Hemalatha Ramulu explains an important decision on the proprietary rights over a juice bottle.

The Court of Appeal recently heard four civil appeals together, namely F&N Dairies (Malaysia) Sdn Bhd v Tropicana Products, Inc. (C.A. No. W-02(IPCV)-1913-08-2012), F&N Beverages Manufacturing Sdn Bhd v Tropicana Products, Inc. (C.A. No. W-02(IPCV)-1914-08-2012), F&N Beverages Manufacturing Sdn Bhd v Tropicana Products, Inc. (C.A. No. W-02(IPCV)-1916-08-2012) and Fraser and Neave Limited v Tropicana Products, Inc. (C.A. No. W-02(IPCV)-1917-08-2012) that concerned the validity of the respondent’s industrial design.
 
The appeals arose from six High Court actions that were also heard together which included four writs and two originating motion actions.
 
TROPICANA’S ALLEGATIONS
 
The plaintiff in the writ actions was Tropicana Products, Inc. (“Plaintiff”), a company based in the United States of America. It had obtained a certificate under Malaysian Industrial Design Registration No. MY06-00624 (“624 Design”) for the shape and configuration of a bottle that was used in the manufacture and sale of a juice product known as Tropicana Twister (“Tropicana Product”).
 
The Plaintiff commenced writ actions against, amongst others, Freshie (M) Sdn Bhd (“Freshie”) and GCH Retail (Malaysia) Sdn Bhd (“GCH”) alleging that the latter’s bottle design which was used to sell their First Choice juice (“First Choice Bottle”) was an infringement of the Plaintiff’s rights in the 624 Design.
 
The Plaintiff also commenced simultaneous actions against F&N Beverages Manufacturing Sdn Bhd (“F&N Beverages”) and F&N Dairies (M) Sdn Bhd (“F&N Dairies”) on the basis that (i) in the former’s case, the bottle which was used to sell their F&N Seasons Ice Lemon Tea beverage and Fruit Tree juices (“F&N Bottle”); and (ii) in the latter’s case, the bottle design containing the Sunkist Dash juice product (“Sunkist Dash Bottle”) infringed the Plaintiff’s rights in the 624 Design.
 
Freshie had acquired the registered design rights of the First Choice Bottle. Similarly, Fraser and Neave Limited (“F&N Limited”) had in 2009, obtained a registration for the design of the F&N Bottle under Malaysian Industrial Design Registration No. MY00855-0101. F&N Dairies sold a juice product known as Sunkist Dash using the Sunkist Dash Bottle but did not acquire any registration for the design of their bottle. As a result, the Plaintiff also commenced actions to invalidate the registrations obtained on the First Choice Bottle and F&N Bottle by way of the aforesaid motions on the basis that those designs were devoid of any novelty in light of the registration of the 624 Design.
 
THE DEFENDANTS’ POSITION
 
Freshie, GCH, F&N Beverages and F&N Dairies respectively filed a defence denying the allegations of infringement and contended that their respective designs differed substantially from the 624 Design. Further, they counterclaimed that the 624 Design be invalidated primarily on two grounds, namely that the 624 Design lacked novelty and failed to meet the definition of an industrial design under the Industrial Designs Act 1996 (“IDA”).
 
THE COURT PROCEEDINGS
 
The High Court decided in favour of the Plaintiff and dismissed the Defendants’ counterclaims. Both the First Choice Bottle and the F&N Bottle design registrations were invalidated.
 
F&N Limited, F&N Dairies and F&N Beverages appealed the decision. The Court of Appeal reversed the High Court’s decision and found the 624 Design to be invalid. Accordingly, the 624 Design was expunged from the Register of Industrial Designs and no judgment on infringement was made. The registration of the F&N Bottle was consequently restored.
 
The following is an overview of the arguments taken by the parties at the High Court and the Court of Appeal and the findings made by each Court in turn.
 
