In a decision where a design registration for a mattress and base was found to be valid and infringed, the relevance of the statement of novelty included in the design registration was emphasised by the Court.
Jessup J in Chiropedic Bedding Pty Ltd v Radburg Pty Ltd  FCA 1163was asked to consider whether one should pay particular attention to the features the design applicant has identified in its statement of novelty when prior art is considered for the purposes of assessing whether the registration is novel. His Honour noted that it would be a particularly harsh outcome if third parties could not rely on the statement of novelty as indicating the respects in which the owner of the registered design asserted that the design was novel. His Honour held that when a Court considers the validity of a registered design, the Court’s eyes are to be open to the complete design, but should:
assess that design against the prior art with a particular emphasis upon those features that the registered owner himself, or herself, at the point of registration, considered to be novel.
When considering the prior art, Jessup J paid particular attention to the upper layer of the prior art mattress portions in finding that the prior art mattresses were not anticipatory.
In considering whether the respondent’s beds infringed the design registration, His Honour confirmed that the Court must be informed by the nature and extent of the differences by which the registered design was differentiated from the prior art, and noted this was:
pre-eminently a case in which, for that reason, small differences in shape or configuration will enable an article to escape a finding of infringement(emphasis added).
His Honour went on to find that only two of the respondent’s beds infringed the applicant’s design registration. An injunction restraining sales of those two beds was granted to the applicant, along with an order for an account of profits.
The importance of the statement of novelty in defining the scope of a registered design is illustrated in this decision, as is the potential for a Court to disapprove of a design owner who tries to downplay the significance of a statement of novelty when infringement proceedings arise.