On April 10, 2018, the iconic Australian brand UGG won a big $5.2M in the Central District of California in a design patent infringement case against Reliable Knitting Works, Wal-Mart Stores, Inc., and 10 other unnamed defendants (subject to post trial adjustments). Deckers Outdoor Corporation v. Romeo and Juliette, Inc. et al, No. 2:2015cv02812 – Document 139 (C.D. Cal. 2017).
Just this week, in the Federal Court of Australia, in Gram Engineering Pty Ltd v Bluescope Steel Ltd  FCA 539, Gram was awarded $2,078,338 for Bluescope Steel’s infringement of Gram’s registered Australian design relating to a fencing panel sheet, Australian Registered Design No. AU121344S.
While the famous $400M damages award for Apple against Samsung for infringing the row of buttons and the curvature of the corner of a phone of a design patent was reversed by the US Supreme Court ruling that damages may be limited to revenues attributable to a component of an article of manufacture and not the entire article itself, United States Supreme Court, SAMSUNG ELECTRONICS CO., LTD., ET AL. v. APPLE INC., (2016) No. 15-777, Decided: December 6, 2016, that shouldn’t put you off design patents. It is this jurist’s opinion that this was the right decision by the SCOTUS.
If you have invested in industrial design, design patents are an inexpensive way to protect your innovations. For any type of industrial design, including clothing, tables, chairs, nuts and bolts, design registrations give your competitors notice that you are IP savvy and you will protect your competitive advantage.
Graphical user interfaces (GUIs) and associated visual elements, such as icons, dialog boxes, transitional animations, and font types are among the fastest growing segments of U.S. design patent and European registered design filings. Design patent protect aesthetics, not functionality. The design registration or design patent is therefore a collection of drawings depicting the features that you want to protect. It is quite straight forward to generate a set of drawings. No writing, except a title, is required. However, in Australia you cannot register a graphical user interface (GUI). But why should that matter to a global company? The US and the EU are important markets. Even in China, some forms of GUI are protectable.
Why not rely on copyright law for protecting GUIs? Copyright law may not be sufficient to protect individual elements like icons or configurations of those elements. Furthermore, copyright law will not protect against others who independently generate the same form of expression.
What you need to know: In Australia, there is no grace period for your design registration, but in the US and in the EU, you have a one-year grace period to file your applications. In China, you have a six-month grace period. It is best to file as soon as possible, even before your public disclosure, especially if you want to file in Australia. You can file in one country, and then before the grace period ends in other countries, file in other countries based upon the priority of the first filing. If registering GUIs, just be sure that you use the services of a patent attorney familiar with the types of drawings needed to register a GUI.
Designs provide a different type of protection than do copyrights and trademarks. Some rights overlap, but some don’t. So, if you forget about registering your designs, you are leaving out some important rights, the type that UGG and Gram Engineering relied upon for their big wins.