Popular brands invest millions into the look and feel, or the graphic user interface ("GUI") of their devices to attract people to their brand. The comfort of knowing how to use a brand's GUI is why so many users become brand loyal. It is then not surprising that companies want to protect their GUIs from being used by their competition.
GUIs are part of our everyday lives. We use them numerous times a day to navigate through all our displays: our TVs, computers, smartphones, fit watches, medical devices and even some home appliances. You could no doubt testify that if you have ever changed any of these from one make to another, that it takes a while to figure out how the new device works. This is despite the fact that the basic functionalities are the same, but the way you interact with it to get to those functionalities might be quite different. It might be that you can't swipe to unlock anymore, or drag and drop something into the trash, or enjoy your images in a magazine-style display or see your menu in colourful blocks.
In the past, design registrations were known as the little sister of the patent. However, in the last few years, registered designs have provided success to its holders across the globe. The requirements for a design are similar to a patent, in that it should be new and not yet seen in the field. Where they differ, is that patents protect the mechanics of a product for twenty years, while design registrations protect the unique aesthetic features of an object for ten (or fifteen) years.
How are GUI designs registrations classified?
According to the international design classification, administered by WIPO, GUIs fall under "screen displays and icons" and do not necessarily need to be related to a specific product. In some countries, such as the UK, EU, South Africa and Singapore, you can register the GUI independently of a product. However, other countries like China, Japan and the US, do require a connection between the GUI and a physical product. It is also worth noting that various countries give different names to their registrations. China and the US offer "design patents", the EU offers community designs, while most other countries, including South Africa, offer them using terms such as "industrial designs" or "design rights".
Needless to say, before you apply for a design registration, it is wise to allow an intellectual property attorney to advise you of the requirements for each of the countries where protection is sought.
Scope of protection
Similar to a patent, the rights obtained by a design registration allows the owner to prevent others from using icons, or other user interface designs that are substantially similar to the protected GUIs. The scope of protection afforded to a registration will again depend on the country of the filing. Where countries require a connection to a physical product, protection will only be given to the GUI on that product. That goes to say that if the GUI is used on a different product, it might be difficult to enforce the registration.
What can be protected?
GUIs can either come in the form of static designs or animated ones. In the case of the former, it is possible to obtain separate design registrations for different static elements of the GUIs, which should each be graphically represented in their respective applications. For animated GUI elements, in most countries, a sequence of drawings, representing the entire animation, can be used in a single application. Further to these, layouts including text, patterns and colour may also be protected as a GUI. There are specific requirements for each of these, so make sure you discuss each of these elements with your attorney.
As design registrations are cheaper and quicker to obtain in comparison to patents, large tech companies usually protect each of their GUI improvements with a new registration. This can lead to multiple registrations protecting a single product's GUI.
Are GUI design registrations profitable?
In the well-known battle between the two smartphone giants, Apple defended both its patent and design registrations, concerning the layout of icons and shapes of its iPhones and iPads. Looking at the two phones, there were many differences between the Samsung Galaxy and the Apple iphones. However, the jury found that Samsung's GUI, especially the colour scheme, was so similar to Apple's registered design that they were convinced that there would be a likelihood of confusion. Of the $1 billion damages award, $725 million was based on Samsungs infringement of Apple's design registration, showing the world that it pays to protect GUIs this way. This makes design rights much stronger than they were previously known to be.
How are damages calculated?
The EU's directive on this subject, which South Africa follows quite closely, allows for all relevant aspects to be taken into account when calculating damages. This includes loss of profits by the design registration holder, unfair profits made by the infringer and even whether the holder has suffered any damage to their reputation. Another manner of calculation can be equal to the amount of royalties the infringer would have paid if he had a license from the design.
Last word
Whether you already have a patent for the mechanics of your device or not, it is good to know that you can protect your GUIs as well. With design registrations being so affordable in South Africa, it is definitely worthwhile to apply for one. Once you have filed your first application, you will have twelve months to file applications and obtain protection in many other countries. The novelty timeline between patents and designs is a precise one, therefore if you want to file both, ensure that your patent is filed first. So, take a page out of Apple's book, and make sure you're covered on all f(r)onts!
Please note that our blog posts are informal commentaries on developments in the law as at the time of publication and not legal advice. You should place no reliance on our blog posts; we look forward to discussing your particular matter with you.