Microsoft Corporation
[2008] ADO 2
•16 January 2008
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 those of regulation 4.04 and 4.06. And since the objections raised in the formalities report related to post-registration considerations, there was no basis for rejecting registration.
Additionally, in the context of the formality requirement of regulation 4.04(1)(c):
The design application identifies the product or products in relation to which the design is sought to be registered sufficient to enable each product to be classified in accordance with the Locarno agreement.
the attorney referred to several Locarno classifications relating to fonts [8th edition, in subclass 18-03, serial numbers P0472, S0863, T0471, T0472, T0470, T0479]. He particularly referred to S0863 which includes subtitles for films – which he asserted were intangible. He asserted that the Locarno classification ‘specifically recognises type and type font as constituting subject matter that is capable of design registration, irrespective of whether it is in tangible form or not’.
Included in the attorney’s response was a request to be heard if the submissions were not accepted.
A third formalities report was issued on 13 Sep 2007, maintaining the formality objection. The formality report specifically referred to regulation 4.04(1)(c) supra and stated:
While the Locarno Classification system includes a class for fonts, the Locarno Agreement is not prescriptive of what type of products may be registered under the Designs Act 2003. In my opinion, a font is not a product within the meaning of the Designs Act 2003, and therefore this application does not disclose any “product” that can be classified in accordance with the Locarno Agreement.
Subsequently the applicant paid the hearing fee, provided written submissions, but did not appear in person at the hearing. The submissions reiterated many of the points previously raised. The attorney particularly emphasised:
· For regulation 4.04(1)(c), the question is not whether the product of the Designs satisfies the statutory definition of a “product” – rather the requirement is simply one of whether the product is sufficiently identified for the purpose of classification.
· A product under the 2003 Act is defined as ‘a thing manufactured or handmade’ without any qualification as to whether the product must be a ‘finished’ product or ‘tangible’ in nature; nor is there any distinction between the product being ‘at rest’ or ‘in use’. Consequently it is only necessary to demonstrate that the design relates to a ‘thing manufactured or handmade’. The fact that type font can be produced by computer software should not detract from eligibility for registration as a design.
· The concept of ‘design’ and ‘product’ under the 2003 Act should not be constrained by concepts developed under the 1906 Act in the context of the early 20th century, but instead should evolve as technology has developed in the context of industrial design in the 21st century.
Consideration
There are a number of interesting issues associated with the concept of designs protection for a type font. By way of illustration:
- What commonality of visual appearance is present in (for example) the letters ‘I’ and ‘O’, and with either of those and a period ‘.’?
- In the case of two fonts – one being a sans serif version of the other – what is the difference between the characters ‘O’, ‘o’ and ‘0’ respectively as between the two fonts? [For example, if design protection existed for the serif font, how would you determine whether the appearance of a string like ‘OOOOO’ would constitute an infringement?]
- If (at least notionally) you treat the different characters in the representations as being different products, such that you might argue that there is a common design in relation to more than one product [s.22(1)(b)] – how do you assess the common design elements of (for example) a period ‘.’ and a slash ‘/’.
However these issues are substantive issues, and do not fall for consideration at the formalities stage – unless there is a suggestion that the application is in relation to more than one design, such that the number of designs in the application must be determined to correctly assess the filing fee.
The process of obtaining registration of a Design involves the following basic steps:
a. File an application. At this stage of the processing, there are essentially no constraints on content of the application. The application will receive a filing date if it meets the ‘Minimum filing requirements’ of regulation 3.01. That is, an indication that the application is intended to be a design, information that allows the applicant to be contacted, and a representation, or information that appears to be a representation, of each design. The present application meets these requirements.
b. Applicant must request registration – which has been done in this case.
c. The application must meet the formality requirements of regulation 4.04 (and 4.05 if there is more than one design). Unlike the minimum filing requirements, the formality check includes a basic subject matter requirement in subparagraph (1)(c) – namely:
The design application identifies the product or products in relation to which the design is sought to be registered sufficiently to enable each product to be classified in accordance with the Locarno classification.
Relevant to the interpretation of subparagraph (1)(c) is the definition of Design:
Design, in relation to a product, means the overall appearance of the product resulting from one or more visual features of the product.
This definition clearly differentiates between a product, and the visual features of the product.
It follows that regulation 4.04(1)(c) requires the Registrar to identify the product in relation to which the design is sought to be registered – separate from visual features of that product. And then assess whether that product has been sufficiently identified for it to be classified in accordance with the Locarno classification.
The present design is for a font. It is not a hammer for a typewriter; it is not a type element for use in type-setting with metal blocks; it is not a rubber stamp. It is the shape of characters that might be applied to any of these things – as well as any other medium – be that paper, computer screen, light projection etc. Indeed, in the computer environment a type font exists as a binary file (in the Windows® environment, usually as a .TTF or .FON file), with that file being used to control how information is presented on computer output – whatever that output might be (monitor, printer, etc). I do not think that the present design shows a product bearing visual features. Rather, the representations show a collection of visual features intended to be applied to unspecified products in unspecified arrangements.
The attorney argues that the present design can be classified into Locarno, referring in particular to subclass 18-03: P0472, S0838, T0471, T0472, T0470, T0479. It may be noted that the subclass is titled ‘TYPE AND TYPE FACES’, falls under the class definition of ‘PRINTING AND OFFICE MACHINERY’, and primarily relates to things bearing type – not the font per se used to create a type. In this regard, it is noteworthy that the Locarno classification has no express reference to fonts. But even if there was a specific reference to fonts in Locarno, that cannot displace the fact that when a design application sets out visual features in the absence of a product, there is no product to be classified in Locarno – and subparagraph (1)(c) of the formalities check necessarily fails.
Conclusion
In my view, the present design does not disclose a product bearing visual features. It only discloses visual features. That necessarily means that the application fails to meet the requirements of regulation 4.04(1)(c). In my view any amendment that might overcome this deficiency would not be allowable under s.28(3), as it would inherently require the inclusion of matter not disclosed in the design application. Accordingly, pursuant to s.43(2) I refuse to register the present design.
D Herald
Deputy Registrar of Designs16 January 2008
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