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England and Wales High Court (Patents Court) Decisions
You are here: BAILII >> Databases >> England and Wales High Court (Patents Court) Decisions >> Rolawn Ltd & Anor v Turfmech Machinery Ltd  EWHC 989 (Pat) (07 May 2008)
Cite as:  RPC 27,  EWHC 989 (Pat)
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Strand, London, WC2A 2LL
B e f o r e :
| (1) ROLAWN LIMITED
(2) ROLAWN (TURF GROWERS) LIMITED
|- and -
|TURFMECH MACHINERY LIMITED
MR. A. LYKIARDOPOULOS (instructed by Messrs. Knight & Sons, Newcastle under Lyme) for the Defendant.
Hearing dates: 15th, 16th, 17th, 18th, 21st, 22nd, 23rd, 24th January 2008
Crown Copyright ©
Mr Justice Mann :
The two designs
i) The outer half of each arm folds at roughly the half-way point over on to the inner half (photograph 3). The cutters underneath the arm and body are raised up clear of the ground.
ii) The combined arms then tilt forward on a horizontal axis (photograph 4).
iii) The combined arms then sweep backwards and inwards and, because of the angle, upwards. Each arm of the rear support structure passes through the framework of the arms as they sweep in, and in the last phase the arms drop slightly so that they rest on the (as it were ) inserted arms (photograph 5). Those of the cutters which are upside down are supported on built-in stops.
i) Its outer arms fold inwards over the inner arms photograph 8. The cutters underneath the arm and body rise up.
ii) The arm assembly then folds vertically photograph 9.
iii) The combined arms then tilt backwards so that they come to rest against the rear support structure apparent from the photographs. The cylinder heads rest against a stop or stops in this position. See photograph 10.
Rolawn's registered design
Rolawn's allegations unregistered design right
i) "The whole, when in the extended position.
ii) The whole, when in the semi-retracted position. [The photographs identify this as being the mower when the outer halves of the arms have been folded over the inner halves, but before any further tilting.]
iii) The whole, when in the fully retracted position (ie as in Appx 1 photograph 5).
iv) The rear assembly, comprising a pair of wheels with a tank in between and a forward leaning frame on top.
v) The side assembly comprising, in the extended position, a box framework structure, having two rows of mowing gangs mounted there on in a staggered arrangement, and a wheel on the outside edge of the structure."
"1. Arms fold back on themselves at the mid-way point.
2. Folded arms lean back onto the support frame.
3. Support frame leans forwards and has two uprights.
4. Staggered arrangements of heads.
5. Linear framework extending laterally.
6. Oil tank between the wheels.
7. End "runner" wheel, located at rear."
"The rear assembly, comprising a pair of wheels with a tank in between and a forward leaning frame on top.
The side assembly, comprising, in the extended position, a framework structure, having two rows of mowing gangs mounted thereon in a staggered arrangement, and a wheel on the outside edge of the structure."
"A wide area mower, involving two wings, in an extended position involving two wings of a substantially framework construction from which a number of cutter heads are suspended in two rows staggered forward and backward so as to give an overall appearance of wide wings, effectively, which have a visible folding point at or about the centre of the wings, which can fold back in on themselves through 180 degrees, so that when folded in that way the cutter heads on the bottom inner part on the bottom and the cutter heads on the outer part are on the top with a structure supporting them in between, which then fold further in such a way that they lie in a diagonal position with the rear pointing backwards, supported by a support frame which itself has two uprights and some bar going across it Where the support frame is disposed above the wheels, the wheel being very prominent size, all rearwards of the framework to which I just referred. So that the framework is forward and goes all the way across in front of those wheels where between those wheels and a little bit above there is a tank sitting at the bottom of the support frame. That at the end of each of the wings there is a wheel at the back behind the first cutter head on the outside at the outermost extremity of the wings, so that when one looks at it end from the rear end, rear end, the design looks like two big wheels with a tank in the middle and an upright tail or cross bar, with the wings forward of that with the cutter head suspended at the wheel visible. But side on you see the end wheels, the wings on the end, going toward the middle where the framework somewhat in front of the rear wheel on the back of the chassis."
Rolawn's registered design case
Turfmech's case in outline
(i) Mr Paul Dawson.
