Frank & Hirsch (Pty), Ltd v Rodi & Wienenberger Aktiengesellschaft

• Jurisdiction: South Africa
• Judge: Steyn CJ, Schreiner JA, Ogilvie Thompson JA, Botha AJA and Holmes AJA
• Judgment Date: 09 May 1960
• Citation: 1960 (3) SA 747 (A)
• Hearing Date: 22 March 1960
• Court: Appellate Division

Schreiner, J.A.:

The respondent company, which I shall call 'the F plaintiff', is the registered proprietor of Union Patent No. 14,770 of 1951, granted to it in respect of an invention entitled 'Improvements in and relating to extensible chain bands, more especially wrist watch bracelets'. The name 'Fixoflex' is used to designate bands embodying the plaintiff's patent. The plaintiff sued the appellant company, which I shall call 'the defendant', in the court of the Commissioner of Patents G for infringement of claims 1 and 6 of its patent by importing and selling in the Union bands bearing the names 'Coronet' and 'Mark VII'. The defendant defended the action on the grounds (1) that the plaintiff's patent was invalid because it was (a) not novel, and (b) not useful, and (2) that the defendant's articles did not infringe the patent. The defendant, as it was entitled to under sec. 53 (b) of the Patents Act, 37 of 1952, counterclaimed for the revocation of the H patent. The Commissioner held that the patented invention was both novel and useful and that both claims 1 and 6 were valid. He held further that the defendant's articles infringed claim 1. He did not deal expressly with the alleged infringement of claim 6. He granted the plaintiff, under sec. 54 (2) of the Act, an interdict with the usual supplementary relief and costs, including the costs of proceedings for an interim interdict. The counterclaim was not mentioned in the order.

Schreiner JA

The defendant appealed to the Transvaal Provincial Division, the proceedings in which are reported at 1959 (2) SA 679. The Provincial Division held that claim 1 was invalid for want of utility, the contention that the patent was not novel having been abandoned. The Court held that claim 6 was valid and had been infringed. It dismissed A the appeal but modified the Commissioner's order as to costs by depriving the plaintiff of one third of the costs of the hearing; the plaintiff was awarded its costs of appeal except for the costs of one day of the hearing. No mention was made of the counterclaim but in relation to the order as to costs, BEKKER, J., with whom the other members of the Court concurred, stated that the defendant had 'succeeded B in having claim 1 declared invalid'.

Leave to appeal to this Court having been granted to both parties, the defendant appeals on the ground that its articles should not have been held to infringe claim 6, and the plaintiff cross-appeals on the declaration that claim 1 was invalid and on the order as to costs. C Actually no order was made declaring claim 1 to be invalid but that was clearly the intention of the Transvaal Provincial Division, and since the question was fully argued before this Court, it will be treated in this judgment as an issue raised by the challenge to the correctness of the order under appeal.

D Before this Court the validity of claim 6 was not questioned, so that the issues were

1.

Whether claim 1 was valid or not;

2.

Whether if claim 1 was valid it was infringed;

3.

Whether claim 6 was infringed; and

4.

Whether the order for costs made by the Provincial Division was right.

E The material part of the description of the invention reads -

'This invention relates to an extensible chain band, more particularly a wrist watch bracelet, which consists of hollow links and links connecting the same together in an articulated manner and so that they can be stretched apart, which connecting links can pivot against spring action. The invention consists in this that the hollow links are constituted by two layers of cylindrical sleeves of any desired section F which are relatively staggered in the longitudinal direction of the chain band and the connecting links are constituted by U-shaped connecting bows arranged in the longitudinal edges of the chain, which bows are inserted in pairs with one of the limbs in the open end of a sleeve of the one layer and with the other limb in the adjacent sleeves of the other layer which are in a staggered position, and in that a bent spring plate is provided in each sleeve, which spring plate keeps the connecting bows firmly in the sleeve and acts by spring action against G their pivoting when the chain is stretched or bent. More particularly, the construction may be such that the limbs of the connecting bows lying with play in the sleeves are wider than they are high, and are provided on the inside with a transverse groove, in which engages the bent up end of the spring plate arranged longitudinally in the sleeve. The feature of the chain band according to the invention is its very great extensibility and flexibility. When the band is stretched no gaps and no narrowing takes place so that it always retains the same closed appearance. Moreover, the chain band is composed of only three different H parts, namely the sleeves, the connecting bows and the spring plates, whereby its construction and assembly is extremely simple and its manufacture very economical, especially as the parts can be inserted within one another without any soldering or riveting. Consequently, the individual parts can also be easily exchanged. Finally, there is the special advantage that the spring plates which are used are extremely resistant to the elastic stresses that arise, so that one has not to fear that it will become slack or break. The sleeves may be of any section so that the chain can be adapted to the most different tastes.'

