be valid. The whole

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object of this appeal is to obtain a reversal of the decision of Romer J [on the counterclaim] that the plaintiffs’ design is invalid, and of his order directing the

removal of that design from the register.

Counsel for the appellant plaintiffs contended that their design is a “design” within the definition contained in sect 93 of the Acts, that it is a “new or

original design” within sect 49(1), and that the size of the article to which the design has so far been applied is irrelevant. Counsel for the respondent

defendants relied upon two contentions before this court: (i) the plaintiffs’ so-called design is not a “design” within the definition in sect 93 of the Acts,

because it is “in substance a mere mechanical device”; (ii) even if the plaintiffs’ design is a design within sect 93, it is not “new or original.” Both of these

contentions were put before Romer J at the hearing, but he did not deal with the former contention in his judgment. No doubt he thought it unnecessary to do

so, as he was of opinion that, even if the plaintiffs’ design was a “design” within the Acts, it was not a new or original design. Counsel for the defendants did

not press before us any argument based on the small size of the articles to which the design has so far been applied, and for the moment I shall disregard that

point.

The plaintiffs market vulcanising machines for repairing tyres and other rubber articles, and they, or their predecessor in business, Steiner (who is now

their managing director), have done so for some years past. One of the requisites for the working of these vulcanising machines is the provision and

application of a certain degree of heat; and each of the machines contains, as essential contributions to its purpose, an electric heating element and a fusible

element. When the machine is in use the fusible element acts at first as a fulcrum, but when it has become heated by the electric heating element to a

predetermined temperature, it disintegrates and thus causes a break in the electric circuit, so that no further heat is engendered. It is the design applied by the

plaintiffs to those fusible elements (or fuses) which is in issue in these proceedings.

The certificate of registration certifies:

‘In pursuance of and subject to the provisions of the Patents and Designs Acts, 1907–1938, and the Designs Rules, 1932–1938, the design, of which

a copy is annexed, has been registered in the name of Leonard Steiner, trading as L. Steiner, in class 1 as of Jan. 25, 1939, in respect of the application

of such design to a metal cut-out or fuse for use in a vulcanising apparatus.’

The drawings annexed to the design show in perspective view, profile view and end view a circular bar or rod. The centre part of the rod is somewhat thicker

than the two end parts and is divided or separated therefrom by bevelled collars. The central portion of the rod is slightly longer than the two end parts. The

design, as shown in the drawings, possesses a definite appearance, but, as no 􀂭 179􀀉 scale is shown, no idea is afforded of the size of the object drawn other

than what can be gathered from the verbal description of the application of the design which is contained in the certificate. In fact, the fuse to which the

design has so far been applied is a minute object, its length being little more than half of that of the average thumb nail. The claim of novelty which is

indorsed on the application is:

‘The shape or configuration of the cut-out or fuse as shown in the representations.’

Turning to the questions before us for determination, it seems to me logical to consider first whether the plaintiffs’ design is or is not a design within the

definition in sect 93. The question whether it is a new or original design cannot arise unless and until this first question has been answered in the affirmative.

The definition of “design” in sect 93 of the Acts is as follows:

‘“Design” means only the features of shape, configuration, pattern or ornament applied to any article by any industrial process or means, whether

manual, mechanical, or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include

any mode or principle of construction, or anything which is in substance a mere mechanical device.’

I have come to the conclusion that the plaintiffs’ so-called design is in substance “a mere mechanical device.” These words were explained in Kestos, Ltd v

Kempat Ltd by Luxmoore J (53 RPC 139, at p 151) as follows:

‘A mere mechanical device is a shape in which all the features are dictated solely by the function or functions which the article has to perform: see

Tecalemit, Ltd. v. Ewarts, Ltd. (No. 2). In other words, if a person produces an article for a particular purpose, though that person may obtain the grant

of letters patent for it, the producer cannot obtain a monopoly of that article by registration of a design for it. The only protection given by the

registration is for the particular form of the article shown in the design registered. Moreover, the particular form must possess some features beyond

those necessary to enable the article to fulfil the particular purpose, but the fact that some advantage is derived from the adoption of a particular shape

does not exclude it from registration as a design: see Re Bayer’s Design.’

