Radburg Pty Ltd v Chiropedic Bedding Pty Ltd

[2008] HCATrans 412

[2008] HCATrans 412

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
  Melbourne  No M65 of 2008

B e t w e e n -

RADBURG PTY LTD

Applicant

and

CHIROPEDIC BEDDING PTY LTD

Respondent

Application for special leave to appeal

HAYNE J
CRENNAN J

TRANSCRIPT OF PROCEEDINGS

AT MELBOURNE ON FRIDAY, 5 DECEMBER 2008, AT 2.01 PM

Copyright in the High Court of Australia

MR N. LUCARELLI, QC:   If the Court pleases, I appear with my learned friend, MR J.G. SAMARGIS, for the applicant.  (instructed by Lawcorp Lawyers)

MR G.C.McGOWAN, SC:   If the Court pleases, I appear with my learned friend, MS S. RYAN, for the respondent.  (instructed by Actuate Intellectual Property Pty Ltd)

HAYNE J:   Yes, Mr Lucarelli.

MR LUCARELLI: In our submission, the Full Court has wrongly given too wide a meaning to the words “international exhibition” in section 47 of the Designs Act 1906, and that has come about because the Full Court applied a dictionary definition to the word “international” and this is an incomplete approach to the interpretation of the words “international exhibition” together in the phrase overall “official or officially recognised international exhibition” in section 47.

It is submitted that it is common ground that the phrase “official or officially recognised international exhibition” is transposed from Article 11(1) of the Paris Convention. Indeed, at application book 74, paragraph 13, we would submit that the – this is the respondent’s submission – it is said:

Everyone agrees that there is a co-incidence of the words “official or officially recognized international exhibition in Art 11(1) of the Paris Convention and Section 47 of the 1906 Act. Chiropedic submits that the relevance of the Convention ends there.

But we would submit that the transposition of the words “official or officially recognised international exhibition” from Article 11(1) into the 1906 Act is inescapable, and both his Honour below and the Full Court proceeded on that basis. There really is no issue about that matter, we would submit.

Having resolved that the expression “official or officially recognised international exhibition” means an official exhibition or an officially recognised international exhibition, the Full Court should have considered the context of the operative words to determine or confirm the meaning of the phrase “officially recognised international exhibition” and, in particular, the words “international exhibition” in that legislation.

CRENNAN J:   Your reliance on the Paris Convention is for the purposes of going to the travaux.

MR LUCARELLI:   Yes, your Honour, and what we submit is that the ordinary, in accordance with Applicant A and in particular his Honour Justice McHugh at page 253, the ordinary meaning of the words, in here the transposed words, are not to be determined in a vacuum removed from the context of the treaty or its object or purpose, and we submit that just simply to stop short at a dictionary definition of “international” in particular and “international exhibition” by reference fails to take into account the context of the treaty or its object or purpose, and we would even go so far to say that it is interpreting those words in a vacuum.

HAYNE J:   Is that, do you say, because individual words in the phrase are to be given particular meanings or the phrase as a whole is to be given a particular meaning?  If we are with you at the point you have got to so far, where does the next step in the argument go?

MR LUCARELLI:   It is the entire expression “official or officially recognised international exhibition”.  But then also the words “international exhibition” are also to be construed in accordance with Article 11 and the treaty and the travaux that lie behind it.  So in other words our submission is that what your Honour Justice Hayne is suggesting is really – it obviously is a logical conclusion to then try and split up the words, but we submit that the words really cannot be split up; they have to be looked at as a whole, particularly the words “officially recognised international exhibition” and in the alternative “international exhibition”.

If the words “international exhibition”, and we would submit you cannot go beyond “international exhibition” – that is the last port of call because you cannot interpret “international” just simply on its own. It had a particular meaning in 1906, we submit, that the Parliament had in mind very specifically the words that it transposed from Article 11(1) and, therefore, at the very least “international exhibition” must be construed as one expression, not as two words, which we would submit the Full Court wrongly did.

