The Registrar of Designs in Apple Inc [2017] ADO 6 ruled that a design for a display screen is not a new and distinctive design because the display screen at rest, that is in the powered-off state, is simply a blank representation which therefore cannot be new or distinctive.

The decision has formalised what was a previously little-known Designs Office work-around to prevent virtual (i.e. non-physical) designs from certification.

Apple Inc, the applicant, attempted to argue that changes in technology over time has led to images that appear on display screens becoming visual features of the screens. The applicant further argued that most display screens are marketed in shops in their ‘ON’ state and, in use, many display screens (typically with mobile devices) are in a standby mode and rarely if ever ‘at rest’.

The Registrar of Designs in revoking the design, disagreed saying “that an image that appears on a display screen would not be considered to be a quality or attribute of a display screen per se”. This is in contrast to, for example, a new and distinctive shape of a display screen or a new and distinctive permanent pattern or ornamentation applied to a display screen.

A potted history of non-physical designs in Australia

Those in the ICT space know all too well the trouble that the law has in keeping up with technology. Designs Law in Australia has struggled with designs in the digital realm since the late 1980s, although non-physical designs have been registrable and uncontroversial with a number of Australia’s large trading partners for a long time.

Since the late 1980s, Australian Design applicants have sought to register designs in respect of screen displays with limited success. The first major test of the registrability of a nonphysical design was in the early 1990s under the then Designs Act 1906 in Comshare Incorporated (1991) 23 IPR 145. The applicant, Comshare, attempted to register a number of icons for display on a computer screen. The registrar held that since Comshare’s designs are displayed on a computer screen, the designs are transitory and are not actual visual features of the display screen. This decision has dictated Australian Designs Office practice ever since.

Since then, the Designs Act 1906 was repealed and the Designs Act 2003 came into force in early 2004. Among other changes, this Act changed the Australian designs system into a two stage registration regime:

1) Registration (essentially a formalities check).

2) Certification (an optional stage – essentially substantive examination of the application).

In 2011, a Designs Office decision in Somfy SAS [2011] ADO 4 found that an LCD screen was registrable, but would be unlikely to survive certification. Then, in early 2012, concerns were raised about the effectiveness of the designs system and whether it was meeting its original objectives. As a result, the now defunct Advisory Council on Intellectual Property (ACIP) released a report which recommended that protection should be available for at least some virtual or non-physical designs, given the increasing focus of design efforts on software elements of products.

The ACIP report, in combination with the Somfy SAS decision, led to a spike in non-physical design filings, largely relating to mobile handsets and tablets. Importantly, the vast majority of these designs were only in the registration stage (stage 1). In 2013, a handful of non-physical designs were certified – notably Apple Inc’s application for the GUI of their Garageband software, and Labstyle Innovation’s Glucose meter GUI, which led to a view that there was a policy shift at the Australian Designs Office.

However, the decision in Registrar of Designs in Apple Inc [2017] ADO 6 indicates that there is no longer to be any shift in that direction until the Designs Act 2003 is changed.

The future

In 2016, a Productivity Commission Inquiry Report into Australia’s Intellectual Property Arrangements recommended that treatment of virtual or non-physical designs be reconsidered. Given that Australia has a two stage design registration and certification system, and most non-physical designs will pass the first registration test, applicants may be advised to continue filing for non-physical designs and perhaps request certification when Australian Designs law is overhauled in the near future.