The impact of the UST Global v. Controller of Patents & Designs ruling by the Calcutta High Court, which recognized Graphical User Interfaces (GUIs) as registrable designs.

In the UST Global (Singapore) Pte Ltd vs The Controller of Patents and Designs & Anr., High Court at Calcutta, Original Side (Special Jurisdiction), (AID NO. 2 OF 2019), an IT services company filed a design application (No. 298921) for a "Touch Screen" featuring a novel graphical user interface (GUI) under the Designs Act, 2000. However, the Assistant Controller of Patents and Designs rejected the application, arguing that a GUI isn't eligible for registration as a design since it is only visible when the device is operational and is created through software rather than an industrial process. This raises several important questions: Can a GUI be recognized as a design under the Designs Act? Does its visibility only in the 'ON' mode affect its eligibility for registration? And finally, does the process of applying a GUI qualify as industrial manufacture? These are critical points to consider in the evolving landscape of design registration.

Arguments

The appellant argues that the order in question is mistaken because a graphical user interface (GUI) is a valuable piece of intellectual property that can be registered as an original surface ornamentation. They highlight that designs are created through industrial processes, with source codes embedded in micro-controllers and processors, which means that the application of the GUI is part of an industrial manufacturing process. Recent amendments to the Design Rules and Locarno Classification now recognize graphical symbols and screen displays as articles that can be registered. The specific GUI being discussed is built into products, prominently displayed in shops and advertisements, and significantly enhances both the aesthetics and value of those products. Furthermore, this design has already received registration in the USA and the EU, reinforcing its validity and importance.

However, the controller makes some interesting points regarding graphical user interfaces (GUIs). First, they argue that GUIs are only visible when the device is in operational mode, which means they can't really be registered as designs. Additionally, since GUIs are created through software, they don’t arise from traditional industrial manufacturing processes. Finally, when a device is turned off, the design of the GUI doesn't persist, which raises questions about its status as a design element. It’s a thoughtful perspective that invites further discussion on the nature of design in the digital age.

Relevant Statutory Provisions

• Section 2(a) of the Designs Act, 2000: Definition of "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”;
• Section 2(d) of the Designs Act, 2000: Definition of "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…”
• Design Rules (Amendment) 2019 and 2021 - The amendments to The Design Rules 2001 establish a framework for the classification of designs and articles. Specifically, the 2008 amendment provided a detailed classification of goods and articles eligible for design application and registration. Notably, Classes 14.02 and 14.04 of the Locarno Classification cover items categorized as "Screen Displays and Icons," which has also been acknowledged in the Design Rules (Amendment) of 2019. Furthermore, the amendments made in 2021 to the Design Rules 2008 introduced a new Class 32, which includes graphic symbols, graphic designs, logos, ornamentation, and surface patterns. In light of these updates, concluding that a GUI/Icon is not eligible for registration is incorrect and overlooks these important amendments.

To know more about this you can follow the link below:

Decision

In the decision, the Court determined that the rejection of the graphical user interface (GUI) registration was incorrect, highlighting that it overlooked relevant statutory amendments and international practices. The Court emphasized the novelty and visual appeal of GUIs, particularly when they are built into and displayed on physical products, affirming their eligibility for registration. It also noted that the process of applying GUIs constitutes an industrial process. Consequently, the Court set aside the previous order and remanded the case to the Controller for fresh consideration. The Controller was further expected to grant the appellant a hearing within three months and was not bound by the previous findings of this order.

Significance

This decision clarifies the eligibility of graphical user interfaces and digital designs for registration under Indian design law, recognizing both technological evolution and international precedents in intellectual property protection. It underscores the relevance of the Design Rules (Amendment) 2019 and 2021 in shaping contemporary design registration practices, adapting the jurisprudence to incorporate advancements in technology and design aesthetics. It emphasizes the significance of interpreting specific sections of the Act to determine GUI eligibility for registration. The Court's decision in the order dated 20^th March 2023, is seen as favourable, reflecting diligence in the absence of official guidelines. Further, the GUIs' aesthetic elements should be protected under design law to prevent substantial copies, in contrast to copyright law, which only addresses exact reproductions. Ultimately, it remains uncertain whether the Court's order allows for the registration of all GUIs or only those specifically tied to display or touch screens, as the case was remanded for further examination due to unsatisfactory reasoning from the Controller. On checking the status page, the design application status displays refusal to registration.

This could influence the future of GUI design registrations.

Conclusion

In conclusion, the Calcutta High Court's decision to recognize graphical user interfaces (GUIs) as registrable designs under the Designs Act, 2000, represents a pivotal advancement in intellectual property law. This ruling not only rectifies the misconceptions surrounding the nature of GUIs but also aligns Indian design registration practices with international standards. By affirming that GUIs possess both aesthetic value and industrial relevance, the court paves the way for future innovation in digital design. This landmark ruling encourages businesses to protect their intellectual property through registration, fostering a more robust environment for creativity in the technology sector.