To Be or Not To Be (Design): Calcutta HC Sways Against Trend of Denying Design Registrations Over GUIs

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[This post is authored by SpicyIP intern Anjali Baskar. Anjali is a fourth-year student pursuing B.B.A. LL.B. (Hons.) from School of Law, Christ University, Bengaluru. She is keenly interested in exploring various fields in law, especially IP, Media & Entertainment.]

There is a ‘consistent’ inconsistency in the judgements of Indian courts on deciding a highly debated issue: Do GUIs qualify for design protection under Sections 2(a) and 2(d) of the Designs Act, 2000?

A recent flurry of orders in the past few years has answered this question in the negative, affirming the Indian Patent Office’s reluctance to grant such registration, as seen in this detailed post by Nikhil Purohit.

A March 20, 2023 order from the Calcutta High Court’s single bench of Justice Ravi Krishnan Kapur deviated from this pattern and remanded back the Assistant Controller of Patents of Designs’ order dated September 4, 2019, which rejected an application to register the GUI design and directed for re-consideration thereof within 3 months after giving the appellant a fresh hearing.

I believe that order will have a significant impact on the Indian GUI regime simply because of the objective of GUI, which is highlighted by the appellant (paras 4 and 5), which is to ‘influence customer decisions when buying such products’ by offering product differentiation.

In Part I of this post, I will provide the case background and explain the differences between the present Controller and Amazon Controller’s grounds. In Part II, I will analyse the Court’s response to the Controller’s erroneous interpretation of Sections 2(a) and 2(d) and allied Rules. In Part III, I will assess the impact of the judgement on GUIs and determine whether the Court’s reasoning was correct in its decision.

Part I – Background of the Order

The petitioner UST Global appealed against the denial of their registration application (no. 298921) for their Touch Screen” design, “being a GUI.”  

Controller’s Grounds for Rejection (vs Amazon Controller’s Grounds)

The Designs Office’s rejection (as highlighted in the court’s order) in the present case was interestingly almost identical to the Controller’s grounds while denying Amazon’s 2014 application to register a GUI ‘for providing supplemental information of a digital work to a display screen’ filed under Class 14.02 for ‘Data Processing Equipment’ and Class 14.04 for ‘Peripheral Devices’. (See here for the discussion on Amazon’s order by the controller). As highlighted by Vikrant Rana and Dhruv Mathur in their post, prior to 2009, many GUIs were allowed to be registered as designs (albeit under Class 14.99). This order was significant because the Controller shifted from a liberal approach (2009 to 2014 – Microsoft and other GUI-approved designs) to a strict interpretation of the word “article” (post-2014) while holding that ‘screen displays’ were not registerable as designs.                                                     

  1. The GUI is only visible when it is in ‘ON’ mode or operating mode [and does not qualify as an “article of manufacture” under Section 2(a)], thus no design of “any article” subsists when product is turned off.

Though the ‘OFF’ mode and “article” definition point was similar, Amazon Controller alleged a violation of Section 2(d) rather than Section 2(a) invoked in the present case and used Section 2(a) to claim Amazon’s GUI was not physically accessible and hence not an “article.” The non-statutory requirement of a ‘consistent’ or ‘permanent’ visual appeal highlighted by the Amazon Controller was not stated in this case.

  • The GUI is created by ‘software development processing’, which does not fall under the purview of an “industrial (manufacturing) process” under Section 2(d). (Note: There was no explanation offered for the same, unlike the Amazon order. Such discretion is probably due to the fact that “industrial process” under Section 2(d) has not been defined anywhere in the Designs Act, 2000.)

Though the non-satisfaction of the ‘industrial process’ point under Section 2(d)  was similar, the Amazon Controller stated that screen displays/interface contain purely functional elements, were not solely judged by the eye, and thus was not obtained by an ‘industrial process’.

The appellant argued that (para 5):

  1. The GUI is a ‘software’ and an ‘article of value’ and hence is capable of IP registration.

This is contrasted from an ‘article of manufacture’ under Section 2(a).

  • The “subject design” is original and has not been in the public domain (novelty).

A ‘software’ is said to be per se copyrightable as a “computer programme” under Section 2(o) of the Copyright Act, 1957, however, the ‘design’ attached to the ‘article’ would instead be the subject matter of design law.

Part II – Analysing Court’s Observations

  1. Identification of Design Class for GUIs

The Court lamented that the executive authority has completely ignored the provisions in the allied Designs Rules, 2001. The (international) Locarno Classification for Industrial Designs, formally adopted in India as per Rule 5 of the Design (Amendment) Rules, 2021, clearly cover GUIs, namely under:

  1. Class 14.02 and 14.04 – covering “Screen Displays and Icons” under Class 14, which is specifically for “recording, telecommunication or data processing equipment.
    1. Class 32 – generally classifying “graphic symbols, graphic designs…ornamentation, surface patterns”. This matches the description of the appellant’s design as being a ‘novel surface ornamentation.’
  1. Taking Down Controller’s Arguments

The Court rebutted the ‘not seen outside the operating mode finding with two observations (para 8):  

  1. Internal Feature [Section 2(d) and (a)]: Icons were “in-built” as they were an internalfeature applied to the article(s)’ displayed at shops and advertisements under Section 2(d). Attracting consumers towards manufactured articles presented for commercial exhibitions, meant they were applied to an “article of manufacture” under Section 2(a).
  2. External Feature [Section 2(d)]: External features ‘which can be applied to any article’ would mean an overall ‘appeal to the eye’, which directly matches with ‘judged solely by the eye’ under Section 2(d), and those which enhance the aesthetic value of the commodity. Gramaphone Company Ltd. v. Magazine Holder Company (1910) 27 R.P.C. 152 was cited to substantiate the importance of such ‘visual appeal’ in designs.

