In the Matter of Bayer's Design (No. 454,848). The corset sold by Messrs. Chappell, Allen & Co. in 1900 was of the form shown in the accompanying diagram: On the 29th of September 1905, the Respondent wrote to a certain firm in the following terms :-"Our attention has been called to the imitation by you of "our registered design No. 454,848 in respect of tailor-made' corsets which you 5 "are selling. We, of course, lay no claim to the exclusive use of these "descriptive words, but we must ask you to immediately discontinue the "imitation of our registered system of making corsets, and shall be glad to "receive a letter from you stating that you agree to do so forthwith." In reply this firm asked for the text of the registered number 454,848, and the 10 Respondent thereupon referred them to the Patent Office for any information which they might desire in respect of the registered Design. They examined the registered Design at the Patent Office and then wrote to the Respondent a letter in which the following passage occurred :-"We shall be glad if you will "inform us if you suggest that your registration entitles you to the exclusive 15 "right to make corsets with horizontal gores and seams, no matter the number "of such gores and seams, or whether you limit your claim to a corset having "the number of seams and gores of the shape shown in the filed exhibit." To this communication the Respondent made no reply. On the 26th of January 1906, the Motion for rectification was ordered to be set 20 down in the witness list, a Summons for Directions being treated as being before the Court, by Mr. Justice Warrington. The learned Judge made an Order by consent for inspection of the registered Design, and gave leave to interrogate, but refused to order the Respondents to give particulars of the grounds on which they opposed the Motion.* 25 25 The Motion came on for hearing on June the 18th before Mr. Justice Warrington. The learned Judge held that the Design as registered was for a particular form of straight-fronted corsets made with horizontal gussets; that the fact that the Design incidentally described a mode of manufacture did not make it any the less a Design; that there was subject-matter and that the 30 Design was novel; and that it was not shown that the pictures of the Design in the advertisements were not covered by the Design; and that a statement made after registration by the owner of the Design as to the extent of his protection ought not to affect the construction of the Application or the validity of the registration. The Motion was dismissed with costs.† 35 In the Matter of Bayer's Design (No. 454,848). The Applicants appealed, and on the 25th of July 1906 they applied to the Court of Appeal for leave to adduce fresh evidence on the hearing of the appeal as to the want of novelty of the Respondent's Design and the scope of his registration. Leave was given to adduce fresh evidence by affidavit, the 5 answer of the Respondent to be by affidavit, and leave was given to apply to cross-examine the deponents.* On the hearing of the appeal, Cave K.C. and Walter K.C. (instructed by McKenna & Co.) appeared for the Appellants; T. Terrell K.Č. and D. M. Kerly (instructed by Reed and Reed) appeared for the Respondent; and George 10 Lawrence (instructed by the Solicitor to the Board of Trade) appeared for the Comptroller General. During the Respondent's argument fresh evidence was adduced, affidavits were read on each side, and the deponents cross-examined. This evidence identified certain corsets made before the registration and alleged to be 15 straight-fronted. They were identical with the "Horizone corsets already exhibited, with the difference of having a V-shaped piece cut out of the fronts next the busk in order to tighten the front, but there was no insertion of a corresponding piece at the back or any compensating enlargement of the pieces on the hips. 20 Walter K.C. for the Appellants stated the facts of the case and read the Application for registration; and contended that the Application, read in connection with the ninth of the Designs Rules 1890, meant that, notwithstanding anything that appeared on the representation of the Design, the Applicant disclaimed all save corsets with gussets cut horizontally. It was not until the Motion came on and 25 the evidence had been heard that the Respondent set up the case now presented to the Court. It has been suggested (but erroneously) that the waist seam and particular shapes of the pieces tapering down towards the busk produced the effect of the straight front. It was purely accidental that the anticipations proved in the Court below happened not to be straight-fronted corsets. The 30 effect of the straight front is produced by shortening the pieces from the hip line to the bottom of the busk and allowing a corresponding amount of fulness at the back. The learned Judge was against