AIPPI 2017 - Study Question - Protection of graphical user interfaces

Study QuestionSubmission date: June 1, 2017

Sarah MATHESON, Reporter GeneralJonathan P. OSHA and Anne Marie VERSCHUUR, Deputy Reporters GeneralYusuke INUI, Ari LAAKKONEN and Ralph NACK, Assistants to the Reporter GeneralProtection of graphical user interfaces

Responsible Reporter: Yusuke INUI

National/Regional Group

United Kingdom

Contributors name(s)

Trevor COOK, Ashley ROUGHTON, Kerry TOMLINSON, James TUMBRIDGE, Daniel LIM, Steven BALDWIN, Abbas LIGHTWALLA, Alex ZAPALOWSKI, Matth

ew HOYLES, Tommy CHEN and Carmen Miriam MARTORANO.

e-Mail contact

secretary@aippi.org.uk

I. Current law and practice

Patents

1. Can GUIs generally be protected by patents?

If no, please answer questions 1.1, if yes, please go to question 2 NoPlease Explain

UK Patent law is established by the UK Patents Act and the European Patent Convention. Interpretations of this law vary when applied by different bodies such as the UK Courts, the UK Intellectual Property Office (UKIPO) (but which must follow precedents where established by the UK courts), and the European Patent Office (EPO). The answers to these questions consider the sometimes different practice and approach of each.

A GUI itself is not considered eligible for patent protection in the UK, as such. Section 1(2) of the Patents Act 1977[1] and Article 52(2) of the EPC exclude, inter alia, the presentation of information and computer programs, as such, from patent protection.

Thus individual visual elements such as icons, typefaces and graphical images are not protectable, but the way the elements are generated or the way an interface may function to enable users to interact with the machine may be protectable.

Thus individual visual elements such as icons, typefaces and graphical images are not protectable, but the way the elements are generated or the way an interface may function to enable users to interact with the machine may be protectable.

Footnotes1. ^

In Raytheon Co's Application [2008] RPC 3 it was concluded that more than one statutory exclusion may apply.

1.1. If GUIs cannot be protected by patents per se, are any types or aspects of GUIs protectable by patents?

2. If any type or aspect of GUIs are protectable by patents, under what conditions and to what extent are those types or aspects of GUIs considered to be within the scope of patentable subject matter? GUIs are protectable at the EPO[1] provided the claimed features of the interface contribute to achieve a technical effect. The scope of protection must relate to something more than the visual arrangement of elements on a screen. Examples include where the features provide an improved means of interacting with a user or provide improved internal machine states[2].The technical effect of the invention must result directly from the features claimed.[3]

Under UK law, for a GUI to be protectable, the scope of protection must define more than a visual element, the information within a visual element or the arrangement of visual elements on a display[4]. The scope of protection must demonstrate a technical contribution to the art. For example, a GUI can be protected to the extent it provides an effect outside of the computer or in the real world. The way in which a user is able to interact with a machine can, in some circumstances, provide a better (more secure, for example) device.[5] [6] A better (or new) user interface is not considered to be a relevant technical effect – the rearrangement of information is not sufficient to overcome the exclusion.[7]

The UKIPO is bound by the case law of the UK courts and follows the same test. However in practice the UKIPO tends to interpret the guidance narrowly.[8]

Footnotes2. ^

The EPO applies the approach of looking at the technical character of an invention when assessing whether excluded claim falls within one of the exclusions of the EPC, which is to say if any of the claimed features are technical in nature the invention will not be excluded. In practice this is a low threshold which is overcome by an invention which is not defined solely by the content of the information or a computer program (EPO Guidelines G-II-3.7). However, non-technical features of a claim are not considered to contribute to inventive step but can be used to formulate the technical problem to be solved in the assessment. As such, the aspects of GUIs protectable at the EPO are those aspects which contribute to achieving a particular technical effect (EPO Guidelines G-II-3.7.1).

3. ^

EPO Guidelines G-II-3.7.1 “Features concerning the graphic design of user interfaces do not have a technical effect, because their design is not based on technical considerations, but on general intellectual considerations as to which design is particularly appealing to a user.For example, the colour, shape, size, layout, arrangement of items on the screen or the

information content of a message displayed is usually not a technical aspect of a graphical user interface.However, the examiner must check whether these features contribute to achieving a particular technical effect if, e.g.:– they are combined with steps of or means for interacting with a user or – they concern technical information (e.g. internal machine states).

4. ^

In T 1741/08 (GUI layout/SAP) the applicant argued that the features of the invention lowered the cognitive burden of the user, allowing them to respond more quickly, which in turn meant that the computer would require fewer resources. However, the Board called this a ‘broken chain’, saying that the technical effect arose purely as a result of a mental process and could not be considered a result of the claimed feature.

