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AIPPI 2017 - Study Question - Protection of graphical user interfaces

Study QuestionSubmission date: May 17, 2017

Sarah MATHESON, Reporter GeneralJonathan P. OSHA and Anne Marie VERSCHUUR, Deputy Reporters GeneralYusuke INUI, Ari LAAKKONEN and Ralph NACK, Assistants to the Reporter GeneralProtection of graphical user interfaces

Responsible Reporter: Yusuke INUI

National/Regional Group

Australia

Contributors name(s)

Tom REID, Robert WULFF, Connie MERLINO, André MEYER, Ben HAYES

e-Mail contact

[email protected]

I. Current law and practice

Patents

1. Can GUIs generally be protected by patents?

If no, please answer questions 1.1, if yes, please go to question 2 NoPlease Explain

There is no explicit protection of Graphical User Interfaces (GUIs) in patent law in Australia.

GUIs are often considered in the context of computer software where the patentable subject matter issue is a grey area of law.

Australia has had two recent decisions in the courts (Research Affiliates[1] and RPL Central[2]) that reflect the US position after the decision in Alice Corp. v. CLS Bank International,[3] and similarly many patents relating to computer programs have been struck down for lack of patentable subject matter. As noted, the nature of GUIs operating on electronic devices by means of computer software mean that they are often inseparable and the recent difficulties in obtaining patents for computer software will often therefore apply to patenting GUIs in Australia.

[1] Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150.

[2] Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177.

[3] Alice Corp. v CLS Bank Intternational 134 S. Ct. 2347 (2014).

1.1. If GUIs cannot be protected by patents per se, are any types or aspects of GUIs protectable by patents?Yes If so, which?

see answer to question 1

2. If any type or aspect of GUIs are protectable by patents, under what conditions and to what extent are those types or aspects of GUIs considered to be within the scope of patentable subject matter? NRDC[1] is the seminal Australian case interpreting the scope of what may be patentable subject matter, known in Australian law by the term “manner of manufacture”, as that term was used in Patents Act 1952 (Cth) at the time of NRDC and subsequently carried over to the current Patents Act 1990 (Cth), the term originating in s 6 of the English Statute of Monopolies 1624. In that case, the Australian High Court, while not establishing a rigid definition of that term, upheld a broader interpretation by reference to the principle that to be patentable, the purported invention “must be one that offers some advantage which is material, in the sense that [it] belongs to a useful art as distinct from a fine art… - that its value to the country is in the field of economic endeavour”.[2]

The scope of patentable subject matter afforded to GUIs is unsettled, similarly to computer software generally. Although not explicitly law in Australia, it is generally accepted (much like European practice) that where a technical problem is being solved or where there is a technical effect, one would expect computer software to be patentable. Similarly, the functionality of the GUI elements is considered in respect of the technical effect or the technical problem to be solved. However, the technical aspects or the problem being solved by a GUI are often difficult to identify. For example, the colour, shape, size, arrangement or layout of the GUI alone is typically not considered a technical aspect.

[1] National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252.

[2] Ibid at 275.

3. If yes, do the statutory provisions, case law or judicial or administrative practice require specific claim formats for any patent protection? If yes, what claim formats are available for protecting GUIs?NoPlease Explain

There are no specific claim formats for patent protection of GUIs in Australia.

4. Is any physical feature required in a claim as a pre-requisite for patentability of a GUI? NoPlease Explain

It is not a strict pre-requisite per se, but as above, where it is possible to ascertain, a relevant physical feature is the functionality of the GUI and how this contributes to the invention. This is a significant contributing factor of whether a GUI is considered patentable subject matter. For example, a recent decision (Aristocrat Technologies Australia Pty Limited[1]) held that GUI elements of a gaming machine that presented game information in a way that allows the game and bet denomination to be selected in a single action were patentable subject matter because “information is located in a particular position and functionality is generated by the use of this positional location to improve the gaming machine. The contribution is technical in nature, and achieves a practical and useful result.”

