05 February 2002

Simon Hughes

Apple Computer Inc ("Apple") appealed against the decision of the Comptroller-General dated 15 June 2001 refusing its Registered Design Applications 2094031 to 2094039 for a number of computer icons. The appeal was heard by the Registered Designs Appeal Tribunal Judge, Mr Justice Jacob, on 24 October 2001.

The icons that Apple wished to register as designs were produced by the Apple operating system. Most of the icons appeared on a computer display when the machine was switched on although some could be turned off. The application described the articles as "A set of user interfaces for computer display". Apple accepted that defining "user interfaces" as "articles" was not satisfactory and asked the Court to decide the registrability question on the basis of a more appropriate article specification such as, "a computer with an operating system which displays the icons concerned".

The case fell to be decided under the Registered Designs Act 1949 (as amended by the Copyright Designs and Patents Act (CDPA) 1988). The 1949 Act was due to be amended under European Directive 98/71 EC which should have been implemented by 28 October 2001, the Sunday following the hearing. At the time of the hearing a Statutory Instrument to implement the Directive was still in draft form. The Judge considered the Directive and draft Statutory Instrument and commented that it seemed reasonably clear that, in principle, the registration of icons such as the Apple icons was thought to be allowable under the Directive.

The Judge drew a distinction between icons that appeared on a machine into which they were inherently built and icons, trade marks, devices or characters which appeared temporarily whenever a particular computer program was loaded. He observed that the Apple icons formed part of the machine which the public bought and were likely to be shown in shops and in advertisements. The design icon was an important part of the appearance of the article which people bought. The Judge noted that manufacturers of operating systems (mentioning no names but clearly referring to the recent launch of Windows XP) proclaimed that their icons were attractive.

Mr Justice Jacob saw no policy reason to refuse registration. He distinguished the Xerox Corporation case of 1992 (S.R.I.S. 0/19/97) in which an application for "A symbol for display on a visual display unit" was refused on the basis that a symbol as such was not an article. Jacob J agreed with this reasoning and the conclusion of the hearing officer, based on the Xerox case, that an icon as such was not an article. He noted, however, that the hearing officer had also been influenced by a comment in the Xerox decision that reliance on computer software to "apply" the design selectively to the screen did not equate with the design being applied by an industrial process or means within the terms of section 1(1) of the 1949 Act (as amended by the CDPA 1988). He commented that the Xerox hearing officer had feared that transient images produced on screens (eg by computer software or television signals) would qualify as designs under the Act.

Rather than start from the Xerox case, Mr Justice Jacob addressed two key questions: (1) is there an article; and (2) is there a feature or pattern or ornament applied to an article by an industrial process. On question one, he decided that with the proposed amended specification, the icons were articles and the design fell within the definition of Section 1 of the 1949 Act:

'design' means features of shape, configuration, pattern or ornament applied to an article by any industrial process, being features which in the finished article appeal to and are judged by the eye...

On question two, Jacob J observed that the Apple icons were built into the software whose inclusion in the machine was part of an industrial process. The fact that the icons did not actually appear unless the machine was switched on did not matter.

Jacob J dismissed two possible objections. First, the objection that a customer had to switch on the computer in order to see the design. In Ferrero's Application ([1978] RPC 473) Mr Justice Whitford held that a confectionery egg within outer layers in contrasting shades or colours was registrable even though the different colours could only be seen once the egg was broken open. "The features claimed should be the features in the finished article; there was no requirement that the features should be judged at the time when the article was bought".

The second possible objection was that something produced by a computer program which might only be transient was not something applied by an industrial process. In Suwa Seikosha's Design Application ([1982] RPC 166) Mr Justice Falconer held that icons consisting of a design to be applied to a display panel for an electronic watch were registrable. In that case the icons were a little bell and loud speaker symbols which could be seen only when the watch was used in a particular mode. Mr Justice Jacob found no material difference between Suwa's case and the present case in which the Apple icons were built into the machine and could only be seen when the machine was switched on. If the symbols in Suwa's case were applied by an industrial process, then the Apple icons were also applied by an industrial process.

Accordingly, Jacob J allowed the appeal and remitted the matter for the Registry to deal with definition of the article.

Mr Justice Jacob appeared to have no hesitation in applying the decision in Suwa's case rather than the Xerox decision, apparently on the basis that in the Apple and Suwa cases the symbols were built into the machine. He stated expressly that he was not concerned with icons which appeared temporarily when a particular computer program was loaded. The decision is therefore restricted to cover only icons which may be regarded as forming part of the machine bought by the public.

Since the Apple decision, the UK Parliament has approved regulations implementing the European Directive on the legal protection of designs. The Registered Designs Regulations 2001 ("the Regulations"), which amended the 1949 Act, came into force on 9 December 2001.

Under the new Regulations, the definition of "design" has become "the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or its ornamentation." Accordingly, the design itself is registered rather than features of a design as applied to a specified article of set of articles. The protection covers the product in which the design is incorporated. Fortunately for Apple and other computer icon designers, the definition of "product" expressly includes "graphic symbols". In addition, there is no longer a requirement that the design be applied to an article by an industrial process. The removal of this requirement has removed the need to establish, as in the Apple decision, that the computer icons were built into the machine. Icons produced by a computer program, even where the computer program does not form part of the machine, as found in the Xerox decision, may now be capable of registration as graphic symbols. It is worth noting in this context that computer programs are expressly excluded from the definition of "product" under the new Regulations. This is to be understood, according to UK Patent Office guidelines on the Regulations, as an exclusion of the programs themselves - in terms of lines of code and functionality - rather than any graphics which may be produced by the computer programs.

Despite the changes introduced by the new Regulations, Mr Justice Jacob's decision in Apple will continue to be of relevance for design registrations which were already in existence or pending on 9 December 2001. The transitional arrangements laid down by the Regulations provide that, for determining whether to register an application pending on 9 December 2001, and for determining the validity of registrations that were already in existence or pending on 9 December 2001, the Registered Designs Act 1949 applies as it did immediately before the Regulations came into force. On questions of validity of existing computer icon design registrations, the Apple decision will therefore continue to provide guidance for some time to come.

Due to be published in the March edition of WIPR as well as the February World E-Commerce and IP Report.