5. ^

UKIPO Manual of Patent Practice, Section 1

6. ^

HTC Europe Co Ltd v Apple Inc [2012] EWHC 1789 (Pat) This case considered the ‘slide to unlock’ invention which claimed the movement of an image along a predefined path to unlock a device. It was stated — “Nevertheless, I think there was a contribution here which went beyond a computer program as such or the mere presentation of information. There is a sense in which the invention provides a technical effect outside the computer, namely an improved switch. Moreover this is a real world effect which is not limited to the presentation of information. Whilst the subject matter of the invention is obvious, the patent is not invalid for excluded subject matter.”

7. ^

In HTC Europe Co Ltd v Apple Inc (Rev 1) [2013] EWCA Civ 451 an invention was considered in which a second touch on a touchscreen was ignored based on the view the user was touching with the first touch on the screen. The judge stated “the problem which the patent addresses, namely how to deal with multiple simultaneous touches on one of the new multi-touch devices, is essentially technical”. This case also broadened the ‘signposts’ set by the courts in AT &T Knowledge Ventures LP's Patent Application [2009] EWHC 343 (Pat). These have been used by the courts since to determine if the invention provides a suitable technical contribution. The signposts are accordingly: i) whether the claimed technical effect has a technical effect on a process which is carried on outside the computer; ii) whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run; iii) whether the claimed technical effect results in the computer being made to operate in a new way; iv) whether the program made the computer a better computer in the sense of running more efficiently and effectively as a computer (as modified); v) whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.

8. ^

Gemstar–TV Guide International Inc v Virgin Media Limited [2010] RPC 10, [2009] EWHC 3068 (Ch) related to three EP(UK) patents covering various aspects of Electronic Program Guides (EPGs). Two of the three patents were found to be excluded as they lacked the required technical effect; the third presented a physical effect, namely the movement of data between hard disks, such that there was more than merely the presentation of information. In Autonomy Corp Ltd v Comptroller General of Patents, Trade Marks & Designs [2008] EWHC 146(Pat), the court held that choosing where and how to display information was still the presentation of information, as it is part of the decision as to how to present the information. In Really Virtual Co Ltd v UK Intellectual Property Office [2012] EWHC 1086 (Ch) it was concluded that the provision of tailored services to an anonymised user was a nice thing to do, but it could not be said to be technical. Raytheon Co's Application [2008] RPC 3 involved an inventory control system, and the second and third aspects of the contribution were said

to be representations of stock items which were synthesised in real time from individual images in the computer, and a high level interactive graphical representation available to the user enabling him to 'drill down' to the rack or component of interest. It was concluded that “the contribution [was] no more than a reflection of how the programmer has chosen to create the desired representation.”

9. ^

Supercell Oy, O/184/15, related to the use of a GUI for the control of complex technical facilities or simulations thereof. In particular, the application referred to simulation software being used as part of gaming software. It was held that it was excluded under Section 1(2) Patents Act 1977 because it related to a program for a computer and to a presentation of information. In Micro Focus IP Ltd, BL O/136/16 it was held that the contribution concerned means by which information was presented, rather than the presentation of information itself, and although it did not lie in the presentation of information as such, it was nothing more than a computer program. The applications concerned methods and systems for generating a user interface screen, specifically a user interface aimed at modernising a host-based “green screen” or text based application interface. See also Canon Europa N.V. O/512/12, Motorola Mobility, Inc., O/174/13 and Epic Systems Corporation O/236/06.

3. If yes, do the statutory provisions, case law or judicial or administrative practice require specific claim formats for any patent protection? If yes, what claim formats are available for protecting GUIs?NoPlease Explain

No.[1] However, see answer to Question 4 regarding the presence of technical means within the claim at the EPO.

Footnotes10. ^

T 0931/95 (Controlling pension benefits system/PBS PARTNERSHIP) precluded the patentability of method claims relating to computer programs, but this was overruled by T 0258/03 (Auction method/HITACHI) and confirmed as not precluded in G03/08.

4. Is any physical feature required in a claim as a pre-requisite for patentability of a GUI? YesPlease Explain

Under EPO practice, a claim must specifically require the presence of a computer or technical means.[1] This confers technical character on the invention, allowing it to fall outside the Article 52(2) EPC exclusion. The technical aspects of the claim are then considered as part of the inventive step assessment and non-technical features disregarded.

Under UK law, in principle, claims to the program should be allowable where claims to a method performed by running a suitably programmed computer or to a computer

programmed to carry out the method are allowable, as long as the claim to the computer program is drawn to reflect the features of the invention that would ensure the patentability of the method which the program is intended to carry out when it is run.[2]

Footnotes11. ^

G03/08 and DUNS LICENSING ASSOCIATES, L.P. (T 0154/04)

12. ^

Astron Clinica Ltd v Comptroller-General [2008] EWHC 85 (Pat) clarified the law in this area. In principle, claims to the program should be allowable where claims to a method performed by running a suitably programmed computer or to a computer programmed to carry out the method are allowable, as long as the claim to the computer program is drawn to reflect the features of the invention that would ensure the patentability of the method which the program is intended to carry out when it is run.