Having regard to the words “in substance” in the definition in sect 93 of the Acts, the court must look to the real substance of the matter, as revealed in the

evidence given at the hearing. After a careful reconsideration of all the evidence in the present case, I have reached the conclusion that the plaintiffs’ design is

a shape in which all the features are dictated solely by the function which is to be performed by the article to which the shape is applied, and that that shape

possesses no features beyond those necessary to enable the article to fulfil its function.

The history of the matter begins in 1936. From 1936 to 1938 and, it would appear, right on to the time when the machine exemplified by exhibit D 1 was

put on the market, the plaintiffs were marketing vulcanising machines of the type exemplified by the exhibit P 11. In this type there was no cover over the

mechanism, and the machine could be worked with fuses which were merely a straight piece of wire of the correct alloy. It could also be worked with a fuse

made according to the registered design, but such fuses were not used on the P 11 type of machine during 1936 to 1938. In December 1938, Steiner, as the

inventor, applied for letters patent for:

‘Improvements in or relating to vulcanising machines for repairing motor vehicle tyres and other rubber articles.’

The provisional specification was lodged at the Patent Office on 14 December 1938, and the complete specification on 24 December 1938. Letters patent No

522,543 were granted as a result of this application. The drawings attached to the complete specification show a vulcaniser embodying the various features of

the invention, and fig 5 is a representation of a fuse of somewhat unusual shape. The vulcaniser has a lid or casing in which there is a slot so shaped that it will

allow only a fuse of the shape illustrated in fig 5 to pass through. The inventor does not, however, confine himself to a fuse of the shape illustrated, for he

says, at p 3 of the provisional specification:

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‘The fuse 16 employed to operate the switch mechanism may be of the form illustrated by fig. 5, and the edges of the slot 15 are correspondingly

shaped to form a vertical slit to allow the fuse 16 to pass there-through.’

􀂭 180􀀉

His claims 11, 12 and 13 are as follows:

‘11. For use with a heating element according to claim 10, fusible members suitably shaped to pass through said insertion slot. 12. Heating

elements for vulcanising machines substantially as herein described with reference to and as illustrated by the accompanying drawings. 13. Fusible

members for operating heating elements according to any of the preceding claims, substantially as illustrated by fig. 5 of the accompanying drawings.’

The provisional specification contains the following passage:

‘In order to ensure that the switch mechanism can only be operated by the correct fuse, designed to disintegrate at the proper temperature according

to the composition of the fusible alloy of which it is made, the correct fuses are made of a specific shape corresponding to that of an insertion slot in the

casing of the switch mechanism, whilst the pivoted plate on which the fuse falls has a transverse slot on which the fuse falls which is too small in

diameter to permit the correct fuse to drop through, but will allow a fuse of too small a diameter to fall through the plate and out of the casing through a

hole, so that on depressing the operating member the switch mechanism will not operate. The correct fuse will, therefore, constitute a kind of key for

operating the switch mechanism, which cannot be operated by an incorrect key.’

Thus it is clear that in December 1938, Steiner had invented a vulcanising machine with a casing inclosing the switch mechanism. It was a feature of his

invention that the mechanism could only be operated by a fuse of the right shape and dimensions. He points out that a correct fuse will constitute a key for

operating the switch mechanism and it is his intention that the mechanism will only operate if the correct key is used. If Steiner or the plaintiff company had

succeeded in registering, as a design, the design shown in fig 5 of the drawings attached to the complete specification, I think it is plain that such a registration

would have been invalid, as the article to which that design was applied would clearly be “a mere mechanical device” within the definition of that term which

was given by Luxmoore J in the passage quoted above. The design now in question having been registered on 25 January 1939, on 30 November 1939,

Steiner made application for another patent, as a patent of addition to No 522,543. Letters patent No 533,816 were granted as a result of that application. In

the complete specification Steiner says (at p 1):

