Searching for a strategy under uncertain designs law

There is uncertainty regarding whether Australian designs law provides protection for graphical user interfaces (GUIs) and icons as used on electronic devices such as computers and smart phones.

Whilst many such designs have been registered since the Designs Act 2003 came into force, only a handful have progressed through substantive examination to certification, and none has been considered by the Australian courts.

While there is no explicit statutory exclusion of such designs, the Designs Act was drafted after the Government accepted a report which recommended that screen displays should not be protectable by registered designs. Further, the published practice of the Australian Designs Office indicates that such designs should not be protectable.

"The Government accepted a report which recommended that screen displays should not be protectable by registered designs"

The Designs Act defines certain products for which designs must be refused registration, such as integrated circuits and medals, but GUIs and icons are not on this list. However, the definitions of product and design in the Designs Act impose restrictions on design-eligible subject matter. A design must be registered in relation to a product. The Designs Act states that reference to a design is a reference to a design "in relation to a product". Design is defined as "the overall appearance of the product resulting from one or more visual features of the product". Further, the Designs Act states that "a thing that is manufactured or hand made is a product".

The Designs Act does not provide for substantive examination before registration. Designs are registered after an initial formalities check. However, design registrations must be substantively examined and a certificate of examination issued before they become enforceable.

There is thus a difference between a registered design, which has merely passed the formalities check, and a certified design, which has been examined and provides an enforceable right.

A statement of newness and distinctiveness can be used to specify important visual features by stating that these features are new and distinctive. A person comparing the design with another design must have particular regard to the specified features.

If those features relate to only part of the design, the person comparing the designs must have particular regard to that part, "but in the context of the overall appearance of the product".

Often, representations are prepared showing features that are considered new and distinctive in solid lines and other features in broken lines. Newness and distinctiveness can then be stated to reside in the features shown in solid lines to selectively emphasise or de-emphasise certain features.

An Australian Law Reform Commission (ALRC) report on designs protection was published in 1995 and its findings and recommendations were mostly accepted by the Government in 1999. The Designs Act 2003 was drafted against this backdrop.

The ALRC report discussed in some detail the registered design protection of screen displays that provide the look and feel of a computer programme, and made a brief mention of icons.

The ALRC report felt that a screen display is not a product, but rather "a use of a product". Further, a screen display is not the visual appearance of a screen as product, because the visual appearance of the screen "is the product at rest, not in use". Neither is it the visual appearance of a computer programme: "the fact that the screen display is generated by a computer programme does not make it the visual appearance of that programme any more than a printed page is the visual appearance of the printer". It concluded that "a screen display does not qualify for protection as a design either as the design of a computer programme or on any other ground".

It recommended that "screen displays should not be able to be protected as designs. It is not necessary to include any special provision in the new designs legislation to confirm this".

The Government agreed with this recommendation. Consistent with the report, the Designs Act did not explicitly exclude designs protection for screen displays.

In the absence of any judicial authority, the views of the ALRC report have formed the basis of the published practice of the Australian Designs Office to date. Australian Designs Office practice is set out in the following statement of the published practice of the Australian Designs Office:

• A particular issue is the registrability of icons on computer displays. The ALRC 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 not to be followed.

The grounds for formalities objections are specific and in essence limited to matters of form and whether the application provides enough information. The formalities check covers the number of designs included (since a fee must be paid for each design) and whether the application names products in a manner which allows classification.

The formalities step also considers whether the named product is considered a product under Australian law. As stated above, the Designs Act states that "a thing that is manufactured or hand made is a product". While we would argue that this definition appears inclusive rather than peremptory or prescriptive, the Designs Office's guidance to its examiners states that this definition is exhaustive.

Designs Office practice is not to raise objections at the formalities stage to designs because they relate to icons or GUIs, provided the named product is considered allowable, such as a display screen.

There are hundreds of Australian registered but unexamined designs with subject matter related to GUIs and icons. However, only a very small number of these registered designs have been examined and certified. It is unclear whether these registrations could be successfully prosecuted through to certification to obtain an enforceable right in Australia. Additionally, there is no recent case law to provide guidance in this area.

In the absence of judicial guidance, the published practice of the Australian Designs Office is informed by the recommendations of the ALRC report published in 1995, and the Government's 1999 response. Technology has advanced greatly since then and the use of display screens and their content has undergone a radical transformation. Australian designs law has not kept pace with these developments. Accordingly, clarification and modernisation of Australian law is very important.

"The ALRC report felt that a screen display is not a product, but rather “a use of a product”"

Whether GUIs should be registrable is an issue under consideration by the Advisory Council on Intellectual Property (ACIP), which is due to publish its recommendations towards the end of 2014. ACIP describes the issue as follows:

• Another area of new technology of significance is Graphical User Interfaces (GUIs) or screen icons. In recent years, GUIs have been increasingly lodged as design applications. There is no standardisation in how countries treat GUIs under their designs systems. Recent editions of the Locarno Classification (LOC) of the Locarno Agreement have introduced a new classification to include: graphic symbols and logos, surface patterns, and ornamentation. Although Australia is not a member of the Locarno Agreement, IP Australia uses the 8th edition of the LOC to classify designs… The consideration of screen icons is raised in the examiner's manual at D04.3.2.59. IP Australia does not consider screen icons are a registrable product. However, registrability is not considered during the formalities process and screen icons are appearing on the Register of Designs.

