Homecraft Steel Industries (Pty) Ltd v S M Hare & Son (Pty) Ltd and Another

• Jurisdiction: South Africa
• Judge: Corbett JA, Kotzé JA, Viljoen JA, Galgut AJA and Howard AJA
• Judgment Date: 29 March 1984
• Citation: 1984 (3) SA 681 (A)
• Hearing Date: 08 March 1984
• Court: Appellate Division

Corbett JA:

The appellant is the proprietor of a design registered in terms of the Designs Act 57 of 1967 ("the Act") in class 25 (building units and construction elements) and having the registration number

Corbett JA

A 70/0448A. In terms of s 4 (8) of the Act, appellant's design was registered as from 9 June 1970. In August 1978 appellant instituted action against first respondent, S M Hare & Son (Pty) Ltd, in the Transvaal Provincial Division (the "TPD") alleging infringement by first respondent of appellant's registered design and claiming an interdict, damages and an order for the delivery up for destruction of all infringing B articles in first respondent's possession and costs of suit. Thereafter, in February 1980, appellant instituted a similar action for infringement in the TPD against second respondent, Umdloti Strand Hotel (Pty) Ltd. After each respondent had pleaded to the appellant's particulars of claim, C appellant obtained an order from the TPD consolidating the two cases. It appears that in November 1978 second respondent purchased the shares in first respondent and then proceeded, under the name S M Hare & Son, to carry on the business formerly conducted by first respondent. The alleged infringements occurred in the course of the business operations conducted prior to November 1978 by first respondent and D thereafter by second respondent: hence the two actions and the consolidation thereof.

In its plea first respondent admitted the acts of infringement alleged by appellant, but denied that such acts constituted an infringement of appellant's registered design. First respondent alleged furthermore that in any event the registration of E appellant's design was, and at all material times had been, invalid on the grounds (i) that the design was not a "design" within the meaning of the definition contained in s 1 of the Act, and (ii) that the design was not new or original in that it had been anticipated by a construction element used continuously in the Republic of South Africa from at least 1956 by Samuel Osborn (SA) Ltd ("Samuel Osborn"). I shall refer to F this element as the "Osborn element" or the "Osborn design", depending on the context.

Second respondent raised the same defences as did first respondent. It denied that the construction elements made and sold by it infringed the registered design and it alleged that the registration of the appellant's design was invalid on G grounds (i) and (ii) above. In addition second respondent pleaded in effect that, in the event of it being held that it had infringed appellant's registered design, the latter was not novel in that it had been anticipated by construction elements manufactured in the Republic of South Africa since 1969 by Ventco Engineering (Pty) Ltd ("Ventco Engineering"). I shall refer to this element as the "Ventco element" or the "Ventco H design", depending on the context.

Although each of the respondents denied appellant's averment that the design registration was "valid and subsisting", the only grounds advanced in the pleas for it not being valid and subsisting were the grounds of invalidity detailed above. In I view of the relationship between the two respondents (the one being in effect the successor to the other), the identity of their interests and the similar defences raised by them, I shall henceforth not treat them separately, but regard them for practical purposes as if they were a single party to the consolidated proceedings.

At a pre-trial conference held in terms of Rule 37 (1) of the Uniform

Corbett JA

Rules of Court it was agreed by the parties that all questions A of damages would stand over pending the determination of the issues of infringement and invalidity. The matter accordingly went to trial on these two main issues. The trial Judge (VAN REENEN J), having heard the evidence and arguments, held that appellant had failed to establish infringement and that respondents had failed to prove anticipation. He estimated that B the latter issue had occupied one day of the hearing. He accordingly gave judgment for respondents with costs (but excluding the costs of one day's hearing), such costs to include the qualifying fees of an expert witness, a Prof Rallis, and (erroneously, for appellant was represented by only one cousel) the costs of two counsel. The trial Judge does not C appear to have dealt in his judgment with the other grounds of invalidity pleaded.

Appellant appealed against the judgment and order of the trial Court, save for that part relating to and holding that the issue of anticipation failed and that the costs of one day's hearing should be excluded from the costs awarded to respondents. Respondents, on the other hand, cross-appealed D against the decision of the trial Court that they had failed on the anticipation issue and that they, therefore, were to be deprived of the costs of one day's hearing.

With that introduction I turn to the facts.

The facts

Appellant's design was registered, as I have indicated, in E class 25, which is headed "Building units and construction elements" and comprehends the following: Building material and elements, such as beams, tiles, slates, panels, etc; windows, doors, blinds, etc; sections, angles and channels; houses, garages and all other buildings; civil engineering elements; F and miscellaneous. (See reg 4, read with schedule 3, of the Designs Regulations 1968.) In appellant's application for registration of the design it is stated that

"the novelty claimed resides in the shape and/or configuration of an elongated constructional element having an end profile substantially as shown in the representation".

The "representation" referred to is what is described as a G "threedimensional view". It shows an oblong piece of material which has flanges top and bottom and the face of which has been shaped by the introduction of five horizontal and parallel flutings. The end profile of the element shows that the flanges are set approximately at right angles to the main portion of the element (which I shall call - as the trial Judge did H - the "main element"). The bottom flange has, in addition, a narrow return which gives it a channel-like profile or Ubend. The flutings have a curved profile and are separated by fairly wide slightly curved valleys. The crests of the middle and two outer flutings have approximately the same radius of curvature, while the crests of the two inner flutings have about the same radius of curvature. The radius of curvature of the former is I larger than that of the latter. The general effect of these flutings, crests and valleys, is a sinuous, undulating one. A copy of the three-dimensional representation which forms part of the registration of appellant's design is attached to this judgment and marked "figure 1" [*] .

Corbett JA

A The evidence shows that appellant, which carries on business as the manufacturer of sheet metal products for the building industry, utilised the registered design in the manufacture, by a rolling process, of a metal fascia boarding. It commenced marketing this product towards the end of 1970. It was sold in lengths of up to 10m. At the time of the trial appellant was B selling about 40 to 50 tons of this fascia boarding per month. A fascia board is used to hide or cover the open ends of the purlins of the roof of a building and generally to finish off the edge of the roof. Samples of appellant's fascia boarding were put in as exhibits (exhs C and P).

The infringement alleged by appellant is that respondents have for some time been making and vending lengths of fascia board C embodying appellant's registered design or "a design not substantially different from" the registered design. According to the respondents' own evidence first respondent commenced making and selling a rolled metal fascia board in about 1977; and it and its successor, second respondent, continued to do so up to the time of the trial. This is not disputed. What is D disputed is whether this fascia board embodied appellant's registered design or a design not substantially different from the registered design.

Specimen sections of the fascia board manufactured and sold by respondents were produced in evidence (exhs A and Q). This fascia board is made of sheet metal of, it would seem, about E the same thickness as appellant's product. The width (ie from top to bottom) of the main element of respondents' fascia board (viz 225 mm) is also about the same as the width of the main element of appellant's product. Respondents' fascia board also has flanges, top and bottom, set at about right angles and, as in the case of appellant's registered design, the bottom flange F has a narrow return. Furthermore, the face of the main element of respondents' fascia board has been shaped to contain three horizontal, trapezoidally-shaped flutes. The valleys between the flutes are flat and are wider than the crests of the flutes. The record does not contain a...