TDK Electronics Co Ltd

[1983] ADO 1

In the Matter of the Designs Act 1906

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In the Matter of Applications Nos. 0107/82 and 0108/82 for Registration of Designs by T.D.K. Electronics Co. Ltd.

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In the Matter of a Request for a Decision of the Registrar under Sub‑section 24(1).

DECISION OF AN ASSISTANT REGISTRAR OF DESIGNS
         On 14 April 1982 T.D.K. Electronics Co. Ltd., through their patent attorney Mr. R.G. Shelston of Shelston Waters, Sydney, lodged two applications, Nos. 0107/82 and 0108/82, for registration of a design for the ornamentation of a cassette wrapper.
         Representations of the designs are attached to this decision and numbered for each application.  The Statement of Monopoly for each application reads as follows:‑

"The ornamentation of a cassette wrapper as shown in the representations herewith.  In the representations Fig. 1 is a front view of the wrapper laid out flat, Figs. 2 and 3 are a plan and a side elevation respectively projected from Fig. 1, Fig. 4 is a schematic repetition of Fig. 1 in which the mat areas indicate transparency, and Fig. 5 shows the wrapper when wrapped about a cassette."

Objection was taken that the subject matter of the applications appeared to be unregistrable under the Designs Act due to the exclusion from registration under regulation 11 of articles that are primarily literary or artistic in character on which there is printing.
         Mr. Shelston replied to this objection and forwarded a sample of each cassette wrapper, although he pointed out that the samples differed slightly from the ones submitted for registration.  The objection was repeated in a second report saying that :

"... it is evident from the sample wrapper that the actual article is intended to carry wording, which would indicate that the article would indeed by primarily literary or artistic in character and could not be registered under the general terms of regulation 11(1) of the Designs Regulations.

In addition, since that wording would constitute a description of the goods inside the wrapper, the article is consequently in the nature of a label and as such is further included from registration under the terms of regulations 11(1)(vi) of the Regulations".

Mr. Shelston replied that he requested the Registrar's decision under Sub‑Section 24(2) of the Act and waived his right to a hearing.
Sub‑Section 17(2) of the Designs Act 1906 provides that:

"(2)The regulations may make provision for the exclusion from registration under this Act of designs for such articles, or for articles included in such classes of articles, being articles that are primarily literary or artistic in character, as are specified in the regulations".

Regulation 11 provides that:

11. (1)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.

(2)A design that ‑

(a)is depicted on an article specified in sub‑regulation (1); and

(b)is applicable to any other article,

shall not be excluded from registration in respect of that other article solely by virtue of the application of sub‑regulation (1).

The articles to which the applicant's designs are to be applied are described in the applications as 'cassette wrappers' and each discloses an opaque plastic sheet bearing several transparent rectangles of varying size with printed matter inscribed on the opaque parts of the sheet.  The printed matter describes the nature and origin of the cassette.  The applicant's statement of monopoly is for ornamentation of a cassette wrapper and hence does not claim any protection in respect of the shape or configuration of the wrapper.  Therefore the use of the wrapper requires no particular shape and any shaped piece of plastic could be used as 'a wrapper'.  The essence of the articles is that they are pieces or slips of plastic with printed matter on them and can be used as a means of identifying articles.  In fact each wrapper may be described as a label.
Section 17 excludes from registration designs for articles such as labels "that are primarily literary or artistic in character". Consideration was given to this concept in Littlewoods Pools, Ltd's Design Application (1949) 66 RPC 309. In this case an application was made to register a form of football pool coupon, consisting of a rectangular sheet of paper on which was a pattern formed by straight lines, the spaces between which were filled with literary matter. Wynn‑Parry J. decided that there were two fatal objections to the registration of the design and said:

In the first place it is clear that the design is intended to be printed on a piece of paper the size of which is indicated by the four outside lines shown on the representation.  No pool proprietor would issue and no competitor would purchase a blank piece of paper as a football pool coupon.  The function of the paper is solely to carry the imprint of the design, together with the literary matter intended to be inserted in the various spaces shown on the representation.  The piece of paper has not and cannot have any other function.  In those circumstances in my judgment it is not an article within the definition of that word in Sec. 93 of the Patents and Designs Acts.

In the second place when one looks at the coupon in its finished form, as I have had the advantage of doing in this case, it is manifest that the so‑called literary matter (to present which somewhat garish colouring is used) predominates to a very great degree, and secondly that the form of the design is subordinate to and dictated by the content and lay out of the so‑called literary matter.  Indeed when the finished coupon is looked at, so far from the alleged design appealing to the eye, the eye has to search for it, and the design only emerges when the mind has concentrated sufficiently to exclude the literary matter and its colouring from contemplation.

In my view where there is found printed on a piece of paper a series of lines which by themselves might be said to constitute a design, but those lines are subordinate to literary matter which therefore predominates, the series of lines in question cannot form a registrable design.

I believe that a similar consideration should be given to these applications in that judged by the eye, the literary matter on each wrapper describing the nature and origin of the cassette predominates to a very great degree, and that the form of the design is subordinate to and dictated by the context and lay out of the literary matter.
         Accordingly, I am not satisfied that the Applicant's designs qualify for registration and I refuse to register Design Applications Nos. 0107/82 and 0108/82.

G.J. BAKER