Under the Australian Designs Act 2003, its design applications are registered after a formalities review. It means 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 registering is certified and can be enforced against third parties.

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. However, that Australian Courts have not yet had the opportunity to consider the validity of a GUI design registration, which is why there are many unexamined design registrations relating to GUIs.

Assuming the registration process is done, the next question would be the enforcement front. In this regard, lawyers say, the Designs Act provides that a person infringes a registered design if certain activities are undertaken in relation to a product “which embodies a design which is identical to, or substantially similar in overall impression to, the registered design”. Where a registered design includes a GUI, the registered design will typically only display the GUI when in an “on” state. Now the question arises whether a product in the “off” state.

An example of where a distinction between an “on” / “off” state may give rise to uncertainty is where a product is imported without being switched “on” until done so by an end user for private use.

It is expected that Courts will in the near future have an opportunity to consider a GUI registered design and provide guidance on the matter. Alternatively, clarifying amendments to the Designs Act will be welcomed.