As per above, other physical features that are more design related such as colour, shape, size, arrangement or layout alone of the GUI are typically not considered patentable.

[1] Aristocrat Technologies Australia Pty Ltd [2016] APO 49.

5. To what extent does involvement of the user's mental activities in a GUI process affect the patentability of the GUI? We are not aware of any decisions regarding GUIs that relate to the mental process of a user. Given the way patentable subject matter has been trending in Australia, we would expect that GUIs will remain tested under the more stringent technical effect/problem to be solved approach described above. As a result, we do not consider that the mental processes of a user would affect the patentability of the GUI.

Design rights

6. Can GUIs generally be protected by design rights?


There are difficulties with the registration of GUIs in Australia[1]. In this regard, the requirement in Australia is that designs be registered in relation to a product. A product is defined (sub-div 6(1)) as a “thing that is manufactured or hand made”. Arguably, the language of sub-div 6(1) is deeming rather than exhaustive (despite the Australian Designs Office opining otherwise). The issue is therefore whether a GUI constitutes a “product” under Australian Designs Law. There is no decided case law on this point.[2]

The Australian Designs Office Manual of Practice and Procedure states that, in the case of a GUI, there is no product under the Australian Designs Act in respect of which the GUI is to be registered. This practice is based on a position articulated by the Australia Law Reform Commission in its review of Australian Designs Law, conducted prior to the present legislation being enacted.

The Designs Office Register does bear existing registrations for GUIs that have been registered in respect of a “product” that is shown as some type of screen display (typically shown in dotted outline). However, in general, these designs will be removed by the Designs Office when substantive examination is requested.

The Australian Advisory Council for Intellectual Property recently reviewed, inter alia, the Australian Designs Act and observed that there was nothing in the current Designs Act that prevents the Designs Office from registering GUIs as well as icons, fonts, etc. It is therefore open to the Australian Designs Office to change its current practice of removing these designs during examination. However, this has not yet occurred.

[1] Some GUIs have been registered, despite the published practice of the Australian Designs Office.

[2] Microsoft Corporation [2008] ADO 2 is an Australian Designs Office case about the non-registrability of fonts, there being “no product bearing visual features".

6.1. If not, are any types or aspects of GUIs protectable by design rights? NoPlease Explain

see answer to question 6.

7. If any type or aspect of GUIs are protectable by design rights, under what conditions and to what extent are those types or aspects of GUIs protectable?

As set forth above, the current practice of the Australian Designs Office is to remove GUIs from the Register during examination. In other words, whilst an application for a GUI might be registered, it is not possible to make such a registration enforceable via examination.

7.a. In particular is a GUI that temporarily appears on a screen of an electronic device considered a "design" that is protectable by design rights? NoPlease Explain

No, not as an enforceable design right.

7.b. In particular is a GUI protectable by design rights independently from the design of the electronic device itself? NoPlease Explain

7.c. In particular are smaller elements included in a GUI (e.g. icons, slide buttons) protectable by design rights independently from the GUI as a whole? NoPlease Explain

No, not as an enforceable design right.

7.d. In particular are movements or screen transitions in a GUI protectable by design rights? NoPlease Explain

7.e. In particular are there any other types or aspects of GUIs protectable by design rights? If so, under what conditions and to what extent?NoPlease Explain

The author of this div of this report has been heard before the Australian Designs Office on a case that involved the generation of a screen image by firmware, with that screen image always being in an “on” state. It was argued that such firmware generated screen imagery was “manufactured” within the meaning of the Australian Designs Law. The Australian Designs Office refused to maintain the design right on the register and thus had it removed. The owner of the design right decided not to appeal the decision to the Australian Federal Court. Thus, even in such instances, the Australian Designs Office is refusing to allow enforceable protection of any screen-type imagery.

