ava i lab le a t www.sc iencedi rec t .com

www.compsecon l ine .com/publ i ca t i ons /prodc law.h tm

c o m p u t e r l a w & s e c u r i t y r e p o r t 2 2 ( 2 0 0 6 ) 2 1 8 – 2 2 1

UK design law – icons and screen displays

The registration as designs of computer icons, graphicaluser interfaces and webpages

David Bainbridge

Aston Business School, Birmingham, UK

a b s t r a c t

Changes to national registered design laws in Europe and the introduction of the Commu-

nity design have brought inexpensive means of obtaining monopoly protection for images

produced by computer software such as computer icons, screen displays and webpage

designs. Graphical user interfaces (‘GUIs’) are also potentially protectable, even down to lit-

tle symbols displayed on mobile phones, indeed any image displayed on equipment with

a visual display. Of course, not every such image can be registered as a design and there

are a number of requirements for registration, such as novelty and individual character

but any new and striking design for icons, etc. should be relatively easy to register. This

article explores the issues involved.

ª 2006 David Bainbridge. Published by Elsevier Ltd. All rights reserved.

The availability of reasonably priced monopoly protection for

up to 25 years, generally easy to obtain, sounds too good to be

true but there seems to be a general lack of awareness of this

form of protection as so far, there are relatively few registra-

tions either at the UK Design Registry under the Registered

Designs Act 1949, as amended,1 or the Office for the Harmoni-

sation of the Internal Market (Trade Marks and Designs)

(‘OHIM’), which started accepting applications to register

Community designs on 1 January 2003 under the Council Reg-

ulation (EC) No 6/2002 on Community designs.2 Probably the

reason for the slow take up of the registered design system

as a means of protecting images as registered designs is the

fact that previously, it was very difficult to register them as

designs because of the requirements for registration under

the 1949 Act before the changes made to implement the har-

monising Directive which took effect on 9 December 2001.

Before looking at the provisions in the Registered Designs

Act 1949 and the Community Design Regulation,3 the relevant

parts of the Act as it was before amendment by the 2001

Regulations are described.

1. Previous registered design law

Before amendment, the Act defined ‘design’ in terms of

‘. features of shape, configuration, pattern or ornament applied

to an article by any industrial process .’ and the definition of

‘article’ as ‘. any article of manufacture and includes any part

of an article if that part is made and sold separately’. The def-

inition of ‘article’ together with the requirement that a design

had to be applied to an article by an industrial process pre-

vented the registration of most computer-generated images

1 The changes to the requirements for registrability were the result of the Registered Designs Regulations 2001, SI 2001/3949 whichcame into force on 9 December 2001. The Regulations implemented Directive 98/71/EC of the European Parliament and of the Councilof 13th October 1998 on the legal protection of designs, OJ L 289, 28.10.1998, p. 28. The Regulations survived an attack that they wereultra vires in Oakley Inc v. Animal Ltd [2005] EWCA Civ 1191, though now subject to a reference to the Court of Justice for a preliminaryruling under Article 234 of the EC Treaty (Case C-267/05).

2 OJ L 3, 05.01.2002, p. 1 (the ‘Community Design Regulation’).3 The requirements for registration under the Act as amended and the Community Design Regulation are equivalent.

0267-3649/$ – see front matter ª 2006 David Bainbridge. Published by Elsevier Ltd. All rights reserved.doi:10.1016/j.clsr.2006.03.010

c o m p u t e r l a w & s e c u r i t y r e p o r t 2 2 ( 2 0 0 6 ) 2 1 8 – 2 2 1 219

and icons. A very small number of computer-generated

images did achieve registration, particularly if the code to pro-

duce the images were hard-wired into the computer itself so

that they could be considered to be an intrinsic part of an

article.

