Your device’s look now a protectable asset: Calcutta High Court overrules design office in major win for digital creators

The order added that there is undoubtedly a lack of clarity in the design office about the registrability of GUIs.

Highlighting that GUIs are a critical asset in modern-day technology, commerce, and digital services, the court noted that there would also be legal certainty, more explicit protection reduction in litigation, and this approach would align India with international practices.

Justice Ravi Krishan Kapur was hearing a plea in connection with the registrability of a GUI under the Designs Act. (Image enhanced using AI)

What is a GUI?

A Graphical User Interface or GUI is what enables a user to interact with a digital device. It includes graphical elements such as cursors, icons and sound effects. It makes it easier to interact with the device without having to use specific or complex commands. It simplifies tasks and enhances the overall user experience through visual appeal.

Court’s findings

• A GUI inherently comprises iconography, layout, colour schemes, composition of lines, and ornamentation, and therefore falls within the kind of visual features the Act contemplates.
• GUIs typically reflect creative choices in arrangement, proportion, spacing, colour palette, and icon design.
• There is no per se exclusion for GUIs under section 2(d) of the Act.
• The contention of the controller that there is no explicit provision under the Act entailing protection of GUI within the scope of section 2(a) (article) and 2(d) (design) of the Act is incorrect and legally untenable.
• The importance of registering GUIs is also significant from a business perspective.
• A recent survey conducted by the World Intellectual Property Organization (WIPO) has found that 92 per cent of jurisdictions already protect GUIs under design laws.
• A similar study conducted by the International Chamber of Commerce also reported that GUI protection is granted in most jurisdictions.

• This is also based on an expansive definition of ‘product’ and ‘designs’ in the European jurisdiction, which covers animation, movement, transition, and intangible products.
• In the United Kingdom, there have been clarifications which cover GUIs in animation and transitions as products eligible for design protection.
• Similar changes have been made both in Australia, Hong-Kong and the United States of America.
• The definitions of design, article, and industrial process require clarification and elaboration so that GUIs are recognised as products of industrial design activity.
• This would also ensure technological neutrality and lead to global integration, which is necessary for conformity in terms of the Hague Agreement and the Riyadh Design Law Treaty, both of which recognise virtual designs.
• This would also help Indian designers know that they have enforceable legal rights.
• The existing practice in the manual published by the controller of patents and designs contemplates the possibility of using dotted lines and dashed lines to differentiate between protectable design elements and portions that are disclaimed.
• It is necessary for clarificatory guidance either by the legislature or by the controller issuing appropriate directions expanding the scope of protectable designs.
• In the interim, there is nothing that prevents GUIs from being registrable on a case-by-case basis after satisfying the requirements under sections 2(a) and 2(d) of the Act when properly identified with an article and keeping in mind that the design elements are not purely function-driven.

What was the case?

• The central question addressed by the court was whether a GUI satisfies the statutory criteria of a “design” and is applied to an “article” as defined under sections 2(a) and 2(d) of the Act.
• The controller’s office had consistently rejected such applications, arguing that GUIs lack “permanence” because they are only visible when a device is powered on, and that they do not constitute a “finished article” capable of being sold separately.
• The four companies filed the plea after the controller of patents and designs rejected their respective applications for GUI design registrations.
• The order examined whether a GUI displayed on an electronic device could qualify as a “design” applied to an article for the purpose of protection under the Designs Act, and considered the correctness of the controller of designs’ decision refusing registration of the design application.

Arguments raised by companies

• The petitioner argued that the GUI was a novel visual design applied to a touch screen device and therefore qualified as a design under the Designs Act.
• It was contended that screen displays and icons are recognised categories under the international Locarno Classification adopted in the Design Rules.
• The petitioner submitted that the GUI had visual appeal and aesthetic value, which are the primary criteria for design protection.
• The interface was created through software code and embedded in microprocessors, meaning it was applied to the device through an industrial process.
• It was also argued that GUIs are important commercial features that influence consumer experience and purchasing decisions.

Respondent’s arguments

• The controller of designs argued that a GUI is not an “article of manufacture” because it does not exist independently as a physical object.
• It was submitted that a GUI appears only when a device is switched on, and therefore lacks the consistent physical existence required for design registration.
• The authority contended that GUIs are functional software elements rather than aesthetic product designs.
• It was also argued that a GUI cannot be sold separately as a commodity, which is generally expected for an article under the Designs Act.

With inputs by Sumit Kumar Singh. Sumit is an intern with The Indian Express.