In the recent decision of Chiropedic Bedding Pty Ltd v
Radburg Pty Ltd  FCA 1163, in which a design for a
bedding ensemble comprising a mattress and base was found to be
valid and infringed, the Federal Court of Australia considered some
key issues relating to the assessment of validity and infringement
of registered designs. More particularly, it focused on the effect
of identifying novel features in the design application.
It is important to note that this decision was governed by the
now superseded Design Act 1906 (Cth). However, the issues
discussed are important and remain relevant for consideration when
preparing new design applications under the current legislation:
Designs Act 2003 (Cth).
For assessing the validity of a registered design, the Court
held that the inclusion of a statement of novelty at the time of
filing a design application potentially affects the scope of that
registration. It was held that when assessing whether or not a
registered design is new or original against the prior art, the
design as a whole must be considered, but that particular emphasis
should be upon those features that the registered owner at the time
of registration considered novel.
The Court's reasoning was based primarily on earlier
case law concerning design registrations that did not include a
statement of monopoly and/or a statement of novelty. The omission
of such statements was taken to mean that the design applied to the
visual appearance of the article as a whole.
Under the current Act, an applicant for a design registration
may include a "statement of newness and distinctiveness
(SOND)" identifying particular visual features of the design
considered as new and distinctive. Again, it is not mandatory to do
A statement of newness and distinctiveness can be used to
particular advantage in technology fields crowded with existing
designs, as was the situation with the mattress and base in
question, but its inclusion and the features to which it is
directed should be carefully considered in each case.
In any event, when assessing whether a design is substantially
similar in overall impression to another design it is necessary,
under the current Act, to give more weight to similarities between
the designs than to differences between them, at the same time
having particular regard to visual features that may have been
identified in a SOND.
Turning now to the issue of infringement of registered designs,
the Court reiterated the long-established principle that small
differences between the registered design and the prior art will
generally lead to a finding of no infringement if there are equally
small differences between the registered design and the alleged
infringing article. In contrast, it is generally more likely that
common features between the design and the alleged infringing
article will support a finding of infringement where there is a
greater advance in the registered design over the prior art.
In resolving the question of whether or not the alleged
infringing beds presented in this case were obvious imitations of
the registered design, the Court considered the nature and extent
to which the registered design differentiated from the prior art
beds considered during the assessment on validity. In this regard,
it is important to bear in mind that this assessment was made with
reference to the aspect of the design referred to in the statement
of novelty. On this basis, the Court held that this was a case
where small differences in shape and configuration will enable an
article to escape a finding of infringement. However, the Court
still found that, of the series of beds alleged to infringe the
registered design, two did in fact infringe the registration.
This decision reaffirms the value in obtaining registered design
protection for articles having a distinctive visual appearance over
the fundamental form of the article and the potential benefit of
positively identifying the new features in a design
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
Those types of personal disclosure may still be permitted under the Privacy Act as long as your house is in order.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).