5. To what extent does involvement of the user's mental activities in a GUI process affect the patentability of the GUI? Under EPO practice, the mere involvement of mental activities does not on its own render the subject-matter of a claim non-technical and hence not patentable.[1] Nevertheless, a visual indication aimed exclusively at the mental activities of the viewer is not usually regarded as technical and the claimed feature would be ignored when assessing inventive step.[2] The EPO Technical Boards of Appeal have deemed certain inventions patentable where the GUI provided an improved means of interaction with a device, for example to overcome technical deficiencies or prevent malfunction.[3] Where the technical effect is only achieved by way of a mental process the effect cannot be considered the result of a claimed feature.

Under UK practice, there is no case law or guidance that we are aware of that provides guidance on this point.

Footnotes13. ^

T 0643/00 (Searching image data/CANON) related to providing images to a user with reduced resolution to enable faster interaction.

14. ^

In T 0756/06 (Displaying a schedule/FUJITSU) it was held that since the claim did not relate the visual elements to the technical constraints, the claim elements did not necessarily solve a technical problem and could have been design choice. Other relevant cases include T 0336/14 (Presentation of operating instructions/GAMBRO), T 1143/06 (Data selection system/BRITISH TELECOMMUNICATIONS), T 1567/05 (Designing of building structures/ENU) and T 0049/04 (Text Processor/WALKER) which has been largely considered irrelevant by the EPO. See also http://ipkitten.blogspot.co.uk/2016/04/patentability-of-user-interface-designs.html

15. ^

T 0928/03 (Video game/KONAMI) concerned a visual indication placed next to a player on a soccer video game. The application aimed to improve the visual perception of different states of the game by its user. The indication was held to resolve a technical conflict (on the one hand, a portion of an image is desired to be displayed on a relatively large scale (e.g. zoom in); on the other hand, the display area of the screen may then be too small to show a complete zone of interest) by technical means and therefore implied a technical contribution which had to be considered in the inventive step analysis.

Design rights

6. Can GUIs generally be protected by design rights?

If no, please answer questions 6.1, if yes, please go to question 7 YesPlease Explain

By design rights we understand this to be an enquiry about rights which protect shape and configuration, overall impression or (if applicable) both. UK design right law is divided into: (i) purely national law under Part III of the Copyright Designs and Patents Act 1988, which established an unregistered design right of up to 15 years duration; (ii) EU law, under Council Regulation 6/2002, establishing the Community Design Right (CDR); and (iii) EU derived law under Directive 98/71/EC, reflected in the UK by UK Registered Designs (UKRDs) under the Registered Designs Act 1949, as amended (there being no substantive difference for present purposes between the law that applies to CDRs and to UKRDs). Under purely UK national law, protection of unregistered designs is based upon the shape and configuration of a design of the whole or part of an article and excludes surface decoration – thus we do not believe that this law is easily applicable to GUIs.[1] In contrast the EU and EU derived law protects the appearance of the whole or part of a product including get-up and graphic symbols. As such EU and EU derived design law provides for the protection of GUIs.

Footnotes16. ^

Although as pointed out in Lambretta Clothing Co Ltd v Teddy Smith (UK) Ltd [2005] RPC 6 at [24] the question of whether or not such unregistered design right subsists cannot be determined by the simple expedient of determining whether the alleged design is two or three dimensional in nature

6.1. If not, are any types or aspects of GUIs protectable by design rights?

7. If any type or aspect of GUIs are protectable by design rights, under what conditions and to what extent are those types or aspects of GUIs protectable? The following answers relate to the position under EU (ie CDR) and EU derived (ie UKRD) design right law.

7.a. In particular is a GUI that temporarily appears on a screen of an electronic device considered a "design" that is protectable by design rights? YesPlease Explain

A GUI that temporarily appears on a screen of an electronic device may be considered a design that is protectable by design right. This is because there is no requirement in the definition of design that it be permanent or in material form.[1]

Footnotes17. ^

Indeed, under the earlier, more restrictive version of the Registered Designs Act 1949, before amendment in order to implement Directive 98/71/EC, it was held that it was irrelevant that the image would not appear on the screen until the computer was switched on – see Apple Computer Inc’s Design Applications [2002] FSR 38 at [7], [8] and [10]

7.b. In particular is a GUI protectable by design rights independently from the design of the electronic device itself? YesPlease Explain

A GUI is protectable by design right independently from the design of the electronic device itself. This is because the definition of design is expressed to cover part of a product.

7.c. In particular are smaller elements included in a GUI (e.g. icons, slide buttons) protectable by design rights independently from the GUI as a whole? YesPlease Explain

Smaller elements included in a GUI (e.g. icons, slide buttons) are protectable by design right independently from the GUI as a whole. This is because any graphic symbol is protectable.

7.d. In particular are movements or screen transitions in a GUI protectable by design rights? YesPlease Explain

Movements or screen transitions in a GUI are protectable by design right since there is a notion of appearance of the animation of a graphic symbol. There is no requirement that the symbol (or design for it) be static and indeed there are good policy reasons for animated designs to be protected.

