Vari-Deals 101 (Pty) Ltd t/a Vari-Deals and Others v Sunsmart Products (Pty) Ltd

• Jurisdiction: South Africa
• Citation: 2008 (3) SA 447 (SCA)

Vari-Deals 101 (Pty) Ltd t/a Vari-Deals and Others v Sunsmart Products (Pty) Ltd
2008 (3) SA 447 (SCA)

2008 (3) SA p447

Citation	2008 (3) SA 447 (SCA)
Case No	503/06
Court	Supreme Court of Appeal
Judge	Harms ADP, Nugent JA, Ponnan JA, Combrinck JA and Hurt AJA
Heard	September 3, 2007
Judgment	September 27, 2007
Counsel	LG Bowman SC (with CJ van der Westhuizen and G Marriott) for the appellants.; CE Puckrin SC (with C Harms) for the respondent.

Flynote : Sleutelwoorde F

Intellectual property — Patent — Specification — Interpretation — Approach — Purposive approach to be adopted.

Intellectual property — Patent — Infringement — Contributory infringement — Validity of design — Missing integers not found — Novelty and infringement G established — Quaere: Whether principles of liability for contributory infringement to be reconsidered in light of recent developments in foreign jurisdictions.

Headnote : Kopnota

The respondent instituted action in a High Court alleging infringement by the H appellants of its registered patent and design relating to a type of advertising 'flag' construction that was designed to keep the material of the flag extended (and thus visible) in all weather conditions. A dispute as to whether certain appellants had been guilty of 'contributory infringement' was referred to oral evidence and answered in the negative, the court having found that all the appellants were actually guilty of 'direct infringement'. I The court granted an interdict and an order for delivery (to the respondent) of the infringing flags. The appellants appealed to the Supreme Court of Appeal, where they contended that:

(1)

the court should adopt a literal (rather than purposive) approach in interpreting the claims and to decide which aspects were 'essential elements or integers'; J

2008 (3) SA p448

(2)

A their (the appellants') flag did not infringe the respondent's patent since it did not incorporate all the essential integers of the flag described in the respondent's claims; and

(3)

their flag did not infringe the respondent's design because its shape was significantly different from the shape of flag depicted in the respondent's design.

B As to (1)

Held, that a purposive approach had received the authoritative endorsement of the South African courts. (Paragraph [11] at 453G.)

As to (2)

Held, that on a proper interpretation of the specification and claims, the appellants' flag design incorporated all of the essential integers of the flag C described in the respondent's claims, and consequently infringed the respondent's patent. (Paragraph [26] at 460C.)

As to (3)

Held, that when the shape of the design was compared with the shape of the appellants' flag as seen through the eyes of a hypothetical customer, the D subtle difference in curvature of the upper periphery of the two flags was not significant. It followed that the appellants' flag was an infringement of the registered design. (Paragraph [28] at 460I - 461C.) Appeal dismissed.

Quaere: Whether the principles of liability for contributory infringement have to be reconsidered in the light of relevant developments in foreign law. (Paragraph [34] at 464C - D.)

Cases Considered

Annotations E

Reported cases

Southern African cases

Aktiebolaget Hässle and Another v Triomed (Pty) Ltd 2003 (1) SA 155 (SCA) ([2002] 4 All SA 138): F dictum in para 9 applied

Bloemfontein Town Council v Richter 1938 AD 195: dictum at 232 applied

Brisley v Drotsky 2002 (4) SA 1 (SCA) (2002 (12) BCLR 1229): referred to

Catholic Bishops Publishing Co v State President and Another 1990 (1) SA 849 (A): referred to

Gentiruco AG v Firestone (Pty) Ltd 1972 (1) SA 589 (A): dictum at 649G G applied

Govan v Skidmore 1952 (1) SA 732 (N): dictum at 734C - D applied

Homecraft Steel Industries (Pty) Ltd v SM Hare & Son (Pty) Ltd and Another 1984 (3) SA 681 (A): dictum at 692B - D applied

Multotec Manufacturing (Pty) Ltd v Screenex Wire Weaving Manufacturers (Pty) Ltd 1983 (1) SA 709 (A): referred to

Nampak Products Ltd and Another v Man-Dirk (Pty) Ltd 1999 (3) SA 708 (SCA) ([1999] 2 All SA 543): referred to H

Netlon Ltd and Another v Pacnet (Pty) Ltd 1977 (3) SA 840 (A): referred to

Sappi Fine Papers (Pty) Ltd v ICI Canada Inc (formerly CIL Inc) 1992 (3) SA 306 (A): referred to

Viskasie Corp v Columbit (Pty) Ltd and Another 1986 BP 432 (CP): referred to.

