Prior public presentation of Posture Top mattress causes “international” dispute
When will public disclosure of a design at an exhibition mean that a design registration granted on a subsequently filed design application be invalid? This was the question addressed by the Full Court of the Federal Court of Australia in Chiropedic Bedding Pty Ltd v Radburg Pty Ltd  FCAFC 142.
The case concerned a design applied to a mattress known as the “Microcoil Pillowtop Plus”, which had a novel feature known as the “posture top”. The mattress was displayed at a fair at the Melbourne Exhibition Centre called “The National New Products Parade” in 1996 by Chiropedic Bedding Pty Ltd, 6 days before it applied for design registration.
The design application was made under the Designs Act 1906 (Cth), which has since been replaced by the Designs Act 2003 (Cth). Under the 1906 Act, a registered design will be valid only if the design was new and original at the time the application for registration was made. Generally, a design would not be new if it was previously disclosed to the public. One exception to this general rule was contained in s47(1) of the Designs Act 1906, which was in the following terms:
The fact that a design, or any article to which a design has been applied, has been exhibited at an official or officially recognized international exhibition … shall not prejudice or prevent the registration of the design or invalidate the monopoly therein, if the application for the registration of the design is made within six months after the opening of the exhibition (emphasis added).
The issue that arose for consideration by the Full Federal Court was the interpretation of the phrase “official or officially recognized international exhibition”.
At first instance the case came before The Honourable Justice Finkelstein of the Federal Court of Australia, who looked to the Paris Convention for the Protection of Industrial Property (which has a similar provision) to interpret the exception in s47(1). Finkelstein J also referred to s47(2) of the Act, which contained two instances of the phrase “official exhibition, or an officially recognised international exhibition”, and the title of the section, “Exhibiting of designs at official or international exhibitions”, ultimately concluding that an exhibition would fall within the scope of s47(1) if it was an “official exhibition” or an “officially recognised international exhibition”, but not if it was merely an officially recognised (but not “international”) exhibition.
His Honour went on to find that the National New Products Parade was an “officially recognised” exhibition because it had been funded by a Victorian Government grant, but was not an “official” exhibition because it was not organised by a government authority. His Honour also found that the exhibition was not an “international exhibition” because the vast majority (250 of the 257) exhibitors were Australian, and the remaining exhibitors were from Australia’s close neighbour, New Zealand. His Honour may have found the exhibition to be an “international exhibition” if the exhibitors came from at least 3 countries, and those three countries were not part of the same geographic region.
These findings meant that although the National New Products Parade was an officially recognised exhibition, it was neither an official exhibition nor an international exhibition (so as to be considered an “officially recognised international exhibition”), and so the design registration was invalid.
On appeal, the Full Federal Court in a joint decision agreed with Justice Finkelstein’s conclusion on the interpretation of s47(1), but disagreed with Justice Finkelstein’s views on the nature of exhibitions which are “international exhibitions” for the purposes of this section of the Act. Rejecting an analysis based on an interpretation of the Paris Convention, the Court found that:
The phrase “an official or officially recognised international exhibition” in s 47(1) is ambiguous. It could be given either of the constructions which were the subject of submissions. Section 47(2) may be described as an evidence provision. It enables a person to prove conclusively a matter referred to in subs (1). Plainly, it is designed to facilitate a claim under subs (1). Section 47(2) uses the phrase “an official exhibition, or officially recognised international exhibition” on two occasions and it seems to us that it clarifies the ambiguity attending the phrase “an official or officially recognised international exhibition” in subs (1). Of less relevance, but of assistance in supporting this conclusion, are the section heading, “official or international exhibitions”, and the reference by the Minister during the Second Reading Speech to “official or international exhibitions”, both of which suggest that an official exhibition, whether international or not, is encompassed by s 47(1) (see s15AB(1), (2)(a), (2)(f) of the Acts Interpretation Act 1901 (Cth)).
The Full Court agreed with Justice Finkelstein’s view that an “official” exhibition is one that is organised by a government, commenting that this approach provides certainty to the concept. The Full Court also agreed that an exhibition is international only if there are foreign exhibitors exhibiting foreign goods, but found that having exhibitors from more than one country (in this case, Australia and New Zealand) was sufficient to make the exhibition an international one.
The National New Products Parade was therefore an officially recognised international exhibition, and so the disclosure of the “posture-top” at the exhibition did not deprive the subsequent design application of novelty.
From this decision it would appear that for a disclosure to fall within the exception in s47(1) of the 1903 Designs Act, the disclosure must either be at an exhibition:
- organised by a Federal or State government; or
- at least in part funded by a government, and having exhibitors from more than one country.
The 1903 Act does not apply to applications for registration after 17 June 2004. These applications are governed by the Designs Act 2003 (Cth) and the Designs Regulations 2004 (Cth).
Regulation 2.01 of the Design Regulations 2004 (Cth), like s47(1) of the 1903 Act, describes the exception as including a disclosure at “an official or officially recognised international exhibition”, but explicitly refers to Article 11 of the Paris Convention. In this regard, it is useful to note that at first instance Justice Finkelstein considered Article 11 included within its scope exhibitions that were “official international exhibitions” and “officially recognised international exhibitions”, therefore excluding exhibitions that are not “international”. It is therefore likely that the Full Court’s views on the meaning of “international” in this context will have a strong influence on the interpretation of this exception under the current legislative regime.