Microsoft Corporation
[2007] ADO 1
•14 February 2007
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The Designs Act 1906 was repealed on 17 June 2004 therefore this decision is pursuant to the Transitional and Saving provisions of S.153 of the Designs Act 2003.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 an article if made separately but does not include an integrated circuit, or part of an integrated circuit, within the meaning of the Circuit Layouts Act 1989, or a mask used to make such a circuit”.
Subsection 17(2) provides that:
17(2) The regulations may make provision for the exclusion from registration under the Act of designs for such articles, being articles that are primarily literary or artistic in character, as are specified in the regulations.
The relevant regulation is regulation 11 - designs excluded from registration:
Subject to sub-regulation (2), for the purposes of sub-section 17(2) of the Act, the Registrar shall not register under the Act any designs for the following articles, being articles that are primarily literary or artistic in character:
(a)Articles on which there is printing, being –
(i)bookjackets;
(ii)calendars;
(iii)certificates, forms or other documents;
(iv)dressmaking patterns;
(v)greeting cards;
(vi)labels;
(vii)leaflets;
(viii)maps;
(ix)plans;
(x)post cards;
(xi)stamps; or
(xii)transfers that are for the purpose, and are capable, of being transferred to the surface of another article;
(b)medals.
Submissions
The applicant’s agent, Mr Noonan, provided a written summary of the submissions made at the hearing.
Mr Noonan submitted that any grounds for objection to registration are resolved by a proper interpretation of the concepts set out in the Designs Act1906 (the Act) that is not constrained by modes of thinking that belong to a past era. In support of this, Mr Noonan referred to the following extract from the Examiner’s Manual of the United States Patent & Trademark Office (USPTO):
1504.01 (a) III
Treatment of type fonts – Traditionally, type fonts have been generated by solid blocks from which each letter or symbol was produced. Consequently, the USPTO has historically granted design patents drawn to type fonts. USPTO personnel should not reject claims for type fonts under 35 U.S.C. 171 for failure to comply with the “article of manufacture” requirement on the basis that more modern methods of typesetting, including computer-generation, do not require solid printing blocks.
Mr Noonan stated that the term ‘manner of manufacture’, which derives from the 1623 Statute of Monopolies, defines the kinds of subject matter for which patents may be granted. The definitive case, Mr Noonan alleged, was NRDC v Commissioner of Patents (1959) 102 CLR 252 (‘the NRDC case’). Nr Noonan referred to page 269 where the High Court said:
…The word “manufacture” finds a place in the present Act, not as a word intended to reduce a question of patentability to a question of verbal interpretation, but simply as the general title found in the Statute of Monopolies for the whole category under which all grants of patents which may be made in accordance with the developed principles of patent law are to be subsumed. It is therefore a mistake, and a mistake likely to lead to an incorrect conclusion, to treat the question whether a given process or product is within the definition as if that question could be restated in the form: “Is this a manner (or kind) of manufacture?” It is a mistake which tends to limit one’s thinking by reference to the idea of making tangible goods by hand or by machine, because “manufacture” as a word of everyday speech generally conveys that idea. The right question is: “Is this a proper subject of letters patent according to the principles which have been developed for the application of s6 of the Statute of Monopolies?”
Mr Noonan also referred to page 271 where it was said:
The truth is that any attempt to state the ambit of s6 of the Statute of Monopolies by precisely defining “manufacture” is bound to fail. The purpose of s6, it must be remembered, was to allow the use of the prerogative to encourage national development in a field which already, in 1623, was seen to be excitingly unpredictable. To attempt to place upon the idea the fetters of an exact verbal formula could never have been sound. It would be unsound to the point of folly to attempt to do so now, when science has made such advances that the concrete applications of the notion which were familiar in 1623 can be seen to provide only the more obvious, not to say the more primitive, illustrations of the broad sweep of the concept.