Copyright

8. Can GUIs generally be protected by copyright?

If no, please answer questions 8.1, if yes, please go to question 9 YesPlease Explain

Elements of GUIs, such as icons, window designs, and sounds, are protectable by copyright in Australia. However, the basic concepts of a particular GUI (such as the metaphor of a “desktop” or a “window”); the mere visual or aural cues intended to facilitate the user’s interaction with it (such as the concept of a “button” used to close a “window” accompanied by a sound when used); and the processes by which a user interacts with the GUI (such as opening a “folder” to access files within it), are unlikely to be protectable, on the basis that Australian copyright law protects the expression of an idea, and not the idea itself.

Australia’s Copyright Act 1968 (Cth) classifies copyrightable subject matter into “works”, consisting of literary works, musical works, artistic works, and dramatic works, and “subject matter other than works”, consisting of sound recordings, films, broadcasts, and published editions.

Of these, the categories most relevant to the protection of GUIs are:

(a) literary works: the code underlying a GUI would constitute a “computer program”, and would thus deemed to be a literary work;[1]

(b) artistic works: elements such as desktop wallpapers, icons or buttons, and window designs may be individually protectable as artistic works, provided they exhibit some type of visual rather than merely semiotic function;[2] and

(c) sound recordings and musical works: aural elements of a GUI, such as a sound made by an operating system when a user logs in or opens or closes a window, for example, may be individually protectable as sound recordings. The underlying composition may conceivably also protected as a musical work, ie a musical composition, if it is one, as distinct from a simple short sound such as a click or beep; though to our knowledge, this has yet to be tested in Australian courts in relation to sounds forming part of a GUI.

A relevant issue with respect to the protection of the underlying code of a GUI as a literary work is that copyright in the code will only be infringed if the whole or a substantial part of the code is copied. It will therefore not be an infringement of copyright in the code of a GUI if a second GUI is created using different code (for example, on a different operating system), even if the second GUI has a resulting appearance that is similar or identical to that of the first. (Elements of the second GUI, may, however, be separately infringing as set out above.)

The Copyright Act also provides the author with moral rights (rights of attribution and of integrity of authorship) applicable to the subject matter listed above. Moral rights are personal to the author (that is, they are inalienable), and are separate and distinct from the proprietary copyright in that subject matter.

[1] Copyright Act 1968 (Cth), s 10.

[2] Elwood Clothing v Cotton On Clothing [2008] FCAFC 197.

8.1. If not, are any types or aspects of GUIs protectable by copyright?

9. Does the fact that GUIs shown on screens are computer-generated affect the eligibility of GUIs for copyright protection? NoPlease Explain

Generally no, with the caveat that for copyright to subsist, the subject matter must have been created by a human being. That is, an element of a GUI that is entirely the creation of a computer could conceivably not be protected. But where, for example, the original artwork constituting the icon for an application is initially created by a human, and subsequently rendered on a screen by code, copyright will continue to subsist in the icon such that, for example, it would prima facie be an infringement of copyright to reproduce the icon even in a different operating system using different code.

10. If any type or aspect of GUIs can be protected by copyright, under what conditions and to what extent are those types or aspects of GUIs protectable?See our response to question 8.

The duration of copyright depends on the nature of the subject matter. Relevantly for GUIs, the durations are:

(a) for literary, artistic, and musical works, the life of the author plus 70 years;

(b) for sound recordings, 70 years from the year in which the recording was made.

11. Can the overall "look and feel" of GUIs be protected by copyright?


Generally, the overall “look and feel” of a GUI is too abstract to be protected by Australian copyright, which, as noted in response to question 8, protects the expression of an idea, and not the idea itself. Individual elements of a GUI may be protectable as set out in response to question 8.

11.1. If not, can individual elements included in a GUI be protected?

Trademarks

12. Can GUIs generally be protected as trademarks?

If no, please answer questions 12.1, if yes, please go to question 13YesPlease Explain

Yes, GUIs can generally be protected as trade marks.

Section 17 of the Trade Marks Act 1995 (Cth) defines the nature of a trade mark in the

following terms:

A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

The word “sign” is defined at div 6 of the Trade Marks Act as follows:

Sign includes the following or any combination of the following, namely any letter, word, name signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.

