Microsoft Corporation - [2008] ADO 2

DESIGNS ACT 2003

DECISION OF A DEPUTY REGISTRAR OF DESIGNS
Re:Design application 15022/05 – Type Font - in the name of Microsoft Corporation.

Delegate: Dave Herald

Representation: Andrew Lowe, Patent Attorney of Shelston IP, Sydney

Decision: Registration refused
Background

On 11 Nov 2005 the applicant filed a design application for ‘Type Font’, requesting registration. The representation sets out the design using the following characters:
A B C D E F G H I J K L M N O P Q R S T U V W X Y Z
a b c d e f g h i j k l m n o p q r s t u v w x y z
1 2 3 4 5 6 7 8 9 0
. : ! ? , ; ( ) < > @ # $ ^ & % * ‘ “ + - = [ ] { } \ /
with the design being associated with the particular appearance of the characters.
For reasons that are not apparent to me from the file, no action was taken with respect to the design application for some 18 months. On 15 June 2007 a formalities officer conducted the pre-registration formalities check, stating:
Your representations do not meet our guidelines because:
Your representations do not show a design applied to a finished article’
Please find attached Hearings Decision of 14 February 2007.
The decision referred to was Microsoft Corporation [2007] ADO 1 (14 February 2007)
In response, the attorney argued that the above decision was made under the Designs Act 1906, and was not applicable to matters under the Designs Act 2003. In particular, the requirement under the 1906 Act of the design being present ‘in the finished article’ did not apply under the 2003 Act, and that under the 2003 Act the type font of the present design falls within the statutory definition of a ‘product’ because it is
a thing made or produced by machinery in both its traditional physical form of a typesetting block and the modern form of being visually produced by a computer.
Furthermore, the 2003 Act does not contain a list of exclusions of specific articles of primary literary or artistic character – which implies ‘there is no restriction as to the registration of printed articles, which would also include type fonts.’
A second formalities report was issued, asserting that ‘the product shown must be a thing that is manufactured or hand made implying that it must be a finished product, that is something in existence therefore tangible.’ The formalities examiner included a copy of paragraph D05.3.2 of the Designs Office Manual (which discusses the phrase ‘{Any} thing that is manufactured or hand made’ as referred to in the s.6 definition of a product.).
In response, the attorney noted that the relevant paragraph related to the examination of a design on substantive grounds – which is not the subject of a formalities check. The only grounds for rejection under the formalities check are…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

AGLC: Microsoft Corporation [2008] ADO 2
Case: [2008] ADO 2
Decision Date: 16 January 2008

CaseChat Overview and Summary

In the matter of Design Application 15022/05, Microsoft Corporation sought registration for a type font under the Designs Act 2003. The dispute centred around whether a type font, as an abstract concept, qualified as a "product" for the purposes of design registration, particularly given its intangible nature in a digital context. The decision was rendered by Dave Herald, a Deputy Registrar of Designs.

The court was tasked with determining whether a type font, as an abstract design, could be considered a "product" under the Designs Act 2003, thus permitting its registration. The specific issue was whether the application sufficiently identified a product for classification under the Locarno Agreement, as required by regulation 4.04(1)(c) of the Designs Regulations 2003. The applicant argued that the type font, while intangible, was nonetheless a product that could be classified according to the Locarno Classification system. Conversely, the examiner maintained that a type font did not meet the statutory definition of a product and thus could not be registered.

The court examined the statutory definition of a "product" under the Designs Act 2003, which includes "a thing manufactured or handmade," without specifying that the product must be tangible or finished. However, the court concluded that the type font in question did not constitute a product since the application did not identify a tangible or finished article bearing the design. Instead, the representations provided showed a collection of visual features that could be applied to various products, without specifying any particular product. This interpretation aligns with the requirements of regulation 4.04(1)(c), which necessitates the identification of a product for classification. As the representations did not meet this requirement, the application was deemed to fail the formalities check.

In conclusion, the Deputy Registrar of Designs, Dave Herald, refused to register the design, finding that the application did not sufficiently identify a product for classification, thus failing the formality requirement of regulation 4.04(1)(c). The decision was made on 16 January 2008. The refusal was based on the premise that the type font, as presented in the application, was an abstract design without a tangible or finished product. The court held that any amendment to the application would require the inclusion of undisclosed matter, which is impermissible under the relevant legislation.

Orders