Before the changes to the Registered Designs Act 1949,

practice at the UK Designs Registry was to consider that

a graphic symbol displayed on a computer screen, per se,

was not an article, following Xerox Corporation.4 However, in

the earlier case of Suwa Siekosha’s Design Application,5 it was

accepted by Falconer J that icons displayed on a digital watch

were registrable and were applied by an industrial process.

An important feature was that the symbols were built into

the watches. This was a factor that influenced Jacob J in the

Registered Designs Appeal Tribunal in Apple Computer Inc’s

Design Applications6 in which the applicant sought to register

computer icons as designs.

In Apple Computer, the application was expressed to be in

relation to a ‘set of user interfaces for computer display’.

The hearing officer at the Designs Registry did not consider

that applying a design to a computer screen by means of

a computer program was an industrial process, nor was

a user interface an article. However, Jacob J thought the

issue was basically one of semantics and a change to the

description of the article to which the design was applied

should overcome the objection. An example of the form

of words that could be used was suggested by counsel for

Apple, being ‘a computer with an operating system which

displays the icons concerned’. Jacob J thought that, in a case

where the icons were inherently built into the operating

system, the requirement for industrial application would

be satisfied, distinguishing the display of icons produced

by running a particular computer program. The case was

remitted back to the Registry and the statement of the article

submitted by Apple was ‘computer display screens with

computer-generated icon’.7

The position immediately prior to 9 December 2001 was,

therefore, that graphic symbols including icons and other forms

of GUIs might be registrable under the 1949 Act, assuming

the other requirements were met such as novelty and eye-

appeal, providing they were produced by the computer’s oper-

ating system. In other words, the information used to define

and generate the symbols had to be permanently built into

the computer, that is, ‘hard-wired’. Graphic symbols produced

by applications software, such as a word processing program,

did not seem to be registrable. They were not an integral part

of the computer. However, this approach did not take into ac-

count that screen displays and icons generated by computer

operating systems can be customised by the user. As far as

computer graphics were concerned, the registered design

law was still in its infancy when the changes were made

which radically altered this area of law.

4 (unreported) Designs Registry, 10 June 1992.5 [1982] RPC 166.6 [2002] FSR 38. This case pre-dated the changes made by the

2001 Regulations.7 See UK registered design number 2094032.

2. The current law

The changes to the UK registered design and the introduction

of the Community design brought a new and effective form of

protecting computer-generated images, GUIs and icons. The

Directive harmonising registered design law introduced

a very different set of requirements for registrability of de-

signs which are mirrored in the Community Design Regula-

tion. The definition of ‘design’ is, under section 1(2) of the

1949 Act as amended:

.the appearance of the whole or a part of a product resulting

from the features of, in particular, the lines, contours, colours,

shape, texture or materials of the product or its ornamentation.

Designs are incorporated in or applied to products. Under

section 1(3) a ‘product’ is:

.any industrial or handicraft item other than a computer

program: and in particular, includes packaging, get-up, graphic

symbols, typographic type-faces and parts intended to be assem-

bled into a complex product.

These definitions are much wider in scope than under the

old UK law.8 Consequently, and in the light of the definitions

of ‘design’ and ‘product’, especially the inclusion of lines, col-

ours and ornamentation in the former and graphic symbols in

the latter, it is now possible to register all sorts of images gen-

erated by computer, displayed on screens, mobile telephones,

digital watches, digital cameras and so on. Although computer

programs are excluded from the definition of ‘product’, whilst

a graphic symbol may be generated, manipulated or displayed

through the operation of a computer program, the symbol is

not itself a computer program. This is so even if the code rep-

resenting the symbol is embedded within a computer program

as a computer program is a set of statements or instructions

which control or condition the operation of a computer9 but

the code representing a graphic symbol does not do this and

is passive not dynamic. In the Patent Office Consultation

Paper (Legal Protection of Designs: A Consultation Paper on

the Implementation in the United Kingdom of EC Directive

98/71/EC), 12 February 2001, p. 4, it was stated that:

.the range of examples of what may be included within the

definition of ‘product’, including ‘get-up’, ‘graphic symbols’ and

‘typographic typefaces’ shows that the term is to be interpreted

broadly. Computer programs are excluded from the definition,

but this is believed to mean the programs themselves, i.e. the lines

of code and the functionality. Specific graphics which are produced

by computer programs, such as icons, are likely to be considered

protectable as graphic symbols.