For the last four years he has been the managing director of Rolawn. Prior to that he was its operations director, and before that its corporate development manager. He has been with the business for about seven years. He gave evidence of the nature and extent of Rolawn's business and the commercial environment in which it operates. He went on to give evidence of how it was that the Rolawn machine which is the subject of this action came to be designed, his limited dealings with Turfmech and his discovery of the existence of the Turfmech mower. He also gave evidence of the geographical position of his company's land, and the extent to which that situation permitted passers-by to see the Rolawn machine in operation and, if they were so minded, to enter the land in order to inspect it by trespassing on the land when there was no-one there. He was a careful and reliable witness.
(ii) Mr Mark Hatfield.
He is one of two fabrication foremen at Rolawn; he has worked for them for six and a half years. His job involves mending and repairing any equipment, and it also involves building new machinery to suit the requirements of the business. He is plainly an experienced and gifted man. He continues his fabrication activities in his own fully equipped workshop at home, where he builds autograss racing cars (which he also races). He described the process pursuant to which he physically built the Rolawn machine, as a result of trial and error. Again, he was a careful and reliable witness.
(iii) Mr Matthew Scott.
He is the other of Rolawn's fabrication foremen he has had that role since June 2005. His job involves designing and constructing different types of machinery that are used by Rolawn. He first started to work for Rolawn in March 2002 as a workshop mechanic. His particular expertise is hydraulics, and he played a material part in the development of the hydraulics aspect of the Rolawn machine which is the subject of this action.
(iv) Mr Gerry Brouwer.
Mr Brouwer was an expert called by Rolawn. He is president of a company known as Kesmac Inc and Brouwer Turf Limited. He has considerable experience in the design and sale of lawnmowers, and has a good view of the shape of the industry. He gave expert evidence on designing cylinder mowers, buying such mowers and various aspects of the design, including commonplace. He also carried out a detailed comparison between the Rolawn mower and the Turfmech mower. He plainly understood his role as an expert and was not partisan in his approach. He was obviously doing what he could to assist the court.
(i) Mr Lee Smith.
He received instructions in 2005 to design a concept poster showing the sort of mower that Turfmech were minded to design and produce. His evidence was short, good and clear.
(ii) Mr Jacob Harris.
At the material time he was on a placement year (or slightly more) in the middle of an engineering degree course, and was spending it in Turfmech. He designed the detail of parts of the Turfmech mower, and in particular the rear stand on which the mower assembly leans during road transport. His evidence was not materially challenged, and I accept it.
(iii) Mr Robin Wallader.
He is a design engineer who, at the relevant time, was employed by a third party design company known as Haughton Design Limited in Stafford. In October 2006 he was approached by Turfmech to assist in some of the design issues involved in modifying the Turfmech machine from a 13 gang mower to a 17 gang mower. He gave details of the activities involved, including strengthening the folding hinge (a five bar linkage mechanism) in the middle of each arm. In addition to giving evidence of fact, he provided various comments as to some of the alleged features of similarity between the Rolawn and the Turfmech machine. So far as admissible, I accept his evidence.
(iv) Mr Austin Jarrett.
He is and was at the material time the managing director of Turfmech. His evidence principally concerned the circumstances in which he and Turfmech came to consider designing, and then actually designed and produced, the Turfmech machines which are the allegedly infringing machines. The detail of his evidence, so far as relevant, is set out below. He came over as a careful witness, but, as will appear below, I was unable to accept the totality of his evidence as to the reference to which he and Mr Archer made to the Rolawn machine when they came to devise the Turfmech machine. I think that his natural defensiveness led him to play down the impact of that machine on his consciousness. He denied, however, actually going to see the Rolawn machine during the course of this process, and I accept that denial. The qualification that I have just referred to, along with a similar qualification in respect of Mr Archer's evidence (see below) is the only significant respect in which any of the witnesses in this case (on either side) was not telling me the complete truth.
(v) Mr Jeremy Archer.
He is a chartered engineer and is Turfmech's director of engineering. He has a considerable background in agricultural mechanical engineering, and before joining Turfmech was employed, inter alia, by a company known as Hayter, which designs and sells commercial mowing machines. From 2003 to 2004 he was a freelance design engineer, before joining Turfmech in 2004. He was the principal designer of the Turfmech machine, and gave evidence of the design process. As will appear, he said that only very limited reference was made to the Rolawn machine during this process, but as with the evidence of Mr Jarrett, I think he to a limited extent downplayed that factor, again because of his natural defensiveness. He struck me as a witness who chose his words very carefully and, on occasions, came over as a man who, as it were, has an answer for everything. However, at the end of the day, he did not come over as a man who would, or did, lie to the court to the serious extent which would be necessary for the claimant's case of copying to be fully made in this case.
