India: Graphical User Interface (GUI) Capable Of Design Registration Rules High Court
In a recent appeal instituted before the Hon’ble High Court of Calcutta in the case of UST Global (Singapore) Pte Ltd Vs The Controller Of Patents and Designs and Anr, while dismissing the order by the Assistant Controller General of Patents & Designs based on a conclusion of non-registrability of a design titled “Touch Screen” for a novel surface ornamentation which is a Graphical User Interface (GUI) asserting that “the designs can be applied to an article either internally or externally and can be registered if they appeal to the eye and are capable of enhancing the aesthetic value of the product. In the present case, the GUI was in-built, and it was noted that a pertinent feature of visual appeal may, in the case of certain articles, be considered as a feature of a registrable design.”
The present appeal was instituted by UST Global (Singapore) Pte Ltd. (hereinafter the “Appellant”) assailing the impugned order by the Assistant Controller of Patents and Designs (hereinafter the “Respondent”) through which the Appellant’s application for registration of a design titled “Touch Screen” hereinafter the “subject design”) for a novel surface ornamentation which is a Graphical User Interface (GUI) was refused design protection.
The subject design was refused protection on the ground that a GUI is incapable of design registration. It was also held vide the impugned order 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. As per the impugned order, it was held that the ICON/GUI does not follow the process of industrial manufacturing but is mainly created by software development processing.
It was the case of the Appellant that the impugned order was completely erroneous and liable to be set aside. It was alleged by the Appellant that GUI is a software, an intellectual property, an article of value and hence capable of registration. Moreover, it was contended that the subject design is original and has never been in the public domain and thus, capable of registration.
It was further argued by the Appellant that Classes 14.02 and 14.04 of the Locarno Classification specify articles belonging to “Screen Displays and Icons” which has also been recognised in the Design Rules (Amendment) 2019. Additionally, it was affirmed that 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. In view of the aforesaid, it was asserted that the finding of the Assistant Controller that GUI/ ICON is incapable of registration is incorrect and ignores the aforesaid amendments.
Moreover, with respect to the Assistant Controller’s finding that the GUI is visible only in ON mode or operating mode and hence not capable of registration, it was argued that 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.
It was further affirmed that the subject design was a 2D design and it was noted that the novelty can be judged by the eye as soon as the display is turned on, without the need to touch the device vis-à-vis the design.
Findings of the Court
The Court, while analysing the impugned order observed that the main ground for rejection of design registration to the subject design was that the manufacturing the GUI did not follow the process of industrial manufacturing but was created by using only a “software development processing” was incorrect. It was held by the Hon’ble Court that a software developer develops a source code which creates the GUI. This source code is then embedded in the micro-controllers and micro-processors and is displayed in screen by illuminating pixels by electronic means. Therefore, the design is applied to the article by industrial process and means”.
Moreover, while affirming the registrability of the subject design, the Hon’ble Court placed reliance on the judgement of K.K. Suwa Seikosha’s Design Application  R.P.R. 166 , wherein it was held that icons, consisting of a design to be applied on a display panel for an electronic timepiece, were registrable. Lastly, the Court noted that the Assistant Controller had not even taken into account that the subject design has been granted registration in the USA and the European Union.
The Appeal was accordingly decided in favour of the Appellant and the application was remanded back to the Respondent for fresh consideration within a period of three months from the date of communication of the order.
This order is a first of its kind pertaining to the design registrability of GUI’s in India. With the advancement in technology, this is a classic example of the fact that the judiciary needs to keep pace with the transforming digital landscape. Orders of this nature are sure to pave the path for more advanced digital interfaces and graphical components to seek protection under the Indian IP regime.
 AID NO. 2 OF 2019