The above definition is non-exclusive and does not list everything that can be regarded as a sign and, therefore, potentially as a trade mark. A sign, for example a GUI, not articulated in the definition may accordingly form the subject of a protected trade mark provided, such sign is capable of distinguishing the goods of a person.

Despite the broad definition of what constitutes a sign / trade mark, in practice it is expected that an applicant will face certain obstacles to secure the registration of a GUI. Such obstacles may include the possible “genericisation” of elements of the GUI, the fact that a particular GUI merely performs a functional purpose rather than acts as a badge of origin or where multiple trade marks are not sufficiently distinctive when considered alone.

12.1. If not, are any types or aspects of GUIs protectable by trademarks?

13. If any type or aspect of GUIs are protectable as trademarks, under what conditions and to what extent can those types or aspects of GUIs protectable? GUIs should be considered under the same broad criteria as any other kind of sign. The normal registrability tests apply and include whether the GUI claimed as a trade mark is capable of distinguishing the goods or services of one person from the similar goods or services of another.

The appropriate inquiry to determine whether a sign [GUI] is capable of distinguishing the goods or services of a person was set out in F.H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd[1] and can be paraphrased as follows:

The question to be asked in order to test whether a word [GUI] is adapted to distinguish one trader’s goods from the goods of other of all others is whether the word [GUI] is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods.

As with all trade marks, a GUI must be considered in the context of the market in which it is placed, and a decision on its adaptability to distinguish made by employing the normal tests used for all trade marks.

Not all use of a particular GUI will constitute use as a trade mark. In Coca-Cola Co v All-Fect Distributors Ltd,[2] the Full Bench of the Federal Court held:

Use “as a trade mark” is use of the mark as a “badge of origin” in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods… That is the concept embodied in the definition of “trade mark” in s 17 – a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else.

Where use of a GUI does not function as a “badge of origin” such use will likely not be trade mark use. Further, purely functional use of a GUI is unlikely to perform as a “badge of origin”.

[1] F.H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd (1965) 112 CLR 537 at 55.

[2] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 at 19.

13.1. For example, is a screen movement or transition in a GUI protectable as a trademark?

14. Does a GUI need to acquire secondary meaning through use in order to be protected as a trademark? NoPlease Explain

No, a GUI is not required to acquire a secondary meaning through use.

However, any GUI which is common place for the goods in question is likely to be legitimately needed by other persons and prima facie not registrable. In such instance it will be necessary to supply evidence of use to show that the trade mark has acquired a secondary meaning and has come to identify the goods of the applicant in a trade mark manner.

Other forms of protection

15. Does your Group's current law provide any other means for protecting GUIs that are similar in nature to traditional IP rights? NoPlease Explain

16. If yes, what forms of protection are available, and under what conditions, and to what extent, are such other forms of protection available?

II. Policy considerations and proposals for improvements of your Group's current law17. Does your law provide sufficient IP rights protection for GUIs? If yes, is that by means of any one or more types of IP rights protection (and if so, which), or by means of combination of those types of IP rights protection?

If no, please answer questions 18, if yes, please go to question 19 YesPlease Explain

Australian law protects GUIs by a combination of IP rights, as set out above. While the Australian Group considers that the result achieved by Australian law is ultimately (likely to be) appropriate in most cases, we consider there are three main deficiencies in how that result is achieved.

First, in responding to this Study Question, we have set out the state of Australian law by reference to the general principles we consider they would likely be applied to GUIs, but there is a relative paucity of Australian case law actually addressing the protection of GUIs, or elements of them, leaving aside the realm of simple (potentially criminal) piracy of computer code. Accordingly, there is an inherent lack of clarity as to what extent a particular GUI, or elements of it, may be protectable, which itself is a deficiency for both creators and users of GUIs.

