FEDERAL COURT OF AUSTRALIA Chiropedic Bedding Pty Ltd v Radburg Pty Ltd [2007] FCA 1869 DESIGNS – validity of registration – publication prior to registration – publication at trade fair – whether official exhibition or officially recognized international exhibition WORDS AND PHRASES – official exhibition – international exhibition Acts Interpretation Act 1906 (Cth) ss 13, 15AB Designs Act 1906 (Cth)s 47 Designs Act 2003 (Cth) s 151(3) Koowarta v Bjelke-Petersen (1982) 153 CLR 168 Applicant A v Minister for Immigration and Ethnic Affairs (1997) 190 CLR 225 Saraswati v The Queen (1991) 172 CLR 1 Cooper Brookes (Wollongong) Pty Ltd v Commissioner of Taxation (Cth) (1981) 147 CLR 297 J Allwood, The Great Exhibitions (1977) G Bodenhausen, Guide to the Application of the Paris Convention for the Protection of Industrial Properties (1968) V Di Cataldo, 'From the European Patent to a Community Patent' 8 Columbia Journal of European Law 19 (2002) K M Curesky, 'International Patent Harmonization Through the WIPO: An Analysis of the US Proposal to Adopt a "First-to-File" Patent System' 21 Law and Policy in International Business 289 (1989) J Findling (ed), Historical Dictionary of World's Fairs and Exhibitions, 1851-1988 (1990) McNair, Law of Treaties (1938) Paris Convention for the Protection of Industrial Property Art 11 Y Plasseraud and F Savignon, Paris 1883 Genesĕ Du Droit Unioniste Des Brevets (1981) Phillips, Protecting Designs: Law on Litigation (1994) CHIROPEDIC BEDDING PTY LTD v RADBURG PTY LTD VID 288 of 2007 FINKELSTEIN J 29 NOVEMBER 2007 MELBOURNE IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY VID 288 of 2007 BETWEEN: CHIROPEDIC BEDDING PTY LTD Applicant AND: RADBURG PTY LTD Respondent JUDGE: FINKELSTEIN J DATE: 29 NOVEMBER 2007 PLACE: MELBOURNE REASONS FOR JUDGMENT 1 The applicant, Chiropedic Bedding Pty Ltd, is registered as the proprietor of a design under the Designs Act 1906 (Cth). The design is in respect of a particular style of mattress. Registration was effected on 2 September 1996 with a priority date of 26 July 1996. Chiropedic sues the respondent, Radburg Pty Ltd, for infringement of its design. Radburg denies infringement and also cross-claims for the cancellation of the registration. One of the grounds upon which it relies to support its cross-claim is that the design was not novel. With the consent of the parties this issue is to be determined before the trial on infringement. 2 It is common ground that between 20 and 23 July 1996 (that is, before the priority date) Chiropedic exhibited a mattress to which the design was applied at the National New Products Parade Fair that was held at the Melbourne Exhibition Centre. The fair had been organised by the Furnishing Industry Association of Australia (Vic/Tas) (FIAA). The publication at the fair will invalidate the registration for want of novelty unless s 47 of the Designs Act is attracted. Although this section does not appear in the current legislation, the validity of the design in suit is to be determined under the provisions of the superseded statute: Designs Act 2003 (Cth), s 151(3). 3 As a general rule, any prior disclosure of a design destroys its novelty. There are a limited number of exceptions to this rule. Under the 1906 Act one of the exceptions was found in s 47. The section, along with the heading below which the section appeared, provided: "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." 4 Essentially, the section gave a six month grace period in the case of disclosure at an exhibition that is an "official or officially recognized international exhibition". Just what that means, though, is not clear. First of all, it is not clear whether the exhibitions at which a non-prejudicial disclosure could be made were: (1) an official international exhibition and (2) an officially recognized international exhibition; or (1) an official exhibition (whether international or not) and (2) an officially recognized international exhibition. Secondly, each of the words or expressions "official", "officially recognized" and "international" have more than one meaning. 5 Despite the vigorous protests by Mr McGowan SC, the starting point for the resolution of these problems of construction is the Paris Convention for the Protection of Industrial Property which was opened for signature on 20 March 1883. The Minister who introduced the Bill for the Designs Act 1906 said that cl 47 had been taken from the Patents, Designs and Trade Marks Act 1883 (UK). He was incorrect. Perhaps he had been misled by the marginal note to cl 47, which referred to s 58 of the UK Act. In fact, the corresponding section in England was s 57, but its wording was quite different from that of s 47. Section 57 permitted prior publication at an industrial or international exhibition provided it had been certified by the Board of Trade. 6 However that may be, it is clear s 47 was based on Art 11(1) of the Paris Convention. Article 11(1) provides: "The country of the Union shall, in conformity with their domestic legislation, grant temporary protection to patentable inventions, utility models, industrial designs and trade marks, in respect of goods exhibited at official or officially recognized international exhibitions held in the territory of any of them." I acknowledge that Australia did not become a party to the Paris Convention until 1925. Nonetheless, the conclusion that the operative language in s 47 is copied from Art 11(1) is inescapable. The alternative, that the similarity in language is mere coincidence, is one I simply cannot accept. 