We also submit that the words “officially recognised international exhibition” and more specifically “international exhibition” are obscure and we rely upon section 15AB(i)(b)(i) of the Acts Interpretation Act.  Alternatively, we submit that the confirmation of the ordinary meaning of those words is required, taking into account their context in the Act and the purpose or object underlying it, which, we submit, is consistent with the recent decision in NT v Vincent Collins and, in particular, the reasons for the decision of your Honour Justice Crennan at paragraph [99].

In our submission, the context in which the expression “international exhibition” is to be determined or confirmed includes three key matters. We have referred to the first, which is the transposition of the words, the precise words, “official or officially recognised international exhibition” from Article 11(1) of the Convention and the use of the phrase “officially recognised international exhibition” throughout section 47.

The second point is the fact that the Paris Convention is the foundation stone of the current system of intellectual property, patents, trade marks, designs and, in particular, we submit it puts in place mechanisms to preserve rights for applicants from Convention countries which mechanisms have continued since 1906, from the old Act in 1906 into the current Act of 2003, for designs.

CRENNAN J:   Of course the 2003 Act “further regulations” refers not only to the original Convention but to the 1928 Convention as well in terms of the very problems with which we are dealing.

MR LUCARELLI:   Yes, your Honour, but the ‑ ‑ ‑

CRENNAN J:   That is to say, the regulations refer directly to Article 11, plus the 1928 convention.

MR LUCARELLI:   It is our submission that ‑ ‑ ‑

CRENNAN J:   How do you face up to that in the context of your apparent wish to go back to the 1906 Act for the purposes of this argument and accessing the travaux?

MR LUCARELLI: Because, your Honour, what the regulations are making abundantly clear is that it is the expression “officially recognised international exhibition” within the meaning of Article 11(1) that is now part of the Designs Act 2003. In other words, this is no longer implied; we would submit that the transposition of the words into the 1906 Act, one may need to look at how that came about, but now it is specific and that the legislature is saying that you go back to those very words in Article 11(1) and, by reference of course then with the way in which treaties are to be interpreted in domestic law, one would need to go back to the travaux because of the obscurity of the expression, or perhaps more obscure today than it was in 1906.

HAYNE J:   And with a view to demonstrating that the expression means what.  What ultimately is the meaning you would have adopted?

MR LUCARELLI:   We have put forward a meaning in the application.  If I may take the Court to page 44 of the application book.  What we say in paragraph 5 is that:

The Full Court was correct to hold [at 51] that the exhibition is international only if there are foreign exhibitors -

and we would emphasise that –

exhibiting foreign goods but should have gone on to formulate a test that, even if it rejected the trial judge’s test as too complex, at least acknowledged that an “international exhibition” is an exhibition –

and this is the test –

which as a minimum invited or allowed or was open to many different countries or nationals from many different countries to exhibit foreign goods in keeping with certainty and convenience and the known international exhibitions at the time the Designs Act was passed.

In other words, if one looks at the 1880 exhibition here in Melbourne in the Exhibition Building itself, it was not just simply Australia and New Zealand that was participating; it was an international event in every sense of the word, with exhibitors from almost all countries of the world.  The other conventions that had gone before it – the Crystal Palace in 1851 in London, 1900, the Paris Convention as well, or exhibition – I should have said exhibition, I apologise – they are all events which were not just simply the host nation and one other nation.

It is in that context in which the Parliament was acting in 1906, not in the context of just simply looking at what might be an event between the host nation and one other nation.  We say that that widens the definition of “official or officially recognised international exhibition” far too much, beyond what was intended in 1906, or beyond even what is intended now in regulation 2.01 of the Design Regulations.

HAYNE J:   The Full Court record at paragraphs 6 and 26 that your side did not challenge the conclusion that the fair was officially recognised.  Is that right?

MR LUCARELLI:   Officially recognised is not in issue.  It is only in the official or officially recognised international exhibition that there was any dispute.

