By Abhishek Shrivastava (Associate, Stratjuris Law Partners)
The registrability of Graphical User Interfaces (GUIs) as designs in India has been a topic of discussion in the intellectual property community for several years. While the Indian Design Office has failed to provide guidelines for the registration of GUIs as designs, significant ambiguity has been caused by contradictory decisions and orders issued by the office. This has led to uncertainty regarding the registrability of GUIs as designs, leaving businesses and designers unsure about their intellectual property rights in this area. In this article, we will explore the registrability of GUIs as designs in India, including the guidelines provided by the Indian Design Office, the ambiguity caused by contradictory decisions and orders, and the current state of the law in this area.
A recent appeal made to the Hon’ble High Court of Calcutta by UST Global (Singapore) Pte Ltd against the Assistant Controller General of Patents & Designs[1] has shed light on the issue of the registrability of designs related to Graphical User Interfaces (GUIs). The case concerned a design titled “Touch Screen”, which was rejected by the Assistant Controller on the grounds of non-registrability. However, the Hon’ble High Court of Calcutta overturned this decision, stating that designs can be registered if they enhance the aesthetic value of a product and appeal to the eye, regardless of whether they are applied internally or externally. In this case, the GUI was in-built, and the Court noted that a feature of visual appeal could be considered as a registrable design for certain articles. This ruling has clarified the scope of design registration for GUIs and affirmed their potential for aesthetic value in product design.
Graphical User Interfaces (GUIs) have become an indispensable part of modern technology, enabling users to interact with digital devices and software. With specific layouts, shapes, colours, and patterns, these interfaces play a crucial role in shaping the user’s experience. In this context, the question of whether GUIs can be registered as designs in India has generated considerable interest among legal experts and practitioners. As GUIs have become a strategic asset for companies, there is a growing need for strong protection under Intellectual Property (IP) laws to safeguard their distinct look and feel and prevent infringement. Notable examples of GUI design patents around the world include MS Window 1985, Apple Newton 1993, Windows 10 desktop, Google glass 2013, and many more.
The Third Schedule i.e., “Classification of goods” in Design Rules, 2001 is compliant to Locarno Classification system. Therefore, Class 14-04 titled ‘Screen displays and icons’ which recognises visual images, GUIs, or icons on an image display of a tablet computer and smartphone as subject matters and allows registration of GUI in India. The Design Office has also allowed registration of few GUIs under Class 14-99 titled ‘Miscellaneous’.
In 2011, the Indian Design office had rejected Amazon Technologies Inc’s design application number 240305 for registering its GUI titled ‘Graphic user interface for providing supplemental information of a digital work to a display screen’ under class 14-02 i.e., ‘Data processing equipment as well as peripheral apparatus and devices’. The Design office observed that the proposed design was not eligible to registered as it is not a design under sections 2 (a) and 2 (d) of the Designs Act, 2000 (hereinafter referred to as “the Act”). The Controller of Designs in 2014 refused the application based on the following observations:
- GUI does not fall within the meaning of sections 2 (a) and 2 (d) of the Act;
- GUI cannot be judged solely by eye;
- GUI or screen display is a mere function of a computer screen and will become non-existence once the computer device is off;
- GUI cannot be converted from physical input to physical output and cannot be sold separately as a commodity in the market.
As per the Manual of Designs Practice & Procedure published by the Controller General of Patents, Designs and Trade Marks (CGPDTM), dotted lines or broken lines can be made in the representation sheets to indicate those elements of an article for which no protection is sought. If this is to be followed strictly a proprietor can protect the design of GUI as ornamentation on an article.
While the Design Office interprets the definition of ‘article’ stringently pursuant to the Amazon case, a GUI can still be registered in India under class 14-04 or 14-99. It is interesting to note that despite the Amazon decision, the Indian Designs Office has allowed for the registration of designs related to Graphical User Interfaces (GUIs), not only for computer screens but also for mobile screens and car display panels[1]. One common feature among the accepted registered designs for GUIs is that they have their priority established in a foreign country. This raises the question of whether a possible registration in a foreign country implies the resolution of objections related to ‘Design’ and ‘article’ under Sections 2(a) and 2(d) in the act.
