Design Protection for Screen Displays: Lessons from Recent UKIPO and ADO Decisions
Article written by Phil Jeffrey and Jeremy Moller.
Recent decisions from the UK Intellectual Property Office (UKIPO) and the Australian Designs Office (ADO) have clarified the treatment of transient visual features, such as those displayed on digital screens, in design registration. Both cases highlight the challenges of securing protection for graphical user interfaces (GUIs), icons, and animated designs under their respective legal frameworks.
Key Takeaways
In the UK, the UKIPO confirmed that animated GUI designs must show visual linkage across representations but do not require a specific number of common features.
In Australia, the ADO reinforced the principle of examining designs “at rest,” meaning transient features visible only during operation are not protectable.
Legal Background
In both jurisdictions, the protection of digital designs hinges on statutory definitions of what constitutes a “design” and how visual features are evaluated.
UK
The Registered Designs Act 1949 allows protection for digital media, including GUIs and icons, provided their design is applied to a “product.” Animated GUIs can be represented by up to twelve “snapshots” to show their sequence, provided these representations are visually related.
Australia
Under the Designs Act 2003 (Cth), a “design” is defined as the overall appearance of a product, excluding transient features visible only during use or when the device is powered. This principle aligns with the Australian Law Reform Commission’s recommendations, which emphasize that design protection is limited to physical, industrial products.
Case Summaries
UKIPO Case: Animated GUI Design
In UK Design Application 6309668, the Applicant sought to register an animated GUI design represented by twelve views. The UKIPO initially objected, arguing that the changing positions of dots across the sequence created a lack of unity and therefore weren’t directed to a single design.
The Applicant provided side-by-side comparisons and superimposed images to show common features across the views. The Hearing Officer ultimately ruled that no specific threshold of commonality is required, provided the representations form a “singular, self-contained sequence.” The objection was waived, confirming the flexibility in defining visually related sequences for animated designs.
ADO Case: DRiV IP, LLC 2024 AD) 3 – Screen Designs
In contrast, the ADO examined two registered designs (201914249, 201914251) for electronic devices with display screens featuring a logo visible during operation. The designs were found not distinctive when examined “at rest,” as the transient visual features (logos displayed on screens) were excluded from consideration.
Proposed amendments to redefine the product as having “non-transiently visible” features were rejected for altering the scope of the original application. The ADO ultimately revoked the designs, emphasizing the importance of permanent, visible features for design protection.
Implications
These decisions underscore the challenges of protecting transient or animated features across jurisdictions:
- Unity of Design Representations
In the UK, applicants must ensure that representations of animated GUIs are visually related while maintaining flexibility in how “relatedness” is demonstrated.
In Australia, transient elements are excluded entirely, requiring a focus on permanent features in “at rest” states.
- Strategic Application Drafting
Applicants in both jurisdictions should carefully draft representations and product descriptions, emphasizing features that are eligible for protection under the respective legal frameworks.
- Future Directions for Australian Design Law
IP Australia has proposed amendments to protect “virtual designs,” expanding the definition of “product” to include intangible designs displayed electronically, such as GUIs, animated icons, virtual reality displays, augmented reality overlays, and screensavers. These changes are expected to be legislated some time in 2025 although the timeline is still unclear.
Proposed changes include amending the definition of “visual features” to cover transient elements and allowing applicants to define the scope of their design registration more flexibly, such as by written statements or multi-timepoint representations, similar to those presented in the matter before the UKIPO.
These changes, if implemented, could align Australian design law more closely with jurisdictions like the UK and EU, facilitating better protection for digital and animated content.
Conclusion
These cases highlight the evolving landscape of design law as it adapts to digital innovation. The UK’s flexible approach to animated GUIs contrasts with Australia’s current limitations but may find harmony with IP Australia’s proposed changes for virtual designs. Applicants should stay informed of these developments to secure meaningful protections for their designs across jurisdictions.
The proposed amendments in Australia, if enacted, could signal a shift toward broader protection for intangible and transient visual features, ensuring that the law remains relevant in a rapidly digitizing world.
If you have questions or need help securing design protection for a GUI in Australia or have questions about registering your Australian design in other jurisdictions, MBIP’s patent team is happy to provide advice. Get in contact with us today to talk to an attorney and organise a consultation.