us on the question of the application of the Design, holding that it applied only to straight-fronted corsets, so we applied to this Court for leave to adduce fresh evidence. [The new alleged 35 anticipations were produced to the Court.] The statement lodged with the Application is all that the public can see at the Patent Office, the Design itself is not open to inspection; the public can only know what the Design is from articles made and sold being marked with the number of the registered Design. In this case many were sold that varied considerably from the Design as 40 registered, and it is now admitted that some of these did not come within the Design. What was registered was not a Design at all, but merely a process of manufacture (Cooper v. Symington 10 R.P.C. 264). This is evident from an examination of the Respondent's advertisements. [These were then discussed in detail.] The Respondent now says that he is confined to the particular 45 shape of Design shown in the registered representation. If protection is given merely for the particular curves and tapering shown in the Drawing, there is no distinction between that and the anticipations now brought forward. There is no novelty in mere details, and the case is indistinguishable from Le May v. Welch (L.R. 28 C.D. 24). If the shape of the pieces is essential, it is to be 50 observed that there are no directions or information as to the back. With this Note to the Application it is impossible to say that the Design amounts to anything more than one for horizontal seams, and our fresh evidence shows that they were old in straight-fronted corsets. It was never intended that where a mode of manufacture could not be patented for want of novelty, it * 23 R.P.C. 566. In the Matter of Bayer's Design (No. 454,848). could be protected by being registered as a Design (Moody v. Tree 9 R.P.C. 333 at page 336). [The judgment of the learned Judge in the Court below was read.] 66 66 T. Terrell K.C. and D. M. Kerly for the Respondent. The case of a Design is different from that of a Patent. The function discharged by the parts shown 5 in the Design has nothing to do with the matter (Hecla Foundry Company v. Walker 6 R.P.C. 554; L.R. 14 App. Cas. 540). "Design" is defined in Section 60 of the Patents, &c. Act. 1883, and is applicable for "the pattern or for the shape or configuration, or for the ornament thereof "; shape" refers to embossing and such like-in this case the cut of the pieces; "configuration" refers to the 10 external shape of the article; "by whatever means it is applicable," this phrase includes such means as sewing, modelling, casting, and so forth. It must appeal to the eye undoubtedly. The infringement of a Design is dealt with by Section 58; it must be by the application, of the "Design or any fraudu"lent or obvious imitation thereof," that is obvious" to the eye as an 15 imitation. It is not the shape as a whole; it is the whole combination of pieces of various shapes that is the subject of a Design. The question is whether the Design was good at the date of its registration. The subsequent conduct of the owner or his interpretation of the extent of the protection afforded is immaterial (J. Harper & Co. v. Wright and Butler 12 R.P.C. 483; 20 L.R. (1896) 1 Ch. 142). If the owner of a Design sells an article to which his Design has been applied, and does not put thereon the registered number, all protection for it is lost; he must therefore anticipate what construction the Courts will put on his Design and perhaps err on the side of safety. [VAUGHAN WILLIAMS L.J.-The advertisements are quite immaterial. I agree with you 25 there.] The novelty in this Design consists in having a straight-fronted corset with horizontal pieces tapered towards the front and enlarged towards the back "as shown "-that is, the reader is referred to the Drawing. The Act gives protection not merely against the identical thing shown, but against obvious and fraudulent imitations. Where the representation registered is in part old the 30 Design protected consists of the novel elements (Staples v. Warwick 23 R.P.C. 609). The Application must therefore contain a statement of the nature of the Design. The evidence on both sides is to the effect that in these corsets the straight front is produced by cutting the pieces as shown in the Design. [BUCKLEY L.J.