In the field of patent law, the use of patents granted in foreign jurisdictions can be leveraged to overcome objections of novelty and inventive step during Indian prosecution. However, it is uncertain whether this practice can be applied to the field of designs. The extent to which this logic can be extended into the domain of designs remains unclear and is subject to further interpretation.
It is pertinent to note that, the look and feel of the GUI can also be protected under Copyright Act, 1957 as per the Ministry of Electronics and Information Technology[2].
The protection of GUIs is still in its early stages in India and globally. Therefore, to enable multinational protection for GUIs, IPOs worldwide must provide updated protection guidelines for GUI design protection. India’s economy is currently booming, making it an attractive destination for companies to expand their business. The ‘Make in India’ campaign has encouraged innovation and technology, resulting in new and different types of design. However, the present design law requires a digital reboot to keep pace with these advancements. The increase in design applications filed in India, as seen in the statistics from the Annual Report of the CGPTDM 2021-22, reflects the growth in this area. Therefore, to ensure continued growth, it is crucial that the design law is amended to broaden the definitions of ‘article’ and ‘design,’ or that specific guidelines for filing conventional designs, such as GUIs, for new age communication devices, are issued. A lack of clarity on the registration procedure for GUI designs may stifle innovation, especially for businesses that rely on GUIs, and lead to a decline in creativity and innovation in India.
GUI protection in other countries
| Country | GUI Protection | Provision |
| United States of America (USA) | Yes | In the United States, protection for a GUI can be obtained through a design patent by presenting the design within a box shown in broken lines to suggest use on a computer screen. However, the design must be tied to a specific function, which is not part of the design application itself. The patent law governs the protection of GUIs, and the requirements for grant are the same as for patents. Thus, there is a question whether protection for GUI designs safeguards only the aesthetic features or also the function of the article to which the design is applied.[3] |
| European Union | Yes | The European Union (EU) had passed Community Design Rules, 2001 to protect GUIs. The icons, typefaces and graphics can be patented as individual design if they perform a technical function in the EU. |
| China | Yes | The State Intellectual Property Office (SIPO), China amended its guidelines relating to design patent protection to GUIs[4] in 2014 to protect GUIs incorporated into a product. However, a GUI cannot be protected as a stand-alone abstract design i.e., partial designs are not allowed. For example, protection will be granted to a Computer with GUI. The new guidelines have opened the gateways for GUI protection. |
| Japan | Yes | GUIs can be protected under the Japanese Design Act (Act No. 125 of 1959). The GUIS are however, protected as part of a good and not separately. The product of which GUI is a part must be drawn in broken lines and GUI must be drawn with solid lines.[5] Further, to protect a design, the design must be such without which the product cannot achieve its function.[6] |
[1] See application numbers 284680, 276736 & 274925.
[2] Copyright; Ministry of Electronics and Information Technology; Source link at: https://meity.gov.in/content/copyright
[3] Status of GUI protection in different countries; Li Xiaowu, Lecturer of the Law School of Tsinghua University; Source link at: http://www.chinadaily.com.cn/m/cip/2012-12/25/content_16052278.htm
[4] Design Patents for Animated Images: Development Trends; Rain Chen, Sung-Yun Shen and Su-Ping Tan; Journal of Intellectual Property Rights, Vol 19; January 2014; Source link at: http://docs.manupatra.in/newsline/articles/Upload/CFFA9962-1152-4836-8796-1E1F9B58BB2F.pdf
[5] An Analysis of GUI Protection of in Japan; Taichi Sakai and Tomohiro Gyoda; 25 September 2015; Source link at https://www.managingip.com/Article/3491966/Japan-An-analysis-of-GUI-protection-in-Japan.html?ArticleId=3491966
[6] Status of GUI protection in different countries; Li Xiaowu, Lecturer of the Law School of Tsinghua University; 13 December 2012; Source link at http://www.chinaipmagazine.com/en/journal-show.asp?id=884
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