‘In conformity with my prior invention the machine comprises an electric element and a control switch therefor, which is operated, through a train of

mechanism inclosed within a casing, by an operating member external to the casing, the said train of mechanism being completed and rendered

operative by a fusible element inserted through a slot in the casing and transferred into a position where it is subject to the heat of the heating element

and at the same time serves as a fulcrum for a contact-carrying member which when rocked about said fulcrum closes the circuit of the element. The

particular advantage of this mechanism lies in the fact that the circuit can only be closed with the aid of the fusible element and only fusible elements of

the predetermined correct shape which are so designed as to have the correct melting temperature and cause the heating element to attain the right

degree of heat can be inserted into the casing and will be brought into position to serve as the fulcrum essential to the operation of the switch closing

train of mechanism.’

He continues (at p 2):

‘Fig. 5 shows a suitable form of fusible member.’

Fig 5 is, in substance, a reproduction of the registered design. On p 2 the following passage occurs:

‘The casing 11 has an insertion slot 15 for the operating fuse member 16, which may be of the shape shown in fig. 5, or may be of any other selected

shape. The insertion slot 15 corresponds in profile with the shape of the fuse member 16, so as to reject any fuse member having a part of greater

thickness than the width of the insertion slot 15 at the corresponding part of its length. After insertion through slot 15 a fuse member 16 falls on contact

carrying member 8, along a transverse slot formed therein between a lip 19 and a depressed lip 18. This slot 17 is of such a width that a fuse 16 of

correct maximum thickness is retained lying along the slot, but a fuse of too small a maximum thickness drops through the slot 17 and falls out of the

casing 11 through opening 20.’

It is plain from the passage just quoted and from certain other passages that the inventor was not limiting his monopoly to any particular shape of fuse; but it is

equally plain that any fuse to be used for rendering the patented machine operative must be of a shape which would pass through the slot in the casing 􀂭 181􀀉

and would not pass through the transverse slot in the mechanism between the lip 19 and the depressed lip 18.

In or about December 1939, the plaintiffs put on the market a vulcanising machine of the type exemplified by exhibit D 1. It is established by the

evidence that D 1 is the machine described and illustrated in the specification No 533,816. At this point it is convenient to quote the evidence-in-chief of the

plaintiffs’ first witness, Mr C S Parsons, a chartered patent agent and consulting engineer of over 20 years standing. He was the draftsman of specifications

Nos 522,543 and 533,816. In the transcript of evidence the following passage occurs:

‘… Q.—Where you consulted in 1938 in connection with the fuses that were being used in the business of the plaintiff company? A.—Yes, I was.

Q.—Would you just tell my Lord the purpose or these fuses and how they work? A.—The purpose of the fuse is to determine the heat attained by

the heat and pressure vulcanising machine and the time during which that heat operates. That depends on the nature of the alloy of which the fuse is

made and its size, and to a certain extent upon its thickness. The machine used by my clients had been using a fuse which was an ordinary straight piece

of wire of the correct alloy, but it was found in practice that many people supplied with this machine were in the habit of running short of fuses and

putting in an ordinary piece of wire, or something which was not of the right size and consistency in regard to alloy, with the result that the machine

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operated badly and vulcanising was incorrectly performed. In order to overcome this difficulty of people using incorrect fuses in the machine, my

clients wished, if they could, to produce a fuse of their own and obtain registration of a design of that fuse so that they could ensure that only the correct

fuses for use in their machines were available.’

The concluding words “were available” are somewhat obscure, but I think they must mean “could be used.” This last sentence is of great importance when

one is considering whether or not the shape of the fuses produced by the plaintiffs was dictated by functional consideration. There is no doubt that from the

time when machines of the type D 1. were put on the market, fuses shaped in accordance with the registered design were used in these machines. It is equally

clear, to my mind, reading the evidence as a whole, that only fuses shaped in accordance with the registered design could operate the D 1 machines

satisfactorily. If the evidence stopped there, however, it would fall short of establishing that the shape of fuses made in accordance with the registered design

was dictated solely by the function of acting as the “key” for operating the mechanism of a particular vulcanising machine.

