Microsoft Corporation - [2007] ADO 1

DESIGNS ACT 2003

DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS
Re:Design application numbers 0040/04, 0041/04, 0042/04, 0043/04, 1148/04, 1149/04, 1150/04, 1151/04, 1152/04, 1153/04, 1154/04, 1155/04, 1156/04, 1157/04, 1158/04, 1159/04, 1160/04, 1161/04, 1162/04, 1163/04, 1164/04, 1165/04, 1166/04, 1167/04
TYPE FONT- in the name of Microsoft Corporation.

Delegate: Tabatha Klippan

Representation: Applicant:Mr Greg Noonan of Freehills Patent & Trade Mark Attorneys, Melbourne.

Decision: Registration refused
Background

On 7 January 2004, Microsoft Corporation, (‘the applicant’), filed four applications to register ‘type fonts’ in class 18-03. On 29 March 2004, Microsoft Corporation filed a further 20 applications, in class 18-03, to register ‘type fonts’.
On 12 May 2004, the examiner issued the first report for applications 0040/40, 0041/04, 0042/04 and 0043/04. A first report was issued for the remaining 20 applications on 22 September 2004. The first report was identical for all 24 applications. An objection to registration of each of the applications was taken on the basis that “a type font is not a design that has been applied to an article”. The first report also addressed issues relating to S.22C – Multiple Designs, Statement in Support, Statement of Monopoly and Representations.
On 11 July 2005, the applicant’s agent responded to the first report on the first application only and indicated that an appropriate response would be filed for the remaining 23 applications once the substantive objection relating to type fonts was overcome. In the response, the applicant’s agent made a request to amend the statement of monopoly and provided a copy of a Statement in Support. The substantive objection was also addressed in the response.
A second report, maintaining the substantive objection, was issued by the Designs Office on 30 November 2005.
The applicant requested a hearing in the matter on 19 December 2005.
As a Delegate of the Registrar of Designs, I heard the matter in Melbourne on 13 February 2006. The applicant was represented by Mr Greg Noonan of Freehills Patent and Trade Mark Attorneys, Melbourne.
The Designs Act 1906 was repealed on 17 June 2004 therefore this decision is pursuant to the Transitional and Saving provisions of S.153 of the Designs Act 2003.
The Design Applications
The article of the applications is a ‘type font’.
The Statement of Monopoly currently reads:
“Monopoly is claimed in the shape and configuration of the type font illustrated in the accompanying representations.”
The Law – Designs Act 1906
The term ‘design’ is defined in Subsection 4(1) of the Act as follows:
In this Act, unless the contrary intention appears:
“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”.
The term ‘article’, used in the definition of ‘design’ above, is also defined in Subsection 4(1) of the Act:
In this Act, unless the contrary intention appears:
“article” means any article of manufacture and includes a part of such…

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 [2007] ADO 1
Case: [2007] ADO 1
Decision Date: 14 February 2007

CaseChat Overview and Summary

Microsoft Corporation filed multiple design applications for various type fonts under the Designs Act 1906, which was repealed and replaced by the Designs Act 2003. The examiner objected to the registration of these designs, arguing that a type font is not a design that has been applied to an article. Microsoft Corporation sought a hearing to contest the examiner's decision. The court had to determine whether a type font qualifies as an article of manufacture under the Designs Act 2003.

The court examined the definitions of "design" and "article" as outlined in the Designs Act 2003. A design is defined as features of shape, configuration, pattern, or ornamentation that can be judged by the eye. An article is defined as any article of manufacture, excluding integrated circuits and masks. The court found that a type font does not satisfy the requirement that design features must be in the finished article, as there is no tangible finished article to which the design has been applied. The court also disagreed with Microsoft's argument that the list of excluded articles in the regulations is exhaustive, stating that the list only excludes articles to which a design may be applied.

The court concluded that the design applications did not meet the statutory criteria for registration under the Designs Act 2003. The court refused to register the design applications, and the decision will take effect after the appeal period unless a court directs otherwise. The court emphasised that it must adhere to the law and cannot override it for the sake of consistency, even if other designs for type fonts may have been registered in the past.

Orders