Designs – Graphic User Interface satisfies criteria of a design and is eligible for registration under Designs Act

The Single Bench of the Calcutta High Court has answered in affirmative the question as to whether a Graphic User Interface (‘GUI’) satisfies the criteria of a ‘design’ making it eligible for registration under the Designs Act, 2000. Observing that there is no per se exclusion for GUIs under Section 2(d) of the Designs Act, the Court rejected the Controller’s view that there is no explicit provision under the Act entailing protection of GUI within the scope of Sections 2(a) and 2(d), defining ‘article’ and ‘design’ respectively. 

GUI is a visual way for users to interact with devices using elements like icons, windows, menus and buttons instead of typing commands. 

Allowing the petitions, the Court in NEC Corporation v. The Controller of Patents and Designs and Anr. observed the following:
 

• GUIs reflect creative choices in arrangement, proportion, spacing, colour palette and icon design, which are aesthetic decisions that produce a visual impression capable of being judged by the eye and therefore meet the qualitative requirements for design protection.
• Since design is to be applied to an article, the design itself need not be the article.
• Interpreting the word design to only a physical or tangible article is a misconception; term ‘article’ requires a broad, liberal and purposive interpretation.
• Word ‘any’ in definition of design, before ‘industrial process’, indicates a broad interpretation of the term industrial process. The words manual, mechanical or chemical are not exhaustive. 
• Displaying or applying a GUI to a display surface undeniably fits within the evolving concept of an ‘industrial process’.
• Principles of ‘updating construction’ to be applied in interpreting the Designs Act, to take into account the relevant changes in modern-day technology.
• Intent of legislature is clear as Designs Rules were amended, by adopting the Locarno classification, to include GUI registration, although Act was not amended.
• Section 2(d) nowhere refers to a design being permanently visible; legislative intent does not require that the design features be ‘permanently applied’ or ‘permanently affixed’.
• Manual of Designs, Practice and Procedure published by the office of the Controller General of Patents, Designs and Trade Marks, India, was relied upon to invoke the test of noticeability and to hold as flawed, hyper-technical and incorrect the objection of the Controller that GUI is only visible when the device is turned ‘ON’.
• While a GUI may have functional elements, there may also be design features which involve aesthetic considerations which are not solely dictated by function.
• No dual protection as there is exclusion of Copyright under Section 2(d) of Designs Act and exclusion of design by the Copyright Act. 
• GUI though is produced by a computer program, it is not itself a computer program in the sense of literary work under the Copyright Act. Also, there is no exclusion for computer programs in definition of ‘design’. 
• 92% of jurisdictions already protect GUIs under designs laws; need to ensure technological neutrality and global integration. 
• Both Hague Agreement and the Riyadh Design Law Treaty recognize virtual designs.
   

Observing that the Controller had failed to apply the correct legal tests in determining design registration, the Court was also of the view that it is necessary for clarificatory guidance either by Legislature or by the Controller issuing appropriate directions expanding the scope of protectable designs. 

One of the appellants was represented by Lakshmikumaran & Sridharan Attorneys here.