Comshare Incorporated

[1991] ADO 2

DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS

 

Re: Design Applications 243/90, 515/90 and 1139/90 in the Name of COMSHARE INCORPORATED. Examiner's objections.

Background

Applications 243/90, 515/90 and 1139/90 were lodged on 25 January 1990, 20 February 1990 and 17 April 1990. They relate to designs applicable to an article entitled "Computer Screen". The examiner issued first notices under Regulation 14 on the applications in August and October 1990. The applicant's attorneys made submissions in relation to matters referred to in the Regulation 14 notices, but further notices were issued by the examiner. Thus the applicant sought exercise of the Registrar's discretionary powers under Regulation 51, in three requests lodged 20 February 1991. The applicant did not wish to be heard.

Objections and submissions

The applications relate to designs applicable to computer screens. The statement of monopoly in application 243/90 reads:

"Monopoly is claimed in the pattern or ornamentation of a computer screen as shown in figures 1-17 of the accompanying representations."

The representations in that application consists of eight pages of various computer "screens" comprising graphic and textual information. Applications 515/90 and 1139/90 contain statements of monopoly and representations similar to those in 243/90. Application 515/90 also contains a separate page of text with the representations, entitled "description of the drawings". I note that this page is similar to those found in patent specifications.

In the first Regulation 14 notice issued on application 243/90 the examiner objected, inter alia, that:

(i) "The design is not registrable since it is not applicable to an article of manufacture as defined under the Act.

(ii) "The representations lodged are not satisfactory since

(a) they do not show an article

(b) they show more than one design

(c) the wording is indistinct,"

(iii) "Monopoly should be disclaimed in the words."

The applicant's attorneys submitted that:

(i) "The subject design being an icon appearing on a computer screen is in fact a pattern or ornamentation applicable to a computer screen",

(ii) "The article is the computer screen which is either an article in itself or a part of an article being part of the computer display device,"

An amendment was also proposed to the statement of monopoly to refer to "ornamentation applicable to a computer screen".

The examiner further objected that:

(i) "The ornamentation 'applicable' to the screen could not be said to be an inherent feature of the article. The screen will not be permanently displayed on the article and will disappear altogether once the machine is turned off. .... the ornamentation is transitory and is not inherent to the TV screen."

(ii) "The representations do not show the screen of a video display unit since screens of this type normally have radiused corners if not slight curvatures in the sides." [The representations show arrangements of icons and text outlined by a rectangle.]

In the letters accompanying their requests for exercise of the Registrar's discretionary powers, the applicant's attorneys indicated that they are particularly concerned with the examiner's objection to the designs not being applicable to an article as defined under the Act, so I will direct my decision primarily to that matter.

Decision

A design is defined in sub-section 4(1) of the Act as follows:

"'design' means features of shape, configuration, pattern or ornamentation applicable to an article, being features that, in the finished article, can be judged by the eye, but does not include a method or principle of construction."

It has been suggested that the present designs can be construed as features of "pattern or ornamentation" and that a computer screen can be construed as being an article of manufacture; so a prime matter before me is whether the designs are "applicable" to the article.

K.K. Puri's Industrial Design Law in Australia and New Zealand, paragraph 722 on page 74, discusses consumable articles such as pharmaceuticals and food. These articles are stated to be "at the extreme edges of the design spectrum and are more related to pure science (or to fine art) than they are to design Purl states: "... generally speaking, durability or permanency must exist to qualify for [design] protection". I think the present designs, although not consumables, do qualify as not being durable or permanent designs applied to a computer screen.

A registrable design should be capable of distinguishing an article with the design from a fundamental form of the article. For example in Firmagroup Australia v Byrne & Davidson Doors & ors. (1987) AIPC 90-410, the High Court concluded (at P.37,637) that the features of the registered design which were susceptible of protection were those features which conveyed the idea of its "particular individual and specific appearance". In the present case when the applicant's designs are displayed on a computer screen, I doubt that the viewer would see the computer screen or any other hardware associated with the computer as being characterised by those designs, since he or she knows that the screen image is transitory and that the hardware is still the same hardware as it was before the design was displayed on the screen. Because the designs are transitory they do not give a "particular individual and specific appearance" to the computer screen. I think the viewer would see the designs as characterising the software rather than the hardware. Thus, whilst there may be some argument that the applicant's designs are generally "applicable" to a computer screen, I think that they are not "applicable' within the meaning of the Designs Act.

I will also consider whether, as submitted, the computer screen information shown in the applicant's representations could be considered as a "pattern or ornamentation" within the meaning of the Designs Act. A design should not be primarily literary or artistic in character. It has been found that if design features are subordinate to content and layout of literary or textual matter, as judged by the eye, then the design features could not form a registrable design. See TDK Electronic Co Ltd's Application (1983) 1 IPR 529 and Littlewoods Pools Ltd's Application (1949) 66 RPC 309. Also a design must be reasonably clear and succinct, it "must appear with reasonable clarity and without the necessity for unreasonably prolonged or complicated series of deductions, from the registered representation See L.J. Fisher & Co Ltd v Fabtile Industries Pty Limited (1979) 49 AOJP 3611. In the present case, the applicants designs, notwithstanding their various forms as shown in the representations, are not clear and succinct to my eye; due partially at least to the distracting amount of textual matter. Therefore, I doubt whether the applicant's designs could properly be considered as a pattern, or even less as ornamentation, within the meaning of the Designs Act.

Conclusion

I find that Comshare's three applications are not directed to designs which are applicable, within the meaning of the Designs Act, to the article described and therefore I refuse to register the designs.

(J.I. WELSH)

Delegate of the Registrar of Designs

1 JUL 1991

Attorneys for the applicant: Watermark, Melbourne