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Back in October, Jessup J found Chiropedic’s design for a mattress and base (registered under the 1906 Act) valid and infringed, by only 2 of a number of Radburg’s competing mattresses.

The first point of interest is the impact of a statement of novelty. A second point of interest is the impact of trade variants or “features commonly used in the trade”. Thirdly, his Honour ruled on the costs to be taken into account in the course of an account of profits.

This was the representation in the design (ADR 127723)

There was the usual statement of monopoly, limiting the design to the features of shape or configuration.

Unusually, there was also a statement of novelty:

Novelty is claimed in the shape and configuration of the upper layer of the mattress portion of the mattress and base as indicated by the beading as shown in the representations.

Chiropedic (the design owner) contended that novelty or originality of its design was not limited by this statement and, even if it were, validity and infringement still fell to be assessed by consideration of the design as a whole citing, in support, the judgment of Davies and Whitlam JJ in Richsell v Khoury at [7].

Jessup J reviewed the cases referred to in Richsell, but discovered that they did not actually deal with it. His Honour found considerably greater assistance in the Franki Report which had led to the introduction of the concept:

On the other hand we were of the opinion that the Registrar should be given power to require a ‘statement of novelty’ to be lodged. By ‘statement of novelty’ we mean a statement dealing with the features of a design that may be said to provide the basis for the design being new or original. For example, if in a design for a chair the significant feature is in the shape of the two front legs and attention is drawn to this fact in a statement of novelty, while there would be no infringement of the design unless the infringing article satisfied the tests for infringement of the chair as a whole, nevertheless it is reasonable to assume that, in testing the novelty and originality of the design, attention would be directed to the two front legs and that this feature of the design would be given particular weight in testing infringement, although an infringement could not be proved unless the relevant tests were satisfied in respect of the whole chair. (my emphasis)

and Slade LJ’s consideration in Sommer Allibert of the similar concept in the UK legislation (the latter of which had not been referred to in Richsell or Polyaire). Accordingly, Jessup J held:

[22] …. The argument which Davies and Whitlam JJ rejected in that case was that, in making the comparison required by s 17(1), one should look only at the features for which novelty had been claimed. It is one thing to say that the registered owner should not be permitted to use his or her own statement of novelty for the purpose of shutting the court’s eyes to the appearance of a complete design, and to do so to his or her own advantage. It is another thing altogether to say that the registered owner should not be held to such a statement of novelty when the court comes to consider what aspects of the registered design are new or original. The court’s eyes would then be open to the complete design, of course, but it should, in my view, 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.

Paying particular attention to the features identified in the Statement of Novelty, his Honour went on to find the design valid over the prior art. For example, it had a relatively square look where the horizontal surface met the upper line of beading, while the prior art was relatively curved. Similarly, the proportion of the upper layer to the lower lower of the mattress was significant over the prior art.

These findings had particular significance when it came to considering infringement. One of Radburg’s designs was found to be identical to the registered design. A second was an obvious imitation. A number of others, however, escaped liability as they either had similar convex curvature to the prior art rather than the square look of the registered design or the upper layer of the mattress was a significantly smaller proportion of the mattress; many of them also had quite different ribbing.

One striking visual difference was discounted in the comparisons: the mattresses in some of the prior art had three layers, not two; so that the mattress could be flipped over and used. The evidence established, however, that the omission or inclusion of the bottom or third layer was a variant commonly resorted to in the trade. Another feature, an “inward set” was apparently visible to those in the trade on fastidious inspection, but his Honour found it did not strike the eye and was an immaterial variation.

Finally, on the principles to be applied in the account, Jessup J ruled that the respondent’s bills of materials should be used (where available) on the principle that they reflected as closely as possible the actual costs incurred and so, where the evidence showed that margins earned on different product lines were not uniform, the respondent would not generate a windfall profit.

Chiropedic Bedding Pty Ltd v Radburg Pty Ltd [2009] FCA 1163

So far as I can see, no application for leave to appeal has been filed.

Technicon has lost its appeal from trial findings that it infringed both Caroma’s registered design for a toilet pan and the copyright in drawings in technical specifications.

This was a case under the old (1906) Act rules. The trial judge found there were sufficient differences to avoid liability for obvious imitation. However, there was a strong finding of fraudulent imitation. The trial judge found that Technicon at least had reason to believe or strongly suspect that Caroma’s product was protected by a registered design:

• Caroma’s brochures for its product range included warnings that the products depicted in the brochure were protected by design registration
• As reported, there seems to have been fairly strong evidence that Technicon based its product on Caroma’s design
• Technicon was familiar with the design registration process and had used it itself
• Technicon’s product development appeared to have skipped the usual detailed design drawing/prototype process.

Technicon did not challenge these findings on appeal. Rather, it sought to persuade the Court that the differences in appearance were sufficiently substantial that the product was not an imitation. The Full Court gave this argument very short shrift.

The details on copyright infringement are a bit sketchy. It seems that section 77A would not have protected Technicon because its drawings were made before 17 June 2004 and so before s 77A took effect (see item 19). I will have to think about that further.

Given the finding of design infringement and the rejection of the claim to additional damages for copyright infringement, the point may well be rather academic.

Technicon Industries Pty Ltd v Caroma Industries Ltd [2009] FCAFC 76

and at first instance: Caroma Industries Ltd v Technicon Industries Pty Ltd [2008] FCA 1465

On Friday, Kenny J handed down the 2nd and 3rd substantive design cases under the new Act:

• in Review v Redberry [2008] FCA 1588, her Honour found the design valid but not infringed;
• in Review v New Cover [20089] FCA 1589; valid and infringed including $85,000 damages (of which $50,000 were for additional damages).

The judgments will no doubt be up on Austlii soon but, until then, students can download pdfs from the links below:

review-v-redberry-judgment

review-v-new-cover-judgment

Lid dip, Sue Gatford.

The Designs Act 2003 is online for free at Austlii, here. (Updated to fix link.)

Succor is also available for those looking for a downloadable online version of the Designs Act 1906 (as at the date of repeal on 17 June 2004) and the Regs.

Thanks, Thomas and Michael.