Counsel for the appellant plaintiffs contended, in my view correctly, that the validity of the registration must be determined as at the date of registration,

and that if the design was not then a mere mechanical device, and the registration was, therefore, valid, it could not be rendered invalid ex post facto, even if

features such as the collars on the fuses were subsequently made to serve a mechanical purpose. He suggested that the collars were intended merely to

distinguish the plaintiffs’ fuses from those of other manufacturers, and that the machine D 1 was invented later, the slots in the casing and in the mechanism

being shaped so that only fuses made in accordance with the registered design could operate the machine. If this were the true conclusion to be drawn from

the evidence I think that the plaintiffs would succeed on this part of the case. To my mind, however, the real effect of the evidence is that some time in 1938

Steiner conceived the idea of making fuses “of a specific shape corresponding to” the “insertion slot in the casing of the switch mechanism” of a vulcanising

machine; see the passage already quoted from the provisional specification No 522,543.

The opening portion of Steiner’s evidence is as follows:

‘Q.—Are you at present the managing director of Stenor, Ltd.? A.—I am, yes.

Q.—Are they a company which took over a business carried on previously under your own name? A.—Exactly.

Q.—Did you put on the market a machine for vulcanising patches for repairing tyres in which a fuse was used consisting of a small length of straight

wire? A.—Exactly.

Q.—Over what period was that machine on the market? A.—It was put on the market and I sold the first machine in July, 1936, in this country.

Q.—Were there a number of these machines distributed to garages up to, at any rate, the end of 1938? A.—Yes, quite a large number.

Q.—At some time in 1938 did you apply your mind to preparing a special design of fuse and getting it registered? A.—Yes, I did.

Q.—Just anticipating a little bit, ultimately did you approve the design which is the 􀂭 182􀀉 subject matter of the present registration, and give

instructions for it to be registered? A.—Yes. I mean before we had several trials; we tried different designs out which did not work, and then afterwards

I started with the design with the two collars.’

The words “which did not work” seem to me very significant. They indicate that Steiner was looking for a “special design” which could “work” something,

and finally evolved the registered design; the context indicates that the thing which it was intended to work was a vulcanising machine. The evidence

continues:

‘Q.—When the design was registered, which I think is on Jan. 25, 1939, what machines had your company distributed for vulcanising? A.—None at

all—I mean none at all of the new design.

Q.—I will put the question again. At that date, Jan. 25, 1939, what machines were in existence, marketed by Stenor, Ltd. for vulcanising patches?

A.—Machines taking the straight fuse, the little straight pin.’

It is to be observed that the first of these questions relates to machines which had been distributed, and the seond question appears to be carefully limited to

machines which were not only in existence on 25 January 1939, but were on the market at that date. There is nothing in the replies to negative the existence of

an experimental machine which was intended to be worked by fuses made according to the registered design. The evidence continues:

‘Q.—t/he straight piece of wire? A.—And also taking a bulged fuse which I put on a bit later.

Q.—Have you got an example of the old machine? A.—Yes; I have also the two kinds of fuses.

Q.—Just stick to one thing at a time. I want the old machine that was adapted to take a straight piece of wire? A.—Yes.

Q.—In that machine could you use a fuse in accordance with this registered design if you wanted to? A.—Yes, definitely.

Q.—And would it work all right? A.—Yes.

Q.—In fact you have tried it and it does work? A.—Yes; I mean it had to work, because all these machines on the market had to be used.’

I take this last sentence as meaning that the machines of the old design P 11 had to be used right on in 1939 until the new machine D 1 was put on the market,

and for this reason fuses according to the registered design were used in machines of the P 11 type. Continuing with the evidence:

‘Q.—When a fuse made in accordance with your registered design was put into one of those old machines did the two collars that are illustrated on

the design serve any functional purpose at all? A.—No. You see it here—no function at all.’

That answer is obviously quite correct; the old machines could be worked equally well with a straight fuse or with a fuse made in accordance with the

registered design, but the two collars were of no advantage if fuses made in accordance with the registered design were used in such machines. I now come to

two answers which seem to me to be of great importance:

‘Q.—After the design had been produced, did you set to work to improve the machine? A.—Yes; I was working on it already, but I was

experimenting at the time.

