UK: Icons & Screen Designs to Benefit from Registered Design Protection

UK design law is a complex area and industrial designs including computer icons and screen displays are potentially protected by three distinct rights:-

• artistic copyright
• unregistered design right; and
• registered design right.

Computer icons, software fonts, on-screen computer displays and the like may benefit from copyright protection if they possess a sufficient degree of “originality”. The threshold for establishing “originality” is relatively high and requires the expending of some independent creative effort and skill. Minor modifications to existing works are unlikely to attract copyright protection and ultimately, only the courts can decide whether something is original. Until recently, it was thought that copyright was the only form of protection available to software and web designers. This was primarily due to the general view that registered design right protection was limited to articles of manufacture or designs applied by an industrial process.

Designs may also qualify for unregistered design right protection if the designs are original, non-commonplace designs of the shape or configuration of articles. Unregistered design right lasts until 10 years after first marketing articles made to the design, subject to an overall limit of 15 years from creation of the design. Unlike the registered design system outlined below, you do not have to apply to register design right. The right arises automatically when an original design has been either recorded in a design document or an article has been made to the design.

Recent developments suggest that some computer-related designs may qualify for protection under the Registered Designs Act 1949 (“RDA”). In order to obtain a registration under the RDA, a design has to be new (i.e. “novel”), be applied to a specified article by an industrial process (effectively limiting protection to manufactured articles) and be features of shape, configuration, pattern or ornament that have an aesthetic quality (i.e.“eye appeal”). Once registered, a designer has the right to prevent anyone else from using the design on products for which the design has been registered for a period of 25 years. This monopoly is in addition to any design right or copyright protection that may exist automatically in the design. A registered design generally confers stronger rights on the designer than its unregistered counterpart because there is no need to prove copying and the designer has the right to take legal action against others who might be infringing the design and to claim damages.

New Developments

Earlier this week the UK government introduced a new law protecting registered designs. The Registered Designs Regulations 2001(“Regulations”) substantially amend the Registered Designs Act (“RDA”) 1949 to comply with the requirements of EU Design Directive 98/71/EC (“Directive”). The Directive intends to harmonise the essential features of registered design protection across the European Economic Area and primarily affects the criteria for and effect of design registration. The Regulations have made significant changes to the UK design registration system. For example, under the old law there was a requirement for the design to be applied to an article of manufacture or to be applied by an industrial process. Such considerations will now no longer be relevant, extending the level of protection to other designs.

The changes introduced by the Regulations present exciting new opportunities for designers who will have a greater ability to protect their creations, earn revenue from licences and take action against infringement. Of particular interest to the IT industry is the possibility of registering computer icons and screen displays. The Regulations expressly provide for the registration of “graphic symbols” and “typographic typefaces”. A design registration will provide protection without the need to show copying (in contrast to the copyright position). The Regulations therefore offer enhanced and valuable protection to software and web designers.

Coincidentally, the recent case of Apple Computer Incorporated v Design Registry considered the issue of whether computer icons could be registered under the RDA and made specific reference to the 1998 Directive. Apple, computer manufacturers, applied to register articles described as “a set of user interfaces for computer display”. The representation denoted the outline of a computer screen which displayed icons which intermittently appeared on the computer screens of its computers. The designs formed part of the central operating system of the computer. The software for the designs was loaded on to the hard drive of the computer at the point of manufacture.

The Comptroller-General held that the designs were not registrable as they were not articles of manufacture or in the alternative they did not amount to a design applied by an industrial process or means. Apple appealed and argued, inter alia, that the computer display upon which the icons appeared was an article of manufacture because they were an integral part of the product made at its factory. In addition, the designs were applied by an industrial process, namely, that of loading the main system software on to the computer at the point of manufacture. Relying on Ferrero [1978] RPC 473 and KK Suwa Seikosha [1982] RPC 166, Apple argued that the fact that the designs were not visible on the display until the computer was powered up did not render the design unregistrable. Ferrero established that a design (in that case, a two-tone chocolate egg) only visible upon the action of a customer (i.e. breaking the egg so that it could be eaten) was registrable under the RDA 1949. Suwa established that icons which are not necessarily visible at the time of purchase but become visible when the article (in that case, a digital watch) is used for its intended purpose and which appear periodically on the face of the article and can be switched off are applied by an industrial process and constitute registrable designs under the 1949 Act. Apple also contended that the Directive, whilst not yet in force in the UK, clearly envisaged that specific graphics such as icons are potentially registrable.

The Court held that the icons could be registered. It was apparent from the specification that the computer screen on which the icons appeared was an article. Furthermore, the designs were applied by an industrial process as they were built into the software as part of the manufacturing process. The court reached this conclusion without recourse to the authorities discussed above and although it did not apply the Directive directly it conceded that the Directive clearly envisaged that designs of this nature might be registrable. As there was no valid public policy argument to prevent registration, the court held that the icons could be registered as designs under the RDA.

Practical Consequences

There is no doubt that the Regulations will create greater protection for British designers and businesses. However, some commentators argue that the changes brought about by the new Regulations will lead to considerable uncertainty in the design field. For example, the new 12 month “grace period” between disclosure and filing an application for registration may increase the scope for accidental infringement.

Software and web designers should seriously consider registering distinct icons and distinct features of screen displays because registration provides stronger protection than copyright. A registered design will be infringed by anyone who uses the design, whether or not they copied the work of the author of the design. In order to prove copyright infringement it is necessary to establish copying, which may not always be easy, especially if it cannot be shown that the alleged infringer had seen the work which he is accused of having reproduced. Another advantage of a registered design is that, because it is contained in a public register, it is much easier for the owner to assert that he is the owner of the right. In the case of copyright often the owner’s title can be hard to prove, as in the absence of any sort of register in the UK proving title can involve a paper trail through old documentation.

Designers should also monitor the design process more carefully to avoid infringing the design rights of other parties. Some national offices offer online searchable databases of existing registered designs that will enable designers to see whether their design has previously been registered. In the UK, all registered design records prior to 1968 are held by the Public Records Office. Later registered designs are held by the Designs Registry at the UK Patent Office whose website can be found at http://www.patent.gov.uk.

A copy of the Regulations and a Guidance Note which includes “Frequently Asked Questions” for designers and laymen may be found at http://www.patent.gov.uk/about/ippd/issues/directive.htm

"© Herbert Smith 2002

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