BlueScope Steel Limited v Gram Engineering Pty Ltd  FCAFC 107 (26 August 2014)
The Full Court dismissed an appeal by Bluescope Steel and upheld the primary judge’s finding that it infringed Gram’s registered design. The primary judge was correct in his findings of fact and there was no material error in his application of the relevant principles of law.
Gram owned a design registration for a fencing sheet with a sawtooth or zig-zag profile with six repeating pans or units which looked the same from both sides. It was filed on 8 February 1994 and registered on 26 August 1994. This fencing panel was commercialised by Gram in September 1995 under the GramLine brand and was very successful. By 2002 it had achieved a 35-40% market share. The drawings which accompanied the registration are shown below:
In 2002, Bluescope Steel launched its own symmetrical six-pan sawtooth fencing panel under the Smartascreen brand as shown below:
Gram commenced proceedings in 2011 and the primary judge upheld the validity of the design registration and found infringement by Bluescope Steel with its Smartascreen product being an obvious imitation of Gram registered design.
The issues were considered with regard to the Designs Act 1906 due to the transitional provisions of the current Designs Act 2003.
Bluescope did not challenge the validity of Gram’s design registration in the appeal, but did challenge the primary judge’s assessment of the significance of the prior art in the context of infringement.
The primary judge found that the primary feature of Gram’s registered design was the sawtooth pattern consisting of six identical repeating pans, oriented vertically. The sawtooth pattern was the product of the unique proportions of the wavelength, amplitude and angles of each sawtooth module. The zig-zag within the zig-zag or stiffener, that is the feature in the centre of each pan, was a secondary feature. As were the flanges at the end of the sheet, as they would not be visible when applied to a fencing panel sheet because the flanges overlap at each end with the flanges of adjacent panels.
The prior art relied upon by Bluescope, if applied to a fencing sheet panel, had a different appearance. When vertically oriented, Gram’s panel looked the same regardless of which side it was viewed and none of the prior art had this feature. None had the same combination of six pans with the proportions and angles of the registered design. The prior art had features intended to perform specific purposes for the articles to which those designs related (e.g. cladding, siding, roofing); and none had a sawtooth within a sawtooth feature.
The key question was whether the ridge/valley effect at the rake of the pan and the microfluting of the Smartascreen product sufficiently set it apart from Gram’s registered design.
Relevant considerations in the law of obvious imitation were correctly set out be the primary judge:
(a) an obvious imitation is one which is not the same as the registered design but is a copy that is apparent to the eye notwithstanding slight differences;
(b) the question is one of substance and is looked at by examining the essential features of the design;
(c) it is a visual comparison, and mathematical comparisons or measurement of ratios, (which form no part of the mental picture of the shape or configuration of the design) should not be applied; and
(d) questions of infringement are not to be determined by a narrow or overly technical approach.
After considering the two expert’s opinions, the primary judge construed the registered with an ‘instructed eye’ and concluded:
In my opinion, when the Smartascreen panel is viewed as a whole the dominant visual feature is the repeating sawtooth profile consisting of six pans or modules, and the amplitude, wavelength and angles. These features give it a striking physical similarity to the Design and the GramLine product. This is so notwithstanding the difference in the Smartascreen panel consisting of the ridge/valley effect and the micro-fluting. In my opinion those features are comparatively slight and are not sufficient to detract from the overall visual picture of the Design and the GramLine product which I have described above.
The Full Court found no error in this approach and agreed with the primary judge that it was open and correct to find the Smartascreen product was an obvious imitation of the registered design.
The Full Court found the primary judge erred in considering the commercial objectives that BlueScope may have had for developing and launching the Smartascreen product because those objectives do not inform any analysis of the appearance of the Smartascreen sheet. Rather, it is a visual comparison between the registered design and the infringing design that is the appropriate way to consider the question of infringement. However, it was clear that these commercial objectives did not form a material part of the primary judge’s final analysis.
The primary judge noted that fraudulent imitation differs from obvious imitation in three respects. First, the degree of correspondence between the impugned design and the registered design need not be as close as in obvious imitation. Secondly, fraudulent imitation requires that the application of the design be made with knowledge of the existence of the registered design, or with reason to suspect it. Thirdly, fraudulent imitation must be deliberately based upon the registered design (there is no necessity for changes between the impugned design and the registered design to be made for the purpose of disguising copying). He needed to be satisfied that some person or persons on behalf of BlueScope deliberately copied the registered design, or based the design of the Smartascreen product on this design.
Gram cross-appealed the primary judge’s finding that the Smartascreen product was not a fraudulent imitation of its registered design. Gram submitted that the primary judge erred in requiring proof of ‘deliberate copying’ to make out fraudulent imitation because this imparts an additional requirement of deliberateness into the test for fraudulent imitation.
The Full Court referred to the Full Federal Court decisions in Turbo Tek Enterprises Inc v Sperling Enterprises Pty Limited  FCA 275 and Dart Industries Inc v Decor Corporation Pty Ltd (1989) 15 IPR 403 and to the High Court decision in Polyaire Pty Ltd v K-Aire Pty Ltd  HCA 32. It must be shown that there was deliberate, in the sense of conscious, copying for there to be fraudulent imitation. If imitation imports the notion of making use of the registered design, there must be at least a conscious use of the registered design before it could be concluded there was fraudulent imitation. The primary judge did proceed on the correct basis. The allegation of fraudulent imitation was a more serious one than an allegation of obvious imitation and the primary judge was entitled to take that matter into account. The Full Court found no reason to interfere with the findings of fact made by the primary judge on this issue.