The conundrum of graphical user interface (GUI) as a design – the Indian perspective

A design is defined as “design” means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958) or property mark as defined in section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957 (14 of 1957); as per Designs Act, 2000.

In the above context, can a Graphical User Interface, alternatively known as GUI fall under the definition of a design? For that, GUI has to be an article first. The definition of an “Article” under the Designs Act, 2000 stands as “article” means any article of manufacture and any substance, artificial or partly artificial and partly natural; and includes any part of an article capable of being made and sold separately.

The GUI is a design has been quantified by the Ministry of Commerce and Industry, Government of India vide the Design Amendment Rules, 2008 published through a gazette notification S.O. 1460 (E) dated 17th June, 2008 wherein Para 18 of the said notification categorically inculcates Class 14 in the Third Schedule which recognizes GUI as a design. The Ministry of Commerce and Industry, Government of India vide a notification G.S.R. 798 (E) dated 18th October, 2019 has categorically mentioned the following:

In Rule 10 of the said rules, clause (1) shall be substituted, namely –

“For the purposes of registration of designs and of these rules, articles shall be classified as per current edition of International Classification for Industrial Designs (Locarno) classification published by World Intellectual Property Organization (WIPO)” and upholds Class 14 which recognizes GUI as an article and a design.

Further, an amendment to the Design Rules, 2008 was again effected in the year 2021 that introduced a new class 32 containing graphic symbols, graphic designs, logos, ornamentation, and surface patterns.

However, the Indian Patent Office (IPO) is of the view that a GUI is incapable of registration as a design as it does not follow the process of industrial manufacturing but is mainly created by software development processing. It is also the claim of the IPO that a GUI is only visible in “ON” Mode or operating mode and there can be no design when the product is on the “OFF” mode thus delineating the GUI from the purview of a design registration. The point of view of the IPO is probably an incorrect reading of the Section 2 (a) and 2 (d) of the Designs Act, 2000.

Whether a Graphical User Interface capable of design registration?

The contention of the IPO as stated above is that GUI/Icons are not “Articles of Manufacture” as per Section 2 (a) of the Designs Act, 2000. This stands contrary to the legislature’s intention. As reiterated herein, the third schedule of the Design Rules, 2001, which provides for classification of design and articles was amended in 2008 to provide an elaborate classification of goods and articles on which design can be applied and registered. The said amendment introduced class 14-04 which is dedicated to articles belonging to “Screen Displays & Icons”. Therefore, screen displays (or graphical user interface) and icons have been recognized as “articles” by the Legislature, as reflected in the aforesaid classification 14-04. The continuing denials of the IPO in registering a GUI as a design defeats the legislature’s intention.

GUI is visible only in ON mode or operating mode only. In OFF mode “no alleged design” will appear on the screen…”

The GUI is always in-built and thus, the above contention of the IPO stands irrelevant. In any case, in-built ICONS are displayed in shops as well as in advertisements. Designs registered may be applied to any external or internal feature and deserves to be registered if it appeals to the eye and enhances the aesthetic value of the product. The GUI is designed to appeal to the eye and also enhances the aesthetic value of the product and hence can be registered as a design.

In Ferrero and CSPA’s Application reported at 1978 RPC 473, HL, Justice Whitford categorically held that it is wholly illogical that one should not be able to secure registration for a design which possibly is only going to be seen when the article is used- in the case of an egg, when it is being broken up to be consumed and that the features claimed should be features in the finished article; there was no requirement that the features should be judged at the time when the article was bought

Indian Design Act also does not make any requirement that feature should be external or should be judged at the time of purchase. The GUI/ICONS can be seen when the device is switched on for use and are a part of the finished article. Further, the Manual of Designs Practice & Procedure published by Indian Designs Office states that internal design features which are visible only during use may also be the subject matter of registration.

The icon/GUI cannot induce a sense of touch in itself. The “ICON/GUI” does not follow the known process of industrial manufacturing but mainly created by the software development/processing. The alleged “ICON/GUI” cannot be sold individually/separately.

OR

ICON/GUI is a merely function/application based on software in switched ON condition and does not have consistent eye appeal as per section 2(d) of the Act and the same cannot be considered as an article of manufacture as per the section 2(a) of the Designs Act, 2000.

There is no requirement of “touch” in respect of a design; the requirement is that it should appeal to the eye and should be judged by the eye. A GUI is a novel surface ornamentation which can be applied to a touch screen that qualifies as an article under Section 2(a) of the Act and is a physical object capable of being touched. Section 2(a) of the Designs Act provides that an article means any article of manufacture and any substance, artificial, or partly artificial and partly natural; and includes any part of an article capable of being made and sold separately. Touch screen along with GUI is an article of manufacture which is capable of being made and sold separately. GUI as an article of manufacture has also been identified in the Locarno Classification.

The process of application of the applied design/GUI on the finished article is a manual and mechanical process which is included in the definition of “industrial process” mentioned in Section 2(d) of the Act. The software developer develops a source code which creates this 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 an industrial process and means.

The criteria of “industrial process” have been dealt with by the Registered Designs Appeal Tribunal in Apple Computer Inc.’s Design Applications [2002] F.S.R. 38 wherein it was held:

–      That the icons/patterns/ornamentations are built into the software whose inclusion in the machine is part of an industrial process.

–      The Registered Design Acts, 1949 required the features claimed to be features in the finished article; it did not require those features to be judged at the time the article was bought.

Further, in K.K. Suwa Seikosha’s Design Application [1982] R.P.C. 166 it has been held that icons, consisting of a design to be applied on a display panel for an electronic timepiece, were registrable.

The above found place in a judgment reported at 2023 SCCONLINE CAL 2214 in the matter of UST Global (Singapore) Pte Limited vs Controller of Patents & Designs and Anr. where it was held that the contentions of the IPO are unsustainable.

However, the debate still continues to this day with the IPO being confident that a GUI does not fulfil the requirements of being an article that is manufactured by an industrial process and hence is not registerable as a design and to this day, GUIs are hardly being granted registration as a design by the Indian Patent Office. With the entire world granting registration to GUI as a design, it remains to be seen when India shall follow suit.

A special appreciation and mention for Abhai Pandey and Manisha Singh of Lex Orbis, New Delhi for providing me the opportunity to act for them as their Counsel at Calcutta High Court in UST Global (Singapore) Pte Limited vs Controller of Patents & Designs and Anr.