Schreiner JA

After setting out matter relating to a connecting member, not relevant to the present appeal, and after explaining the operation of the patent by reference to accompanying drawings with numbered features, given as A 'various examples of carrying the invention into effect', the patent concludes by making six claims, of which Nos. 1, 2 and 6 are relevant and read -

'1. An extensible chain band, more particularly a wrist watch bracelet, made of hollow links and connecting links, which connect the same in an articulated manner and so that they can be pulled apart and which pivot against spring action, characterised by this that the hollow links are constituted by two layers of cylindrical sleeves (10, 11) of any desired section which are relatively staggered in the longitudinal direction of the chain band and the connecting links are constituted by U-shaped connecting bows (14) arranged in the longitudinal edges of the chain, which bows are inserted in pairs with one of the links (15) in the open end of a sleeve (10) of the one layer and with the other limb (16) in the adjacent sleeves (11) of the other layer which are in a staggered position, and in that a bent spring plate (12) is provided in each sleeve, which spring plate keeps the connecting bows firmly in the sleeve and acts by spring action against their pivoting when the chain is stretched or bent.

C 2. A chain band according to claim 1, characterised by this that the limbs (15, 16) of the connecting bows (14) lying with play in the sleeves (10, 11) are wider than they are high, and are provided on the inside with a transverse groove (17, 18) in which engages the spring plate (12) arranged longitudinally in the sleeve with its bent up end (13).

.....

6. The improved extensible chain band, more particularly wrist watch bracelet, substantially as described with reference to the accompanying drawings.'

D It will be convenient to summarise in untechnical language and without prejudice to the issues to be investigated what, as embodied in clauses 1, 2 and 6, the patented article is and how it works. The band or bracelet is composed of a series of what may be called units which are E identical and which are joined together, not by anything external to themselves, like the thread in a necklace of threaded beads, but by their own form and by the use of a staggered double layer of units lying across the direction of the band which they compose. Each unit consists of three parts only, a sleeve, a spring and a bow. The sleeve is a tube. Its cross-section, in terms of the patent, is an important subject of F inquiry, to which further reference must be made, but for present purposes it is enough to say that though the drawings show an elliptical sleeve it is not limited to one shape, the essential requirement being that the sleeve shall present interior walls against which the bows can press. Inside the sleeve along its whole length lies the spring, a flat wide strip of steel, curving upwards towards each end, near to which G there is an upward kink or notch in the spring. The bow is a U-shaped part, the arms of which are not square in section but have greater width than depth. One arm of each bow fits into a sleeve in the one layer of units and the other arm of the bow fits into a sleeve in the other layer. At each of its ends every sleeve has fitting into it an arm of H each of two bows and the staggering of the units in the layers has the result that the layers are held together by the bows and the units are kept together as a band. On the inside of each arm of the bow is a groove so shaped as to take the kink or notch in the spring. This prevents the bow from slipping out of the sleeve. When the band is pulled longways the sides of the sleeves, being moved in the direction of the pull, press against the bows and cause them to pivot out of their normal position, which is at right angles to the direction of the band.

Schreiner JA

This pivoting movement compresses the spring, although even when the band is unextended there is a slight tension, referred to in the evidence as pre-tension or preliminary tension, on the spring. When the pull on the band is released the spring returns the pivoted bow back to its normal position. It is not claimed that the parts are new. The invention consists of the new combination of the parts in such a way as A to produce a band of great extensibility and flexibility, without...