THE INVALIDATION PROCEEDINGS
 
The functionality exclusion
 
The validity of the 624 Design was challenged on the ground inter alia that it failed to fulfil the definition of an industrial design under the IDA. The Defendants argued that in order to qualify for protection, the 624 Design had to satisfy both the positive and negative aspects of the definition i.e. being features of shape and configuration that appeal to the eye and in the present case, that they are not dictated solely by function. The Defendants submitted that the 624 Design failed to achieve this as every feature was dictated solely by the function that it had to perform.
 
A.  The negative aspect
 
“Dictated solely by function”
 
In respect of the negative aspect, the Defendants argued that the term “dictated solely by function” was to be construed to mean “attributable to or caused or prompted by” the function that the features of the 624 Design had to perform. The Defendants relied on the House of Lords’ decision of Amp Incorporated v Utilux Proprietary Limited [1972] RPC 103 to support their contention.
 
The Plaintiff admitted that the Tropicana Product required sterilisation through a process known as the “hot-fill process” when the juice was filled into bottles bearing the 624 Design. The filling process required firstly, the juice to be poured into PET bottles at temperatures exceeding the melting point of PET followed by, secondly, a cooling process, the effect of which in totality would cause an otherwise ordinary bottle to collapse as a result of the push-in-push-out effects caused during the process.
 
Given that the author of the design was restricted in terms of the PET material, its weight and cost issues, to compensate for the negative effects caused during the process, the Defendants argued that the author would have been compelled to design every feature of shape and configuration of the 624 Design to offset those effects as a failure to do so would result in the bottle failing to achieve its said function and collapsing under the effects of the hot-fill process. 
 
Further, the Defendants, relying on Interlego AG v Tyco International Ltd [1988] RPC 343, argued that a design which ex hypothesi has eye appeal will be excluded from registration if every feature of it is dictated solely by function. Since every feature of shape and configuration of the 624 Design was designed by the author in such a way that it was entirely dictated by the function it had to perform, the Defendants argued that the 624 Design ought not to have qualified for protection.
 
The design freedom argument
 
The Plaintiff denied the Defendants’ allegations and argued that it was possible to make alternative shapes of hot-fill bottles and therefore this was indicatory that the 624 Design was not dictated solely by the function that it had to perform.
 
B.  The positive aspect
 
The Defendants argued that the High Court had erred on the class of customers whose eye the features of the 624 Design should appeal to and had it taken into regard the correct class of customers, i.e. trade witnesses, it would have concluded that it is the function that the design had to perform that had influenced the selection of the features as a failure to do so would have resulted in the selection of a bottle that would have been unable to meet its intended function.
 
The High Court found that the author was prompted by the hot-fill process to design the features of shape and configuration of the 624 Design, and that they were therefore functional. Notwithstanding this, it held that since the author had designed the “twist panel” features of the 624 Design as part of the Plaintiff’s branding, its shape and configuration were therefore not solely dictated by function. Further, it held that given that it was possible to make a hot-fill bottle visually different from the 624 Design, the design was not dictated solely by the function that it had to perform.
 
The Court of Appeal reversed the High Court’s findings and agreed with the Defendants’ proposition that the positive and negative aspects of the definition of an industrial design would have to be considered together and not in isolation.
 
In finding that the author of the 624 Design had admitted that in designing the features of the 624 Design he had to keep in mind the hot-fill process and that every feature of the 624 Design was necessary to compensate the negative effects of the process as a failure to do so would result in a bottle buckling under the effects of the said process, the Court of Appeal found that every feature was in fact dictated solely by the function that the design was intended to perform.
 
The Court of Appeal rejected the Plaintiff’s design freedom argument and, relying on Amp Inc, found that if that argument was correct, then the statutory exclusion would have virtually no practical effect.
 
The Court also held that it is no answer to the claim that other articles bearing other features of shape and configuration also serve the same function. The fact that other shapes could perform the same function did not alter the fact that the 624 Design was dictated only by functional considerations. If there are alternative features of shape but if each one is dictated solely by the function which is to be performed by the article, then each one would be excluded from the expression of an industrial design as well.
 
