Abdul Aziz J:

(delivering oral judgement): This is an action for infringement of a registered design and not an action in relation to trade marks. Therefore, the question of passing off has no relevance and the question of the names of the various products also has no relevance.

Plaintiffs No. 1, i.e. Redland Tiles Limited are the proprietors of a valid registered design bearing No. 862055 for roofing tiles, the novelty features of which, as set out in the certificate, lie in the feature or shape and configuration of the article as shown in the representation annexed thereto, a specimen of which was exhibited in Court and produced for inspection. By virtue of s. 2 of the United Kingdom Designs (Protection) Ordinance, 1949 the registered proprietors enjoy, in the Federation, the like rights and privileges as though the certificate has been issued in the United Kingdom with an extension to the Federation. Plaintiffs No. 2, i.e. Concrete Industries (North Malaya) Ltd. are the licensees of plaintiffs No. 1 to manufacture tiles for sale in Malaya. It was alleged that the defendants manufactured cement tiles of the like shape and configuration as the design registered in the United Kingdom. The defendants' contention was that these tiles were of different designs and appearance. They went on to contend that there were distinct differences between the two types of tiles in the markings and in the configuration and that, therefore, the members of the public are not likely to be deceived thereby. As I have said earlier the question of passing off has no relevance at all to the proceedings. Halsbury's (3rd Edn.) vol. 38 at p. 675 has this to say in regard to infringement of registered design:-

The registration of a design under the Registered Designs Act, 1949, gives to the registered proprietor the exclusive right in the United Kingdom and the Isle of Man (and by virtue of the Ordinance also in the Federation) to make or import for sale or for use for the purpose of any trade or business, or to sell, hire or

offer for sale or hire, any article in respect of which the design is registered design or a design not substantially different from the registered design has been applied, and includes the right to make anything for enabling any such article to be made as aforesaid in the United Kingdom or the Isle of Man or elsewhere. Any infringement of this exclusive right may give rise to proceedings. Knowledge of the registration of a design is in general immaterial to infringement."

The question whether a design which is alleged to infringe a registered design in or is not an infringement must be determined by the eye alone. The Court has to decide only whether the alleged infringement has the same shape or pattern, and must eliminate the question of the identity of function, since another design may parts fulfilling the same functions without being an infringement. Small differences in detail do not necessarily prevent infringement, but generally speaking, if under normal conditions of user the eye would not confuse the two designs, there is no infringement. If there is some outstanding feature of the registered design which is not reproduced, this would generally negative infringement. It is not an actionable imitation merely to take the idea suggested by the design unless it works out in the way protected by the registration. Where an article may be readily manipulated into a position similar to the illustration of a design registration, there will be infringement.'

Therefore, the eye is the sole test and looking at the two sets of tiles one would find that the sizes, the profiles and the configuration of these tiles when laid together are so similar that they are likely to confuse, and there appears to be no outstanding features to distinguish between these two sets of tiles. As the claim for damages has been abandoned it is not necessary for me to consider whether the defendants were aware of the registration of the design