Microsoft Corporation [2008] ADO 2 (16 January 2008)
Summary
We previously reported that the Australian Designs Office (ADO) recently refused to register type fonts under the old Australian Designs Act 1906 (June 2007 newsletter). Now, the ADO has held that a type font is not a registrable design under the Designs Act 2003 (the 2003 Act). The ADO appears to be reluctant to extend design protection for designs that are primarily displayed electronically without necessarily having any independent physical existence.
Background
Under the 2003 Act, the design registration regime was changed from substantive examination of an application pre-registration to substantive examination post-registration, where only a "formalities check" was performed. Other changes under the 2003 Act included a significantly revised definition of a "design" as "the overall appearance of a product resulting from one or more visual features" and a "product" as "...a thing manufactured or handmade."
In view of these changes, Microsoft Corporation (Microsoft) filed a design application for a type font. During the formalities check, the application was ultimately objected to because a type font was not a "product" under the 2003 Act, since the statutory definition implied that a product must be a "finished" product and therefore tangible. Microsoft asserted that a type font was indeed a product, and that in any event, the question of whether a type font is a product under the 2003 Act was a matter for substantive examination, post-registration.
The objection was maintained and Microsoft sought a hearing in an attempt to secure registration of the design.
Microsoft's Submissions
The Registrar highlighted the following points from Microsoft's submissions:
(1) The formalities check only requires the product to be sufficiently identified for the purpose of classification under the Locarno Agreement, as distinct from a determination as to whether it satisfies the statutory definition of a "product". In this case, the Locarno classification provided classifications for type and type fonts, including sub-titles, which would not necessarily be in tangible form.
(2) Unlike the Designs Act 1906, the definition of a "product" under the 2003 Act has no qualification that the product must be tangible or a "finished" product, nor is there any requirement for it to be "in use" or "at rest". Therefore, a "product" need only be a thing "manufactured or handmade". The fact that a type font could be produced electronically by computer software should not detract from its eligibility for registration as a design.
The Decision
The Registrar appeared to accept that some of the previous concepts of an "article" under the Designs Act 1906 should not apply to the 2003 Act. However, the Registrar rejected Microsoft's submissions, finding that:
(1) A "product", separate from the visual features forming the design, must be identified as part of the pre-registration formalities check. The definition of a "design" under the 2003 Act made a distinction between the visual features of the product and the product itself. The Registrar also held that under the formalities check, the product must be identified separately from its visual features, and then be classified under the Locarno classification. Consequently, it was necessary to determine whether a type font was a "product" under the 2003 Act.
(2) A type font does not satisfy the definition of a "product" because it only relates to a collection of visual features for application to unspecified products, such as paper or a computer screen, in unspecified arrangements, such as combinations of letters, numbers and grammatical signs. Thus, the application did not illustrate a product per se, but only visual features relating to a type font. As there was no product disclosed in the application, it failed the pre-registration formalities check and the design could not be registered.
Comment
In this decision, the ADO has relied on the distinction between the visual features forming the design and the product to which they are "applied", in order to find that a type font per se is not a "product". While not directly construing the term "product", it seems implicit from the decision that a product must be tangible in nature in order to satisfy the "product" definition.
It seems from this decision that registration for a type font could be obtained by nominating a physical medium as the "product", such as paper stock or a computer monitor, in order to comply with the relevant test applied during the formalities check.
However, there is a strong probability that the application could be regarded as containing multiple designs (corresponding to the individual font characters) and therefore be subject to multiple filing fees. In this case, up to 90 filing fees could have been incurred for the 90 individual font characters. Even rationalising the number of characters under this scenario would still result in filing fees that are likely to be prohibitive.
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