The Court of Appeal also reversed the High Court’s decision on the issue of eye appeal on the basis that it had erred in construing the finished article. The Court of Appeal found that the High Court ought to have found the finished article to be the bottle and not the juice product. On that basis, the appellate Court rejected the evidence of the Plaintiff’s witnesses on the positive aspect and that their evidence was inappropriate to consider the question of eye appeal in the circumstances. The Court of Appeal concluded that the burden was on the Plaintiff to adduce evidence of the relevant witness to establish eye appeal and as it had failed to do so, the positive aspect was not satisfied.
 
Since every feature of shape and configuration of the 624 Design was required to fulfil a functional purpose and it failed to fulfil both the positive and negative aspects of the definition of an industrial design under the IDA, the appellate Court found the 624 Design to be invalid.
 
NOVELTY
 
The Defendants’ attack on the novelty of the 624 Design was two-fold i.e. that it or an industrial design differing from it only in immaterial details or in features commonly used in the bottle trade were already available in Malaysia prior to its registration date. The Defendants relied primarily on the publication of an advertisement showing features of shape and configuration of a bottle known as the POKKA bottle (the prior art) which appeared in two newspapers and which was further corroborated by the independent evidence of a salesperson for POKKA products, to defeat the novelty of the 624 Design.
 
Prior publication
 
Before the issue of novelty was determined a threshold issue was required to be argued by the parties i.e. on the issue of prior publication.
 
The trial judge held that the Defendants failed to establish publication of the prior art and accepted the Plaintiff’s argument that in order to establish publication, the Defendants should have adduced a POKKA bottle that was manufactured prior to the registration date of the 624 Design, and called the manufacturer of the POKKA bottle.
 
The appellate Court reversed this finding and relying on Teh Teik Boay v Chuah Siak Loo [1962] 1 MLJ 80, held that publication of a design may be established in one of two ways, i.e. by prior use or prior user.
 
The Court of Appeal also found that the term ‘publication’ should be construed broadly and that a range of documentary publications including advertisements, magazines, trade catalogues, patent specifications and design registrations could be considered for the purposes of assessing publication.
 
Further, relying on Stratford Auto Components Ltd v Britax (London) Ltd [1961] RPC 197, the appellate Court held that where the allegation of prior user is based on the sale and manufacture of an article that has been referred to in a leaflet or an advertisement, there was no need for the actual article to be produced.
 
It further held that there was no basis for the High Court to find that the Defendants should have produced the actual POKKA bottle, or called the manufacturer to give evidence that the POKKA bottle existed before the priority date of the 624 Design. The issue as to the date when the POKKA bottles were first manufactured or when the design of the POKKA bottles originated was completely irrelevant. What was relevant was whether the features of shape and configuration of the POKKA bottles had been available to the public before the priority date of the 624 Design and this had been proven by the Defendants.
 
The definition of novelty – the dual limbs
 
It was not disputed by the parties that in determining novelty under the two limbs - a question of fact - the eye was the test to be applied. And in order to construe which was the proper eye that should judge, regard should be had to the article to which the design was applied.
 
The Defendants argued that the nature of the article that applied the 624 Design was a bottle and in particular in the present case, a PET bottle and therefore the corresponding customer or consumer, should be as against the background or nature of that article.
 
The Plaintiff on the other hand argued that the relevant article is a juice product with beverage content, with sleeves and labelling and consequently, that it was the consumer of the said juice product who would determine the novelty under the two limbs.
 
Differences in immaterial details (“the first limb”)
 
The Defendants argued that mere slight variations from articles already manufactured are not registrable, that the variation (if any) from what has gone before must not be trivial or infinitesimal and that small variations which any skilled workman might make between the articles which he makes for different customers are not enough. The question which has to be decided is whether the two appearances are substantially the same or not.
 