7 It is necessary to go back to Art 11 because of the rule that when a statute incorporates a treaty as part of domestic law, it is presumed that Parliament intended to import into domestic law a provision that has the same effect as the provision in the treaty: Koowarta v Bjelke-Petersen (1982) 153 CLR 168, 265; Applicant A v Minister for Immigration and Ethnic Affairs (1997) 190 CLR 225, 231, 240, 251-252, 272-273, 292. 8 For the purposes of interpreting the expression "official or officially recognized international exhibitions" in Art 11(1) it is permissible to have regard to preparatory work. While this kind of material can be used only to a limited extent to construe a domestic statute (Acts Interpretation Act 1906 (Cth), s 15AB), in the international field "the practice of resorting to preparatory work is widespread": McNair, Law of Treaties (1938) at 412. For treaties which enter into force after 27 January 1980 see the Vienna Convention on the Law of Treaties, Arts 31 and 32. 9 The idea of a convention to deal with industrial property was first raised at the Universal Exhibition held in Vienna in 1873. The Vienna Exhibition had been planned for 1859, but the war in France and the Austrian struggle for power with Prussia intervened. Then the Lower Austrian Trade Association proposed an international exhibition and it was approved by the Emperor, Franz Joseph. The Vienna Exhibition had over 1700 exhibitors from more than 30 countries: J Findling (ed), Historical Dictionary of World's Fairs and Exhibitions, 1851-1988 (1990); J Allwood, The Great Exhibitions (1977). 10 Five years later, at the Paris Exhibition (another major international exhibition this time organised by the French Government), it was agreed that a permanent commission would be established to draft the Paris Convention. The main object of the Paris Convention was to secure to foreigners the same protection for industrial property (patents, designs and trademarks) as was enjoyed by foreigners in their country of nationality. This was the so-called principle of equal protection. 11 Of concern to a number of delegates was the risk of piracy of works on display at international exhibitions. Some States had passed laws to prevent this kind of piracy. For example, the purpose of s 3 of the Designs Act 1850 (UK) (13 & 14 Vict, 104) was to provide protection against piracy for foreign exhibitors at the Great Exhibition of 1851, sometimes called the Crystal Palace Exhibition. It gave them the opportunity of finding "either manufacturers or capitalists" to take up their invention or design before going to the trouble and expense of obtaining registration: Minutes of Evidence of Select Committee of House of Lords to Consider the Bill for the Designs Act 1850, 12 March 1851, at 9. In May 1855, France enacted similar legislation which provided protection for industrial inventions and manufacturing designs admitted to the Paris International Exhibition of 1855: Y Plasseraud and F Savignon, Paris 1883 Genesĕ Du Droit Unioniste Des Brevets (1981) at 98. 12 Article 11 required contracting States to enact legislation that would grant temporary protection to industrial property exhibited at certain exhibitions. The article was drafted in general terms. It was intended to do no more than lay down the broad subject matter of legislation that contracting States were to introduce, leaving it to those States to decide upon the precise means of achieving the stated ends: Professor G Bodenhausen, Guide to the Application of the Paris Convention for the Protection of Industrial Properties (1968) at 149 (Bodenhausen). 13 The discussions of the delegates involved in the drafting of the Convention suggests that the "exhibitions" referred to in Art 11 were all to be "international" in character. For example, the Italian delegate, M Indelli, stated during the 12 November 1880 drafting session that although it might be difficult for treaty States to amend domestic legislation to give effect to the principle of reciprocal and equal protection required by Art 11 (which was at the time denominated Art 9): "it is to be observed that one must carefully consider the issue because the Exhibitions [within the meaning of Art 11], which are international events, need to be protected, and protected equally, so that there are no longer some countries privileged over others." Similarly, the Presiding delegate, M Bozerian of France, made the following comment during a debate in the same session on how specific the provisions of Art 11 should be read: "[A]n Exhibition [within the meaning of Art 11] is a non-recurring, transient event which only takes place every 8 or 10 years." The French delegate M Jagerschmidt noted during the 12 March 1883 drafting session, in response to the Dutch delegate's reservations to accepting Art 11 in light of the fact they had no patent law and thus would not be in a position to give domestic effect to the provisions of Art 11: "[I]t is unlikely that another international exhibition will take place in the near future like the one which is going to take place in Amsterdam [the International and Colonial Exhibition held from 1 May–31 October 1883]; until such time the Government of the Netherlands certainly will not have the opportunity to apply Article 11 even if it does accept the Article." 