HAYNE J:   What I think you then need to confront is, understanding that in the courts below, or in the court below, that element of the definition was not in issue, what does that do, if anything, in relation to an argument that says, “Look at the phrase as a whole.  Do not chop it up, with a dictionary in one hand and bits in the other hand, and come to a meaning”, which I understand to be a caricature of the kind of argument you would advance:  Do not chop it up and do not have a dictionary in the hand and look at the chopped up bits.

MR LUCARELLI:   Or at least if one is going to chop it up, do not go beyond “international exhibition”.  That must be kept as a whole, would be our submission.

HAYNE J:   Well, if “officially recognised” is not a card in play and it was not below, what, if anything, does that say about this second aspect, or second element, in the definition of “international exhibition”?  Are you left saying, as I understand at least part of your argument is, well, we need not tell you how many it is, but it is more than two nations to make an international exhibition?

MR LUCARELLI:   And what would be required beyond that, of course, is exhibitors from more than just the host nation and one other nation.  So, in our submission, that really is what captures the essence of the second expression “officially recognised international exhibition”.  I am not sure whether I have answered your Honour’s question.

HAYNE J:   What was it that gave the great exhibitions of the late 19th century the status of official recognition?

MR LUCARELLI:   For example, to take 1851, the Crystal Palace, his Honour Justice Finkelstein refers to the fact that the Prime Minister and one other very significant – I think it was Prince Albert, and I hope I am not wrong – or Prince Alfred – if the Court will excuse me, I cannot recall which, but starting with an “A” – both were members of a committee that effectively arranged the exhibition and the same was the case in 1900.

HAYNE J:   At government level or at trader level?  It was government to government, was it not?

MR LUCARELLI:   Government to government level, that is correct.

HAYNE J:   Is it not that aspect, namely, the internationality comes from government to government.

MR LUCARELLI:   That is missing here, of course, because ‑ ‑ ‑

HAYNE J:   Just so, but what troubles me about that, Mr Lucarelli, and you would need to have it on the table so you can deal with it, is that if you have taken “officially recognised” off the table, which you did in the Full Court, we are left looking at the debate in a very truncated way and I get alarmed by that.  That is the problem.  Now is the chance to tell me why it is not.

MR LUCARELLI:   I understand what your Honour is saying, but at the end of the day the issue that remains for determination, in our respectful submission, is the latter of the expressions which is “officially recognised international exhibition”.  Everyone seemed to be in heated agreement that it was not the former and it was only the latter that was in issue and the Full Court obviously went to the word “international” to resolve that matter.

We concede that the phrase as a whole comes out of Article 11, we understand that, but having said that, what is only before the Court rightly at the moment is the latter bit of that expression, not the earlier bit.  There seemed to be really no issue about what an officially recognised exhibition was, but they are two different matters, plainly so because the former, the “officially recognised”, does not have the element of “international exhibition” necessarily within it.

If I might continue, our submission is that as the Parliament intended to implement Convention benefits, and that is what Senator Keating said at page 394 by referring to “reciprocal advantages”, it is reasonable to assume that by using the same operative words in section 47(1) to Article 11(1) and the same operative words throughout section 47, that Parliament intended to import into our law a provision having the same effect as the critical corresponding provisions in Article 11 and there we refer to Justice Brennan in Koowarta at page 265.  In our submission, the Full Court failed to interpret the words “international exhibition” consistent with the meaning of those words in Article 11 which meaning is able to be determined and confirmed by the reference to the travaux and we rely upon the Tasmanian Dams Case at pages 93 and 223 and 224. 

It is submitted that as the words “international exhibition” in the phrase “officially recognised international exhibition” are the same in the treaty and the legislation and are obscure, it is open and necessary to have regard to the travaux.  With the benefits of Articles 31 and 32 of the Vienna Convention on the Law of Treaties, that Convention applies to the interpretation of the words in Article 11 in this way.  In Fothergill’s Case, Lord Diplock at page 283 stated that Articles 31 and 32 “codify already‑existing public international law”, therefore his Lordship concluded in that case that where the meaning of words in the relevant Convention – in that case the Warsaw Convention – were ambiguous or obscure - the preparatory work of the treaty and the circumstances of its conclusions may be taken into account.

