D07.5 Exhibitions, Unauthorised disclosures

Date Published

S. 17, together with regulation 2.01, exclude certain publications or use from the prior art base.

D07.5.1 Exhibitions

If a design has been published or used at certain exhibitions before the priority date, that publication or use must be disregarded. The conditions for this are set out in reg 2.01, and are as follows:

  • The exhibition must be one of:
    • an official or officially recognised exhibition within the meaning of Article 11 of the Paris Convention,
    • an official or officially recognised exhibition within the meaning of Article 1 of the Convention relating to International Exhibitions. [These are the international EXPO exhibitions]; or
    • an international exhibition recognised by the Registrar by a notice in the AOJD prior to the commencement of the exhibition.
  • The design application must be filed within 6 months of the date when the design was first published or used at the exhibition.

Note: The Australian design application must be filed within the 6 month period. That is, if the owner files an application in a Convention country, they must nevertheless ensure the Australian application is filed within 6 months of the date of first publication or use of the design at the exhibition if they wish to rely on this exclusion.

  • At the time of filing the design, a notice is also filed stating that the design has been exhibited, identifies the design and the exhibition, states the date of opening of the exhibition, and if the publication or use first occurred after the commencement of the exhibition, that date.
  • S.137 may be available in appropriate circumstances to extend the time for providing the required information.

Article 11 of the Paris Convention provides:

"(1) The countries of the Union shall, in conformity with their domestic legislation, grant temporary protection to patentable inventions, utility models, industrial designs, and trademarks, in respect of goods exhibited at official or officially recognized international exhibitions held in the territory of any of them."

Article 1 of the Convention Relating to International Exhibitions provides:

"(1) An exhibition is a display which, whatever its title, has as its principal purpose the education of the public: it may exhibit the means at man's disposal for meeting the needs of civilisation, or demonstrate the progress achieved in one or more branches of human endeavour, or show prospects for the future.

(2) An exhibition is international when more than one State is invited to take part in it."

The convention also provides, in article 6, for the registration of the exhibition.

Such exhibitions are organised on a Government-to-Government basis. The protection afforded to designers for the display of their designs is generally recognised internationally. The exhibition has to be international, which means that it must include the exhibition of goods coming from another country. Expo 88, which was held in Brisbane, is an example of an exhibition that was officially recognised under the corresponding provisions of the 1906 Act [see (1986) 56 AOJP 1022].

International exhibitions recognised by the Registrar are recognised by means of a notice published in the Official Journal of Designs before the beginning of the event. An exhibition may for example be officially recognised upon an application being made to the Registrar by the organizer of the exhibition. However, unlike the officially recognised international exhibitions, the protection afforded in Australia by the Registrar recognising the exhibition will not necessarily be recognised in other countries. As such, while the designer may be able to obtain a valid Australian design after exhibiting their design, exhibition of their design at the exhibition may invalidate a design in other countries. The approach of the Registrar to recognising such exhibitions will parallel that of the Commissioner of Patents – see the Official Notices section of the AOJP of 7 March 1996.

In order for the exclusion of s.17 to apply, the publication of the design must have occurred during the exhibition at which the design was shown or used. The publication does not need to occur at the exhibition so that, for example, an advertisement of the design in a newspaper would be considered an appropriate publication for the purposes of reg 2.01 so long as that publication was made during the recognised exhibition. However brochures disclosing the design and publicly distributed before the exhibition even though they may be in connection with the exhibition, would not fall within this requirement. [See Steel & Co Ltd's Application (1959) RPC 411.]

D07.5.1.1 Exhibitions – Official or Officially recognised

In Chiropedic Bedding Pty Ltd v Radburg Pty Ltd [2008] FCAFC 142 it was noted that clarity and certainty mandated that an ‘official exhibition’ is one organised by government, as otherwise it would be difficult to determine where ‘official’ ended and ‘officially recognised’ began. The full court also noted that the fact that the organising body had a ‘public officer’ is irrelevant to the question of whether an exhibition is an ‘official’ exhibition.

The requirements of ‘officially recognised’ were set out in Chiropedic Bedding Pty Ltd v Radburg Pty Ltd [2007] FCA 1869 as:

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 full court on appeal did not dispute this characterisation.]

