Statements of novelty

The ever-informative International Law Office newsletter carries a report by Lauren Eade and Lisa Lennon of Gilbert + Tobin on recent Australian case law, within which there is a useful discussion on Chiropedic Bedding Pty Ltd v Radburg Pty Ltd [2009] FCA 1163 that serves to illustrate the effect of a "Statement of Novelty".

The Australian Designs Act 1906 (now superseded but applicable to old designs) required a Statement of Novelty. In this respect it was the same as the UK design statutes (until the 2001 amendments which brought the UK Registered Designs Act 1949 into line with the new EU design law), and those of many other countries having a historical relationship with the UK. In the Designs Act 1906, “Statement of Novelty” was defined as "a statement relating to the representations of an article to which the design is applied that indicates those features of the representations in respect of which novelty or originality is claimed".

The general intention of a statement of novelty is to direct attention to particular aspects of a design registration, but its specific effects on validity and on scope of protection for infringement purposes have long been the subject of confusion. Very often, a Statement of Novelty would simply state that "The novelty resides in the shape and configuration [or pattern and ornament, or both] of article shown in the representations", but such statements could also be used to draw attention to particular parts of a design. For a fairly recent New Zealand case on wording and amending the Statement of Novelty, see AEP v Scholle IPONZ, 1/2002.

Chiropedic Bedding's design was for a single-sided 'posture top' mattress, incorporating a separate sprung section on top of the main body of a sprung mattress, and contained the following 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."

In the UK it was generally thought that, for validity purposes, the statement of novelty acts as a "disclaimer". That is to say, it acts as an admission that all other aspects of the design not mentioned in the statement are not novel. This was to lead to a catastrophe in the case of Evered & Co Ltd's Application (Design), 1961 RPC 105 (differing from older case law), in which an applicant filed two designs showing the same product but with different statements of novelty each directed to a different part - each denied the novelty of the other, so neither was valid.

After a detailed review of the Australian and UK authorities, the Federal Court in Chiropedic cited with approval the remarks of Slade LJ in Sommer Allibert (UK) Ltd v Flair Plastics Ltd [1987] RPC 599 to the effect that "While the court does not have to assume that it [the statement of novelty] is correct, it precludes the proprietor, who has obtained his registration on the grounds that certain features of the design give novelty to it, from thereafter denying their novelty and asserting their immateriality, so as to extend the scope of the protected design."

In considering the scope of the design for infringement purposes, UK case law wavered. Generally there could be no infringement if a competing design did not take the features referred to in the statement of novelty, as the remainder of the design, lacking novelty, could not be validly protected on its own. But the situation of a competing design which takes only the the features referred to in the statement of novelty and not the entirety of the design has been treated inconsistently. The UK case law (for example in Sommer Allibert) appeared to have reached a state where greater weight was attached to the features referred to in the statement of novelty, but the remainder of the design could not be ignored, though it was downplayed.

The question of the effect on infringement did not directly arise in Chiropedic, but the Federal Court in Chiropedic quoted paragraph 100 of the Australian Designs Law Review Committee Report (Report on the Law Relating to Designs, the "Franki Report") of February 1973 to the effect 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." This would seem to be broadly in line with the UK Court of Appeal in Sommer Allibert.

This case therefore usefully highlights the difference in effect between a "partial design" and a Statement of Novelty. The former defines the part of what is shown which is the subject of the design monopoly, under laws (such as the new EU law) which permit protection of the designs of parts of products.

By contrast, when the latter is used, it is the entire design of the product which is protected; under the old UK law, parts of products could not generally be registered in isolation and, according to the Evered case, a Statement of Novelty could not be used to achieve the same effect.