7.e. In particular are there any other types or aspects of GUIs protectable by design rights? If so, under what conditions and to what extent?YesPlease Explain

Any type of GUI is capable of protection, and as noted in the EUIPO Guidelines[1] “Designs of screen displays and icons and other kinds of visible elements of a computer program are eligible for registration (see Class 14-04 of the Locarno Classification).” Thus there is no restriction on the type of GUI that is capable of protection. However only the appearance of the GUI can be protected, and thus such protection is not available for its underlying idea[2] nor for the method of its use or operation.[3]

Footnotes18. ^

Guidelines for Examination of Registered Community Designs - Examination Of Applications For Registered Community Designs at 4.1.3

19.0^

Judgment of 06/06/2013, T-68/11, Watch-dials, EU:T:2013:298, § 72, cited in Guidelines for Examination of Registered Community Designs - Examination of Design Invalidity Applications at 5.1.2

20. ^

Judgment of 21/11/2013, T-337/12, Sacacorchos, EU:T:2013:601, § 52) cited in Guidelines for Examination of Registered Community Designs - Examination of Design Invalidity Applications at 5.1.2

Copyright

8. Can GUIs generally be protected by copyright?

If no, please answer questions 8.1, if yes, please go to question 9 NoPlease Explain

The CJEU in BSA[1] held that GUIs themselves were not protectable by copyright as a literary work pursuant to the Computer Program Directive (2009/24/EC), as the GUI merely constitutes one element of the computer program by means of which users make use of the features of that program. As such, it does not constitute a form of expression of a computer program within the meaning of the Computer Program Directive.

However, the CJEU in BSA also considered that it was possible that a GUI could be protected under the Copyright Directive (2001/29/EC), if it was “the author's own intellectual creation.” This requires national courts to determine whether the components of the interface and their configuration are original in this sense. The national court should not hold that the interface is protected by copyright if the components and configuration are the way they are simply because of the function they perform, namely “where the expression of those components is dictated by their technical function, the criterion of originality is not met, since the different methods of implementing an idea are so limited that the idea and the expression become indissociable.”

The CJEU referred to the BSA decision in the SAS reference from the English High Court.[2] When the case returned to the High Court following the CJEU decision, the High Court[3] considered that the CJEU had merely left open the possibility that GUIs could be protected as artistic works under the Copyright Directive if the GUI is its author’s own intellectual creation. The High Court did not find this outcome surprising since it was consistent with its own earlier decisions in Navitaire v Easyjet[4] and Nova v Mazooma Games Ltd.[5] Further, the High Court considered at [27] that although it is not necessarily “fatal” that a work is not one of the types listed for protection in s.1(1)(a) Copyright, Designs and Patents Act 1988, it remains clear that “the putative copyright work must be a literary or artistic work within the meaning of art.2(1) of the Berne Convention”.

In Navitaire the English High Court stated that “the better view is that the GUI screens are artistic works” and that “to arrange a screen affords the opportunity for the exercise of sufficient skill and labour for the result to amount to an artistic work”. It also held that the on-screen icons were also “plainly copyright works, albeit minor.” However, it is also clear from the decision in BSA that components dictated by their technical function should not be afforded copyright protection.

Footnotes21. ^

Bezpe?nostní softwarová asociace – Svaz softwarové ochrany v Ministerstvo kultury, Case C-393/09, 22 December 2010

22. ^

SAS Institute Inc v World Programming Ltd [2010] EWHC 1829 (Ch); SAS Institute Inc v World Programming Ltd (Case C-406/10)

23. ^

SAS Institute Inc v World Programming Ltd [2013] EWHC 69 (Ch)

24. ^

Navitaire v Easyjet [2004] EWHC 1725 (Ch)

25. ^

Nova v Mazooma Games Ltd [2006] EWHC 24 (Ch) at 97-98, upheld in the Court of Appeal [2007] EWCA Civ 219

8.1. If not, are any types or aspects of GUIs protectable by copyright?

9. Does the fact that GUIs shown on screens are computer-generated affect the eligibility of GUIs for copyright protection? NoPlease Explain

No, provided that it is really the author’s own intellectual creation which creates the relevant work.

This point follows from the discussion above, and was also touched upon in SAS[1], where the English High Court considered potential computer generated works (e.g. data file formats) and stated that originality must be carefully examined. For a computer generated work to be afforded copyright protection as an “original” work what is required is something on which the author has stamped his “personal touch” through the creative choices he has made. This does not depend on whether it is produced by means of a computer.

Indeed, in the first instance decision in Nova[2], the court considered the effect of s.9(3) Copyright Designs and Patents Act 1988 (UK) (CDPA), which states that “in the case of a literary, dramatic, musical or artistic work which is computer-generated, the author shall be taken to be the person by whom the arrangements necessary for the creation of the work are undertaken.” Accordingly, the court considered that insofar as each composite frame of the GUI in that case is a “computer-generated work” under s. 178 CDPA (i.e. that the work is generated by computer in circumstances such that there is no human author of the work), then the arrangements necessary for the creation of the work were nevertheless undertaken by a human – in this case, a Mr Jones. The court considered that Mr Jones “devised the appearance of the various elements of the game and the rules and logic by which each frame is generated and he wrote the relevant computer program.” In these circumstances, the court was satisfied that Mr Jones was the person by whom the arrangements necessary for the creation of the works were undertaken and therefore was deemed to be the author by virtue of s.9(3) CDPA.

