Article “INTA Comments on Graphical User Interface (GUI), Icon, and Typeface/Type Font Designs to WIPO”, coauthored by managing partner Gabriel Di Blasi, was originally published in the latest International Trademark Association (INTA) bulletin.

http://www.inta.org/INTABulletin/Pages/Designs_Committee_Update_7203.aspx

INTA’s Designs Committee has provided comments on the topic of Graphical User Interface (GUI), Icon and Typeface/Type Font Designs to the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) of the World Intellectual Property Organization (WIPO).
In many instances, GUIs, icons and fonts have become a key aspect of a company’s overall brand. They should therefore be considered an important part of the company’s overall IP portfolio. The INTA Designs Committee considers that design protection should be provided for GUIs, icons and fonts, independently from any other form of protection available on the computer program or other technical means of creating it, even if they are projected onto a screen or otherwise only appear when technology is activated.
However, in most of cases, the lifespan of this kind of technology is very short. To the extent that GUIs, icons and fonts may be eligible for overlapping protection, the INTA Designs Committee believes that design law is a good tool to provide short term protection. And this should be without prejudice to protection appropriately provided under other laws, such as copyright, trademark or the law of unfair competition/passing off.
Responding to the Questionnaire of SCT on Graphical User Interface (GUI), Icon and Typeface/Type Font Designs, the INTA Designs Committee has made several suggestions of ways to harmonize the position on GUIs, icons and fonts. In addition, the INTA Designs Committee believes that users are best placed to determine how to disclose an innovative design for the purposes of applying for GUI, icon, or font protection. At present, a designer, especially an individual designer or SME, can be disadvantaged if a design registry outside the designer’s home jurisdiction rejects the application because (under its own rules) the “wrong” representation has been used, even though that representation was accepted in the home jurisdiction.
The designer seeking protection should be allowed to make its own choice on how best to protect the design. Design law protects innovative designs, which have to be novel in order to be protected. A GUI which incorporates an image of a telephone lacking novelty may still be considered novel on the whole, but its novelty will not lie in the telephone image.  Similarly, a design registered for a GUI which shows a digital read-out for a number will not be novel so far as that number is concerned – but may be for the innovative way in which the number is presented.
In practical terms the GUIs, icons and fonts are used across technologies. It is therefore essential that protection is NOT dependent on the product that incorporates it. Once again the designer must have the choice as to how best to represent the design, whether in relation to a specific product, or in the abstract. Furthermore, protection for GUIs and icons should NOT be excluded if the GUI/icon appears only temporarily when a program is loaded.
The INTA Designs Committee considers that there should not be any additional requirements for GUIs, icons or indeed fonts that are animated, and Offices should be able to accept video files within appropriate guidelines. Color and black and white photographs, drawings, including technical drawings and other graphic representations, including CAD and video or moving files, should all be acceptable forms of representations of GUIs, icons and fonts, as long as the representation accurately represents the design.
In their final observations and comments, the INTA Designs Committee has advocated that.

•  the examination criteria for GUIs and icons be no different to those for other forms of industrial design;
• for fonts, the additional elements discussed above may also be examined; and
• the duration of protection for GUI, icon and font designs ought to be the same as for other industrial designs. 

Please see the INTA Designs Committee’s complete response to the questionnaire on inta.org.

Gabriel DI Blasi (Di Blasi, Parente & Associados Advogados)

Patrick Wheeler (Collyer Bristow LLP Solicitors)

Members of INTA Design Committee