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

Last Updated: 14 December 2001

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.
Background - Previous Situation

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

The content of this article does not constitute legal advice and should not be relied on as such. Specific advice should be sought about your specific circumstances.

For more information on this or other Herbert Smith publications, please email us."

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

 
In association with
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.