The protection of design rights in India is governed by the Designs Act, 2000. At present, Indian Patent and Design Office is reluctant to register Graphical User Interfaces (GUI)’s under Industrial Design Protection stating that GUIs cannot be regarded as an article of manufacture, and are hence disqualified as a design under this Act.
This Article discusses the present scenario of registration of GUI in India under the Indian Designs Act, 2000, in light of the recent judgment of the High Court of Calcutta in UST Global (Singapore) Pte Ltd v. the Controller of Patents and Designs and Anr .
Facts of the Case
Design application no. 298921 titled “Touch Screen” was filed by Appellant UST Global (Singapore) Pte Ltd on October 30, 2017, in the Indian Patent and Design Office for novel surface ornamentation which is a Graphical User Interface (GUI).
The Application was examined by the Controller of Patents and Designs and was rejected on the grounds that the design having a novel surface ornamentation display, appearing as the touch screen i.e. GUI, was incapable of being registered as a “design” because:
- The GUI was only visible when the product was in an “ON” mode and there was no design when the product was in the “OFF” mode. Thus, a “GUI cannot be treated as a design of any article”; and
- The GUI does not follow any “industrial” manufacturing process but was created by a software development process.
Aggrieved by this Order, the Appellant filed an appeal against the rejection order as given by the Controller of Patents and Designs before the High Court of Calcutta.
Contentions of the Appellant
The Appellant contended that the impugned order is erroneous and is liable to be set aside. GUI is a software, an intellectual property, an article of value, and hence capable of registration. Moreover, the subject design is original and has never been in the public domain. A well-implemented GUI can positively influence customers in buying such products.
The 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; in-built ICONS are displayed in shops as well as in advertisements. 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. However, the pertinent feature of visual appeal may in the case of certain articles be considered as features of a registrable design.
Applicable Law and/or Rule
According to Section 2 (a) of the Designs Act, 2000, ““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.”
Further, according to Section 2(d) of the Designs Act, 2000, ““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)”
Further, Class 14.02 and 14.04 of the Locarno Classification specify articles belonging to “Screen Displays and Icons”, which has also been recognised in the Indian Design Rules (Amendment) 2019. Additionally, the amendments made in 2021 to the Indian Design Rules, 2008 introduced a new class 32 containing graphic symbols, graphic designs, logos, ornamentation and surface patterns.
Observation by the Court
The Court observed that the Design submitted by the Appellant is a 2D design and the novelty of the same can be judged by the eye as soon as a device is turned on. There is no requirement to touch the device in respect of the design.
Further, the Court observed that 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. A software developer develops a source code which 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. Therefore, the design is applied to the article by an industrial process and means.
In delivering its decision, the Court relied on Re: Apple Computer Inc.’s Design Applications, wherein, it was held that, “The icons for which registration was sought were those inherently built into a computer. They were not the sort of icons which appeared temporarily whenever a particular computer program was loaded. There was no policy reason why registration should be refused. The icons were patterns or ornaments applied to an article by an industrial process. They were built into the software whose inclusion in the machine was part of an industrial process. That the icons/patterns/ornamentations are built into the software whose inclusion in the machine is part of an industrial process. The Registered Design Acts, 1949 required the features claimed to be features in the finished article; it did not require those features to be judged at the time the article was bought.”
Further, the Court noted that subject design has been granted registration in the USA and the European Union. Even though not binding on the Controller, this aspect of the matter has not even been adverted to in the impugned order.
The Decision of the Court
The Hon’ble High Court of Calcutta set aside the Order of the Controller of Patents and Designs and remanded the matter back to the Controller for fresh consideration within three months from the date of the said order.
The application will now be examined again by the Controller of Patents and Designs for disposal. The right of fresh hearing was also awarded to the Appellant.
Analysis and Conclusion
This judgement is indeed a benchmark step with regard to the registration of GUIs in India. In the coming days, we believe that the present order given by the High Court of Calcutta will lead to the registration of many other GUIs and other inbuilt visually appealable features as a design in India.
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