This is perhaps another important point, with respect, for this honourable Court, and that is that it is a question here where the Convention was plainly not adopted in 1906 when the words were transposed and it was not adopted until some years later around 1928.  A question arises as to whether the Convention now, that is, the Convention on the Interpretation of Treaties, the Vienna Convention, and Articles 31 and 32, apply.  At the end of the day we would submit that the common law is the same, but there certainly is a question in connection with Fothergill’s Case. 

In Henderson’s Case, this Court looked at a treaty and explanatory notes in similar circumstances to the present where the Act there in question adopted a treaty in anticipation of later ratification.  We say that we are in the same position.  The finding of Justice Finkelstein based on the travaux was that the drafters of Article 11 understood international exhibitions as being infrequent, large scale and multinational events and we submit that that is not really seriously challenged by the respondents, albeit that there may be a challenge to the question of the French translations and the like, but that principle, we submit, is not challenged.

What the respondent did challenge before the Full Court was the effect that the trial judge applied a method of analysis to that translation which it did not agree with.  But in the end it was able to make submissions about those matters and there can be no suggestion that there is any live issue about that in the submission on behalf of the applicant.  The respondent has always strived to minimise the use of materials coming from the travaux.  However, we would submit that it is an error for the court to ignore them, in effect, which is what the Full Court did, because acknowledging that they existed and that the travaux had obviously looked at exactly what was meant by the words in Article 11, they did not go on and use those materials.

The Bodenhausen test, the leading text writer in this area, at page 151, was before both courts and Bodenhausen states that for an exhibition to be international within the meaning of Article 11(1) it must include the exhibition of goods coming from foreign countries. In similar fashion we refer to WIPO at paragraph 5.66 in the materials that we have provided to the Court. It states that an exhibition is to be considered to be international if goods from various countries are exhibited. Again, consistent with what comes out of the travaux, in our submission.

CRENNAN J:   Bodenhausen also points out, does he not, that the Article 11 of the Paris Convention and Article 1 of the 1928 Convention do not necessarily bear the same meanings ‑ ‑ ‑

MR LUCARELLI:   We agree with that.

CRENNAN J:   - - - which is a problem in relation to the utility of your application, I would have thought.

MR LUCARELLI: No, it is not, your Honour, because we now have a continuation of Article 11(1) in regulation 2.01 of the Design Regulations and also in the Patents Act and the legislature is plainly saying that the meaning of the words “officially recognised international exhibition” in Article 11(1) is what the law - is in Australia and is continue naturally and therefore interpreting those words has real significance for at least that regulation and its equivalent in the patents regulations. So there is utility in having this Court determine what those words mean. I notice the light, I am content to finish, or if the Court wants any other questions answered. If the Court pleases.

HAYNE J:   Yes, thank you, Mr Lucarelli.  We will not trouble you, Mr McGowan.

The approach taken in the courts below was, for the most part, to focus upon the meaning to be given to each of the words used in the phrase “at an official or officially recognised international exhibition” rather than treating “officially recognised international exhibition” as a composite phrase.  Thus, the Full Court of the Federal Court recorded that the trial judge’s conclusion of the fair in question was an “officially recognised” exhibition because it had been funded by a State government was a conclusion that was not challenged on appeal.

Having regard to the course the litigation has taken in the courts below, it is not a suitable vehicle to explore the questions presented and, in any event, we are not persuaded that there are sufficient prospects of success of an appeal to this Court to warrant a grant of special leave.  It follows that special leave to appeal is refused.  It must be refused with costs.

Adjourn the Court to 10 December 2008 in Canberra.

AT 2.24 PM THE MATTER WAS CONCLUDED