8 The definition of ‘article’ has gone as has the requirement forthe design to be applied by an industrial process.

9 The definition of ‘computer program’ in x 101 of the US Copy-right Act (USC 17) is a set of statements or instructions to be useddirectly or indirectly in a computer in order to bring about acertain result.

c o m p u t e r l a w & s e c u r i t y r e p o r t 2 2 ( 2 0 0 6 ) 2 1 8 – 2 2 1220

Apart from conforming with these basic definitions, to be

registrable, a design must be new and have an individual char-

acter. A design is new if no identical design or one differing

only in immaterial features has been made available to the

public before the ‘relevant date’ (the date the application is

treated to have been made under the Act, in the case of a mod-

ification to the design for which application is sought or where

priority from an earlier application in a Paris Convention

country is claimed). Individual character is assessed through

the eyes of the informed user. The overall impression on

such a user must differ from the overall impression on the in-

formed user by any design made available to the public before

the relevant date.

The outcome is that there are now no barriers to the regis-

tration of new computer icons, GUIs, webpage designs or

other computer-generated symbols (including, for example,

a software typeface, previously unregistrable on the grounds

that it was not applied to an article) as long as they have an

individual character (in other words, they are not similar to

‘run of the mill’ or commonplace designs).10

The computer industry and organisations involved in tele-

communications and e-business appear to have been slow off

the mark to appreciate that icons, GUIs and even webpages

can now be protected by registration as designs. At the present

time there are only 106 UK registrations for icons (Locarno

class 14.02.13) and 63 for interfaces and webpages, etc.

(Locarno 14.02.14). A few are scattered about in other classes.

‘Locarno’ refers to the Locarno Agreement Establishing an In-

ternational Classification for Industrial Designs and is admin-

istered by the World Intellectual Property Organisation.11 The

Office for Harmonisation of the Internal Market (Trade Marks

and Designs) (‘OHIM’) started receiving applications for regis-

trations of designs as Community designs from 1 January

2003. However, there are still only a few dozen graphic sym-

bols, such as icons and GUIs registered as Community designs.

The advantages of registration are plain to see. The right in

a registered design is a true monopoly right. This is in contrast

with copyright, infringement of which requires proof that the

infringer has done a restricted act in relation to the copyright

work, such as copying. For registered designs, all that the pro-

prietor needs to show is that the alleged infringing design does

not produce on the informed user a different overall impres-

sion.12 Furthermore, registration is inexpensive and not oner-

ous.13 The present Design Registry fee to register a single

10 It could be said that a design having an individual charactercould be described as striking or different in comparison withearlier designs.11 As on 15 January 2006, 45 of States use the Locarno classifica-tion. The UK became a party to the Locarno Agreement on 21October 2003.12 Section 7 of the Registered Designs Act 1949 and Article 10 ofthe Community Design Regulation.13 The examination of applications is not particularly rigorous.The UK Design Registry do not generally examine for novelty orindividual character unless there is an obvious problem and theOHIM do not carry out substantive examination, except forchecking that the design is not contrary to public policy ormorality.

design for the first five years is incredible value at only £60.14

This represents exceptional value for a monopoly right that

can last for up to 25 years.15 Even the fee for a Community

design, giving protection throughout all Member States, is

only V230. There will, of course, be other expenses such as

the cost of preparing the application and agents’ fees but

even then the overall cost is still insignificant in comparison

with the potential value of the right afforded by registration.

