Impact of showing at trade exhibitions on design novelty

There are many commercial reasons for a company to expose new products or technology to the marketplace as early as possible: competitive advantage, return on research and development and business development investment, maximising product/technology lifecycle and matching with corporate marketing strategies, to name a few. Consequently, it is not unusual for companies to display new developments at trade shows and exhibitions as early as possible in order to showcase their latest products and technology, as well as to attract purchasing interest.

However, unless such exposure is planned to fit in with a formal IP protection strategy, it can raise questions over whether the product remains novel for the purposes of patent or design protection in light of the prior disclosure by the owner.

Many jurisdictions recognise an IP rights saving period, whereby if the product or technology is publicly exhibited before a formal first application for patent or design protection is filed, that product or technology will not be deemed to be prior-published, provided that the application is filed within a grace period.

For example, Article 11 of the Paris Convention of 1883 allows signatories to:

“grant temporary protection to patentable inventions, utility models, industrial designs and trademarks, in respect of goods exhibited at official or officially recognised international exhibitions held in the territory of any of them.”

The question arises as to the level of recognition that an Australian trade fair or exhibition must reach in order to meet the required threshold in Australia and thereby bring the local saving provision into effect.

This question was recently considered in Chiropedic Bedding Pty Ltd v Radburg Pty Ltd ([2008] FCAFC 142), on appeal from a first decision in December 2007, in deciding whether a trade fair at which a particular mattress design was publicly exhibited met the required threshold for Australia.

Chiropedic Bedding Pty Ltd was the registered proprietor of a design under the Designs Act 1906 (Cth) (now superseded by the Designs Act 2003). It brought infringement proceedings against Radburg Pty Ltd.

The National New Products Parade, a trade fair, was held at the Melbourne Exhibition Centre between 20th July and 23rd July 1996. The fair was organised by the Furnishing Industry Association of Australia (Vic/Tas) Inc and was intended to be a showpiece event on the Australian furniture and bedding calendar.

Chiropedic exhibited the Microcoil Pillowtop Plus mattress at the fair six days before applying to register a design for it. Radburg argued that this deprived the design of novelty unless the fair fell within the terms of Section 47 of the 1906 act - “exhibiting of designs at official or international exhibitions”.

Section 47 stated that:

“(1) The fact that a design, or any article to which a design has been applied, has been exhibited at an official or officially recognised 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 recognised international exhibition, shall, for the purposes of this section, be conclusive evidence that the exhibition is an official exhibition, or an officially recognised international exhibition, as the case requires.”

The original trial judge decided that while the fair was an exhibition and was officially recognised by reason of funding from the Victorian government, it was not an official exhibition; nor was it an international exhibition because of the lack of sufficiently significant international support (there were 250 Australian exhibitors and just seven overseas exhibitors, all from New Zealand). Accordingly, Section 47 could not be relied on.

Thus, displaying the mattress at the fair deprived the design of novelty and the trial judge ordered that the design registration be removed from the register (Chiropedic Bedding Pty Ltd v Radburg Pty Ltd [2007] FCA 1869; (2007) 243 ALR 334).

On appeal, the Full Federal Court overturned the trial judge’s decision. The appeal judges concurred with the trial judge that the fair was an officially recognised exhibition because it had been supported by a grant from the Victorian government. However, the correct interpretation of Section 47(1) is an “official exhibition”. In the trial case and on appeal, it was held that an official exhibition must be organised by an Australian government authority (federal, state or local government). The exhibition at issue was organised by an industry association rather than a government authority and therefore was not an official exhibition.

However, the appeal judges overturned the trial judge’s decision in regard to the event not being an internationally recognised exhibition – they found that the presence of exhibitors from Australia (250) and New Zealand (seven) was sufficient to make it an international exhibition within Section 47(1):

“[T]he trial judge erred in formulating a test of international which involved the need for a significant foreign presence. Not only does it import into the section a requirement that is not expressly stated, but it introduces into the section questions of degree which are likely to be productive of uncertainty and expense. In our opinion, the fact that there were exhibitors from Australia and New Zealand was sufficient to make the fair an international exhibition within Section 47(1).”

Thus, the fair was not an official exhibition because it was not organised by a government body, but only supported by the government; however, it was an officially recognised international exhibition. As a result, the validity of the design registration was not affected by the prior publication of the design through its display at the fair.