Screen icons and layouts on phones, computers can be registered under Designs Act: Calcutta High Court

The Calcutta High Court recently held that icons, menus and screen layouts on phones and computers can qualify as registrable “designs” under the Designs Act, 2000. [Nec Corporation v. Controller of Patents and Design]

Justice Ravi Krishan Kapur set aside several orders of the Controller of Designs that had refused to register such designs on the ground that they were merely software-based graphical user interfaces (GUIs) and not designs applied to a physical articles.

The Court held,

"The Act protects shape, configuration, pattern, ornament and composition of lines or colours. A GUI inherently comprises iconography, layout, colour schemes, composition of lines and ornamentation, and therefore falls within the kind of visual features the Act contemplates. GUIs typically reflect creative choices in arrangement, proportion, spacing, colour palette and icon design."

The case arose from multiple appeals by global entities - including NEC Corporation, Abiomed Inc and TVS Motor Company - challenging the rejection of design applications for visual elements like vehicle dashboard pictograms and display screen layouts.

The Controller had taken the view that these features were essentially software-based and lacked the "permanence" required for registration. On this basis, the Controller concluded that a GUI did not constitute an "article" or a "design" applied by an industrial process.

The Court identified a "pre-conceived mindset" in the Controller’s office that tied the definition of an "article" strictly to a physical embodiment. Addressing the definition of "article" under Section 2(a) of the Designs Act, the Court stated:

"The expression “article of manufacture” in section 2(a) is broad and generic. The misconception of the respondent authorities is anchored in interpreting the word design to a physical or tangible article. This is premised on the notion that every article must have an element of physical embodiment. In following such a narrow approach, GUI, icons, animations and screen based designs would never be covered because they exist in a digital and virtual form."

Regarding the "industrial process" requirement, the Court noted that the statute uses the word "any" before the term.

"Given the interplay of digital and physical processes, displaying or applying a GUI to a display surface undeniably fits within the evolving concept of an industrial process."

Rejecting the requirement on "permanence," the Court held that the statute does not require a design to be permanently visible. The Court ruled.

"In this background, the correct legal test is whether the design is visible when the article is put to its intended or normal use. Dependency does not preclude a design from being considered an article of manufacture."

The Court further clarified that while GUIs have functional purposes, they are registrable if they possess aesthetic "eye appeal" that is not solely dictated by function. To resolve the conflict with copyright law, the Court held:

"GUI as a design does not create dual protection because the legal character of a GUI when integrated and industrially applied to an article differs from a standard artistic work or a computer programme."

The Court noted that 92% of jurisdictions worldwide already protect GUIs under design laws. By applying the principle of updating construction, the Court aimed to align Indian law with technological advancements. Justice Kapur held:

"A GUI inherently comprises iconography, layout, colour schemes, composition of lines and ornamentation, and therefore falls within the kind of visual features the Act contemplates."

Consequently, the Court set aside the Controller’s orders and remanded the matters for fresh hearings before the Controller.

NEC Corporation was represented by Senior Advocate Sayantan Basu along with Advocates Tanmoy Roy and Aheriya Roy.

Erbe Elektromedizin GmbH was represented by Advocates Vindhya S Mani and Taniya Roy.

Abiomed Inc was represented by Advocates Sourojit Dasgupta, Sudhakar Prasad, S Banerjee, Pratiksha Varshney and Pradipta Bose.

TVS Motor Company Limited was represented by Senior Advocate Ranjan Bachawat along with Advocates Smriti Yadav, Shubrojyoti Mookherjee, Sagnik Bose, Shubham Shende, Vishwas Sethuraman and A Sinha.

The Controller of Patents and Designs was represented by Advocates Sanjukta Gupta, Madhu Jana, Ujjal Rajak, Indrajeet Dasgupta, Brajesh Jha, Sumita Sarkar and A Banerjee.

Advocate Adarsh Ramanujan assisted the Court as amicus curiae.

[Read Judgment]