The validity of Australian registered design protection for graphical user interfaces (GUIs) is somewhat unclear. The registrability of GUIs in some of Australia’s trading partners are summarised below whereafter the Australian position is considered.

What is a GUI?

A GUI provides users with “a visual way of interacting with a computer using items such as windows, icons and menus”.1

Registrability of GUIs around the world

China

Early in 2014 the State Intellectual Property Office (SIPO) announced an amendment to its Guidelines for Patent Examination relating to design patent protection for GUIs. That amendment explicitly provides that a product including a GUI may form the subject matter of a valid design patent. GUIs, however, cannot be protected in abstract but must be incorporated into a product such as a mobile phone display screen.

Europe

The law which governs the registrability of Community Designs defines a design as the “appearance of the whole or part of a product resulting from the features of, in particular, contours, colours, shape, texture or materials of the product or its ornamentation”. By “product” is meant “any industrial or handicraft item other than a computer program: and in particular, includes packaging, get-up, graphic symbols, typographic type-faces…”. This provision explicitly allows for the registration of images, such as GUIs, generated on a computer screen and mobile phone.

USA

Design patents can cover computer generated icons. The guidelines established by the US Patent and Trademark Office (USPTO) stipulate that computer generated icons embodied in articles of manufacture are eligible for design protection. Importantly the drawings of a design patent are required to depict the icon embodied in an article of manufacture such as a computer screen, monitor or other display panel.

Registrability of GUIs in Australia

The Australian Designs Act 2003 states that a design “in relation to a product, means the overall appearance of the product resulting from one or more visual features of the product”. “Product” in turn is defined as “a thing that is manufactured or hand made”. Australian design applications are registered after a formalities review, i.e., a design application is not substantively examined on the merits before registration. However, before a registered Australian design can be enforced, a request for examination of the design registration must be filed. If the Registrar of Designs is satisfied that the registration is valid, the registration is “certified” and can then be enforced against third parties. The Australian Register of Designs is replete with unexamined design registrations relating to GUIs. To date only a handful of GUI related design registrations have been examined and certified. To gain insight into the current practice of the Australian Designs Office, the authors reviewed the prosecution files of a number of certified GUI design registrations. It appears that with an appropriate product name, statement of newness and distinctiveness as well as suitable drawings it is possible to have a GUI design registration successfully examined and certified in Australia. It is important to note, however, that Australian Courts have not yet had the opportunity to consider the validity of a GUI design registration. Pending final determination by the Courts or legislative changes to the Designs Act,it appears that where a GUI is sought to be protected a design application may be filed and prosecuted to certification.

The Enforceability of GUI Design Registrations

Assuming that GUI’s can be validly registered under Australia law, the question arises how such rights can effectively be enforced. In this regard the Designs Act provides that a person infringes a registered design if certain activities are undertaken in relation to a product “which embodies a design which is identical to, or substantially similar in overall impression to, the registered design”. Where a registered design includes a GUI, the registered design will typically only display the GUI when in an “on” state. The question now arises whether a product in the “off” state, i.e., wherein the GUI is not displayed,in fact “embodies” the registered design. It is believed that there are good grounds to support the argument that a product embodies the registered design, even in the “off” state, if the product has inherently built into it all the components required to generate the GUI. An example of where a distinction between an “on” / “off” state may give rise to uncertainty is where a product is imported without being switched “on” until done so by an end user for private use. In this case the importer / distributor may argue that the offending product in the “off” state does not embody the registered design and that there can be no infringement by the importer / distributor. The registered proprietor on the other hand will argue that the offending product has built into it all components required to generate the GUI and accordingly infringes the registered design.

Conclusion

Although the Australian Designs Office has certified a number of GUI related registered designs, there remains some uncertainty as to the validity and enforceability of such designs. It is hoped that the Courts will in the near future have an opportunity to consider a GUI registered design and provide guidance on the matter. Alternatively, clarifying amendments to the Designs Act will be welcomed.