Mr Noonan continued by acknowledging that designs are required, under the Act, to be applied to ‘articles of manufacture’. However, Mr Noonan stated, the expression ‘articles of manufacture’ must be interpreted not in 1906 looking back over the 19th century industrial practice, but, in the spirit of the 1959 NRDC case, in 2005 looking at the industry of the modern world.
Mr Noonan argued that a type font is an ‘article of manufacture’ and in support of this, Mr Noonan supplied relevant definitions from the Larousse Dictionary of Science and Technology and the Macquarie Dictionary.
The fact that the subject applications have an additional and different modern form – a set of characters able to be generated on a screen and thence with a printer onto paper – is not a reason to refuse registration to a design applied to a type font, Mr Noonan argued.
Mr Noonan noted that the USPTO has long registered designs applied to type fonts and continues to do so. To illustrate the relevance of this to the present circumstances, Mr
Noonan referred to the definition of subject matter for a US ‘design patent’:-
Ref: 35 USC § 171
U.S. Code as of: 01/22/02
Section 171. Patents for designsWhoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefore, subject to the conditions and requirements of this title.
IP Australia has, Mr Noonan argued, had significant regard to US practice and decisions in some areas of patentable subject matter.
Mr Noonan referred to a number of registered designs for type fonts in Australia and strongly submitted that IP Australia should not depart from established practice without very good reason, for example, a relevant court decision overruling the established practice. Mr Noonan also pointed out that the subject of type fonts has not been addressed in the Examiner’s Manual.
Mr Noonan made submissions with regard to the second examination report. Specifically, Mr Noonan claimed, that the examiner was confusing the design with the configuration and that the argument that the characters are incorporated in specific software has no relevance in this case, as the font is not being limited to one that is computer generated. Mr Noonan agreed, however, with the examiner that there are “infinite variations” of the type font just as there is for any article with a collection of items, such as a suite of furniture.
Mr Noonan argued that a type font is a kind of ‘hardware’ and that the article of manufacture is the ‘font’, which is a collection of characters. Also, Mr Noonan submitted that, according to the Design Examiner’s Manual at paragraph 1.9, the list printed in Reg 11 (1) is “exhaustive”.
Discussion
The sole matter for determination is the objection to registration of the design applications on the basis that a type font is not a design that has been applied to an article.
The emergence of new technologies over the years has had an impact on intellectual property protection laws and I agree with Mr Noonan’s submissions that the law must evolve as technology evolves. However, the law must be accurately interpreted to give full effect to the legislation without going beyond the intent of the legislation. The law to be applied here is the statutory criteria pertaining to designs alone. What is patentable and the Statute of Monopolies concept of ‘manner of manufacture’ have no relevance to designs.
Mr Noonan asserted that a type font is an ‘article of manufacture’ and provided various dictionary definitions in an attempt to support this claim. The Macquarie Concise Dictionary defines ‘article’ as, among other things, “an individual piece or thing” and “any thing”. The Macquarie Concise Dictionary lists three definitions for the word ‘manufacture’ as “the making of anything”, “to make or produce by hand or machinery…” and “to make anything”.
Mr Noonan described a type font as “a set of characters” which, in the traditional form, were physical objects laid out on a tray, or more recently, carried in a typewriter or typesetting machine. Mr Noonan also described the more modern form of a type font as a set of characters able to be generated on a screen and thence with a printer onto paper. I do not disagree with Mr Noonan’s descriptions of a type font, however, this does not automatically mean that a type font qualifies as an ‘article’ in terms of the definition listed in the Act:
“article” means any article of manufacture and includes a part of such an article if made separately but does not include an integrated circuit, or part of an integrated circuit, within the meaning of the Circuit Layouts Act 1989, or a mask used to make such a circuit.
In Australia ‘design’ is defined as:
“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 (my emphasis added)
It is a requirement that the features of the design are ‘in the finished article’, see for example Ferrero’s Design Application (1987) RPC 473.
