Over the last 10 years, Australian courts have clarified design legislation in respect of most types of products the subject of design registrations. However, the validity of Australian registered design protection for graphical user interfaces (GUIs) is somewhat unclear, according to lawyers at Spruson & Ferguson.

GUIs provide users with “a visual way of interacting with a computer using items such as windows, icons and menus,” say Edward Genocchio, principal, and André Meyer, senior associate, writing in a news alert on the firm’s website.

Under the Australian Designs Act 2003, a GUI’s design applications are registered after a formalities review. This means that before the enforcement of a registered Australian design application, a request for examination of the design must be filed. If the Register of Designs is satisfied that the registration is valid, then the process of registration is certified and can be enforced against third parties.

According to the rule, it appears that with an appropriate product name, statement of newness and distinctiveness as well as suitable drawings, it is possible to have a GUI design registration successfully examined and certified in Australia. Lawyers there find that there are numerous unexamined design registrations relating to GUIs. They say that Australian courts have not yet had the opportunity to consider the validity of a GUI design.

Genocchio says that icons and GUIs are a new phenomenon and, accordingly, are yet to be considered by the courts. Until such time as the courts clarify the design legislation with respect to icons and GUIs, the validity of such registrations cannot be guaranteed.

“Pending final determination by the courts or legislative changes to the Designs Act, it appears that where a GUI is sought to be protected a design application may be filed and prosecuted to certification,” Genocchio and Meyer write. Genocchio adds that as the visual appearance of a product has become increasingly important (particularly between phone and consumer product companies), design registrations have become essential in an IP portfolio as a valuable deterrent to copying. “Accordingly, as Australia has a twostep design application process, where design applications are registered within a month without substantive examination, it is strongly suggested that design applications be filed for any product with a distinctive visual appearance whether that product includes an Icon/GUI or not.”