Many Australian design applications relating to GUIs or icons for on-screen display define the product as a display screen with graphical user interface (or icon), or an electronic device, thereby avoiding formalities objections.

In contrast, designating the product as a graphical user interface, icon or screen display will normally result in a formalities objection because the application does not relate to a product. The formalities report might suggest amending the product to 'display screen with…', which will typically overcome the objection.

The view expressed in the published practice of the Designs Office is that an icon (and, by extension, GUI) displayed on a screen or electronic device is not a visual appearance of that product. In our view, if this approach were adopted by the courts, a registered design for an icon or GUI designating a screen or electronic device as the product would probably be unenforceable.

It is possible that GUIs and icons will become protectable in principle by registered designs in Australia (either by court decision or legislative change) by a mechanism other than finding that that the icon or GUI provides the appearance of a display screen (or electronic device). In such circumstances, a design registered in relation to a 'display screen with…' might still be unenforceable.

We believe that it is sensible to take an approach which guards against such an outcome. Australian designs law allows more than one product to be named in an application; this enables an applicant to provide alternative product names, providing alternative avenues for protection. Including additional named products, such as Computer Interface, provides additional options in a belts and braces approach. While filing an application with additional product names may elicit a formalities objection, we have had success in overcoming formalities objections to naming multiple products.

First, some Australian design applications relating to GUIs or icons have representations which effectively show only the GUI or icon (generally surrounded by a broken line border), but which state the product is a display screen with GUI (or icon).

This is potentially problematic, because a design relates to the overall appearance of a product. Where the product is a display screen with GUI (or icon), at least a generic representation of a display screen should be shown, so that the overall appearance is illustrated. Failure to do so runs the risk that the design (overall appearance) of the named product (a display screen) is not shown in the representations.

Further, some applications with representations showing the icon in solid lines and the screen or device in broken lines and stating that newness and distinctiveness reside in the features shown in solid lines, also state that the parts shown in broken lines do not form part of the design.

The intention is to broaden the scope. However, this can amount to a statement that parts of the drawing necessary to show the overall appearance of the product do not form part of the design. This is tantamount to stating that the design does not relate to the overall appearance of the named product and conflicts with the statutory requirement. On the contrary, the Designs Act states particular regard should be given to the parts indicated as being new and distinctive "but in the context of the design as a whole".

We caution against stating that the parts shown in broken lines do not form part of the design, particularly where those parts are necessary to show the overall appearance of the product. For de-emphasis, we prefer the wording 'features shown in broken lines should be given minimum emphasis when considering the overall impression of the design'.

There is considerable uncertainty whether GUIs and icons are design-eligible subject matter under Australian designs law.

The question is under consideration by the Advisory Council on Intellectual Property and recommendations are expected towards the end of 2014.

Further, there are apparent shortcomings in the way many of the registered designs on the register relating to icons and GUIs have been prepared. We believe there are ways in which design applicants can enhance their position despite the existing uncertainty.

Wayne Slater
		Wayne Slater began his professional life as an IP lawyer and patent attorney in South Africa. With over 25 years' experience, Slater is the principal of IP Gateway and a fellow of the Australian Institute of Patent and Trade Mark Attorneys, and the International Trade Mark Association. Slater loves the fusion of science, law and commerce that is uniquely encountered in IP law as well as the opportunity to work with entrepreneurs and business owners both in Australia and overseas. He is dedicated to understanding the business behind the product, never looking at either in isolation. He has represented a number of high-profile clients in designs (and patents) applications and hearings before the Australian Designs Office. Slater is a member of the designs rights sub-committee of INTA's related rights committee. He has published numerous articles on IP law, and in particular designs law, internationally. He is also a regular attendee at international conferences and has presented on Australian designs and patent law at international conferences.

Daniel Rosenthal
		Daniel Rosenthal is a long-standing fellow of the Australian Institute of Patent Attorneys and is also a UK patent attorney. His experience and expertise in both European and Australian patent law provide Rosenthal with the depth and understanding required to provide clients with insightful and timely advice, both in Australia and overseas. Originally hailing from the UK, Rosenthal has a background in physics and worked for several years for the publishing arm of the British Institute of Physics, before making the move to intellectual property. He then completed an MSc in the management of intellectual property and a post-graduate certificate in IP law, both from the University of London. He started with a major British patent attorney firm in 1993, and had qualified as a UK and European patent attorney by the end of 1997. He migrated to Brisbane in 2001, worked for a major Australian firm, obtained a Masters in intellectual property from UTS Sydney, and registered as an Australian patent and trade mark attorney in 2003. He joined IP Gateway in 2013. Rosenthal has a great enthusiasm for patent and designs protection, and takes pride in delivering high quality work and creative IP solutions, such as finding ways to provide protection for innovations which might initially appear difficult or impossible to protect effectively.