Q.—When did you produce the new type of machine in a condition ready to be marketed? A.—I think we marketed the new machine only late in

1939, after the beginning of the war. As a matter of fact I could not say the exact date, but it could be easily checked.’

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Subsequently the witness identified the machine D 1 as being the “new machine” referred to here, and also as being in accordance with patent No 533,816.

As I understand these answers, the position was that at the time when the design was registered, Steiner was experimenting on the new type of machine

which was to be worked by fuses made according to the registered design. Whether or not there was in existence on 25 January 1939, a machine which could

only be worked by a fuse made according to the registered design, it seems to me clear from this evidence, read in conjunction with the whole of Mr Parsons’

evidence, that the registered design came into being as a result of Steiner’s endeavour to find a “special design of fuse” which would “work” and that he was

working at the same time on the machine which ultimately emerged in the form D 1. The evidence of Mr Parsons and Steiner should, I think, be read in

conjunction with specification No 522,543; the fuse and machine illustrated in that specification are linked together in exactly the same way 􀂭 183􀀉 as a fuse

made according to the registered design is linked up with D 1. In each case the fuse is intentionally so shaped that it is the “key” which unlocks the

mechanism, and no fuse of any other shape will unlock it. Whether there was in existence, on 25 January 1939, a vulcanising machine to which the “key” was

a fuse made according to the registered design or whether such a machine then existed only in Steiner’s mind, I do not know. Steiner’s answer: “I was

working on it already, but I was experimenting at the time” leads me to think that such a machine was in existence, though it had not been perfected. However

this may be, I have formed the conclusion, on the evidence of the plaintiffs’ own witnesses, that the shape shown in the registered design was dictated solely

by functional considerations, and the fuses to which it was applied were intended solely to operate a vulcanising machine which could be operated by these

fuses and by no others.

In my view, if a man produces a design for a fuse, claiming novelty only for the shape or configuration of the fuse, and if every feature of that shape or

configuration is dictated by the function which that fuse has to perform in a particular machine, the design is in substance a mere mechanical device, and it

matters not whether the particular machine in which the fuse is to be used has been manufactured at the date when the design is registered, or exists only in the

mind of the designer. We were not referred to any case which covers the point, but, in my view, the words of Luxmoore J (53 RPC 139, at p 151), in the

Kempat case are most apposite:

‘… if a person produces an article for a particular purpose, though that person may obtain the grant of letters patent for it, the producer cannot

obtain a monopoly of that article by registration of a design for it.’

If the view which I have just expressed were wrong, a man could obtain a monopoly for a machine, without taking out a patent, in the following simple

way; having conceived a machine which could only be operated by using an article of a particular shape, and being doubtful if his machine was patentable he

could register the design for the article and thereby obtain, in effect, a monopoly for his machine. No one could manufacture the article according to the

registered design, and accordingly it would be useless for any one to manufacture the machine, since he could not use it. Counsel for the appellant plaintiffs

contends that if, for the purpose of determining whether an alleged design is or is not a mere mechanical device, it is permissible to consider what was in the

mind of the designer at the date of registration, great difficulties will arise. For instance, supposing a design is registered and the benefit of it is assigned to a

bona fide purchaser for value without notice of any flaw in the registration, the purchaser may subsequently find that the registration is invalid, for a reason

which he could not possibly discover at the time of his purchase, ie, the existence of a particular machine in the mind of the designer at the time when the

design was registered. No doubt cases of hardship may arise, but the view which I have formed seems to me to follow inevitably from the language of sect 93

of the Acts. That “which is in substance a mere mechanical device” is not registerable as a design, and the answer to the question whether an alleged design is

or, is not, in substance a mere mechanical device seems to me to depend upon the facts of each particular case. I cannot think of any objective test, to be

applied by the intending purchaser of a registered design, which will infallibly tell him whether it is or is not in substance a mere mechanical device, and it

seems to me that any purchaser of a registered design must take this risk. As I have already pointed out, strange results would follow if the view which I have

expressed is wrong, and the door would be opened to grave abuse of the monopoly conferred by registration of a design. I should add that I have not

overlooked certain later passages in Steiner’s evidence, in which he suggested that the shape shown in the registered design was not wholly dictated by any

functional considerations, but I think he had already let the truth out in the answers to his counsel which I have already quoted, and his answers to questions in

cross-examination seem to me evasive, and not in accordance with the history of the matter as revealed in his earlier answers, in the evidence of Mr Parsons,

and in the patent specifications.

