Key Takeaways

• IP Australia has affirmed its position in DRiV IP, LLC [2024] ADO 3 (DriV Decision) that Graphical User Interfaces (GUIs) do not provide visual features for a design under the current legislation and IP Australia’s practice guidelines, as products are to be reviewed ‘at rest’.
• The Federal Government is considering legislation aimed at refining the definition of ‘a product’ to specifically include virtual designs, such as GUIs. Further updates regarding draft legislation are expected in late 2025.
• In the meantime, design applicants will need to navigate IP Australia’s construction of ‘product’ and its application to GUIs during the certification process, including giving careful thought to the product title.

We explain key implications of the DRiV Decision below, including how it compares with other recent interface designs that have been considered by IP Australia.

What is a visual feature of a product?

The Designs Act defines a design as the overall appearance of a product resulting from one or more visual features of the product.

The designs under review in the DRiV Decision were electronic devices with graphical user interfaces (GUIs) showing DR1V logos. In refusing to certify the designs, the delegate primarily relied on the following points to conclude that GUIs do not provide the requisite visual features under Australian law:

• The Designs Act 2003 (Cth) (the Designs Act) was implemented by the Federal Government with the vast majority of recommendations from a comprehensive 1995 ALRC Report.[1] This included the ALRC recommendation that ‘[s]creen displays should not be able to be protected as designs […]’.
• A ‘product’ is currently defined in the Designs Act as ‘a thing that is manufactured or handmade’.[2] The delegate concluded that in ‘everyday speech’ you would not normally ‘manufacture’ or handmake digital displays, such as GUIs.
• The Applicant’s submissions did not take the question of whether designs should be examined ‘at rest’ much further than the submissions previously made (and rejected) in Apple Inc [2017] ADO 6 (Apple).
• Attempts by the Applicant to rely on the language present in the preceding 1906 Designs Act were dismissed outright.

Despite the adverse decision, the delegate’s reliance on selective provisions of the Designs Act and excerpts from extrinsic materials leaves open the question of whether a court may have decided this case differently. For example:

• the delegate’s broad position was that the Federal Government had responded to the ALRC recommendations with an unqualified acceptance – however, no clear statement to support that inference was provided in the explanatory memorandum of the Designs Act;
• the delegate appeared to prefer the reasoning in Altoweb,[3] an earlier decision of the Designs Office made under the 1906 Act, rather than a later 2002 appellate decision of the UK Registered Designs Tribunal in which Jacob J found a ‘computer with an operating system that displays the icons concerned’ was an ‘article’ under the Registered Designs Act 1949(UK); and
• despite referring favourably to the Altoweb decision the delegate gave no weight to other decisions made under the 1906 Act ostensibly on the basis that the ALRC recommendations were more relevant extrinsic material – but the explanatory memorandum of the Designs Act did not foreshadow a significant change to the fundamental subject matter of designs.

The Designs Act provides a relatively broad definition of ‘design’ and does not naturally lead to a conclusion that visual features of the product need to be ‘at rest’. Relevantly, the expression ‘resulting from’ in the definition of ‘design’ does not necessarily exclude a transient image and could be construed to mean ‘coming into existence’. Adopting that construction, a GUI would come into existence when displayed as part of a visual feature of an electronic device.

However, IP Australia has a longstanding policy that GUIs, typically used for mobile devices, are not certifiable. This policy based reasoning has resulted in fine, potentially inconsistent, distinctions between designs that are capable of being certified, and those that are not. For example, Australian Design No. 202316007 (the ‘007 Design) for a ‘User Interface For A Cooking Appliance’ was certified by IP Australia in January 2024. However, the representation shown in the ‘007 Design appears to encompass a purely digital design in the form of a user interface, which would differ depending whether the product is ‘at rest’ or switched on. On the face of it, the characterisation of the product (eg, a phone or tablet vs a cooking appliance having a user interface) appears to influence IP Australia’s position on certification. This apparent inconsistency creates confusion for design Applicants.

To avoid confusion, it would seem that a reconsideration of the ‘at rest’ principle is required. The delegate in the DRiV Decision did not address whether the ‘at rest’ principle is appropriate in the context of the Designs Act, but left the door open. In any event, legislative change may supersede any such developments.

What’s next?

In good news for design Applicants, the Federal Government is considering legislative amendments to specifically include virtual designs, including GUIs, in the definition of ‘product’. Further updates regarding draft legislation are expected in late 2025. For details about the proposed legislative amendments under consideration, refer to our previous article here.

These legislative changes will spell a new era for design protection in Australia, including protection of virtual designs including GUIs. An important detail for the proposed legislation will be whether the transitional provisions capture previously filed GUIs.

If you have any questions regarding filing and enforceability strategies for GUIs or Australian designs, please get in touch

[1] Australian Law Reform Commission, Designs (Report No 74, 1995).

[2] Designs Act 2003 (Cth) s 6.

[3] Altoweb Inc [2002] ADO 2 (Deputy Registrar Portelli).