Australia: Are Type Fonts Registrable Designs?

The Australian Designs Office (ADO) has refused registration of 24 design applications filed by Microsoft Corporation (Microsoft) in respect of type fonts because a type font is not a registrable design under the old Australian Designs Act 1906 (the 1906 Act). Whilst decided under the now repealed 1906 Act, this decision may have application to the new Designs Act 2003 (the 2003 Act).

Microsoft filed 24 design applications under the 1906 Act for various designs in respect of type font. Each of the applications was objected to during examination on the basis that a type font was not a design that had been applied to an article. Therefore, it did not satisfy the statutory definition of a "design" as defined in the 1906 Act, which is as follows:

An "article" is also defined in the 1906 Act as meaning, inter alia, "any article of manufacture".

As the objection was maintained for each design application, Microsoft requested a hearing before the Registrar of Designs (the Registrar) to secure acceptance of the design applications.

Microsoft submitted the following arguments in support of registration:

1. Design law must evolve with technology, as had occurred in relation to the interpretation of "manner of manufacture" under patent law in Australia. Other jurisdictions had recognised the registrability of type fonts as designs, such as the United States. Therefore, the definition of "article" in the 1906 Act should be construed in this context.
2. A type font is an "article" under the 1906 Act because the dictionary definition of "manufacture" included "any thing", "the making of anything", "to make or produce by hand or machinery" and "to make anything".
3. Under the 1906 Act, specific articles of primarily literary or artistic character were excluded from design registration in an exhaustive list, which included stamps, maps, plans and other printed articles, but not type font. Therefore, type font should not be effectively excluded from registration when it was omitted from this list.
4. The ADO had previously registered three designs for type font and therefore the ADO should consistently apply the registrability criteria for designs.

The Registrar rejected each of these submissions. In respect of (1), whilst the law should evolve with technology, it was subject to the restraints imposed by the wording of the legislation. The law of "manner of manufacture" in Australia and the registrability of designs under US law had no application to the 1906 Act.

In relation to (2), the Registrar noted the dictionary definitions of "manufacture", but stated that it did not mean that a type font automatically qualifies as an "article" under the 1906 Act. The Registrar followed previously established case law in construing the phrase "in the finished article" as meaning that the features of the design must be inherently built into, or are applied to, the article. In the case of type font, it was not inherently built into, or applied to, anything at all. In the Registrar’s opinion, the characteristics of the type fonts were sought for design registration, and not the application of the type fonts to an article, such as a shirt or plate. The design applications did not specify any tangible thing. If type font were an "article" under the 1906 Act, then each of the applications was not for a design in respect of an article, but was for the article itself. The Registrar concluded that a type font therefore cannot be part of a "finished article" and so cannot be a "design" within the statutory definition.

With regard to (3), the exclusion list related to articles that would otherwise satisfy the statutory requirement of being "in the finished article", and thus was not relevant to the case of type font, where there is no article to which the design is to be applied.

Finally, in respect of (4), the Registrar noted that the previously registered designs for type fonts were isolated instances and may have been wrongly registered. While consistency was desirable, the ADO should not persist in perpetuating an error.

As a consequence, the Registrar refused registration of all 24 design applications.

Although the decision was made under the 1906 Act, it is not clear whether it can be directly applied to the 2003 Act as the definition of a design in the 2003 Act no longer requires the features of the design to be "in the finished article". Instead, a "design" is defined as:

A "product" is defined in the 2003 Act as:

The 2003 Act also differs from the 1906 Act in that there is no list of excluded articles relating to printed matter in the 2003 Designs Act.

Notwithstanding these differences, it is possible that the ADO may attempt to apply this Decision to argue that a type font is not a "product" under the 2003 Act because it is not a thing "manufactured", for similar reasons given in the Decision.

However, the writer believes that such an interpretation would ignore the fact that the definitions of "design" and "product" in the 2003 Act are different to the definitions of "design" and "article" in the 1906 Act. Such an interpretation would also, in effect, importthe requirement that the features of the design must be "in the finished article" back into the 2003 Act.

Rejecting the narrow interpretation imposed by "in the finished article" would allow the broader dictionary definitions of "manufacture" to be used to construe "product" under the 2003 Act. On this basis, a type font could fall within the statutory definition of a "product" because it is "a thing made or produced" in both its traditional physical form of a typesetting block and the modern form of being visually produced by software on a screen. Furthermore, the omission of the list of excluded articles in the 2003 Act suggests that there is no restriction as to the registration of printed articles, which would include type font.

Another difficulty facing the registrability of type font is that present ADO practice in respect of multiple designs is quite strict. Accordingly, the ADO may argue that the individual characters of the type font constitute separate designs, and thus require additional official fees to be paid for each character. Were this to occur, it may be possible to argue that there is a "common design", which would permit registration as a single design. However, it is not clear whether a type font would satisfy this requirement, as a "common design" is not defined in the 2003 Act.

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