Secondly, the result is achieved by a patchwork of IP rights that have been adapted ad hoc from IP concepts that predate the advent of GUIs, or even computers (and this is, to some extent, true of the IP protection of all software). Again, this leads to a lack of clarity and to potential inconsistencies in the protection of particular features of a GUI. Nonetheless, we consider that a sui generis form of protection for GUIs, specifically, is probably not appropriate; what would be preferable would be a clearer adaptation of traditional IP principles to the protection of software, including GUIs.

Thirdly (and, again, this is true of the IP protection of all software), the duration of protection of IP rights in GUIs is arguably not well-tailored to the fast-paced development of computer-related technologies. To take an example, copyright in relation to a GUI, including in the underlying code and in visual elements such as icons, lasts much longer than mainstream computers have been in existence; there is no doubt that the GUIs being created today will have become obsolete many times over by the time that copyright in relation to them expires in 70 or more years’ time. For all practical purposes, then, to the extent copyright does subsist in elements of a GUI, it lasts forever. While that may also be true of other relatively ephemeral materials in which copyright also subsists, such as a printed user manual for a smartphone that will equally quickly become obsolete, there can be no doubt that in the case of the protection of GUIs, the balance between affording adequate protection to the author of copyright material on the one hand, and on the other, allowing the public the ability to exploit that material once an appropriate period of protection has elapsed, is weighted heavily towards the former.

18. If no, how is your law deficient?

19. Is your law sufficiently clear on whether and to what extent GUIs are protected by various IP rights?

If no, please answer questions 20, if yes, please go to question 21 YesPlease Explain

see response to Q17

20. If no, how is your law deficient in this regard?

21. Are there any aspects of your law that could be improved (for example, by

strengthening or reducing the extent to which GUIs may be protected)?YesPlease Explain

see response to Q17

III. Proposals for harmonisation22. Does your Group consider that harmonisation in this area is desirable? If yes, please respond to the following questions without regard to your Group's current law. Even if no, please address the following questions to the extent your Group considers your Group's laws could be improved. YesPlease Explain

Patents

23. Should GUIs generally be capable of protection by patents?

If no, please answer questions 23.1, if yes, please go to question 23.2 YesPlease Explain

GUIs should be capable of protection by patents. It is important to recognise that GUIs are as the name suggests “interfaces,” which by their nature allow a user to interface with a machine. Much as the machine itself can be improved, the user interface itself too can be improved. There are innovative solutions to improve interfaces to make machines work better in many measurable, quantifiable ways such as making the machine operate more effectively, or more efficiently. Denying patents to GUIs would not only be inconsistent with Australian jurisprudence, but would serve to reduce innovation in this area.

23.1. If not, should at least some types or aspects of GUIs be protectable by patents?

23.2. Please explain your reasons.See Q23

24. Under what conditions, and to what extent, should GUIs fall within the scope of patentable subject matter? We consider that the High Court’s decision in NRDC should reflect the position of Australian law in relation to patentable subject matter. We do not consider that subject matter exceptions would be consistent with what the High Court held in that case. Therefore in so far as GUIs are as recognised as patentable subject matter under the NRDC test then GUIs should be capable of protection by patents.

A user’s mental activities are difficult to measure and quantify. Therefore it would not be easy to make any sort of assessment of these activities in any meaningful way as to affect the

patentability of the GUI. We note though that mental activities are often connected with an improvement in the operation of the machine itself. For example, in a situation where interface is improved to reduce the cognitive burden, the machine itself may operate more effectively. Therefore we consider that the focus of determining patentable subject matter should focus on the measurable improvements to the operation of the computer or associated method without having to rely on the mental aspects as an aspect of patentability.

24.1. For example, should involvement of user's mental activities in a GUI process affect the patentability of the GUI?

24.2. Please explain your reasons.see Q24 response

25. Should a physical feature be required in a claim as a pre-requisite for patentability of GUIs? NoPlease explain your reasons

No. For reasons similar to question 24, a physical feature limitation would be inconsistent with the current Australian jurisprudence on patentable subject matter. While a GUI may have physical features, these features may not necessarily be where the invention lies in all cases, both currently and in the future.

