In recent years, there has been an increasing global trend of enabling applicants to register designs which extend beyond the typical, static subject matter, traditionally associated with design registrations. Specifically, design protection is increasingly being sought and granted with respect to dynamic designs, and other virtual or non-physical designs, such as screen displays and screen icons, which are often collectively referred to as graphical user interfaces (GUIs).
Design registrations for GUIs have been considered registerable in the United States, China and Europe for several years. With developments in mobile phones, tablets and laptops, manufacturers are increasingly seeking to protect GUIs, which are often not suitable subject matter for other forms of registered IP such as patent protection. However, to date, IP Australia has been slow to embrace this emerging global trend.
Practice of the Australian Designs Office (IP Australia)
The Australian Designs Act 2003 (Cth), and the way that legislation is interpreted and applied by IP Australia, is somewhat outdated with respect to applications for GUIs.
Referring to the definition of “product” in Section 6 of the Australian Designs Act 2003 (Cth):
Definition of product:
(1) For the purposes of this Act, a thing that is manufactured or hand made is a product.
(2) A component part of a complex product may be a product for the purposes of this Act, if it is made separately from the product. 
IP Australia has a practice of interpreting the definitions set out in the legislation in a manner which extends beyond what is explicitly defined. When considering GUIs, IP Australia has interpreted that in order to meet the definition of product “The visual features of the product must be assessed in the context of the product ‘at rest’, as opposed to ‘in use’.” 
Unfortunately there are no recent Federal Court decisions under the Designs Act 2003 which provide clear direction on the question of registrability of GUIs. However, there are two Designs Office decisions that are consistent with IP Australia’s position.
In one Designs Office decision it was held that a “font” does not meet the definition of a product . In a subsequent decision, the Hearings Officer stated that, while the images displayed on an LCD screen were capable of passing the pre-registration formalities check, he considered they were unlikely to ‘survive examination’. 
The Australian designs system permits designs to be registered shortly after lodgement if they have satisfied various formalities requirements. However, voluntary post-grant substantive examination (known as certification) is required before the design registration can be enforced.
The practice of IP Australia is to permit the registration of design applications for GUIs, assuming they satisfy the formalities requirements. However, IP Australia has a practice of refusing to certify such design registrations, if requested.
The Designs Office register includes many examples of GUIs which have been successfully registered, but not substantively examined.
Advisory Council on Intellectual Property (ACIP) review
The Advisory Council on Intellectual Property (ACIP), an independent body appointed by the Australian Government, reviewed the Australian design system in 2015 and did not support the current practice of IP Australia with respect to GUIs.
ACIP stated that: “There is nothing in the legislation which requires that visual features be observable in the ‘resting’ state or when unconnected to electricity. IP Australia should reconsider, and abandon, this aspect of its practice in assessing the validity of designs”. 
ACIP recommended 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”. 
Anecdotal evidence suggest that many applicants are filing Australian design applications for GUIs and allowing them to be registered but not certified. This practice provides a registration which will be enforceable if the IP Australia practices and/or legislation become more favourable in the short to medium term.
It seems likely based on input from the various stakeholders and IP trends around the world that the Australian Designs Act will be amended to be more favourable for GUIs and other non-physical designs in the near future.
In the short term, applicants considering protection for GUIs may explore other options such as “movement” trade marks. A movement trade mark provides protection for a movement in relation to a good and/or service. This is an emerging area of trade mark practice in Australia, but there are examples of such movement trade marks being registered, such as the Microsoft’s registration for an animated sequence of four coloured squares swirling to form the Microsoft logo. 
Movement trade marks may be used to protect GUIs in some scenarios, such as the Microsoft registration referred to above. However, depending on the nature of the specific GUI, some GUIs may not be considered to satisfy the definition of trade mark in section 17 of the Australian Trade Marks Act 1995 (Cth).
In summary, we consider that the Australian design registration system will become more favourable toward GUIs in the short to medium term, and we recommend that applicants continue to register but not seek certification in respect of GUIs.
Please contact us if you have any questions.
 Australian Designs Act 2003 (Cth), Section 6.
 IP Australia, Designs Examiners’ Manual, Section D04.4.3.1, as of 15 February 2017.
 Microsoft Corporation  ADO 2.
 Somfy SAS  ADO 4.
 ACIP Review of Designs System 2015 part 2.5.2
 ACIP Review of Designs System 2015 part 2.5.2, Recommendation 14
 Australian trade mark registration 1321792