Registered Designs – computer-generated graphics now registrable under the ‘new’ law

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 ‘Regulations’), from 12 December 2001, once 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 under European Community law or national laws, as harmonised by EC Directive 98/71 on the legal protection of designs (the ‘Directive’). In the UK, Registered designs are today governed by the Registered Designs Act 1949 (the Act) as amended by the Registered Designs Regulations 2001 implementing the Directive.

These changes have made the registrability of computer-generated graphic symbols, screen displays, graphical user interfaces (GUIs) and even web pages possible under both EC and UK law. There were only very few examples of registration of such things before the changes to the Act in the UK.

Indeed under the ‘old’ law, prior to the implementation of the Directive in the UK on 9 December 2001, “design” was defined in s 1(1) of the Act as “features of shape, configuration, pattern or ornament applied to an article by any industrial process”. “Article” was defined under s 44(1) as “any article of manufacture and includes any part of an article if that part is made and sold separately”. These two definitions altogether seemed to preclude the registrability of computer-generated images, such as for example computer icons and GUIs. Three cases at that time illustrated the difficulties surrounding the registrability of computer-generated images:

In Suwa Siekosha’s Design Application (1982) Falconer J accepted that icons displayed on a digital watch were registrable and that the icons were applied by an industrial process. An 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 a computer screen, per se, was not an article and therefore could not be registered.

In Apple Computer Inc’s Design Applications (2002), one of the last cases to be judged under the ‘old’ law, the application was expressed to be in relation to a “set of user interfaces for computer display”. Jacob J thought that, in a case where the icons are 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 (presumably, he meant an applications program, such as a word processor or spreadsheet program, as opposed to an operating system program). In the end the icons under scrutiny were registered.Â

The position as regards computer-generated images under the ‘old’ law following the Apple decision can be summarised as follow: icons and GUIs were registrable, provided they were fulfilling the other legal requirements, if they were produced by the computer’s operating system, namely if the information used to define and generate the symbols was permanently built into the computer. Consequently icons and GUIs generated by applications software did not seem to be registrable because they were not built into the computer. Â

Under the ‘new’ law “design” is now defined as being “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”. “Product” being “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 assembled into a complex product”. This new definition of design and product together broadened the scope of what could be registered as a design. These new provisions obviously allow for the registration of images generated on computer screen but also on mobile telephones, digital watches, digital cameras and so on. Yet in drafting the Designs Directive, the Commission decided to set a high threshold for protection, with a view to granting registered designs stronger protection. This is reflected in the requirement in the ‘new’ law that designs must not only be novel, they must also have “individual character”. Under s. 1B (3) a design will have individual character “if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public”. So far the computer industry and organisations involved in e-business seem to have been incredibly slow off the mark to appreciate that such things can be protected by registration as designs: since the ‘new’ law came into force there are in the Patent Office 69 registrations for icons and only eight for interfaces and webpages.Â

It has to be noted the initial registration period is 5 years from the date of registration of the design. Registration may then be renewed for a second, third, fourth and fifth period. All in all a registered design can be protected for up to 25 years.