(vi) Mr Michael Wright.
He was an expert called by Turfmech. He is a chartered mechanical engineer with an honours degree in mechanical engineering who has 20 years' experience in the design, development and management of engineering teams involved in the design and development of grass cutting and other horticultural machinery. He gave expert evidence of design, including general design approach, and design considerations. I considered him to be a most impressive witness. He was careful to choose the right words, and not merely to accept suggestions from counsel that were put to him, but that did not arise from excessive wariness; it arose from paying proper attention to the matters that were put to him.
The central facts
i) A wide area cylinder turf mower with 13 gangs.
ii) It would be trailed, and would have a hydraulic fold up and fold down. It was to be neat and tight, with no "clatter" in the transport position. The transport width was to be 2.5m this reflected transport regulation restrictions.
iii) The "fold options" were said to be "Short term field (all or nothing); Med term Local authority individual section mowing". This was explained as reflecting the possibility of partial folding such as, for example, folding one side up, so that cutting could take place on the other only, or allowing some cutters to be raised up so that that only a limited number of cutters did the cutting, which would be of interest to local authorities who had parks to mow.
iv) There would be a hydraulic drive.
v) A Ransomes cutter unit would be used because it was a better unit. There would be optional 8 or 10 inch units, and optional single or double rollers on them.
vi) Other matters were discussed which I do not need to set out here.
i) The first is a sketch showing a plan view of the proposed machine showing a central carrying platform with staggered cutters in front and behind, with tractor tyres in front and an arrow demonstrating the direction of travel. The demonstration of staggered cutters is important. At the left hand end of the drawing is a sketch which (according to Mr Archer's evidence, which I accept on this point) is probably some sort of indication of folding of an end of the platform inwards. Arrows demonstrate the flow of clippings.
ii) The second is a sketch of the rear of the machine showing the arms folded in. It seems to show the innermost end of the carrying arms folded in through almost 180°, with the outer half then folded back outwards so that they point up at an angle of about 30°. Both arms are shown thus folded, giving a sort of cross effect. A third drawing below it shows pivot points about which the carrying arms can be drawn up and folded. It also shows some cutter heads being drawn up into the vertical for folding-up purposes. It is not easy to describe these features in words, but that does not matter, because the important point to note about these two drawings is that they do not resemble the final folding scheme, and, more importantly, do not reflect the Rolawn folding scheme either (save at the basic level of there being folding).
iii) A fourth drawing seems to show a plan view of the carrying platform, in three parts, with rollers distributed in a staggered form between them, fore and aft.
i) It shows 13 cutter heads staggered in front and behind a beam which carries them, with the outermost one on each beam (or at least on the visible nearer beam) being at the front.
ii) It shows a wheel towards the end of each beam, and another inboard of that.
iii) It shows a beam which folds. The folding points are roughly half way along the beam, and then again closer into the body.
iv) It shows central support wheels behind the beam.
v) It shows a hydraulic tank between the central wheels.
vi) At the bottom it shows an outline of a folded up configuration. There is a plan view, which is not particularly informative for present purposes, and a side view, which shows folded arms leaning back.
The principal issues in this action
i) To what extent is there design right in Rolawn's machine?
ii) To what extent was there copying of Rolawn's machine by Turfmech?
iii) To the extent that there was copying, was it to such an extent as to infringe the unregistered design right?
iv) Does the registered design not have individual character so as to make its registration invalid?
v) If not, do Maximow mowers infringe do they give the informed user a different overall impression or not?
Was there copying by Turfmech of the Rolawn machine; and if so of what?