I do not think it is necessary to refer to any of the numerous cases as to “mode or principle of construction” or as to “mere mechanical device,” which

were cited to us. Accepting as I do the definition of a “mere mechanical device” 􀂭 184􀀉 which I have already quoted, I think that, in deciding this particular

question, the court has to determine, on the evidence before it, whether the design in question does or does not fall within that definition, and earlier decisions

are only of use by way of illustration. For the reasons I have stated, I am satisfied that the “design” which we are considering was not a proper subject for

registration, because that which has been registered is, in substance, a mere mechanical device.

I would dismiss the appeal, on this ground. I cannot, however, agree with the view of Romer J, that the alleged design is not registrable because it has

been applied to a fuse of small size. That which was registered was a design which might have been applied to a fuse of any size. Although the plaintiffs have

so far applied it to a fuse of small dimensions, they might at any time have applied it to a fuse twice as large. Under the Designs Rules, 1932–1938, r 17, the

applicant for registration of a design is bound to state the article or articles to which the design is to be applied, and, where the Comptroller so requires, he is

bound to state the purpose for which the article to which the design is to be applied is used and the material of which it is made. He is not, however, bound to

specify the size of the article to which the design is to be applied. In the course of his judgment Romer J said:

‘In my judgment, if an article in respect of which a design for shape is registered and to which it is applied is so small that the naked eye cannot

fairly discern or appreciate the features of that design, or ascertain with a reasonable degree of certainty what those features are, or, as a corollary,

whether they have been pirated, then the design is not a design as defined by the Act and is accordingly outside the scope of statutory protection and its

registration should be cancelled.’

In the present case the members of the court have found no difficulty in discovering the feature of the design without the aid of a magnifying glass, but I am by

no means sure that “the eye” in sect 93 of the Acts means, and means only, the eye unassisted by a magnifying glass; and if that question should ever arise, I

should desire to give it further consideration

Romer J continued:

‘I notice that in the Dover case BUCKLEY, L.J., said ([1910] 2 Ch. 25, at p. 31): “this Act was intended to protect designs which really have some

merit by way of novelty or originality, and not to give colour to such paltry and trivial claims as have been set up in this case.” I feel that a claim to

All England Law Reports 1936 - books on screen™

All ER 1946 Volume 1

Preamble

protection in respect of the shape of an article which is so tiny as to present no definite appearance other than that of a thick piece of wire with two

excrescences on it might also be described, without unfairness, as “paltry and trivial,” and I, therefore, feel no reluctance in ordering, as I propose to

order, that the design shall be expunged from the register.’

With all respect to the judge, I do not think that the passage which he quotes supports his view. I think it is clear that Buckley LJ was there speaking only of

claims which were “paltry or trivial” in the sense that the design for which originality was claimed differed only to a paltry or trivial extent from its

predecessors.

If I had come to the conclusion that that which was registered was a “design” within sect 93 of the Acts, it would have been necessary for me to consider

whether it was a “new or original design” within sect 49(1). As matters stand, this question does not arise, and I shall only add that I am inclined to agree with

the decision of Romer J on this point, though I doubt if I could accept without qualification the whole of the reasoning by which he arrived at that decision.

In my judgment, this appeal should be dismissed with costs.

Appeal dismissed with costs. Leave to appeal to the House of Lords granted.

Solicitors: Warren & Warren (for the appellants); Stocken, May, Sykes & Dearman agents for Baldwin, Weeks & Baldwin, Clitheroe (for the respondents).

F Guttman Esq Barrister.

􀂭 185􀀉

[1946] 1 All ER 186