-If you do not claim the exact thing shown in the Drawing, 35 you are claiming a mode of construction that produces a straight front.] The Claim is for a straight-fronted corset with horizontal pieces as shown in the Drawing. Substantial novelty must be shown. The evidence here is all one way to the effect that persons in the trade at once saw that the Design was novel. The person who invented this Design took a long time to find out by 40 experiment the proportionate taper for each piece. One witness, an infringer, had to copy the thing exactly to secure the straight front. Our case is that the Design is for a corset the shape and configuration of which is produced by the configuration and shape of the pieces. [The evidence was read and commented on.] A Design may consist of a combination of elements; the word is to be 45 taken in its wide sense. "The object" (of the definition) "was to use words "which would include everything which would ordinarily fall within the word Design,' and to show that the word 'Design' was not intended to be used in "any technical sense as excluding anything that would ordinarily fall within "it" (per Lord Herschell in Rollason's Design 15 R.P.C. at page 446; L.R. 50 (1898) App. Cas. 501). Slight differences between a registered Design and previous ones may make a successful Design by making the whole more attractive (Ibid, at pages 447 and 503). In the collar case there was not "a substantial novelty in the Design having regard to the nature of the article " such as is shown to exist in this case (Le May v. Welch L.R. 28 C.D. 25, 34). There 55 have been many cases of Designs consisting of a combination of old well-known elements, as for instance in the case of lace (Birkin & Co. v. Pratt, Hurst & Co. 46 6 In the Matter of Bayer's Design (No. 454,848). Ld. 12 R.P.C. 371, 374), the honeycomb pattern (Harrison v. Taylor 4 H. & N. 815, 820), an albert chain and stars (Holdsworth v. McCrae L.R. 2 E. & I. App. 380, 386; Norton v. Nicholls 28 L.J. Q.B. 225; 1 E. & E. 761). Even if the Design be confined to the precise form shown in the Drawing the Respon5 dent is entitled to protection for it; but in that case it would be much less useful. It would then protect the Respondent against "obvious imitations." A Design need not be for purpose of ornamentation; it may be for utility. Shape or configuration " may be essential to the utility of the article; the words" or ornament" show that a Design need not be confined to purposes of 10 ornament (Tyler & Sons v. Sharpe, Bros. & Co., 11 R.P.C. 33.) [VAUGHAN WILLIAMS L.J.-Mode of manufacture is one thing and form of manufacture another.] A form of manufacture may be the subject of a Design. There is 66 The no question about infringement here; the Applicants have made exact copies of the Design. A Design is to be distinguished from an invention. A Design is 15 the representation of an idea. The idea may be new or old, but the representation of it must be new. A Patent is granted for the embodiment of an idea, and it is the invention and not its mere representation that is protected. invention claimed in a Patent Specification is claimed in words, and also in some cases by Drawings, but the grant for a Design is measured only by section 20 58, which forbids fraudulent or obvious imitations. A Design, therefore, is a representation and nothing else; for registration it must be novel, and the infringement of the copyright in the Design must be a colourable or obvious imitation. There are no conditions regulating the registration of Designs corresponding to sufficiency or utility in the case of a Patent. A Design can 25 be taken off the register only if it does not come within the definition in the Act. Novelty and originality are the only conditions required. Utility has a bearing on the question of novelty, because an apparently inconspicuous variation in a combination may, by reason of its utility, appear to the instructed eye of a person in the trade as a striking and material alteration (Rollason's Design, ubi 30 supra.) Prima facie the Design includes all the parts shown in the representation (Harrison v. Taylor, 4 H. & N. 815; Holdsworth v. McCrae, L.R. 2 H.L. 387). The real issues here are- -What is the meaning of the Note on the Application, and whether the Design is novel? If the Design was a claim for all corsets made of horizontal pieces there was no occasion to show the construction of the pieces, 35 or to show that they were of the new and original shapes appearing on the Drawing. There is no claim for the external shape. The Note limits and disclaims parts of the representation. That is its only meaning. On the Applicants' construction of the Note there is no meaning in the words "as shown in "the representation." Upon the issue of novelty the cases in point are Harper 40 & Co. v. Wright and Butler (12 R.P.C. at page 491, and Rollason's Design (ubi supra). It is not allowable to make a mosaic of earlier Designs for purpose of comparison with the registered Design. The collar case was totally different, because here every trade witness recognised Bayer's Design as distinctive. The argument as to a straight-fronted corset is merely this, that the 45 corset pieces shown on the Design do produce a straight-fronted corset, so that any pieces which do not cannot be the same; but if a straight-fronted corset should be produced by other pieces than those of the Design, still it would not be the same. The new evidence in the Court of Appeal carries the objection to novelty no further than that in the Court below. It is said by the Appellants 50 that the four fresh "Horizone" corsets are straight-fronted. If that were true they have been so made by alteration of the corset pieces, which make them not more, but less like those of the registered Design. Walter K.C. replied. VAUGHAN WILLIAMS L.J.