"The courts proceed on the basis that a close similarity between the claimant's design and the alleged infringing article, coupled with the opportunity for the alleged copier to have access to the claimant's design or work, raises an inference of copying. It is then up to the defendant to rebut the inference by evidence which shows that the apparent similarity arose in some other way." (Fulton v Grant Barnett  RPC 16 at para 95, per Park J).
i) A deliberate trip to see the machine.
ii) Probably, a degree of sketching or, more likely photographing, to record the event. If a special effort was to be made to get details, it is unlikely that the person involved would have been content to rely on memory alone, particularly if that person were someone other than Mr Archer. That means the generation of documents, and since none have been disclosed it would mean that there must have been suppression, and probably even deliberate destruction, of those documents. Mr Archer kept a file of inspiration documents, and no documents were disclosed which related to a physical view of the Rolawn machine.
iii) Cover up by at least Mr Archer.
iv) If a surreptitious close inspection took place, that would have involved a trespass out of hours.
i) It was a machine which had created a strong impression in the turf growing industry. Mr Jarrett was aware of that; it is highly unlikely that he did not pass on some of that to Mr Archer. That would have made Mr Archer look at it more closely.
ii) It was an apparently successful attempt to achieve what Mr Archer was trying to do. Any sensible designer would pay some attention to it.
iii) It was a machine which was unlike any other preceding machine in its field. Again, any sensible designer (and Mr Archer was one of those) would give it more than passing attention.
iv) He knew that Mr Jarrett had sought a licence for the machine. Even though this attempt had failed, any machine in respect of which a licence was sought would be likely to be elevated in the consciousness of Mr Archer.
v) Mr Archer was thorough. He acquired material on a number of other designs, and went to a yard for further inspiration. In that context the idea that the Rolawn machine was only of passing interest seems to me to be implausible.
i) In cross-examination he professed that as an engineer (which, by training, he was) he was curious about all machinery. In the light of that he must have been curious about how this particular piece of machinery worked, and he must have thought about it. Having thought about it, he cannot have dispelled it from his mind. Indeed, he admitted that when he first heard of the machine he would have been very interested to have seen how the machine worked.
ii) That point is reinforced by his acceptance in his evidence that a 21 gang wide area machine would be one on which the industry would remark; it had a "wow factor" and he would have felt the same way.
iii) He was sufficiently interested in the machine to attempt licensing discussions.
iv) He admitted that he discussed the photographs with Mr Archer. He must have done so for the purpose of seeing what lessons could be learnt from them.
v) He procured the inclusion of one of the photographs in the concept poster. He can only have done so on the basis that he wished to give the impression that this was the sort of machine he wished to produce. In the light of that it is implausible that he did not look at the photographs to see what lessons (inspiration) could be gleaned from them.
"The inspiration I drew from these [ie the photographs] was that it was clearly possible to fold the booms over on top of the adjacent sections and result in a nice, tidy, compact transport position; very much the thinking that we had had from the inception of the project at Turfmech."
That shows a keen level of interest and a propensity to take things from the Rolawn design (I deliberately use a neutral phraseology at this point).
9 Laterally orientated support arm that supports each cutter. This refers to "rests" on which inverted cutter heads rest in transport mode.
Design right generally and the areas of dispute
"213 (1) Design Right is a property right which subsists in accordance with this Part in an original design.
(2) In this Part "design" means any aspect of the shape or configuration (whether internal or external) of the whole or any part of an article.
(3) Design right does not subsist in -
(a) a method or principle of construction ...
(4) A design is not "original" for the purposes of this Part if it is commonplace in the design field in question at the time of its creation.
(5) Design right does not subsist unless and until the design has been recorded in a design document or an article has been made to the design.
226(1) The owner of the design right in a design has the exclusive right to reproduce the design for commercial purposes
(a) by making articles to that design ...
(2) Reproduction of a design by making articles to the design means copying the design so as to produce articles exactly or substantially to that design, and references in this Part to making articles to a design shall be construed accordingly.
(3) Design right is infringed by a person who without the licence of the design right owner does, or authorises another to do, anything which by virtue of this section is the exclusive right of the design right owner."
i) The scope of design right claimed and claimable.
iii) Whether any part of the claim is in fact a claim to a method or principle of construction.
iv) Whether the Turfmech machine is made substantially to the Rolawn design (it is not contended that it is an exact copy).
To what extent is there unregistered design right in the Rolawn machine?
"the person who creates [the design]" (my emphasis).
You cannot create a design until you have actually reduced it to a particular form. It is not a design while it is a conception in the designer's head, and it becomes a design when it takes physical shape on paper or in the flesh.
"The trial judge had found as a fact that the defendant had not copied the plaintiff's drawings of box girder lintels. All that the defendant had taken was 'the idea of a box girder lintel' but the plaintiff said that the idea 'because of its intrinsic importance, had constituted a substantial part of the ..drawings.' In other words, the defendant had copied a kind of Platonic form of a box girder lintel which could be abstracted from the actual forms in the drawings. It was this argument which Buckley LJ rejected. Copyright does not project ideas but only the actual forms in which the ideas are expressed."
