18.2. Prior publication or use exceptions: Exhibitions

Under the previous s 17(1)(a) we must disregard the publication or use of the design at an international exhibition that occurred with the consent of the registered owner (see also reg 2.01).

This section may only apply to uses and publications occurring before 10 March 2022.

Which exhibitions

These exhibitions are:

• ‘official or officially recognised’ international exhibitions either:
  • ‘within the meaning of Article 11 of the Paris Convention’ (see Meaning of ‘official or officially recognised’’ and ‘Meaning of ‘international’’ below)
  • ‘within the meaning of Article 1 of the Convention Relating to International Exhibitions’ – i.e. the international EXPO exhibitions
• ​​​​​​​​​​​​​​international exhibitions recognised by the Registrar in a notice in the Australian Official Journal of Designs before the exhibition begins.​​​​​​​

Meaning of ‘official or officially recognised’

The requirements of ‘officially recognised’ were set out in Chiropedic Bedding Pty Ltd v Radburg Pty Ltd [2007] FCA 1869, which stated (at 28):

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 appeal decision Chiropedic Bedding Pty Ltd v Radburg Pty Ltd [2008] FCAFC 142 did not dispute this characterisation, and also determined that an official exhibition is one organised by government.

Meaning of ‘international’

To be ‘international’ the exhibition must involve exhibitors from more than one country (see Chiropedic Bedding Pty Ltd v Radburg Pty Ltd [2008] FCAFC 142 at 54). As long as there is at least one international exhibitor displaying foreign goods, the exhibition will qualify as international.

Conditions for this exception

The Australian design application must be filed within 6 months after the publication or use of the design at the exhibition. An extension of time to submit the application may be possible.

When they file the design application, the owner must also file a notice stating that the design has been exhibited. This must state the name of the exhibition, the date when it opened, and the date when the design was first published or used (displayed) there.

If the exhibition is recognised by the Registrar (rather being internationally recognised), this protection does not necessarily apply outside Australia. This means that the design may no longer be registrable in another country.

Convention applications

This situation is an exception to the rule for convention applications.

Normally the owner has 6 months after filing a design application in a convention country to file in Australia. This does not apply if the design has been exhibited. They need to file for a design in Australia within 6 months of exhibiting, regardless of whether they file in a convention country first.