The Court countered ‘software development processing’ not an ‘industrial process’ claim by providing two reasons (para 10):

  • Industrial Process [Section 2(d)]: Applying design to article is a ‘manual’ and ‘mechanical’ process, matching Section 2(d)’s ‘industrial process’ and ‘means’ elements. The developed source code was ‘displayed on screen by illuminating pixels by electronic means’, creating a GUI. Apple Computer Inc.’s Design Applications [2002] F.S.R. 38 allowed registration of design “built into the software whose inclusion in the machine was part of an industrial process.”  
  • Judged Solely By the Eye [Section 2(d)]: Though the Controller did not mention this in their reasons for rejection, the Court held that the impugned design was “2D” under Section 2(d), which clearly mentions “2D or 3D (or both)”, and since it wasn’t 3D, it didn’t have to be ‘touched’ as it can be ‘judged by the eye’ whenever it is visible.

Further Analysis

Since the present Controller & Amazon Controller’s grounds were similar it seems like the Court in this case indirectly tried to remedy the shortcomings of the unchallenged Amazon Controller order as well. P. Ferrero and CSPA’s Application (1978) RPC 473 (para 9) quotes: “Design features which are internal but visible only during use, may be the subject matter of registration” to show that UST’s GUI design satisfies the ‘internal feature’ component under Section 2(d) and (a). This also negates Amazon Controller’s claim that there is a requirement of ‘consistent’ or ‘permanent’ visual appeal and tends to clarify that the duration of visibility is irrelevant for design eligibility.

The Court didn’t need to prove that the design satisfied Section 2(a), because the application is for a design under Section 2(d)and not the article under Section 2(a), which also takes down such assessment by Amazon Controller’s assessment. The Court could have also brought up the fact UST’s application was of proper “construction” under Section 2(d) as they demarcated the design (“novel surface ornamentation” in para 3)from the article to which the design is applied(“product” in para 8, such as a laptop or mobile phone). This is notable because of many GUI registrations that were approved before the enactment of the Designs (Amendment) Rules, 2008 also made such clear demarcation.

However, these registrations were under Class 14.99, under a residuary category aptly titled “Miscellaneous”, which was not in any of the classes mentioned by the Court in the present case. GUI designs can’t be registered under both Class 14 and Class 32, because only a single class is allowed in a single application as per Section 5(3) of the Designs Act, 2000. Section 5(3) also mentions that Controller may pick which class would be more appropriate in case of confusion of multiple possible classes, but it is doubtful whether this would be helpful, considering the fact that they themselves are divided on the validity of GUI designs.

Part III – Conclusion: Impact Assessment of Calcutta HC Order

From the proviso to Rule 5 of the Design (Amendment) Rules, 2021, it is evident that the interpretation of Section 2(a) and (d) are very significant to decide the central question of determining whether GUIs are eligible to be registered as designs. The Court has correctly applied various elements of Section 2(a) and (d) of the Designs Act, 2000.

Thus, I believe that the Court’s decision is a favorable and welcome one, indicating their due diligence even in the absence of any Controller Office – issued clarifications/guidelines clarifications/guidelines answering whether all GUIs are protected. The Court has also identified possible Locarno classes incorporating GUIs within its ambit. Before Amazon, there was not a single registration under Class 14.04. However, even after Amazon’s rejection, there exist many successful registrations under the same class, including one specifically mentioning GUI in its description – “Display Screen with GUI.

However, the Court did not delve into the fact that Class 14.02 and 14.04 cannot be used for GUI designs that do not relate with “recording, telecommunication or data processing equipment”, did not check whether UST fell under Class 14  and merely construed such classes as an acknowledgment that GUI designs are protected per se.

I had spoken about the ‘product differentiation’ angle at the very beginning of this post. Though it is a non-statutory criterion, it correlates to the proposal that GUIs’ aesthetic/visual components come under the Designs Act, because IP rewards those making commercially-viable creations in lieu of an exclusive exploitation right. Thus, the GUI as a whole would be protected under design law, making sure no one makes a “substantially similar” copy, rather than it being protected under copyright law where only being an “exact knockoff” would be considered infringement. However, the single bench of the Bombay High Court in Maraekat Infotech Ltd v. Naylesh Kothari seemed to support the possibility of copyright protection over GUIs when it stated that while determining software infringement, “literal similarity, similarity in program structure and design features” needed to be taken into account.

However, it is still unclear whether this Court order is interpreted to mean all GUIs can be registered as designs per se or just those related to a display/touch screen. Technically, the Court had only remanded the case back to the Controller directing a fresh hearing because they were unsatisfied with the reasons given by them, but if the Controller’s revised application of Section 2(a) and (d) convinces the Court, this might again tilt the scale in favour of those against GUI design registrations.

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