" it is necessary to ascertain how similar that design is to the design of similar articles in the same field of design made by persons other than the parties or persons unconnected with the parties If a number of designers working independently of one another in the same field produce very similar designs by coincidence the most likely explanation of the similarities is that there is only one way of designing that article. In those circumstances the design in question can fairly and reasonably be described as 'commonplace'. It would be a good reason for withholding the exclusive right to prevent the copying in the case of a design that, whether it has been copied or not, it is bound to be substantially similar to other designs in the same field."
"I think that when the Act speaks of 'design field in question' a reasonably broad approach is called for. What matters are the sort of designs with which a notional designer of the article concerned would be familiar."
Method or principle of construction.
"A method or principle of construction is a process or operation by which a shape is produce, as opposed to the shape itself The real meaning is this: that no design shall be construed so widely as to give its proprietor a monopoly in a method or principle of construction. What he gets is a monopoly for one particular individual and specific appearance. If it is possible to get several different appearances, which all embody the general features which he claims, then those features are too general and amount to a method or principle [of construction]. In other words, any conception which is so general as to allow several different appearances as being made within it, is too broad and will be invalid."
"It is possible to make a device visually very different from Mr Oren's designs but which works the same way it follows that there is no principle monopolised here - only a visual embodiment of a device constructed in accordance with a principle."
Conclusions on infringement of unregistered design right
i) While there is unregistered design right in the physical aspects of the Rolawn machine shown and described in the Particulars of Claim, there is no design right in anything of any greater degree of generality.
ii) There is no design right in the general way in which the Rolawn machine is constructed.
iii) No material parts of the Rolawn machine have been copied. The most that has been copied is some general ideas of how to put the machine together.
iv) The result of the copying is not such as to produce an article exactly or substantially to the Rolawn design.
v) The result is that there is no infringement of unregistered design right by Turfmech.
" The appearance of the whole or a part of a product resulting from features of, in particular, the lines, contours, colours, shape, texture or materials of the product or its ornamentation."
"Product" is defined in section 1(3) as:
"Any industrial or handicraft item other than a computer program; and, in particular, includes packaging, get-up, graphic symbols, typographic type-faces and parts intended to be assembled into a complex product".
"1(B)(1) A design shall be protected by a right in a registered design to the extent that the design is new and has individual character."
1(B)(3) For the purposes of subsection (1) above, a design has individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the relevant date.
1(B)(4) In determining the extent to which a design has individual character the design freedom of the author in creating the design shall be taken into account."
"1(C)(1) A right in a registered design shall not subsist in features of appearance of a product which are solely dictated by the product's technical function."
"7(1) The registration of a design under this Act gives the registered proprietor the exclusive right to use the design and any design which does not produce on the informed user a different overall impression."
(2) For the purposes of subsection (1) above and section 7A of this Act any reference to the use of a design includes a reference to:
(a) the making, offering, putting on the market of a product in which the design is incorporated or to which it is applied .
(3) In determining for the purposes of section (1) above whether a design produces a different overall impression on the informed user, the degree of freedom of the author in creating his design shall be taken into consideration."
"(13) Whereas the assessment as to whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him by the existing design corpus, taking into consideration the nature of the product to which the design is applied or in which it is incorporated, and in particular the industrial sector to which it belongs and the degree of freedom of the designer in developing the design." (My emphasis)
"It is sufficient to avoid infringement if the accused product is of a design which produces a 'different overall impression'. There is no policy requirement that the difference be 'clear'. If a design differs, that is enough - an informed user can discriminate."
"The 'informed user' will, in the view of the Appeals Court, have more extensive knowledge than an 'average consumer in possession of average information, awareness and understanding' in particular he will be open to design issues and will be fairly familiar with them " (see para 26).
The informed user will also form a more considered view than the average consumer:
"I would say that what matters is what strikes the mind of the informed user when [the product] is carefully viewed" (para 25 - Jacob LJ's emphasis).
"So what matters is the overall impression created by it: will the user buy it, consider it or appreciate it for its individual design? That involves the user looking at the article, not half-remembering it." (Para 27 - Jacob LJ's emphasis)
"In this exercise the level of generality to which the court must descend is important The appropriate level of generality is that which would be taken by the notional informed user."
"The most important thing about each is what they look like."