A graphical user interface (GUI) is an interface which helps a user to interact with the electronic device(s). For example, the use of icons, menus and other visual indicators or representations (graphics) present in computers, tablets, smartphones, etc. The concept of GUI contemplates visual representation of 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.
GUIs used to be registered in India under the Indian Design laws, until the Amazon case. Despite the earlier registrations of GUI designs of Microsoft under the design laws in the past, and the Design Rules 2008 amendments, Amazon's application (Application No. 240305) pertaining to a "Graphic user interface for providing supplemental information of a digital work to a display screen" was disallowed protection by the Indian Patent Office.
Since then, the registrability of GUIs under the Design Act, 2000 have been in question.
The applicant, UST GLOBAL (SINGAPORE) PTE LTD., was denied registration of its design application no. 298921 filed on October 30, 2017, for registration of “Touch Screen” for a novel surface ornamentation which is a Graphical User Interface (GUI), by the Indian Patent Office vide order dated September 4, 2019. The stand taken by the Controller was that GUIs do not qualify as designs under Section 2(a) and 2(d) of the Designs Act. Further, the Controller's objection was based on grounds that the GUI was only operative when the computer was switched on and thus did not provide "consistent eye appeal"; that the GUI did not qualify as an article of manufacture; that the GUI was not physically accessible; and that the GUI design did not come under the ambit of the Act.
Thereafter, last year on March 20, 2023, the Calcutta High Court’s single bench of Justice Ravi Krishnan Kapur deviated from this pattern of refusing GUIs under Indian Design laws, and remanded the Assistant Controller of Patents of Designs’ order, which rejected an application to register the GUI design, and directed for a re-consideration thereof within three months after giving the appellant a fresh hearing. Findings of the case can be found here.
However, after that, the Indian Patent Office again refused to register the GUI under the Indian Design laws. Below listed are the points set forth by the Indian Patent Office:
| S No | Context | Contention/submission by the applicant | Comments by the controller |
|---|---|---|---|
| 1 | GUI is a software and capable of registration | The alleged GUI is admittedly a software and hence capable of registration. | The software's GUI is stored in the device and can be operated by a computer program to display it on a medium like a touch screen. This does not fall under The Designs Act because the current definitions of article and designs cannot include software-driven applications of designs on articles that cannot be sold separately with GUI design applied. GUI is beyond the scopes of the definitions of article and designs under Sections 2(a) and 2(d), respectively under The Designs Act, 2000. |
| 2 | Trends in foreign jurisdictions and submission of specimen | The WIPO Global Design Database has around 0.35 million registered designs in class 14-02 and 14-04 combined. They have also mentioned a WIPO-SCT publication that discusses the returns to a questionnaire on GUI, icon, and typeface/type font designs. | The applicant did not discuss the relevant provisions of these jurisdictions in comparison to the Indian context. Without this information, the applicant's conclusion is highly assumptive and not relevant as per the present case. |
| 3 | Touch Screen falls under class 14-02 of the Locarno Classification | The article Touch Screen falls under class 14-02 of the Locarno Classification and meets the definition of an article according to Section 2(a). | The decision on whether the present design meets the requirements under Section 2(a) and 2(d) is yet to be determined. |
| 4 | Subject design falls within the purview of industrial process under section 2(d), | The process of application of the applied design / GUI on the finished article is a mechanical and manual process which is included in the definition of industrial process mentioned in Section 2(d) of the Designs Act 2000. | The applicant did not explain why and how the GUI is seen as a mix of manual and mechanical processes or industrial process. |
| 5 | Touch Screen is the article as defined under Section 2(a) of the Designs Act, 2000 | The design claimed in the subject application deals with the surface ornamentation applied to Touch Screen wherein the Touch Screen is the article as defined under Section 2(a) of the Designs Act, 2000 | Present design is in fact a Touch Screen with GUI. GUI functions as an interface between user and electronic device through touchscreen and allows users to interact with electronic devices through graphical icons and visual indicators, instead of text-based user interfaces. The GUI is integrated with the article itself and didn�t have a separate existence apart from the article to which it is applied. The design of touch screen with GUI is feasible only when the touch screen is in association with the device. Hence, one of the requirements of Section 2(a) is not satisfied which dictates that a part of an article must be capable of being made and sold separately to be considered as an article. |
| 6 | 2D nature of subject design | The design is 2-D. Therefore, one and six views are not required, and the application has not been filed for protection of novel shape and configuration but for the surface ornamentation. Whereas the design submitted by the appellant is a 2D design | Applicant has submitted 3 views of purported specimen depicting dimensions of length, width/breadth (in front and back views) and also depth/height (in the side view). |
| 7 | Touch screen is an article so can be registered under design act 2000. | Touch Screen is an article of manufacture which is capable of being made and sold separately and are in fact sold across the world. | However, the present application is claiming Touch Screen with GUI not touch screen. So, submission is not applicable in the subject matter of present design. |
| 8 | Visibility of design in on/off mode | The inbuilt surface ornamentation is an important and attractive part of the appearance of the article/Touch Screen which creates reasons for people to buy the said article. The attractiveness of such surface ornamentation which is displayed on Touch Screen is judged solely by the eye and contributes towards the appearance of the article. | The present design is a GUI, which cannot be visible without the screen or an electronic device, and also when the device is in off mode. Hence GUI is not qualifying the conditions. |
| 9 | Contrary views of Controller in identical cases | Ferrero case & Gramophone Company Ltd. v. Magazine Holder Company (1910) 27 R.P.C. 152 | The design laws in the UK and EU differ from those in India's Design Act 2000. However, the subject design does not meet the requirements stated in Section 2(a) and 2(d) of India's Designs Act, 2000. |
| 10 | Touch screen/Icon/Screen Display/Graphical User interface is an article as per Section 2(a) of the Designs Act, 2000 | The subject application deals with the surface ornamentation applied to Touch Screen wherein the Touch Screen is the article as defined under Section 2(a) of the Designs Act, 2000. It was also submitted that Touch Screen is an article / device covered under Class 14-02 of the Third Schedule to the Design Rules, 2001 and also under Locarno Classification and therefore the design applied under the subject application for the article Touch Screen falls within the ambit and scope of the provision of the Act and thus is registrable under the Act. | The said surface ornamentation in the present context is a GUI i.e., graphical user interface. Hence the present design is in fact a Touch Screen with GUI. The design as applied to an article is integral with the article itself. In other words, design has no separate existence apart from the article to which it is applied. Configuration or pattern to be applied to a particular specified article and it is the shape or the configuration of the whole article in respect of the design, there has to be a commercial monopoly. That necessarily involves taking the design in the article as a whole. (vide Interlego v. Tyco). |
As an alternative, GUI can be protected under Indian Copyright law and Indian Trademark laws, in India, under the artistic work category. However, its registrability under the Indian Design laws is still questionable.
About the authors: Vikrant Rana is the Managing Partner of SS Rana & Co. Dhruv Mathur is a Managing Associate and Shivam Malvi is an Associate at the Firm.
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