Costelloe v Johnston

• Jurisdiction: Ireland
• Judge: MR JUSTICE JOHN BLAYNEY
• Judgment Date: 01 January 1991
• Neutral Citation: 1990 WJSC-HC 280
• Docket Number: [1990 No. 1812P]
• Court: High Court
• Date: 01 January 1991

COSTELLOE v. JOHNSTON

BETWEEN

FRANCIS R COSTELLOE

Plaintiff

AND

MARGARET JOHNSTON STEPHEN JOHNSTON AND WE FIT DOORS LIMITED t/a DOORWAYS

Defendants

TRANSCRIPT OF JUDGMENT

1990 WJSC-HC 280

No.l812P/1990

THE HIGH COURT

Synopsis:

DESIGNS

Copyright

Infringement - Proof - Failure - Door - Absence of novelty - Invalid registration of design - Counterclaim - Form of relief - Rules of the Superior Courts, 1986, order 94, r. 50 - Industrial and Commercial Property (Protection) Act, 1927, ss. 72, 129 - (1990/1812 P - Blayney J. - 16/5/90) - [1991] 1 I.R 305

|Costelloe v. Johnston|

PRACTICE

Procedure

Register - Entry - Cancellation - Counterclaim - Copyright in registered design - Action by plaintiff for infringement of copyright - Registration invalid - Declarations of invalidity and of entitlement of defendant to have entry expunged - Refusal of court to direct cancellation of entry - (1990/1812 P - Blayney J. - 16/5/90) - [1991] 1 I.R. 305

|Costelloe v. Johnston|

Citations:

INDUSTRIAL AND COMMERCIAL PROPERTY (PROTECTION) ACT 1927 S72

INDUSTRIAL AND COMMERCIAL PROPERTY (PROTECTION) ACT 1927 S129(1)

INDUSTRIAL AND COMMERCIAL PROPERTY (PROTECTION) ACT 1927 S129(6)

RSC 0.94 r50

1 DELIVERED BY THE HONOURABLE MR JUSTICE JOHN BLAYNEY ON 16TH MAY 1990

APPEARANCES

For the Plaintiff:

Eoin McCullough, BL

Instructed by

Tom Collins & Co.

For the Defendants:

Fidelma Macken, BL

Instructed by

Cunningham & Co.

2 I reserved my judgment in this case yesterday not because I had not made up my mind in the case but because the hour was late and I wanted time to gether my thoughts on the various issues that had arisen. I had already come to the conclusion that the Plaintiff was not entitled to succeed in the case and on reflection I am confirmed in that view.

3 The action was for infringement of the copyright in a registered design. The defence was that the registration of the design was invalid because the design was not new or original as it had been published prior to its registration by the Plaintiff.

4 The first thing that has to be considered is what is the design which is the subject of the registration because what is protected is the feature or novelty embodied in the shape and configuration as shown in the drawings.

5 The Plaintiff claimed that the feature or novelty is the two segments below the four panels which form a semi-circle at the top of the door. He says that the design registered is that of these two segments or panels and that it is this design that has been infringed. It may have been the Plaintiff's intention that that was all that should be registered but this is not, in fact, what happened. What was registered was the design of the entire door, and I accept Mr Kinsella's evidence in regard to this. So it is the design of the whole door, the shape and configuration as shown in the drawings, that is claimed as the feature of novelty and that is what is necessarily claimed as being entitled to protection. Once it is clear that that is the position, in my mind it is equally clear that the registration is invalid. The design of the whole door was not either new or original. It was very little different from the "Croydon", "Avondale" or "Ormond" doors in the Plaintiff's 1985 brochure and was very little different from the "Pembroke Round" door of the Defendants, all of which constituted the relevant prior art.

6 I accept the principle that was cited on both sides, which essentially is that in judging this difference between prior art and registered design, an impression of the eye is involved; and looking at the prior designs of the "Croydon", "Avondale" and "Ormond" on the one hand and the "Pembroke Round" on the other hand, it seems to me that there is very little difference between them and the...