Case review by Magda Khalil
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Chiropedic Bedding Pty Ltd v Radburg Pty Ltd [2007] FCA 1869
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The applicant, Chiropedic Bedding Pty Ltd (“Chiropedic”), was the registered proprietor under the Designs Act 1906 (Cth) of a design in respect of a mattress. Chiropedic sued the respondent, Radburg Pty Ltd (“Radburg”) for infringement of its design. This case considered Radburg’s cross-claim for the cancellation of the Design registration, on the ground that the design was not new or original.
Before the priority date of the design, Chiropedic had exhibited a mattress to which the design was applied at a fair held at the Melbourne Exhibition Centre, and organised by the Furnishing Industry Association of Australia (Vic/Tas). The publication at the fair would invalidate the registration unless s 47 of the Designs Act 1906 (Cth) applied. That section provides:
Exhibiting of designs at official or international exhibitions
47(1) 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, or that a description of a design has been published during the holding of such an 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.
(2) A certificate by the Minister that an exhibition is an official exhibition, or an officially recognized international exhibition, shall, for the purposes of this section, be conclusive evidence that the exhibition is an official exhibition, or an officially recognized international exhibition, as the case requires.
Chiropedic argued that the term “official or officially recognized international exhibitions” in s 47(1) meant official exhibitions or officially recognized international exhibitions. In interpreting this phrase, Finkelstein J referred to the Paris Convention for the Protection of Industrial Property. He found that discussions of the delegates involved in drafting the Convention suggested that the exhibitions referred to in the corresponding Article were all to be “international” in character and that the words “official” and “officially recognized” each modify “international exhibition.”
However, he found that there were several features of s 47 which suggested that meaning had been displaced. One such feature was that s 47(2) uses the expressions “official exhibition, or an officially recognized international exhibition,” and secondly the heading of s 47 reads “official or international exhibitions.” He went on to state:
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“It is evident that s 47 is a remedial or beneficial provision offering a registration grace period to encourage (or not deter) the participation of designers in exhibitions. It should, therefore, be construed broadly…. The result is that s 47(1) should be read so that the publication of a design at either (1) an official exhibition or (2) an officially recognized international exhibition is not a novelty destroying prior publication.”
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The question then became whether the fair could be classified as an “official exhibition”. Finkelstein J was of the opinion that use of the word “official” was designed to draw a distinction between public and privately organised exhibitions, and that as the fair was organized by an industry organisation and not a government authority, it was not an “official exhibition”.
This left open the possibility that the fair was an “officially recognized international exhibition.” Finkelstein J found that the exhibition was “officially recognized” as it was funded by a $200,000 grant from the Victorian government, and was opened by the Minister for Small Businesses. However, he found that the fair was not “international” as out of the 257 exhibitors at the fair, 7 of the manufacturers were from New Zealand, and the rest were from Australia. He stated,
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“Whatever be the characteristics of an “international exhibition” they are not met by an exhibition which is essentially an Australian exhibition. In my view, for an exhibition to be international in character there must at least be a significant foreign presence.”
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Finkelstein J held that the prior publication of the design in suit was not covered by s 47 and that the design registration must be cancelled.
The difficulties encountered by Chiropedic in this case and the ultimate cancellation of the design registration illustrate the importance of ensuring that all necessary Design applications are made prior to exposure of a design to the public. While legislation provides limited grace periods, reliance on these provisions can be problematic.
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