Summary: The registrability of graphical user interfaces (GUIs) has had a chequered past in India. This post discusses latest developments in this matter, including the fallout of a 2023 Calcutta High Court asking the Designs Office to reconsider an order rejecting the application for registering a GUI design.
The registrability of Graphical User Interfaces (GUIs) in India has been a contentious issue, with the Designs Office long maintaining that GUIs are not registrable. In 2023, the Calcutta High Court remanded a design application back to the Controller of Designs for fresh consideration of GUI eligibility as designs, thus offering a window of opportunity for a reconsideration around the question of GUI registrability.
The High Court's decision came after UST Global challenged the Controller's order refusing a design registration for a "Touch Screen" (UST Global (Singapore) Pte Ltd Vs The Controller Of Patents And Designs And Anr., AID No. 2 OF 2019, Calcutta High Court, Judgement of 20.3.2023). The decision briefly raised hopes that GUIs might finally be registrable in India. Unfortunately, the Indian Patent Office (IPO) has recently reaffirmed its stance and refused to register GUIs under Indian Design laws.
In this blog, we trace the registrability of Graphical User Interfaces (GUIs) under Indian Design law and highlight the key developments in this space to date.
Design Rules
The Designs Rules, 2001 ("the Rules") provide for the classification of designs and articles. The Design (Amendment) Rules, 2008 amended the classification system to be in accordance with the "Locarno classification," as published by World Intellectual Property Organization (WIPO). Later, the Design (Amendment) Rules, 2021 provided that articles would be classified as per the current edition of the Locarno Classification, and omitted the Third Schedule altogether. Accordingly, Class 14-04 for "Screen Displays and Icons", and a new Class 32, for "Graphic symbols and logos, surface patterns, ornamentation", came to be included in the Rules.
Position of Designs Office
Until around 2009, the Designs Office permitted design registrations for Graphical User Interfaces (GUIs) under Indian design laws to applicants such as Microsoft. However, since then, the Designs Office has taken the stance that GUIs do not qualify as designs under Sections 2(a) and 2(d) of the Designs Act, 2000 ("the Act") and are therefore ineligible for design protection.
Despite the inclusion of 'Screen Displays and Icons' in the design classification in 2021, the Designs Office continues to maintain that GUIs/icons are not eligible for design registration. To understand the Office's perspective, it is useful to consider a 2014 decision by the Controller regarding Design Application No. 240305. In this decision, Amazon's application for a 'graphical user interface for providing supplemental information of a digital work to a display screen' was rejected. The Controller noted that the proposed design did not meet the definition of a design under Sections 2(a) and 2(d) of the Act.
Section 2(d) of the Act provides the definition of term "design":
'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 ..." (emphasis added)
Certain phrases immediately emerge as relevant. The definition requires that the design must be 'applied to any article' by 'any industrial process or means', and 'appeals to the eye'.
The term 'article' is further defined under Section 2(a) of the Act as:
"'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."
Specifically, the Controller, while refusing Amazon's application, made the following observations:
Firstly, it said that the graphic display screen was a function of the computer screen, which became operative only when the computer was switched on. Thus, it failed to fulfil the requirement of consistent eye appeal, as required under Section 2(d).
Secondly, it said that screen displays are controlled by the function of an article such as a computer or mobile phone. They do not contain features of shape or configuration or other design parameters. Thus, a screen display cannot be considered as a 'finished' article judged solely by eye, and obtained through industrial process, as required by Section 2(d).
Thirdly, it said a GUI cannot be considered as an article of manufacture under Section 2(a), as it cannot be converted from physical input to physical output. Also, as the GUI was not physically accessible, it could not be sold separately as a commodity in the market, and hence failed to meet the provision of Section 2(a).
Thus, the Designs Office has maintained the position that unless legislators amend Section 2(a) and 2(d), GUIs do not meet the requirements of existing definitions of "design" and "article" and hence are not registrable.
2023 Calcutta High Court decision
In allowing the appeal from UST Global in 2023, the single judge
of the Calcutta High Court hearing the case considered the
following:
a) Design (Amendment) Rules 2021 recognizes the Locarno
Classification which includes Class 14-04 for "Screen Displays
and Icons", and Class 32 for graphic symbols, graphic designs,
logos, ornamentation and surface patterns.
b) The Controller's finding that the GUI is visible only in ON mode or operating mode and hence not capable of registration is erroneous. The GUI in the present case is in-built. Additionally, designs 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.
c) GUIs are applied to the article by an industrial process and means. A software developer develops a source code that creates the GUI. This source code is then embedded in the microcontrollers and microprocessors and is displayed on a screen by illuminating pixels by electronic means. Thus, GUIs meet the criteria of "industrial manufacturing".
The court also noted that a GUI is a 2D design i.e. a design which possesses the dimensions of length and width but does not possess depth. The novelty of the design 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.
d) The Controller while rejecting the design application did not even consider that the design has been granted registration in the USA and the European Union.
While this was considered a positive development in the space of design registration of GUIs/Icons, with the decision of the Designs Office, the design protection for GUIs still remains uncertain.
GUI Protection under Copyrights law
The Ministry of Electronics and Information Technology (MEITY) recognizes the protectability of a Graphical User Interface's (GUI) "look and feel" under the Copyright Act of 1957. This stance is further reinforced by the decision in Hulm Entertainment Pvt. Ltd. and Ors. vs. Fantasy Sports Myfab11 Pvt. Ltd. and Ors. (17.10.2023 – DELHC), where the Court acknowledged GUIs as a subject matter of copyright protection. Thus, while the legal landscape for GUI protection in India is still unfolding, copyright protection offers a potential avenue for GUI creators seeking to safeguard their work.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