14 I will not belabour the point with the quotation of additional extracts, but the net effect of these and similar statements found in the preparatory work is to make it clear that the drafters had in mind the indivisible concept of an "international exhibition" (whether official or officially recognized), not a binary concept of "exhibition" which might either be an "official international exhibition" on the one hand or an "officially recognized local exhibition" on the other. Moreover, the drafters understood "international exhibitions" as being infrequent, large-scale and multinational events. 15 It is my view, then, that in the expression "official or officially recognized international exhibition" the words "official" and "officially recognized" each modify "international exhibition". If Mr McGowan's reading were correct Art 11 would not include "official international exhibitions" even though they were precisely the type of exhibitions being discussed by the delegates. 16 The 1883 Convention was also concluded in French, that text also being authentic. It is permissible to have regard to the French text in the case of ambiguity or obscurity. The French version of Art 11(1) reads: "Les pays de l'Union accorderont, conformément à leur legislation intérieure, une protection temporaire aux inventions brevetables, aux mŏdéles d'utilité, aux dessins ou modéles industriels ainsi qu'aux marques de fabrique ou de commerce, pour les produits qui figureront aux expositions internationales officielles ou officiellement reconnues organisées sur le territoire de l'un deux." Mr McGowan says that in the French text it is clear that "expositions interationales officielles ou officiellement reconnues" means official exhibitions or officially recognized international exhibitions. In this connection he adopts the argument of a French lawyer who was asked to comment on the text. Regrettably, the French lawyer was informed of Mr McGowan's preferred construction of Art 11 before putting forward his views. Although hard to make out, the lawyer's argument is as follows: "In the expression, 'expositions internationales officielles ou officiellement reconnues' the word 'ou' ('or') qualifies the exhibition as being neither 'an international official exhibition' or 'an officially recognised exhibition'. This is because 'reconnues' has been conjugated from the verb 'reconnaître' ('to recognise') which can be conjugated with the auxiliary 'to be' and, therefore, when taking the form of a past participle, takes the form of the object of the sentence. In this case 'reconnaître' has been conjugated in the feminine case [sic] and plural form and must therefore be a reference to the word 'exhibition'. 'Exhibition' in French being a feminine noun and, in this case, it is plural." 17 The basis for the contention that the word "reconnues" modifies "expositions" and not "expositions interationales" is not as clear as the lawyer would have it to be. For one thing, regardless of whether "reconnues" modifies "expositions" or "expositions internationales", it will be declined (the past participle is being used as an adjective, not a verb, and thus it is declined rather than conjugated) in the same way. For another thing, the structure of the sentence is not phrased so that "internationales" modifies "officielles" but rather so that it modifies "expositions". On the lawyer's construction "internationales" is not attached to a noun. I do not accept that the French text suggests a different construction of Art 11(1) from the one I prefer. 18 In any event, a problem with the French lawyer's interpretation of Art 11 is that, even on its own terms, it does not support the interpretation favoured by Mr McGowan. As noted, Mr McGowan submits that the English version of Art 11 to be interpreted to read "official exhibition or officially recognized international exhibition." The French lawyer, on the other hand, interprets the French text to read "official international exhibition or officially recognized exhibition." If each view is correct the two authentic treaty texts do not agree as to which type of exhibition must be international. Established international law, codified in Art 33 of the Vienna Convention, requires that "when a comparison of the authentic texts [of a treaty] discloses a difference of meaning which the application of articles 31 and 32 does not remove, the meaning which best reconciles the texts, having regard to the object and purpose of the treaty, shall be adopted". In this case, the only meaning which would reconcile the French and English texts is one in which "official or officially recognized" is understood to modify both "international" and "exhibition", so that the whole phrase reads "official international exhibition or officially recognized international exhibition" in both languages. 19 As regards the meaning of "official" the background to the Paris Convention suggests that it was a reference to State sponsorship. All the great exhibitions of Europe, beginning with the Great Exhibition of 1851, had been organised or financially supported by a government. For example, the Great Exhibition was managed by a Royal Commission chaired by Prince Albert and included the Prime Minister, Lord John Russell. The exhibitions in Dublin (1853), Paris (1885), London (1862), Dublin (1865) and Paris (1867) were also government run. The exceptions were the exhibitions held in the United States, such as the New York Exhibition of 1853-1854 and the Philadelphia Exhibition of 1876. They were privately organised but were hosted by cities which bore some of the not inconsiderable cost. 20 Prima facie, then, s 47(1) is to be given the meaning that I have attributed to Art 11. But the prima facie meaning can be displaced. There are several features of s 47 which suggest that the prima facie meaning has been displaced. The first is s 47(2). There one finds, twice used, the expression "official exhibition, or an officially recognized international exhibition." This suggests that "official" and "officially recognized" are to be understood as modifying only "exhibition" and not the compound "international exhibition." It is difficult to avoid the conclusion that the language of s 47(2) controls the construction of s 47(1). It would be absurd to provide for a certificate from the Minister under s 47(2) that an exhibition was an "official exhibition" if such an exhibition were not covered by s 47(1). 