The changes to registered design law have also brought

about an important widening to the scope of the protection

afforded by registration. Previously, infringement required

the design or one not substantially different being applied

to ‘an article in respect of which the design was regis-

tered’.16 It is no longer necessary that an infringing design

must be applied to the same type of article. Both the Regis-

tered Designs Act 1949, as amended, and the Community

Design Regulation state that the protection extends to use

of the design or one which does not produce on the in-

formed user a different overall impression. For the purposes

of infringement, the emphasis now is on the design, per se,

rather than the type of article or product for which registra-

tion has been obtained. This could mean, for example, that

the use of a design registered in respect of graphic symbols

(Locarno 99.00) could infringe a design registered in respect

of computer icons (Locarno 14.02) even though in different

parts of the classification system. Nor should it matter

what type of software generated the design in question,

for example, the design of a ‘clip-art’ image could be in-

fringed by use of the same or similar image in a video

game or as part of the overall design of a website.

Many icons and other computer-generated images may be

protected by the unregistered Community design right as well

as or instead of protection through registration.17 The basic

requirements for subsistence for the unregistered Community

design are identical to those for the registered Community

design, although infringement requires proof of copying. The

unregistered Community design right only lasts for three

years although the right does not run until the design has

been made available to the public. Discovering all potential

conflicting unregistered designs is impossible. This is further

compounded by the imprecise meaning of making available

to the public in the Community Design Regulation being

that, within the Community ‘. it has been published,

exhibited, used in trade or otherwise disclosed in such a way

that, in the normal course of business, these events could

reasonably have become known to the circles specialised in

the sector concerned, operating within the Community’.18

14 The Patent Office is proposing to reduce the fees for multipleapplications.15 Subject to renewal fees every five years.16 Section 7(1) and (2) of the Registered Designs Act 1949 Act priorto amendment.17 This is unlike the UK unregistered design right which cannotprotect images displayed on computer screens as this right pro-tects the design of ‘. any aspect of the shape or configuration(whether external or internal) of the whole or part of an article’;section 213(3) of the Copyright, Designs and Patents Act 1988.18 Article 11(2) of the Community Design Regulation.

c o m p u t e r l a w & s e c u r i t y r e p o r t 2 2 ( 2 0 0 6 ) 2 1 8 – 2 2 1 221

3. Summary

There has been a transformation in design law which has

made it possible to register computer icons, GUIs, screen dis-

plays and even webpages as designs. Although the changes,

flowing from European harmonisation and the introduction

of the Community design, are generally welcome, giving pro-

tection where it either did not previously exist or was possible

in limited circumstances though relatively weak, there is

a down side to this.

The lack of exhaustive examination for novelty and indi-

vidual character19 has permitted the registration of some

icons and screen displays that can only be described as

trite, simplistic or commonplace. It seems fundamentally

wrong that monopoly rights should be so easily obtained

and the registration system, both in the UK and at the

OHIM, looks more like a deposit system. This can only

lead to increased uncertainty and litigation. Unlike the

case with trade mark law (and in respect of graphic sym-

bols, the overlap between trade marks and designs is

particularly strong) there is no requirement that the design

19 Probably the result of a desire to keep registration fees as in-expensive as possible.

is put to use. There is a danger that speculative designs will

be registered in the hope that computer companies and e-

business may be unaware of such designs and inadvertently

use similar designs only to be faced with threats of litiga-

tion. With registered trade marks, companies are used to

carrying out searches of trade mark registers but, given

the relatively low profile of design law, it is unlikely that

they will carry out searches of registered designs. Moreover,

except in the case of very well-known designs, there is little

hope of finding all the conflicting unregistered Community

designs.

Raising awareness of the potential to register computer

images, icons, webpages and the like will encourage more

designers to seek this inexpensive and effective protection

for their new designs. However, in view of the difficulties in

discovering all prior-art designs, we may be in for interesting

times in design law, once the computer industry fully wakes

up to the strong protection now available for computer-gener-

ated images, icons, GUIs and website designs.

David Bainbridge, Report Correspondent, Professor of Business

Law, Aston Business School. Email: DIBainbridge@aol.com.