26. What claim formats should be available for protecting GUIs?There are no claim format restrictions in Australia for computer software. We consider this appropriate and therefore, we do not consider that there needs to be any in relation to GUIs.

Design rights

27. Should GUIs generally be capable of protection by design rights?


Yes, and all types or aspects of GUIs should be protectable by design rights. This, of course, assumes that the particular GUI has some distinctive design feature or element. This is because GUIs are prevalent throughout current technology and in modern economies. Denial of protection to GUIs would fail to recognise the fairly ubiquitous part they play in current technology, and the proprietary nature of the design elements that go into their creation.

Please also refer to the comments under question 38 (below).

27.1. If not, should at least some types or aspects of GUIs be protectable by design rights?


28. Under what conditions, and to what extent, should GUIs be protectable by design rights? As above, GUIs should generally be protectable by design rights. Further, if it is possible to graphically represent screen movements and transitions in a GUI, then they should also be protectable, assuming that they are new and distinctive GUIs. The group sees no good reason as to drawing any distinction between the different types of GUIs (i.e. all types of GUIs should be protectable).

28.1. For example, should screen movements or transitions in a GUI be protectable by design rights?

29. Should a GUI be protectable by design rights independently from the design of the electronic device itself? YesPlease explain your reasons.

In short, yes. The current definition of “product” in the Australian Designs Act is antiquated and out of kilter with many advanced economies and jurisdictions globally. To require that there must be some physical product in respect of which a design must be registered is, as submitted, anachronistic. To make searching and examination easier, particular Locarno classes could be established for the various types of GUIs, icons, fonts, electronic symbols, etc.

Copyright

30. Should GUIs generally be capable of protection by copyright?

If no, please answer questions 30.1, if yes, please go to question 30.2 NoPlease Explain

The Australian Group considers that copyright protection for GUIs as a whole (ie encompassing elements not traditionally within the realm of copyright, such as the “desktop” metaphor or the concept of particular interactive processes) is inappropriate. However, we agree that subject to the caveats stated in our response to question 32, copyright may be the appropriate protective mechanism for elements of GUIs, including the underlying code, but also including visual and aural elements as described in our response to question 8.

We do consider that Australian law with respect to the copyright protection of the elements of a GUI would benefit from additional clarity as to the threshold a visual or aural element must meet in order for copyright to subsist. For example, we consider it unclear on the current law whether the “close” button on a window may individually be protectable as an artistic work. Such a button is generally minimal in design and adopts what have arguably become (through usage) semiotic components (ie it usually takes the form of an “X”, sometimes in a square box with or without colour, in the top right or left corner of a window); as noted in our response to question 8, a purely semiotic visual creation is not copyrightable. However, the

close function could equally be performed by another means, for example by placing the clickable word “close” in the same place—indicating that there must therefore be some artistic contribution to the design of a particular close button.

30.1. If not, should at least some types or aspects of GUIs be protectable by copyright?YesIf so, which?

see Q30 response


31. Should the fact that GUIs shown on screens are computer-generated affect the eligibility of GUIs for copyright protection? NoPlease explain your reasons.

The fact that other copyrightable subject matter (such as a photograph or, indeed, an e-book) may be shown on a computer screen does not affect the eligibility of that subject matter for copyright protection under Australian law. Accordingly, we do not consider the fact that elements of a GUI may be (by virtue of the fact they are part of the GUI) inherently be intended to be shown only on a computer screen should affect the question of their eligibility for copyright protection.

32. Under what conditions, and to what extent, should GUIs protectable by copyright? As stated in our response to question 30, we consider that elements of GUIs may properly be protected by copyright. We do not consider that copyright is the appropriate mechanism for protecting the “look and feel” of a GUI. Australian copyright law, like that in other common law jurisdictions, has always distinguished between the underlying idea (not protectable by copyright) and the expression of that idea (protectable), and allowing the protection of the overall “look and feel” of a GUI, which is (as the term itself suggests) more in the nature of an intangible idea than any concrete expression, would be to stretch copyright principles too far. To the extent the “look and feel” of itself a GUI has value—for example, that it provides some novel and inventive user benefit, or is or comes to be distinctive of the vendor of the GUI—that value is better protected by patent, design registration, or trade mark and unfair competition rights.

