IP Australia has recently proposed several updates of the Australian Registered Designs system. The proposed updates include allowing certification of design registrations for display screens, graphical user interfaces (GUIs) and icons. This will remove a current anomaly with the system, whereby design registrations can be obtained for display screens, GUIs and icons, but these registrations are not certifiable or enforceable. This is because, at the examination stage, IP Australia deems these designs must be considered in their ‘at rest’ mode (i.e.; with the display screen in the OFF mode), thereby resulting in a finding of a lack newness and/or distinctiveness in light of prior art. Such a finding then leads to revocation of the registration.
Because of this current anomaly, there is a relatively large number of existing design registrations on the designs register which have never been examined, and so aren’t currently enforceable. The owners of at least some of these registrations may be able to reassess whether to request examination once IP Australia implement this proposed change to the designs system, if it applies to previously registered designs.
A recent IP Australia decision has highlighted the peril awaiting existing design registration owners attempting to obtain certification under the current IP Australia practice. In DRiV IP, LLC [2024] ADO 3 (3 October 2024) , DRiV IP, LLC (the Owner) requested examination of registrations 201914249 for an electronic device including display screen, and 201914251 for a display screen (the Designs).
The Designs were filed in July 2019 and registered in September 2019.
In April 2023 the Owner requested examination of the Designs. The Examiner noted that the Designs must be considered in line with the current IP Australia practice with the display screen of each Design shown in it’s blank, ‘at rest’ mode. As such, the Examiner issued an examination report against each Design because, with a blank screen, the Designs were considered neither new nor distinctive in light of prior art. Based on this finding, then Examiner noted that the Designs were to be revoked.
The Owner then requested a Hearing at IP Australia. In issuing his findings, the Hearing Officer noted that:
“The core question to be answered in this matter is how the examination of the Designs should be approached. That is, whether the Designs should be examined ‘at rest’ such that the circular image and/or DRIV text appearing in the representations of the Designs is effectively ignored.”
The Hearing Officer then restated IP Australia’s current practice:
“Currently the practice of the Registrar is to examine designs ‘at rest’, meaning that for the purposes of the comparison with prior art, a product will be taken to be switched to an off state. An obvious implication of this is that images that may be displayed on a screen when switched on, are not visual features for the purposes of any comparison with prior art. The basis for this approach was explained in Apple Inc (‘Apple’) where a delegate of the Registrar found that the visual matter shown as having been displayed on the screen is not viewed as a visual feature which is ‘of’ the product per se.”
In an effort to circumvent the Hearing Officer’s stance, the Owner attempted to amend the product names of the Designs to any of the following:
- Electronic device including a display screen on which a logo is visible at least when the device is used as intended; Display screen on which a logo is visible at least when the screen is used as intended
- Electronic device including a display screen on which a logo is visible at least when the device is used as intended, the device having all things necessary for the logo to be visible on the screen; Display screen on which a logo is visible at least when the screen is in use, the screen having all things necessary for the logo to be visible on the screen
- Electronic device including a display screen on which a logo is non-transiently visible; Display screen on which a logo is non-transiently visible
- Electronic device including a display screen on which a logo is non-transiently visible, this device having all things necessary for the logo to be visible on the screen; Display screen on which a logo is non-transiently visible, the screen having all things necessary for the logo to be visible on the screen
Unfortunately for the Owner, the Hearing Officer found issue with these proposals, because in his view they still didn’t overcome the issue of the Designs being considered at rest; and further that these proposals would alter the scope of the Designs by the inclusion of matter that was not in substance disclosed in the original design applications.
Ultimately, the Hearing Officer reaffirmed the Examiner’s initial decision:
“I am satisfied that examination of the Design ‘at rest’ is the correct approach in this matter. Since the Designs are substantially similar in overall impression to at least one of the Citations, the Designs were not distinctive at the Relevant Date, and must be revoked.”
We therefore recommend that current Australian design registration owners for display screens, GUIs, icons and the like delay requesting examination of their registrations at least until such time as IP Australia updates their practice.
Please feel free to contact the writer at davin.merritt@pof.com.au with any questions or comments on this issue.
