A Hope for GUI Registration under Design Laws in India

This article discusses a possibility of GUI registrability with reference to Ust Global (Singapore) Pte Ltd vs Controller Of Patents And Designs & Anr.
SS Rana & Co. - Vikrant Rana, Dhruv Mathur
SS Rana & Co. - Vikrant Rana, Dhruv Mathur

A Graphical User Interface (GUI) is an interface which helps a user to interact with the electronic device(s). For example, the use of icons, menus and other visual indicators or representations (graphics) present in computers, tablets, smartphones, etc. The concept of GUI contemplates visual representation of configuration of icons and several elements on a touch screen. GUI is also used as a powerful differentiation of products and user experience with the ultimate aim of influencing customer decision when buying such products

GUIs have been always in question under the Indian Design laws, as per their registrability. Despite the registration of GUI designs to Microsoft and the Design Rules 2008 amendments, Amazon's application (Application No. 240305) pertaining to a "Graphic user interface for providing supplemental information of a digital work to a display screen" was disallowed protection by the Indian Patent Office. Few examples of Microsoft GUI registered designs are:

However, in a recent judgment by the Hon’ble High Court of Calcutta, special jurisdiction, in the matter of UST GLOBAL (SINGAPORE) PTE LTD vs. THE CONTROLLER OF PATENTS AND DESIGNS AND ANR, wherein the court has given a positive hope pertaining to GUI registrability under Design Laws in India.

The appellant, a global leading provider of end-to-end IT services and solutions for different companies,  being the applicant of a design application bearing Application no. 298921 filed on October 30, 2017 for registration of a design titled “Touch Screen” for a novel surface ornamentation which is a Graphical User Interface (GUI).

Despite the registration of GUI designs to Microsoft and the Design Rules 2008 amendments, Amazon's application (Application No. 240305) pertaining to a "Graphic user interface for providing supplemental information of a digital work to a display screen" was disallowed protection by the Indian Patent Office.

The stand taken by the Controller was that GUIs do not qualify as designs under Section 2(a) and (d) of the Designs Act. The Controller's objection was based on the reasons that the GUI was only operative when the computer was switched on and thus, it did not provide "consistent eye appeal", GUI did not qualify as an article of manufacture, GUI was not physically accessible, and GUI design did not come under the ambit of the Act.

Refusal Order

The said design application was refused by the Assistant Controller of Patents of Designs under the Designs Act, 2000 on the grounds that:

- a GUI is incapable of design registration.

- It has also been held that since the GUI is only visible when it is in ‘ON’ mode or operating mode there can be no design when the product is on ‘OFF’ mode. Hence, GUI cannot be treated as a design of any article.

- It has also been found that the ICON/GUI does not follow the process of industrial manufacturing but is mainly created by software development processing.

Contention by the Appellant

The appellant contended that the impugned order is erroneous and is liable to be set aside. The following points were set forth by the appellant:

1. That GUI is a software, an intellectual property, an article of value hence capable of registration.

2. That the subject design is original and has never been in the public domain.

3. That GUI can positively influence customers in buying such products.

It is important to read the section 2(a) and 2(d) of the Design Act, 2000, which recites:

 (a) “article” means any article of manufacture and any substance, artificial, or partly artificial and partly natural and includes any part of an article capable of being made and sold separately.

 (d) “design” means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958) or property mark as defined in section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957 (14 of 1957).

4. The 2008 amendment of the Design Rules 2001 provides for an elaborate classification of goods and articles on which designs can be applied and registered. The Locarno Classification included Class 14-02 and 14-04, which specifies articles belonging to “Screen Displays and Icons”, recognized in the Design Rules (Amendment) 2019. Additionally, the amendments made in 2021 to the Design Rules, 2008, introduced a new Class 32 containing graphic symbols, graphic designs, logos, ornamentation, and surface patterns.

5. Regarding the GUI is visible only in ON mode or operating mode, the appellant contended that:

a. the GUI in the present case is in-built. In-built ICONS are displayed in shops as well as in advertisements.

b. Designs registered may be applied to any external or internal feature and are capable of registration if they appeal to the eye and enhance the aesthetic value of the product. Ordinarily, the design of a product is concerned with the external appearance of an article.

c. The appellant also took support of few case laws, such as:

     i. Gramaphone Company Ltd. Vs. Magazine Holder Company (1910) 27 R.P.C. 152.

    ii. P. Ferrero and CSPA’s Application (1978) RPC 473.

6. With respect to the contention regarding section 2(d) of the Design Act, 2000, the appellant contended that the impugned design was a 2-D design i.e., a design which possesses the dimensions of length and width but does not possess depth. The novelty of the same can be judged by the eye as soon as the device is turned on. There is no requirement to touch the device in respect of the design. The process of application of the subject design i.e. GUI on the finished article is a mechanical and manual process which falls within the definition of “industrial process” mentioned in section 2(d) of the Designs Act 2000.

The appellant also explained the industrial process that a software developer develops a source code, which creates the GUI, which is then embedded in the micro-controllers and micro-processors and is displayed in screen by illuminating pixels by electronic means. Further, the appellant took support of the following case laws:

a. Re: Apple Computer Inc.’s Design Applications [2002] F.S.R. 38.

b. K.K. Suwa Seikosha’s Design Application [1982] R.P.R. 166.

The matter is now remanded back to the Controller for consideration afresh within a period of three months from the date of communication of this order.

Vikrant Rana is the Managing Partner and Dhruv Mathur is a Senior Patent Associate at S.S. Rana & Co.

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