Footnotes26. ^

SAS Institute Inc v World Programming Ltd [2013] EWHC 69 (Ch)

27. ^

Nova Productions Ltd v Mazooma Games, Bell Fruit Games Ltd [2006] EWHC 24 (Ch)

10. If any type or aspect of GUIs can be protected by copyright, under what conditions and to what extent are those types or aspects of GUIs protectable?As discussed above, a GUI as a whole is unlikely to attract copyright protection: as certain aspects are likely to be dictated by function, in many cases the GUI as a whole would not be regarded as an expression of the author’s own intellectual creation. However, other aspects of GUIs can still be protected, as there is nothing special about GUIs that means that different rules of subsistence apply. If we use the traditional forms of works as a framework then the types or aspects of GUI that will be protectable by copyright will be the ones that fall within one of the traditional categories of work – likely to be literary and artistic – and are original in that it is the author’s own intellectual creation.

As defined in the question, GUIs may include websites, operating systems, screens and menus in a program or app, augmented reality, HUDs, virtual reality and holograms. As such, these GUIs may contain or consist of elements in which copyright can subsist. The parts in which copyright subsists must still satisfy the usual criteria. These are likely to be artistic works (e.g. icons, backgrounds, visual cues, typeface) and literary works (e.g. text of sufficient originality/length to qualify as an original literary work; the underlying code to the GUI).

In addition, stills/screenshots/individual frames from the GUI could be protected under copyright. The Court of Appeal in Nova[1] accepted that the individual frames stored in the memory of a computer (for example, a bitmap image of the pool table) were "graphic works" with the meaning of the CDPA. However, it rejected the High Court’s finding that a series of individual frames could constitute a separate graphic work which was protected by copyright. It said that a series of stills (representing the “movement” of an object in the computer game) was just a series of graphic works which each had their own copyright. Accordingly, no extra copyright was created by having a series.

Footnotes28. ^

Nova Productions Ltd v Mazooma Games Ltd [2007] EWCA Civ 219

11. Can the overall "look and feel" of GUIs be protected by copyright?

If no, please answer questions 11.1, if yes, please go to question 12 YesPlease Explain

UK copyright law does not use the term “look and feel” but the issue that this reflects is an example of the “idea-expression dichotomy”, as to which the English High Court in Ibcos[1] observed “The true position is that where an "idea" is sufficiently general, then even if an original work embodies it, the mere taking of that idea will not infringe. But if the "idea" is detailed, then there may be infringement.” In practice, given, as discussed above, that a GUI as a whole is unlikely to attract copyright protection, as certain aspects are likely to be dictated by function, and so do not constitute the author’s own intellectual creation, the scope for protecting the “look and feel” of a GUI under UK copyright law is limited.

Footnotes29. ^

Ibcos Computers v. Barclays Mercantile [1994] FSR 275 at p.291

11.1. If not, can individual elements included in a GUI be protected?

Trademarks

12. Can GUIs generally be protected as trademarks?

If no, please answer questions 12.1, if yes, please go to question 13YesPlease Explain

There are two means of attaining trade mark protection in the UK:

1. a national trade mark (“UKTM”) pursuant to the Trade Marks Act 1994 (“TMA”); or2. a European Union trade mark (“EUTM” – the rebranded Community Trade Mark) under the European Union Trade Mark Regulation (EC) No 207/2009 (“EUTMR”), as amended (most importantly by Regulation (EU) 2015/2424).

For the purpose of this note and unless otherwise stated, there is no material difference between the two regimes other than the geographical extent of protection.

Any sign capable of distinguishing the goods or services of one undertaking from those of another, and of being adequately represented on the register, is potentially registrable as a trade mark.[1] Article 4 of the EUTMR gives the examples of words, designs, letters, numerals, colours, the shape of goods, the packaging of goods and sounds as being protectable. However, this is not a closed list.

In addition to the above criteria and subject to the subsequent acquisition of distinctive character through use, a sign will not be registered or if registered is liable to be found invalid if it is devoid of distinctive character, exclusively indicates a feature or characteristic (including the intended purpose) of the relevant goods or services, or is customary in the language of the trade (s.3(1) TMA). There are additional bars to the registration of shape marks, which we shall touch on later (s.3(2) TMA).

Certain features of GUIs will likely fall foul of one or more of these grounds, most likely as being devoid of distinctive character due to the ubiquity of their use (for example, cursors, scroll bars, and windows generally). It is also arguable that basic “slide-to-unlock” GUIs exclusively indicate their intended purpose. Notwithstanding this, there is no absolute bar to the registration of a GUI as a trade mark.

Footnotes30. ^

Note: the TMA and EUTMR current require that the sign be capable of “graphical representation”. The requirement for “graphical” representation will be removed in respect of EUTMs from 1 October 2017. Similarly, Article 3 of the EU Trade Mark Directive (EU) 2015/2436 (“EUTMD”) requires member states to port the equivalent criteria to the EUTMR into national law by 19 January 2019.

