Australia: Ghost of rulings past: why virtual designs are not yet covered by Australian IP law

Last Updated: 16 July 2019
Article by Isobel Taylor and Georgina Hey

Virtual or non-physical designs, which include graphical user interfaces and screen icons, are designs that impact the appearance of a product through software displayed on an electronic screen. Many of these designs have become ubiquitous in our everyday lives. Well-known and familiar virtual designs range from the Snapchat ghost app button on our phones to your Facebook page's layout, or the look and feel of Microsoft Windows operating systems on your pc.

Due to rapid technological developments in the information and communications technology industries, and the way much of our lives now operate online, these types of designs have grown in significance in the past decades. Internationally, these virtual designs are recognised as registrable designs. However, their protection under Australia's design registration system is currently unsettled because they have been considered transitory in nature and not permanent design features.

Given how much of our time is spent staring at screens (whether for work or play), many stakeholders consider that reforms are required to Australia's designs law, to ensure that this valuable IP in virtual designs can be adequately protected in Australia. In addition, this could increase use of the currently underutilised design registration system in Australia.

Historical lack of protection of virtual designs

In the first case involving registrability of a non-physical design that came before the Australian Designs Office in 1991, Comshare Incorporated, the hearing officer found that the applicant's designs, being icons displayed on a computer screen, were not registrable, as they were transitory in nature and did not give a specific appearance to the screen. Hence, they were not permanent visual features that were applicable to the hardware, but rather, characteristics of the software.

On the basis of the hearing officer's decision, an Australian Law Reform Commission Report published in 1995 recommended that no special provision be included in the new Designs Act 2003 (Cth) (the Act) to protect screen displays as registered designs. The Commission's view was that designs law was only intended to protect physical products, not virtual designs.

To date, there has been no clear clarification from the Australian Courts on whether the definition of a 'product' under the Act, as something 'manufactured or hand made', applies to non-physical designs. Further, the IP Australia Designs Office Manual currently requires designs to be visible when the product is in its 'resting state', while virtual designs are only visible when the product is 'on'.

In the more recent 2017 Apple Inc decision involving Apple's design application for the app button for their iTunes radio service (pictured below), the hearing officer felt bound to follow the earlier decision of Comshare Incorporated, and so found that the logo was not registrable, as it could not be seen when the screen was powered off. Hence, it could not be considered a quality or attribute of the product in question, being the blank phone screen, which remains substantially similar in overall impression to other phone screens in the prior art field.

Lighting the way for reform

Given the increasing role of virtual designs in technology, the Advisory Council on Intellectual Property made a recommendation in their 2015 Review of the Designs System to reconsider the treatment of virtual or non-physical designs in order to accord them greater protection in Australia.

The Review proposed that the definition of 'product' be amended to explicitly include non-physical products, and that design examiners be allowed to consider products not only in their 'resting state' but also their 'active state' when determining the registrability of designs.

Although the Australian Government has agreed to consider these proposals, it has not yet committed to any specific changes. Instead, the Government has focused on further building the evidence base in this area through international engagement activities. The Government's participation in the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications 2016 'Questionnaire on GUI, Icon and Typeface/Type Font Designs' is an example of such. The Australian delegates submitted comments detailing the limitations of our current designs system in relation to virtual designs.

Nevertheless, some of the hearing officer's comments in the Apple Inc decision may indicate a gradual change in attitude towards virtual designs. The hearing officer found that the display screen met the definition of a 'product' and acknowledged that the Act does not specifically prohibit the assessment of visual features of a product in its active state. However, as noted above, ultimately the hearing officer also felt bound to follow the strong precedent set in Comshare Incorporated. This dichotomy further evidences the need for legislative change in this area.

The future of virtual design protection in Australia

If the Australian government eventually proceeds with the proposals, this would place Australia in step with its trading partners, including China, the European Union and the United States, where protection of virtual designs have, to some extent, become commonplace. This would likely see an influx of designers seeking to register their virtual designs in Australia in order to better protect their IP.

Given the current under-utilisation of the Australian designs system, modernising it pursuant to the recommendations set out in the 2015 Review would have the added benefit of increasing utilisation of the regime.

Therefore, creators and owners of valuable virtual designs should be watching carefully for any developments in this area, and pre-emptively considering whether to seek registration for their designs in Australia when the time comes.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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