Facts of the case:

The Design office has up until now taken the view that GUI is not capable of being registered as a Design for the following reasons:

1. The graphic user interface, i.e., display screen for hand-held computing devices, is a function of a computer screen, which is an application based on a computer program used for the operation of the hand-held computing devices, which will show on the display screen only when the computing device is switched on condition.
2. The design failed to satisfy the requirements of sections 2(a) and 2(d), which require the design applied to the article in the finished form to be judged solely by eye.
3. The design is not an integral part of the article but is purely functional/application-based and is beyond the scope of sections 2(a) and 2(d) of the Act.
4. The graphical user interface cannot be held as an article of manufacture. Manufacturing is the production of merchandise for use or sale using labour and machines, tools, chemical and biological processing, or formulation. Therefore, the term may refer to a range of human activities, from handicrafts to those involving high technology, but is most commonly applied to industrial production, in which raw materials are transformed into finished goods. The graphical user interface does not fit into this category and also does not qualify as an article of manufacture.
5. As the graphical user interface cannot be sold separately as a commodity item in the market, it fails to meet the provision of section 2(d) of the Act. That means one cannot purchase a graphical user interface as such. Usually, an article is physically accessible, which can induce a tactile perception. The graphical user interface cannot cause a sense of touch in itself.

Ust Global (Singapore) Pte Ltd vs. The Controller of Patents and another AID No. 2 of 2019.

The High Court of Calcutta, while hearing the appeal against the design application for refusal of registration of a design titled “Touch Screen” for a novel surface ornamentation, which is a Graphical User Interface (GUI), set aside the decision of the Controller of Designs.

The High Court made the following vital observations in favour of the GUI’s registrability and remanded the application back to the Controller of Designs for fresh consideration.

1. The design Office’s findings that GUIs/ICONS are incapable of registration was incorrect, as this ignored the amendments made to the Design Rules in 2019 and 2021. Class 14.04 of the Locarno Classification, introduced by the 2019 amendment, specifically allows the registrability of “Screen Displays and Icons.” Additionally, the amendments made in 2021 introduced Class 32, containing graphic symbols, graphic designs, logos, ornamentation, and surface patterns.
2. The concept of GUI contemplates the visual representation of the configuration of icons and several elements on a touch screen. GUI is also used as a powerful differentiation of products and user experience with the ultimate aim of influencing customer decisions when buying such products.
3. The court recorded that the finding ( of the Controller) that a GUI is visible only in “ON” mode or operating mode and hence incapable of registration is erroneous. The court observed that the GUI in the present case was in-built. In-built ICONS are displayed in shops as well as in advertisements. Registered 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. Ordinarily, a product’s design is concerned with an article’s external appearance. However, the pertinent feature of visual appeal may be considered a feature of a registrable design in certain articles.
4. The court clarified that the design submitted by the appellant was a 2D design, i.e., a design whose novelty 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. The process of applying the subject design, i.e., GUI on the finished article, is a mechanical and manual process that falls under the definition of “industrial process” mentioned in Section 2(d) of the Designs Act. A software developer develops a source code that creates the GUI. This source code is then embedded in the micro-controllers and micro-processors and is displayed on screen by illuminating pixels by electronic means. Therefore, the design is applied to the article by industrial process and means.

Our Comment

The ruling of the Court is a welcome step toward the protection and enforcement of GUI, which acts as an essential differentiator for “handheld” devices.