Given the above and the nature of the article, the Defendants argued that the eye that ought to decide whether the 624 Design is or is not in anticipation of the prior art, was through the eye of the consumer of the bottle itself.
 
The Defendants offered, amongst others, trade witnesses who gave evidence on the differences between the prior art and the 624 Design – taking into consideration the concessions which were made by the author of the 624 Design i.e. that features including (i) the dome shaped shoulder; (ii) the ribs on the shoulder; (iii) a waist; and (iv) hexagonal individual sections at the base, were commonly found in bottles.
 
The trial Judge accepted the Plaintiff’s contention and on that basis, accepted the evidence of the Plaintiff’s witnesses, i.e. two juice product consumers, who gave evidence that the overall impression of the POKKA bottle design and the 624 Design was different.
 
On appeal the High Court’s findings were reversed. It was found that the court could be assisted by the eye of the consumer of the article which in this case was the bottle manufacturer. The Court of Appeal found that the Plaintiff’s witnesses gave indisputable evidence that a host of reasons persuaded them in purchasing the juice product, such as the cost, the taste and the brand, and were therefore not the customers through whose eyes immaterial differences should be judged.
 
The appellate Court equated the customer in these circumstances to that of the informed user referred in Dyson Ltd v Vax [2011] EWCA Civ 1206 and found that as the informed user was one who was observant and aware of the state of the prior art – and this was clearly lacking when it came to the Plaintiff’s witnesses, particularly since they were completely unaware of the prior art - this went to show that they did not have the necessary qualities or knowledge and rejected their evidence.
 
Taking into account the concessions made by the author, the appellate Court drew on the evidence of the Defendants’ witnesses to determine whether the changes, if any, introduced by the author were merely the sort which would be considered as a variation that a skilled workman would make. They answered that question in the affirmative and found the features of the 624 Design to be not materially different from the prior art.
 
Features commonly used in the bottle trade (“the second limb”)
 
The Defendants argued, relying on Philips v Harbro Rubber Company [1920] 37 RPC 233, that the eye that should construe trade variants should be that of an instructed person, i.e. one who should know what was common trade knowledge and usage in the class of articles to which the design applies. It was argued that the instructed person would have knowledge of features of shape that would have been incorporated into a design by the author out of the necessity of its performance for which no design monopoly could be obtained. Accordingly, the Defendants’ witnesses led evidence that because the features that were incorporated into the 624 Design were required and necessary for ordinary day to day trade of the bottle, the Plaintiff should not be allowed a monopoly over such features.
 
The Plaintiff contended that to determine whether the features in issue were commonly used in the bottle trade, it was necessary to consider the evidence of its witnesses i.e. consumers of juice products, given that the bottle was an ordinary household article.
 
The High Court rejected the evidence of the Defendants’ witnesses on the basis that they would be too discerning of the features of the design in suit and found that the eye that should be the judge is the class of customers put forward by the Plaintiff.
 
The Court of Appeal reversed the High Court’s findings and found that the Plaintiff’s witnesses could not determine this issue. Having found that every feature of the 624 Design consisted of trade variants required by bottle manufacturers to be included for ordinary day to day usage, the appellate Court held that the 624 Design fell foul of the second limb and therefore lacked novelty.
 
Having found the 624 Design to be invalid, the Court of Appeal found that the question of its infringement by the Defendants did not arise and did not make any ruling on the same. All four appeals were allowed and the 624 Design was invalidated.
 
The Plaintiff’s application for leave to appeal to the Federal Court was dismissed in April 2014.
 
CONCLUSION
 
The decision of the Court of Appeal in these cases is significant in several respects. First, it provides invaluable guidance as to the approach which the Malaysian court would adopt in determining whether a particular design qualifies as an “industrial design” which is registrable under the IDA.
 
Second, it clarifies the approach that the court would take when considering the parties who are the appropriate class of customers through whom the novelty, or otherwise, of a design is to be determined.
 
Last, but not the least, the court has also clarified from the evidential perspective, that advertisements and other publicity materials may be admitted to prove prior publication.