A somewhat similar issue was considered in Altoweb, Inc [2002] ADO 2 where Deputy Registrar Victor Portelli considered the registrability of a computer display under the Act. Deputy Registrar Portelli made the following observation:
In the present case the pattern of the design is displayed on the computer screen by software that is totally independent of the computer screen as manufactured and as sold. The display of a pattern on a computer screen via software that is independent of the screen, i.e. is not inherently built in to the screen, does not meet the requirement that the features of the design are in the finished article.
In Altoweb, the design, i.e. a computer screen display, was in no way built into the monitor but existed independently of the screen[1]. In the present matter, the type font is not built into, or to be applied to, anything at all. What Microsoft seeks to register is nothing other than the characteristics of the type font itself. It does not seek to register a design for a shirt, or a plate, or any of the other things to which a type font might be applied, or on which it might be depicted. The design does not specify any tangible thing. If a type font is an article of manufacture, as has been asserted by the applicant, then what Microsoft seeks to register is an article of manufacture applied to itself.
[1] In any case, the Australian Law Reform Commission report notes [ALRC report 4.30 – 4.32] that the fact that a monitor displays icons in use does not make the icons a visual appearance of the monitor any more than printer output provides the visual appearance of the printer. The obiter in Re Altoweb (2002) 55 IPR 656 suggesting that an icon which was part of the firmware of a monitor might be capable of registration, is therefore to be treated with caution.
Consistently, a type font does not satisfy the concept of the design features “…being features that, in the finished article, can be judged by the eye…”, as per the definition of a design. In the present matter, in relation to the type font, there is no finished article but simply a concept.
Mr Noonan drew my attention to the list in reg 11(1), submitting that the list was “exhaustive” and that the Registrar could not refuse registration of a design for an article which is not printed in reg 11(1). I respectfully disagree with this position. The list printed in reg 11(1) is not an exhaustive list of non-subject matter instances but merely an exclusion of items that otherwise would meet the subject requirement of being applied to an article. That is, the list is not relevant in situations, like the present, where there is no article of manufacture to which the design has been applied.
I also note Mr Noonan’s submission that “IP Australia has registered a number of designs for type fonts”. To me, these appear to be rare and isolated examples which would seem to be exceptions, rather than the norm. In any case, I refer to the Patent case Boehringer
Ingelheim International v Commissioner of Patents [2000] FCA 1918, at paragraph 21, where Heerey J said:
The applicant also argued that the meaning of "pharmaceutical substance per se" adopted by the delegate was inconsistent with the granting of a number of extensions under the present legislation for other patents. Eight other patents were mentioned. I did not see this as a fruitful line of argument. It would be necessary to consider in detail each of these other patents and the extensions granted. At best for the applicant, this might show that some or all of the extensions were granted on the basis of the construction of s 70(2)(a) for which the applicant now contends. If so, the only conclusion would be that the grant of those extensions was incorrect.
I also refer to the trade mark case Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177 where Wilcox J referred to British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281. Jacob J said:
It has long been held under the old Act that comparison with other marks on the register is in principle irrelevant when considering a particular mark tendered for registration, see e.g. MADAME Trade Mark [1966] R.P.C. 541 and the same must be true under the 1994 Act. I disregard the state of the register evidence.
Wilcox J added to this by saying:
“I add only that, although consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered.”
Here, I am required to decide, from the Act, whether things can be properly registered. I can not override the law for the sake of consistency.
I have carefully considered the design law in the United States of America, as referred to by Mr Noonan is his submissions. However this law is not binding in Australia. Nor does it match Australian law. Similarly, the fact that these type fonts may have been registered as designs in other jurisdictions, including the United States of America, is not a persuasive argument for registration in Australia.
Conclusion
This design is not applied to a finished article.
Decision
I refuse to register the design applications unless directed to do so by a court. At the expiration of the appeal period, the database will be amended.
Tabatha Klippan
Senior Examiner
Trade Marks and Designs Hearings Section
14 February 2007