Unreported cases I

Sunsmart v Flag and Flagpole Industries [2007] SCA 50 (RSA): applied.

Foreign cases

Catnic Components Ltd and Another v Hill and Smith Ltd [1982] RPC 183 (HL) ([1981] FSR 60): J referred to

2008 (3) SA p449

Improver Corp and Others v Remington Consumer Products Ltd and Others A [1990] FSR 181: referred to

Kirin-Amgen Inc and Others v Hoechst Marion Roussel Ltd and Others; Hoechst Marion Roussel Ltd and Others v Kirin-Amgen and Others [2005] 1 All ER 667 (HL): dictum in para [32] applied

Metro-Goldwyn-Mayer Studios Inc et al v Grokster Ltd et al 380 F 3d 1154 (9th Cir 2004): referred to B

Sony Corp of America v Universal Studios Inc 464 US 417 (1984): referred to.

Case Information

Appeal from a decision in the Witwatersrand Local Division (RD Claassen J). The facts appear from the reasons for judgment.

LG Bowman SC (with CJ van der Westhuizen and G Marriott) for the appellants. C

CE Puckrin SC (with C Harms) for the respondent.

Cur adv vult.

Postea (September 27). D

Judgment

Hurt AJA:

Introduction

[1] The respondent, Sunsmart Products (Pty) Ltd (Sunsmart), is the proprietor of a registered patent and a registered design. Since 2004 E various courts have dealt with applications for interdicts and related relief, claimed by Sunsmart on the basis that the patent and design have been infringed. It is convenient at the outset to recount the history of this litigation for the purpose of clarifying certain of the issues which require to be dealt with in this appeal.

[2] During November 1997 applications for registration of the patent F and the design were lodged under numbers 97/10535 and 97/1155, respectively, with the Registrar of Patents and the Registrar of Designs. Both applications related to what was described as a 'flag construction'. During 2002 the original proprietors of the patent and the registered design executed assignments of their rights in both to Sunsmart. In 2004 G Sunsmart brought two applications for interdicts restraining the infringement of the patent and the registered design against various alleged infringers. The respondent in the first of these was a company called Flag and Flagpole Industries (Pty) Ltd. In that case simultaneous applications were lodged in the Court of the Commissioner of Patents (under case No H 97/10535) and in the High Court, Pretoria (under case No 7385/04). In a second (later) application, the five appellants in this appeal were amongst seven cited respondents who were alleged to have infringed the patent and the registered design. The second application was likewise launched in the Commissioner's Court (also under case No 97/10535) and in the High Court (under case No 21061/04). In each of these I applications a judge sat in the dual capacity of the commissioner and of a judge of the High Court. In what has become known (and will be referred to in this judgment) as 'the Flag and Flagpole case' the presiding judge was Southwood J, and in the court from which this appeal emanates, RD Claassen J presided. J

2008 (3) SA p450

Hurt AJA

A [3] In the Flag and Flagpole case the respondent denied infringement, and in the alternative contended that both the patent and the design were invalid for want of novelty. Southwood J held that Sunsmart had failed to prove infringement of the patent because one of the essential elements of the invention claimed in the patent was not incorporated in B the Flag and Flagpole product. He therefore found it unnecessary to deal with the issue of validity of the patent. In regard to the design, Southwood J held that a 'sail flag' described and illustrated in a 1992 United States patent ('the Rehbein patent') constituted an anticipation of the registered design and he accordingly dismissed the application for an interdict on that score. Southwood J granted leave to appeal against C his judgment. [*]

[4] The applications that were dealt with in the court a quo by Claassen J came before him after they had been referred for the hearing of oral evidence in regard to a factual dispute relating to the issue of whether D certain of the cited respondents had been guilty of 'contributory infringement'. The matter proceeded before Claassen J while the appeals against the decisions by Southwood J were still pending. I should mention that, on the papers before Claassen J, there was a counter-application for revocation of the patent on the basis that it was invalid.

E [5] After hearing evidence Claassen J held that Sunsmart had established infringement of the patent and of the design. In the course of reaching his conclusions as to infringement, Claassen J found himself constrained to disagree with the construction placed on the claims in the patent by Southwood J, and with Southwood J's finding that the design was not F novel. He found that there had been infringement (both 'direct' and 'contributory') of the design and the patent and granted the customary relief. In addition, he granted an unusual order, directing the respondents to disclose to Sunsmart the names of other possible infringers to whom the respondents had sold their products. Insofar as his finding was to the effect that there had been contributory infringement (the issue G which had been referred for the hearing of viva voce evidence), his conclusion was that the first, third, fourth and fifth respondents had colluded to procure the infringement. As there had...