12.1. If not, are any types or aspects of GUIs protectable by trademarks?

13. If any type or aspect of GUIs are protectable as trademarks, under what conditions and to what extent can those types or aspects of GUIs protectable? The same registrability criteria apply to GUIs as to any other “sign”.

A sign is protectable if it is capable of performing the essential function of a trade mark and trade mark rights can be enforced (subject to the other required criteria) against uses which harm any of the protected functions of a trade mark. The CJEU has recognised the scope of trade mark functionality to encompass concepts beyond the essential function (origin distinguishing) to the advertising and investment functions (see L'Oreal v Bellure (C-487/07)). The investment function – the preservation of a reputation capable of attracting and retaining customers[1] - may be of particular assistance to GUIs, particularly when, for example, one considers the recognition that the GUIs of operating systems afford and the temptation that others may have to seek to take unfair advantage of that consumer loyalty.

GUIs (although perhaps not some individual features, as mentioned above) can perform various functions of a trade mark. Although a GUI will usually have a functional purpose, it is possible that its appearance to the user will still serve as an origin distinguisher. Similarly, if the appearance of a GUI is registered as a trade mark (either as a static image or a movement mark), its application to a computer screen, embedded within software, will fall within the scope of the monopoly just as much as if it was printed on a t-shirt or on a TV advert.[2]

An additional hurdle facing the enforcement of any GUI trade marks which do achieve registration is that a likelihood of confusion may be readily negated. To view and use a GUI one will ordinarily have already chosen to install and/or load a particular piece of software or boot a particular operating system – so one know its actual trade origin.

Both the UKIPO[3] and the EUIPO[4] allow for the possible registration of movement marks, so far as they satisfy the Sieckmann[5] criteria, being that the representation is: clear, precise, self-contained, easily accessible, intelligible, durable and objective. However, applicants for such marks will still need to demonstrate they have distinctive character.

Of potential future interest is the development of the law in relation to shape and three-dimensional marks. GUIs are currently generally two-dimensional representations, but augmented and virtual reality applications employing digital, three-dimensional GUIs can be expected to become more important in the future.

Both 2D and 3D GUIs as aspects of software products themselves are likely to involve the additional challenges applicable to 3D and other non-standard marks. The assumption that they are not protectable unless they differ significantly from the norms in the industry or consumers are educated to recognise them as indications of origin, is likely to prevail.

Further, despite registrations such as these existing, it is not clear whether layout-GUI marks could be also construed as a shape mark or an “another characteristic” of goods mark (the EUTMR, in contrast to the TMA, already includes the “another characteristic” wording). If they were, to be registrable, the shape (or other characteristic of goods),[6] must not, by div 3(2) TMA:

1. result exclusively from the nature of the goods themselves;2. be necessary for the goods to achieve a technical result; or3. give substantial value to the goods.

For example, if a layout-GUI is registered in respect of services only (rather than software products/goods), will the CJEU employ a purposive interpretation (as it has before with trade mark legislation) to stretch the interpretation of the above exceptions to encompass this? If so, the UK courts will, pending Brexit, be compelled to do the same.

Where such registrations relate to goods (e.g. software), aspects of GUIs such as drop down menus, scroll bars and timers may be challenged on the basis of 1 above. If such aspects are combined in the application/registration with other aspects of the GUI not in any way functional and which are considered an essential element of the mark, this ground will not apply following the CJEU guidance in Hauck GmbH & Co KG v Stokke A/S (C-205/1)

Further, as attractiveness is usually a key requirement for designing a GUI and is likely to be a motivator for users selecting one system over another, challenges on the basis of 3 above should also be expected, especially following the wide interpretation given to this ground of invalidity in The London Taxi Corporation Ltd (t/a The London Taxi Company) v Frazer-Nash Research Ltd & Anor [2016] EWHC 52 (Ch) (which is under appeal). GUIs, just as much as car body shapes, “have aesthetic qualities as well as functional ones”.

Footnotes31. ^

Interflora Inc v Marks & Spencer Plc (C-323/09), [60].

32. ^

In Rxworks Ltd v Hunter (t/a Connect Computers) [2007] EWHC 3061 (Ch) it was explained that embedded use within software, although it could fall within the scope of a registration, would only infringe where such use was liable to affect the function of the trade mark (. The position seems clearer with GUIs, which have increased visibility to the user (average consumer) than was the situation in that case.

33. ^

UKIPO Trade Mark Manual, paragraph 2.4.6

34. ^

EUIPO Guidelines for Examination of EUTMs, part B, div 4, chapter 2, paragraph 2.4

35. ^

Sieckmann v Deutsches Patent und Markenamt (Case C-273/00)

36. ^

In respect of UKTMs, these exceptions apply only to the shape of goods (not “other characteristics”). However, the EUTMD requires member states to transpose the equivalent criteria to the EUTMR into national law by 19 January 2019.

