Since January 2003 it is possible for design owners to register their design with the Office for Harmonisation in the Internal Market (OHIM), based in Alicante, Spain, and obtain a Community Design.
Under the Community Designs Regulation 6/2002 (the ÂRegulationsÂ), from 12 December 2001, onceÂ granted it gives protection to its owner in the now 25 Members States of the EU.
As with trade mark law, design owners have now a choice to register their design either underÂ European Community law or national laws, as harmonised by EC Directive 98/71 on the legalÂ protection of designs (the ÂDirectiveÂ). In the UK, Registered designs are today governed by theÂ Registered Designs Act 1949 (the Act) as amended by the Registered Designs Regulations 2001Â implementing the Directive.
These changes have made the registrability of computer-generated graphic symbols, screen displays,Â graphical user interfaces (GUIs) and even web pages possible under both EC and UK law. There wereÂ only very few examples of registration of such things before the changes to the Act in the UK.
Indeed under the ÂoldÂ law, prior to the implementation of the Directive in the UK on 9 DecemberÂ 2001, “design” was defined in s 1(1) of the Act as “features of shape, configuration, pattern orÂ ornament applied to an article by any industrial process”. ÂArticleÂ was defined under s 44(1) asÂ “any article of manufacture and includes any part of an article if that part is made and soldÂ separately”. These two definitions altogether seemed to preclude the registrability ofÂ computer-generated images, such as for example computer icons and GUIs. Three cases at that timeÂ illustrated the difficulties surrounding the registrability of computer-generated images:
In Suwa SiekoshaÂs Design Application (1982) Falconer J accepted that icons displayed on aÂ digital watch were registrable and that the icons were applied by an industrial process. AnÂ important feature was that the symbols were built into the watches.
In Xerox Corporation (1992), the Patent Office found that a graphic symbol displayed on aÂ computer screen, per se, was not an article and therefore could not be registered.
In Apple Computer IncÂs Design Applications (2002), one of the last cases to be judged under theÂ ÂoldÂ law, the application was expressed to be in relation to a “set of user interfaces forÂ computer display”. Jacob J thought that, in a case where the icons are inherently built into theÂ operating system, the requirement for industrial application would be satisfied, distinguishingÂ the display of icons produced by running a particular computer program (presumably, he meant anÂ applications program, such as a word processor or spreadsheet program, as opposed to an operatingÂ system program). In the end the icons under scrutiny were registered.Â
The position as regards computer-generated images under the ÂoldÂ law following the Apple decisionÂ can be summarised as follow: icons and GUIs were registrable, provided they were fulfilling theÂ other legal requirements, if they were produced by the computerÂs operating system, namely if theÂ information used to define and generate the symbols was permanently built into the computer.Â Consequently icons and GUIs generated by applications software did not seem to be registrableÂ because they were not built into the computer. Â
Under the ÂnewÂ law ÂdesignÂ is now defined as being Âthe appearance of the whole or a part of aÂ product resulting from the features of, in particular, the lines, contours, colours, shape,Â texture or materials of the product or its ornamentationÂ. ÂProductÂ being Âany industrial orÂ handicraft item other than a computer program: and in particular, includes packaging, get-up,Â graphic symbols, typographic type-faces and parts intended to be assembled into a complexÂ productÂ. This new definition of design and product together broadened the scope of what could beÂ registered as a design. These new provisions obviously allow for the registration of imagesÂ generated on computer screen but also on mobile telephones, digital watches, digital cameras andÂ so on. Yet in drafting the Designs Directive, the Commission decided to set a high threshold forÂ protection, with a view to granting registered designs stronger protection. This is reflected inÂ the requirement in the ÂnewÂ law that designs must not only be novel, they must also haveÂ Âindividual characterÂ. Under s. 1B (3) a design will have individual character Âif the overallÂ impression it produces on the informed user differs from the overall impression produced on such aÂ user by any design which has been made available to the publicÂ. So far the computer industry andÂ organisations involved in e-business seem to have been incredibly slow off the mark to appreciateÂ that such things can be protected by registration as designs: since the ÂnewÂ law came into forceÂ there are in the Patent Office 69 registrations for icons and only eight for interfaces andÂ webpages.Â
It has to be noted the initial registration period is 5 years from the date of registration of theÂ design. Registration may then be renewed for a second, third, fourth and fifth period. All in allÂ a registered design can be protected for up to 25 years.