21 The second feature is the heading to s 47. Ordinarily, the section headings in an Act form no part of the statute: Acts Interpretation Act, s 13(3). But, where, as here, a provision is ambiguous, the heading to the section may be looked at to resolve the ambiguity: Acts Interpretation Act, s 15AB(1)(b)(i). The heading to s 47 reads "official or international exhibitions". The disjunctive juxtaposition of "official" and "international" supports the view that an "official exhibition" is distinct from an "international exhibition", rather than a type of international exhibition. 22 The final point is that on the second reading of the Bill, the Minister said of s 47 that it covered "official or international exhibitions". It is true that the Minister was incorrect as to the source of s 47 – the 1883 Act refers to an "industrial or international exhibition" and the 1850 Act to a "public exhibition". Nonetheless, the Minister's statement supports the view that Parliament understood the phrase "official or officially recognized international exhibition" to mean both officially recognized international exhibitions and non-international yet official exhibitions. 23 If the construction of s 47(1) is controlled by s 47(2) the result is not so "incongruous" or "irrational" as would require a court to correct an obvious legislative error: Saraswati v The Queen (1991) 172 CLR 1, 21-22; Cooper Brookes (Wollongong) Pty Ltd v Commissioner of Taxation (Cth) (1981) 147 CLR 297, 305, 311, 321. It is evident that s 47 is a remedial or beneficial provision offering a registration grace period in order to encourage (or not deter) the participation of designers in exhibitions. It should, therefore, be construed broadly. Moreover it is, I suppose, possible that parliamentary counsel who drafted s 47 intended to broaden the scope of the European prior publication exception so as to further encourage designers to test the viability of their designs prior to registration. The protection given by Art 11(1) is very narrow and many think it should be broader. See V Di Cataldo, 'From the European Patent to a Community Patent' 8 Columbia Journal of European Law 19, 24-25 (2002); K M Curesky, 'International Patent Harmonization Through the WIPO: An Analysis of the US Proposal to Adopt a "First-to-File" Patent System' 21 Law and Policy in International Business 289, 298-99 (1989) (noting that the novelty requirements of continental patent and design law have been criticised as overly strict, particularly in comparison with US laws allowing a general registration grace period without regard to the form or manner of prior publication). 24 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. 25 I do not, however, accept that an official exhibition includes an exhibition organised by a private person or body, such as a private trade association. First, it does not conform with the meaning of Art 11(1). Second, it lacks any limiting principle. If "official" is taken to implicate any body having officers (as Mr McGowan would have it), an exhibition organised by a large private corporation, which of course has officers, might qualify. So also might exhibitions organised by small corporations or neighbourhood associations. At a minimum, the approach proposed by Mr McGowan would entangle the courts in difficult issues of fact while robbing designers and exhibitors of certainty as to whether a particular exhibition did or did not qualify for s 47(1) protection. The net effect would be to encourage litigation without concomitantly encouraging designers to exhibit or test their designs. 26 The only suggestion that "official" is not intended to refer to the involvement of a government is in Phillips, Protecting Designs: Law on Litigation (1994). There (at 287) the author suggests with regard to s 47 that "arguably an exhibition organised by [a] relevant trade or industry association will come within [the] ambit" of those terms. The history to which I have referred does not bear this out. The use of the word "official" is designed, in my opinion, to draw a distinction between public and privately organised exhibitions. It refers to an exhibition that is organised by a government: see Oxford English Dictionary definition of "official" at [4a]. The "government" may be federal or state or a local government authority. 27 In the instant case, the fair was organized by an industry association, the FIAA, and not by a government authority. Accordingly, it cannot qualify as an official exhibition for the purposes of s 47(1). 