-I have had some hesitation as to the conclusion 55 we should arrive at in this case. It is a case in which I cannot help thinking that the registration has been unfortunate in form. I have before me the Application, which is addressed to the Comptroller, and he is requested "to In the Matter of Bayer's Design (No. 454,848). "register the accompanying Design in Class 10"-that is the millinery and wearing apparel class-" in the name of Charles Bayer," and then it goes on say"Statement of nature of Design: Shape or Configuration of Corset. "The novelty consists in a corset having the gores or gussets cut horizontally, "and from the front of the busk towards the back of the corset, as shewn in 5 "the Representation." The Representations consist of three copies of this photograph, which had to be deposited under the Rules. Now that was followed by a Certificate, which runs :-"This is to certify that the Design of which "annexed is a copy was registered this 19th day of April 1905, in respect of "the application of such Design to articles comprised in Class 10, in pursuance 10 "and subject to the provisions of the Patents, Designs, and Trade Marks Acts, "1883 to 1902." Then that is signed, and there follows a small copy of this same photograph. I have no doubt whatever that this Design was deposited not by way of illustration and not as an example of the Application which would be made in 15 practice of this Design. In my judgment this paper was deposited as a definition of the Design that was intended to be registered. I have not the slightest doubt on the evidence but that the expert witnesses who were called all took the view that the white lines defining the seams of this corset were white lines which were introduced upon the corset, and appeared in the 20 photograph, for the express purpose of defining the nature of the design which Mr. Bayer was registering. Speaking for myself I should come to the conclusion, not only that those lines are intended to represent seams which were a part and parcel of the Respondent's Design, but also I should draw the inference on the evidence of the witnesses, that they each and all of them treated 25 this Design as one which was intended to be applicable to the particular class of corset that is called a straight-fronted corset. I have no doubt, also, but that the witnesses on both sides, who were experts, one and all recognised those lines as being an essential part of the Design. I wish to state that I do not understand that by the words Straight-fronted 30 "Corset" is intended simply a corset which before it is worn has a I understand what is meant by a straight busk to it. 66 Straight-fronted "Corset" is a corset which having, in fact a straight, and almost necessarily stiff busk, that busk is maintained in its straight-fronted condition by the make of the corset generally; and therefore you cannot ever say of 35 a corset that it is a straight-fronted corset unless you have seen the busk in its conjunction with the other parts of the corset. As I have said already I read this Claim-because in my judgment our decision in the present case does largely, if not entirely, depend upon a construction of the Claimas a Claim for a corset which, having a straight busk, is so put together, with 40 other essential parts, that the straight front will be maintained when the corset comes to be worn. That being the nature of the Claim, one requires to know how it is to be applied. It has been said that you may have a Design, which, in its application, is always intended to be reproduced exactly in the size and form 45 in which it appears in either the picture which accompanies the Application to register, or in the specimen which is sometimes deposited. I do not say that there may not be cases in which it is intended to register, and there is registered, a Design which is only applicable in its exact size. I cannot think of any case myself in which it was likely that there should be such a Design; 50 there may be such a Design, or there may not be. A Design prima facie is always intended to be capable of magnification, if that is the right word to use. All that you have to do in order to to maintain the identity of Design is to maintain the relative proportions. I read this Application for a Design, and the Design as described in it, as being an Application to register a Design 55 having upon it lines, and seams, and gussets (every one who knew anything about the matter recognised these features in the photograph) of the direction, |