Note: The term ‘official or officially recognised international exhibition’ as used in s.47(1) of the Designs Act 1906 was considered in detail in Chiropedic Bedding Pty Ltd v Radburg Pty Ltd [2008] FCAFC 142. In resolving the inherent ambiguity in that phrase, the court relied on s.47(2) of that Act, which referred separately to ‘official exhibition’, and ‘officially recognised international exhibition’. However regulation 2.01 of the 2003 Act is worded quite differently; to the extent that the same phrase is used, the regulation is consistent with it only referring to international exhibitions. This change in the nature of exhibitions is consistent with the expansion of the prior art base to include publications anywhere in the world.

D07.5.1.2 Exhibitions – International

The exhibition must be international exhibition. That is, it must involve exhibitors from more than one country. The number of exhibitors from other countries as a proportion of all exhibitors is not relevant. Chiropedic Bedding Pty Ltd v Radburg Pty Ltd [2008] FCAFC 142 at para 54.

Special Leave to appeal this aspect of the Chiropedic Bedding v Radburg decision to the High Court was refused – Radburg Pty Ltd v Chiropedic Bedding Pty Ltd [2008] HCATrans 412 (5 December 2008)

It may be noted that a foreign exhibitor exhibiting foreign products will result in the exhibition being ‘international’. However the situation is not clear in the following situations:

  • a foreign exhibitor exhibiting products made in Australia;
  • an Australian exhibitor exhibiting products made outside of Australia based on their specifications
  • an Australian exhibitor which is part of an international corporate group, with products of that group being exhibited.

However as long as there is at least one international exhibitor exhibiting foreign goods, the exhibition will qualify as an international exhibition.

D07.5.2 Unauthorised disclosures

If a design has been published without the consent of the owner, by a person who derived or obtained the design from the owner or a predecessor in title – providing the Australian application is made within 6 months of the publication.

No other conditions are set out for this situation. However the owner has the burden of showing that the earlier publication was indeed unauthorised. If this issue was to arise in examination proceedings, it would almost certainly require a hearing under s.67(3) or 6(1) to satisfactorily determine the issue.

In Allen Hardware Products v Tclip [2008] ADO 8, the parties were found to be joint owners of several designs, with an implication that subsequent applications filed by each of the parties may also be subject to the same finding. In reviewing the further conduct of the case the delegate noted that the designs of one party had been cited against the designs of the other party, and stated:

… there is a question of whether s.17(1)(b) operates in a way to exclude those designs from consideration against the {latter} designs…. S.17(1)(b) only applies with respect to applications filed within 6 months of the date of first publication or use (regulation 2.01(3)) … While a new application filed following a declaration under s.54 maintains the priority date of the earlier designs (s.55), it does not retain the filing date. Consequently any application now filed is out of time for the protection available under s.17(1)(b) – implying that the parties would need to rely on a s.54(2) declaration with respect to the earliest design that disclosed the design of the new application, and may not be able to pick and choose between the {party’s} designs.

Any design where the owner seeks protection under this mechanism is to be referred to the Deputy Registrar in the first instance, as the likelihood of an inter partes dispute is high.

D07.5.3  Disclosures to the Commonwealth, a State or a Territory

Disclosures to the Commonwealth, a State or a Territory are not part of the prior art base [s.17(2)]. This also extends to persons authorised by them to conduct an investigation of the Design. Thus, for example, disclosure to the Commonwealth for the purpose of obtaining funding is not part of the prior art base.

For a discussion of issues pertaining to the scope of this exclusion, see Stack v Brisbane City Council 32 IPR 69.

Noting that the Designs Office is an agency of the Commonwealth, this provision does not result in material appearing on the Register in relation to any earlier design being unavailable for the purpose of examination or assessment of later designs registered or sought to be registered by the same person. Section 17 is properly seen as an overlay on s 15. Section 17 is designed to do no more than to allow, for example, a defence contractor to provide sample material to the Department of Defence while still keeping the benefit of a design application. Icon Plastics Pty Ltd [2007] ADO 2.