28 This still leaves open the possibility that the fair was an "officially recognized international exhibition." "Officially recognized" can be defined in opposition to "official," which effectively means "officially organized." An exhibition will be "officially recognized" if it is recognized by the federal or state government or any local government authority. Two obvious indicia of governmental recognition are: (1) the provision of public funds to fund the exhibition, particularly if given upon terms and conditions; and (2) the open participation of one or more ranking government officials at the opening, closing, or other formal ceremony or proceeding of the exhibition. While there will be other indicia of government recognition, it is neither necessary nor possible to provide an exhaustive list. The best indicia is that which may be readily ascertained ex ante from public information and thus provide prospective exhibitors with sufficient certainty as to whether an exhibition could qualify for protection under s 47(1). 29 In the present case, the fair was funded by a $200,000 grant from the Victorian government upon various conditions, including that the exhibition be opened to the general public for at least one day and that no goods be sold to the public. The fair was opened by the Minister for Small Business. On these facts, it is clear that the fair was an officially recognized exhibition. 30 The final issue is whether the fair was "international". The ordinary and natural meaning of "international" is "of or relating to different nations or their citizens." Mr McGowan submitted, based on this definition, that an exhibition could be characterized as international either by virtue of the nationality of the goods and exhibitors or by virtue of the nationality of the visitors to the exhibition. Mr Samargis, on the other hand, put the argument that the international character of an exhibition can be determined only by reference to the goods and exhibitors. 31 Mr Samargis has the better argument. First, his approach is supported by what little authority there is: see Bodenhausen at 151. Second, his argument has the great virtue of certainty and clarity – any prospective design registrant or exhibitor would be able to ascertain with a glance at an exhibition guide or list of exhibitors the nationality of the goods and exhibitors. By contrast, lists of visitors and their nationalities are not so easily or publicly found, if at all. And one must not lose sight of the fact that the exhibitions which were the backdrop to the Paris Convention were international because of their exhibitors. 32 In my view an exhibition is international if there are foreign exhibitors exhibiting foreign goods (with foreign being defined as a nationality other than that in which the exhibition is hosted). 33 Mr Samargis also submitted that for an exhibition to be truly international it requires exhibitors from at least three nations (ie, the host country and two others). This is a departure from the ordinary dictionary definition of international. But it is an approach that sits comfortably with Professor Bodenhausen's views that for an exhibition to be international "it must include the exhibition of goods coming from foreign countries": Bodenhausen at 151. 34 Even if Mr Samargis' approach is wrong, and an exhibition can be "international" where there are exhibitors from only two countries (the host and one other), the FIAA fair held in Melbourne in 1996 was not an international affair. There were 257 exhibitors whose products were on display. Out of the total exhibitors, 250 manufacturers were Australian and the balance were from New Zealand. Without wishing to be disrespectful, the New Zealand contingent was inconsequential, relatively speaking. 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. 35 I should explain what I mean by "significant foreign presence." First, the quantitative presence of foreign exhibitors, both in relative and absolute terms (here 7 exhibitors out of 257), is a factor. The greater the foreign presence, the more likely it is that an exhibition will be an "international exhibition." Second, the quality of the foreign exhibitors is a factor; and by "quality" I mean both the geographic location and the importance of the foreign state(s) in the relevant industry. For example, if an exhibition is held in Canada and the only foreign exhibitors or goods are from the United States (or if, as in this case, the exhibition is held in Australia and the only foreign exhibitors are from New Zealand), the exhibition is more likely to be a "regional exhibition" rather than an "international exhibition." On the other hand, if a fashion exhibition is held in Australia and the only foreign exhibitors are from Italy or France (or, for example, if a computer software exhibition is held in the US and the only foreign exhibitors are from India or China), the exhibition is likely to be an "international exhibition" due to the importance of those countries in the fashion design field (or computer industry) and the geographic separation between the States involved. This, of course, cannot be, and is not intended to be, an exhaustive list of the factors, or the way they might be applied in combination, to determine whether an exhibition had a "significant foreign presence" so as to make it an international exhibition. 36 In virtue of the fact that the prior publication of the design in suit is not covered by s 47 of the Designs Act the registration of the design must be cancelled. I will hear the parties on the precise form of the orders that should be made. I certify that the preceding thirty-six (36) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Finkelstein. Associate: Dated: 29 November 2007 Counsel for the Applicant: G McGowan SC S Ryan Solicitor for the Applicant: Choy Lawyers Counsel for the Respondent: J Samargis Solicitor for the Respondent: Lawcorp Lawyers Date of Hearing: 15 October 2007 Date of Judgment: 29 November 2007