Where elements of GUIs are properly protectable by copyright, the Australian Group queries whether the term of protection is appropriate, and whether copyright could be better adapted to the protection of GUIs by shortening the term of protection. As noted in our response to question 17, however, this applies to all software, not just GUIs, and should be the subject of separate study.

32.1. For example, should the overall "look and feel" of a GUI be protectable by copyright? No

Please explain your reasons.

see Q32 response

Trademarks

33. Should GUIs generally be capable of protection as trademarks?


33.1. If not, should at least some types or aspects of GUIs be protectable as trademarks?

33.2. Please explain your reasons

34. Under what conditions, and to what extent, should GUIs be protectable as trademarks? GUIs should be protectable under the same conditions and to the same extent applicable to other trade marks, ie where a GUI functions as a badge of origin it should qualify for trade mark protection. Rather than providing trade mark laws which require constant amendment to keep pace with technological advances, principles of standard application should govern the eligibility criteria for trade mark protection.

34.a. For example should screen movements or transitions in a GUI be protectable as trademarks? YesPlease Explain

Yes, where screen movements or transitions in a GUI satisfy the standard criteria for trade mark protection, they should be capable of protection.

34.b. For example should a GUI be required to acquire secondary meaning through use, in order to be protected as a trademark?NoPlease Explain

No, a GUI should not as a matter of course be required to have acquired a secondary meaning in order to be protected as a trade mark. Where a GUI is inherently capable of distinguishing the goods of one person from those of another there should be no requirement for acquiring a secondary meaning through use. A GUI should simply be considered against the same criteria which determine whether other trade marks qualify for protection.

Other forms of protection

35. Should there by other forms of protection for GUIs? If so, what forms of protection should there be?YesPlease explain your reasons

see Q36 response

36. Should there be a sui generis right for protection of GUIs? If so, what aspects of GUIs should be protected by such a right, to what extent, and under what conditions?

If yes, please answer questions 37, if no, please go to question 38 YesPlease Explain

While acknowledging that the existing protection of GUIs under Australian law takes the form of a patchwork of rights, we do not consider that GUIs per se warrant protection by a sui generis right. There may be an argument to be made that software in general would be better protected by a sui generis right, noting the issues discussed in our response to question 17, but this would be the realm of another Study Question.

37. Should there be any exceptions or limitations to a sui generis right in order to ensure an innovative and competitive market? If so, what exceptions and limitations should there be and why? YesPlease Explain

see Q36 response

38. Please comment on any additional issues concerning protection of GUIs that your Group considers relevant to this Study QuestionDesign Rights

The Australian Advisory Council on Intellectual Property (ACIP) in its March 2015 Review of the Designs System made a number of recommendations, including, in Recommendation 14, that “the treatment of virtual or non?physical designs be reconsidered, for example by allowing consideration of the product in its active, and not just its resting state when considering validity.” The Australian Government has responded, inter alia, to this recommendation; firstly, by accepting this recommendation, and secondly, by stating that “Through its international engagement activities, IP Australia will continue to assess whether specific considerations for the treatment of virtual or non-physical designs would benefit Australian interests.”

It is therefore hoped that, when the Australian Designs Law is ultimately reviewed, the definition of “product” will be expanded to allow for the registration of virtual or non-physical designs, including GUIs.

Please indicate which industry sector views are included in part "III. Proposals of harmonization" on this form:

Nil

Please enter the name of your nominee for Study Committee representative for this Question (see Rule 12.8, Regulations of AIPPI). Study Committee leadership is chosen from amongst the nominated Study Committee representatives. Thus, persons not nominated as a Study Committee representative cannot be in the Study Committee leadership.

Tom Reid

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