In the matter of UST Global (Singapore) Pte Ltd v. The Controller of Patents and Designs and Anr (AID No 2 of 2019), the Hon'ble Calcutta High Court vide judgment dated 20 March 2023 (Decision) set aside an order passed by the Assistant Controller of Patents of Designs (Controller) under the Designs Act, 2000 (Act) refusing registration to the design of a Graphical User Interface (GUI).
UST Global (Singapore) Pte Ltd. (Appellant) is a global provider of end-to-end information technology services and solutions for different companies. The Appellant filed an application on 30 October 2017 (said application) under the Act seeking registration of a design titled as "Touch Screen", for a novel surface ornamentation, which is a GUI. The Controller vide order dated 4 September 2019 (Controller's Order) refused the said application on the following grounds: (i) GUI is incapable of design registration; (ii) GUI works only in 'On' mode or operating mode and thus, the same cannot be treated as a design of any article especially as there can be no design when the product is on 'OFF' mode.; and (iii) GUI does not follow the process of industrial manufacturing and is mainly created by software development processing. The Appellant challenged the Controller's Order before the Calcutta High Court and sought setting aside the Controller's Order.
During the arguments before the Calcutta High Court, the Appellant contended that: (i) 2008 amendment to the Design Rules, 2001 has provided elaborated classification of goods and articles in which designs can be applied and registered; (ii) articles belonging to "Screen Displays and Icons" have been specified in Class 14.02 and 14.04 of the Locarno Classification, which have also been recognized in the Design (Amendment) Rules, 2019; (iii) GUI is a software, an intellectual property, an article of value which is original and has never been in the public domain and thus, same is capable of registration; (iv) well implemented GUI can positively influence customers in buying such products; (v) the amendments made in 2021 also introduced a new class viz class 32 which contains 'graphic symbols, graphic designs, logos, ornamentation and surface patterns'; and (vi) the refused design of GUI has already been granted in the United States of America and European Union. The Appellant also relied on Gramaphone Company Ltd. Vs. Magazine Holder Company (1910) 27 R.P.C. 152 inter alia contending that while ordinarily, the design of a product is concerned with the external appearance of an article, in a particular case, the pertinent feature of visual appeal be considered as a registrable design. Relying on Apple Computer Inc.'s Design Applications  F.S.R, the Appellant contended that the design is applied to the article by industrial process and means, and hence, registrable. The Appellant also relied upon K.K. Suwa Seikosha's Design Application  R.P.R. 166 wherein it has been held that icons, consisting of a design to be applied on a display panel for an electronic timepiece, were registrable.
Findings and Decision
With respect to Controller's view that GUI works only in 'On' mode and the same cannot be treated as a design of any article, the Calcutta High Court held the same to be erroneous as the Calcutta High Court was of the view that GUI in the present case is inbuilt, which is displayed in shops as well as in advertisements. The Calcutta High Court while taking into consideration the Gramaphone Company Ltd. case (supra) held that any external or internal feature having an appeal to the eye which enhances the aesthetic value of the product is capable of design registration. With respect to Controller's ground that GUI does not follow the process of industrial manufacturing and is mainly created by software development processing, the Calcutta High Court while taking in to consideration the Apple Computer case (supra) held that as the subject design viz Touch Screen / GUI is a design which is applied to the article by mechanical and manual process and such process falls within the definition of "industrial process" mentioned in Section 2(d) of the Act. Relying on K.K. Suwa Seikosha's case (supra), the Calcutta High Court held that GUI being an icon can be registrable.
In view of the above, the Calcutta High Court set aside the Controller's Order and remanded back to the Controller to consider afresh the above application within a period of three months from the date of the communication of the Decision and after giving a right of hearing the Appellant.
While GUI's are registered in various other jurisdictions of the world, the Decision is a first of its kind pertaining to the design registrability of GUI's in India. The Decision underlines that any external or internal feature of an article having appeal to the eye is registrable under the Act. The Decision will help change the typical outlook that a design registration is concerned only with the external appearance of an article. The Decision will assist numerous information technology companies who are engaged in providing the similar services for registration of their GUIs.
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