13.1. For example, is a screen movement or transition in a GUI protectable as a trademark?

14. Does a GUI need to acquire secondary meaning through use in order to be protected as a trademark? NoPlease Explain

This is not a blanket requirement, but can be used to overcome any s.3(1) TMA objection (discussed above).

Interestingly, a brief search of the register reveals that Apple has a number of figurative EUTM registrations for GUIs, both for individual application icons as well as the home-page layouts of the iPad (009265588, registered on 19/04/2011 in classes 9, 16, 18, 28, 35, 37, 38, 41, 42) and Apple Watch (013728555, registered 14/09/2015 in classes 9, 10, 14, 28). We have not been able to identify any UKTM registrations for these layout-GUIs. This may be because software products and online services tend to have worldwide markets from their launch, so applicants have, so far, opted for the geographically wider protection offered by EUTMs.

The layout-GUI registrations above did not rely on acquired distinctiveness and, perhaps surprisingly, did not have to overcome any objections on the basis that the marks lacked distinctiveness in respect of, for example, their “character recognition software” registrations in class 9. Presumably the EUIPO considered that they were not mere variants of the industry norms. However, we are not aware of any UK or EU case-law guidance where the validity of any GUI mark has been challenged.

Other forms of protection

15. Does your Group's current law provide any other means for protecting GUIs that are similar in nature to traditional IP rights? YesPlease Explain

16. If yes, what forms of protection are available, and under what conditions, and to what extent, are such other forms of protection available?The main other means of protection in the UK is under the law of “passing off”. Passing off is a common law tort. It protects the proprietary interest in goodwill, i.e. the attractive force that brings in custom, attaching to get-up or a name or mark, as used in relation to goods or services or a business. Passing off requires that the defendant makes a misrepresentation to the public, so that the public is led (or is likely to be led) to believe that the defendant’s goods and services are those of the goodwill owner (or that the goodwill owner’s goods and services are the defendant’s), and that damage (such as loss of sales, damage to reputation or erosion of goodwill) is suffered.

To succeed in passing off in the UK, the claimant must have goodwill in the UK. This generally requires the claimant to have actual UK customers of its goods and services (e.g.

through a website).

Imitation of a GUI or parts of one, such as the layout, colours, shapes of icons and fonts, could amount to a misrepresentation as to the origin of the relevant product or services offered via the GUI. The display of a similar GUI could be one aspect, together with factors such as similar physical design of hardware or similar functionality of software, of a misrepresentation as to the origin of software products or physical goods such as an electronic device.

For such use to amount to passing off, it must be proved (on the balance of probabilities) that a proportion of the public is (or is likely to be) deceived as to the origin of the relevant goods and services. Market circumstances are likely to affect this. For example, the public is less likely to be deceived as to the origin of goods and services by a GUI which is in a form that is commonplace in the industry and not associated by the public with a particular trader. Further, if different distinctive names or trade marks are used as part of the two GUIs, it is less likely that the public would be deceived.

Other than passing off, the use of a similar GUI may also be caught by prohibitions against misleading trade practices in UK legislation (e.g. regulation 5 of the Consumer Protection from Unfair Trading Regulations 2008 and regulation 3 of the Business Protection from Misleading Marketing Regulations 2008).

II. Policy considerations and proposals for improvements of your Group's current law17. Does your law provide sufficient IP rights protection for GUIs? If yes, is that by means of any one or more types of IP rights protection (and if so, which), or by means of combination of those types of IP rights protection?

If no, please answer questions 18, if yes, please go to question 19 YesPlease Explain

Yes, as we have not identified any area of UK law that fails to provide sufficient IP protection for GUIs.

18. If no, how is your law deficient?

19. Is your law sufficiently clear on whether and to what extent GUIs are protected by various IP rights?

If no, please answer questions 20, if yes, please go to question 21 YesPlease Explain

Yes, because although no specific mention is made in our law as to the protection of GUIs, and there are uncertainties in aspects of UK IP laws that have the potential to affect the

protection of GUIs, such uncertainties are not specific to GUIs and we do not favour singling out GUIs for specific attention by the law.

20. If no, how is your law deficient in this regard?

21. Are there any aspects of your law that could be improved (for example, by strengthening or reducing the extent to which GUIs may be protected)?NoPlease Explain

No, because although we recognise that, as with standards, network effects and first mover advantage may serve to reinforce the protection afforded GUIs by IP, we consider that any such issues are better addressed in the context of competition law.

III. Proposals for harmonisation22. Does your Group consider that harmonisation in this area is desirable? If yes, please respond to the following questions without regard to your Group's current law. Even if no, please address the following questions to the extent your Group considers your Group's laws could be improved. NoPlease Explain

Although harmonisation of IP laws is clearly desirable, we do not consider that any modification to any of these various well-established IP laws that is specific to GUIs or is driven by concerns that are specific to GUIs is merited as this would be tantamount to establishing a sui generis protection regime for GUIs, which we do not favour, would distort other aspects of these regimes, and introduce edge effects depending on whether or not one was dealing with a GUI (“as such”, or what, and how defined?).

