Chiropedic Bedding Pty Ltd v Radburg Pty Ltd - [2007] FCA 1869

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

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.
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

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2007] FCA 1869
Decision Date: 29 November 2007

CaseChat Overview and Summary

Chiropedic Bedding Pty Ltd, the proprietor of a design for a particular style of mattress registered under the Designs Act 1906 (Cth), sued Radburg Pty Ltd for infringement. Radburg cross-claimed for the cancellation of the design registration, arguing that it was not novel. The issue of novelty was to be determined before the trial on infringement. It was common ground that Chiropedic exhibited a mattress to which the design was applied at the National New Products Parade Fair, organised by the Furnishing Industry Association of Australia (Vic/Tas), between 20 and 23 July 1996, prior to the priority date of 26 July 1996. The publication at the fair would invalidate the registration for want of novelty unless s 47 of the Designs Act was attracted. Section 47, which did not appear in the current legislation, provided for a six-month grace period in the case of disclosure at an exhibition that was an “official or officially recognized international exhibition.” The court had to determine the meaning of the phrase “official or officially recognized international exhibition” in s 47.

The court held that the phrase should be interpreted in light of Art 11(1) of the Paris Convention for the Protection of Industrial Property, which was the basis for s 47. The court examined the preparatory work of the Paris Convention and found that the drafters had in mind the indivisible concept of an “international exhibition” (whether official or officially recognized). The court also considered the French text of Art 11(1) and concluded that it did not support the interpretation favoured by the applicant. The court held 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. However, an official exhibition did not include an exhibition organised by a private person or body, such as a private trade association. An exhibition was “officially recognized” if it was recognized by the federal or state government or any local government authority. The court held that the fair was an officially recognized exhibition, but it was not “international” as it was essentially an Australian exhibition with a small New Zealand presence. Therefore, the registration of the design must be cancelled.

The court will hear the parties on the precise form of the orders that should be made.

Orders