Graphical User Interface (GUI) refers to icons, windows, and/or menus to offer a mechanism to interact with electronic devices visually. There has been quite a bit of debate around the registrability of GUIs under industrial design law in India. While the Designs Act, 2002, recognised protection for GUIs, the Indian Patents Office has been reluctant to grant registration to GUIs.

The Design Rules underwent an amendment in 2008, pursuant to which the Locarno classification was officially adopted by India. Pursuant to this, Class 14-04 pertaining to ‘Screen Displays and Icons’ was officially included in the Indian design classification. Interestingly, some GUIs were granted registration by the Indian Patent Office prior to 2008 under Class 14-99 (titled as ‘Miscellaneous).

However, despite the 2008 amendment (to the Design Rules) and the pre-amendment grant of GUI design registration (which was in favour of Microsoft), the Patent Office rejected Amazon’s application for registration of a “Graphic user interface for providing supplemental information of a digital work to a display screen”. The Indian Patent Office stated that GUIs did not fit within the meaning of ‘Article’ [under section 2(a)iii] and ‘Design’ [under section 2(d)iv] under the Design Act, 2000. The Patent Office further stated that:

• A GUI lacks ‘constant eye appeal’ as it is visible only when the computer screen is on and hence is merely a function of a computer screen (and not an IP).
• It is not a finished article since no industrial process was involved in manufacturing it.
• The GUI is not an integral part of the article but purely functional.
• Since the GUI cannot be sold separately, it is not physically accessible.

It is surprising that this order was never challenged before the Court owing to which the status quo continued as it is until recently when a fresh challenge came up for consideration before the Court in a separate case.

In the case of UST Global (Singapore) Pte. Ltd. Vs. The Controller of Patents and Designs and Anr.[1], the appellant had filed a design application for registration of a design titled ‘Touch Screen’ for a novel surface ornamentation. The Controller of Designs rejected the application on the ground that the GUI was only operative when the computer was switched on and thus it did not provide ‘consistent eye appeal’; GUI did not qualify as an article of manufacture, GUI was not physically accessible; and that the GUI design did not come under the ambit of the Act.

The appellant preferred an appeal before the High Court of Calcutta with the following points of argument:

1. GUI is a software, an intellectual property, an article of value hence capable of registration.
2. The subject design is original and has never been in the public domain.
3. GUI can positively influence customers to buy such products.
4. The 2008 amendment of the Design Rules, 2001 provides for an elaborate classification of goods and articles on which designs can be applied and registered.
5. While the GUI in the present case is in-built, the in-built ICONS can be displayed in shops as well as in advertisements.
6. The process of application of the subject design on the finished article is a mechanical and manual process that falls within the definition of ‘industrial process’ (and accordingly falls within the purview of Section 2(d) of the Designs Act 2000).

The High Court, after hearing the arguments, held that the finding (of the Controller) that GUI/ ICON is incapable of registration is incorrect. The Court remanded the matter back to the Controller for fresh consideration within a period of three months after giving a right of hearing to the appellant. This order gives fresh hope of settlement of the law on the registrability of graphical user interfaces under industrial designs law in India. Once it is settled law that GUIs can be registered under the category of industrial designs, we might witness a big increase in the applications for GUI registrations in India.

[1] AID No. 2 OF 2019