United Kingdom House of Lords Decisions

The respondents in November 1884 registered a design, the nature of which was stated in the application to be—“Range fire-door with moulding on top, moulding forming front of range, shape to be registered.”

The drawing which accompanied the application showed a rectangular door for a fire-range, with a moulding at the top of it of a form which appears to be known as ogee.

The sole question for determination is, whether a fire-door manufactured by the appellants is an infringement of the right secured to the respondents by the registration of their design? It undoubtedly is so if it is either the same design or a fraudulent or obvious imitation of it.

The Lord Ordinary in delivering his opinion used the following language—“Now, upon the question whether there is here an infringement, nothing was said to the contrary to the complainers' proposition that mere differences in the outline of the moulding would not take the respondents' design out of the patented copyright. That seems to me perfectly clear, because there is nothing original in the moulding, and in the claim of registration it is made evident that the registration was claimed, not for the particular moulding, but for the material form given by placing a moulding—any suitable moulding—upon a fire-door in the described position. Well, then, I have to consider if there was no exclusive privilege claimed for the particular pattern of moulding, whether the exclusive privilege is limited to the case of a moulding which exactly fits into the adjoining mouldings so as to present a continuous flowing surface, or whether it is not a privilege granted for putting such a moulding upon a fire-door in such a manner as to exclude air, and to accomplish the object which had been previously accomplished by putting the moulding upon the fire-cover or fall-bar.” The Lord President adopted this language of the Lord Ordinary, and the view which he had taken of the subject-matter of the claim of the present respondents.

My Lords, with all respect for these learned Judges, I cannot but think that they took into account elements which were not proper to be considered for the purpose of determining what was the design protected by the registration, and whether there had been an infringement of the copyright in that design.

By section 6 of the Patents and Designs Act of 1883 “design” is defined as meaning any design applicable to any article of manufacture or to any substance, “whether the design is applicable for the pattern, or for the shape or configuration, or for the ornament thereof.” In the present case the applicant declared that it was for “the shape” that he desired registration. Under the designs part of the Act of 1883 I do not think the object which the designer has in view in adopting the particular shape, or the useful purpose which the shape is intended to serve, or does serve, ought to be regarded in considering what is the design protected. The scheme of this part of the Act is entirely different from that relating to patents for inventions, where the object attained by the invention for which the patent is granted is of course very material to the inquiry what is the subject-matter, and whether there has been an infringement. I cannot agree therefore that the registration was claimed, or could be claimed, “not for the particular moulding,” but for the form given by placing “any suitable moulding” upon a fire-door in the described position, or that a privilege was granted “for putting a moulding upon a fire-door in such a manner as to accomplish” a particular object. I think the protection was granted for the shape, and for that alone, and that in such a case when an infringement is alleged the only question is, whether the shape of that which is impeached is the same, or whether the other is an obvious imitation of the other, without reference to whether it does or does not accomplish the same useful end. I quite agree with what was said by Lord Shand in Walker v. The Falkirk Iron Company, that “the Act in this branch gives protection only to the shape or configuration or to the design for the shape or configuration in such a case as the present. The result of such protection may be, however, to secure important advantages such as attend a mechanical contrivance if these advantages should be the result, directly or indirectly, of the shape or configuration adopted.” But this is a mere incident. If such advantages are obtained it is only because no shape not substantially the same, and which is therefore not an infringement, will achieve the same end. The test of infringement must always be whether the shape is or is not the same. If it be, then the exclusive privilege has been infringed, even though the same object be not accomplished; if it be not, then, though the object be accomplished, there has been no infringement. In the present case, for example, by a very slight deviation from the design, which would scarcely be apparent, the air might be admitted to the fire. I do not think that a person making such a fire-door could successfully answer the complaint that he had infringed the rights of the proprietor of the design by showing that when applied to a range it would not exclude the air.

It seems to me therefore that the eye must be the judge in such a case as this, and that the question must be determined by placing the designs side by side, and asking whether they are the same, or whether the one is an obvious imitation of the other. I ought perhaps to qualify this by saying that as a design to be registered must by section 47 “be a new or original design, not previously published in the United Kingdom,” one may be entitled to take into account the state of knowledge at the time of registration, and in what respects the design was new or original when considering whether any variations from the registered design which appear in the alleged infringement are substantial or immaterial.

Applying the test which I have laid down, I have come to the conclusion that there has been a violation of the respondents' rights. There are no doubt certain distinctions between the door shown on their drawing and that manufactured by the appellants. But to establish this is not enough to free them from liability. By section 58 of the Act it is not lawful for any person to apply either the design, “or any obvious imitation thereof,” in the same class of goods in which the design is registered. It is impossible in such a case as the present to give reasons for the opinion formed. I can only say that to me it appears without doubt that the door complained of is an obvious imitation of the registered design.

I therefore move your Lordships that the

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