That is not to exclude the possible desirability of revisions to the underlying IP laws of wider relevance (such as, for patents, the approach to computer implemented inventions or to wider patent law issues relating to the technical nature of an invention), and which experience with GUIs may inform, but only by way of

Patents

23. Should GUIs generally be capable of protection by patents?

If no, please answer questions 23.1, if yes, please go to question 23.2 YesPlease Explain

Yes, subject to the usual constraints on patentability that are common to other technical areas.

23.1. If not, should at least some types or aspects of GUIs be protectable by patents?

23.2. Please explain your reasons.

24. Under what conditions, and to what extent, should GUIs fall within the scope of patentable subject matter? See generally our answer to 23. As to the “mental activity” exclusion in the EPC we have not been asked to study this generally and therefore our failure to express a view as to it generally should not be taken as conceding that it is an appropriate exclusion, but we do not favour any especial constraint on the protection for GUIs keyed to a user’s mental activities. However, as the answer to 5 indicates, this particular exclusion in the EPC does not seem to present any particular impediment in practice to the protection of GUIs.

24.1. For example, should involvement of user's mental activities in a GUI process affect the patentability of the GUI?

24.2. Please explain your reasons.

25. Should a physical feature be required in a claim as a pre-requisite for patentability of GUIs? NoPlease explain your reasons

No, in the same way as in other areas of technology

26. What claim formats should be available for protecting GUIs?We do not favour any especial constraint on claim formats for GUIs

Design rights

27. Should GUIs generally be capable of protection by design rights?

If no, please answer questions 27.1, if yes, please go to question 27.2 YesPlease Explain

Yes, subject to the same requirements as other designs

27.1. If not, should at least some types or aspects of GUIs be protectable by design rights?

27.2. Please explain your reasons.

28. Under what conditions, and to what extent, should GUIs be protectable by design rights? See generally our answer to 27. As noted in our answer to 7(d) screen movements or transitions in a GUI are capable of protection as designs, and we see no reason why they should not be.

28.1. For example, should screen movements or transitions in a GUI be protectable by design rights?

29. Should a GUI be protectable by design rights independently from the design of the electronic device itself? YesPlease explain your reasons.

Yes. They are self evidently different designs.

Copyright

30. Should GUIs generally be capable of protection by copyright?

If no, please answer questions 30.1, if yes, please go to question 30.2 YesPlease Explain

Yes, subject to the same requirements as other copyright works.

30.1. If not, should at least some types or aspects of GUIs be protectable by copyright?

30.2. Please explain your reasons.

31. Should the fact that GUIs shown on screens are computer-generated affect the eligibility of GUIs for copyright protection? NoPlease explain your reasons.

No, as discussed in our answer to 9.

32. Under what conditions, and to what extent, should GUIs protectable by copyright? See generally our answer to 30. As explained in our answer to 11, applying general principles of copyright law, the scope for protecting the “look and feel” of a GUI under UK copyright law is limited but we see no reason why this should not be the case

32.1. For example, should the overall "look and feel" of a GUI be protectable by

copyright?

Trademarks

33. Should GUIs generally be capable of protection as trademarks?

If no, please answer questions 33.1, if yes, please go to question 33.2 YesPlease Explain

Yes, subject to the same requirements as other trade marks.

33.1. If not, should at least some types or aspects of GUIs be protectable as trademarks?

33.2. Please explain your reasons

34. Under what conditions, and to what extent, should GUIs be protectable as trademarks? See generally our answer to 33. As discussed in our answer to 13, screen movements or transitions in a GUI are in principle protectable as trade marks and we see no reason why they should not be. As discussed in our answer to 14, GUIs can acquire secondary meaning through sue in the same way as other trade marks, but we see no reason why this should be a requirement for GUIs in every case.

34.a. For example should screen movements or transitions in a GUI be protectable as trademarks?

34.b. For example should a GUI be required to acquire secondary meaning through use, in order to be protected as a trademark?

Other forms of protection

35. Should there by other forms of protection for GUIs? If so, what forms of protection should there be?NoPlease explain your reasons

Unfair competition type doctrines, such as discussed in our answer to 16, should be available to protect GUIs

36. Should there be a sui generis right for protection of GUIs? If so, what aspects of GUIs should be protected by such a right, to what extent, and under what conditions?

If yes, please answer questions 37, if no, please go to question 38

NoPlease Explain

No. In general we question the value of sui generis regimes of protection and consider that they risk undermining the intellectual coherence of the IP framework. As to GUIs, the existing IP regimes are in any case adequate to protect these.

37. Should there be any exceptions or limitations to a sui generis right in order to ensure an innovative and competitive market? If so, what exceptions and limitations should there be and why?

38. Please comment on any additional issues concerning protection of GUIs that your Group considers relevant to this Study Question

Please indicate which industry sector views are included in part "III. Proposals of harmonization" on this form:

Please enter the name of your nominee for Study Committee representative for this Question (see Rule 12.8, Regulations of AIPPI). Study Committee leadership is chosen from amongst the nominated Study Committee representatives. Thus, persons not nominated as a Study Committee representative cannot be in the Study Committee leadership.