In the recent decision of Chiropedic Bedding Pty Ltd v Radburg Pty Ltd [2009] 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It is important to note that this decision was governed by the now superseded Design Act 1906 (Cth).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).

Validity

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 so.

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.

Infringement

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 application.

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.