The Calcutta High Court, in a recent ruling, quashed an order which was issued by the Assistant Controller of Patents and Designs in which a design application for a ‘touch screen’ for a novel surface ornamentation which is a Graphical User Interface (‘GUI’) was refused.

Background: The Applicant/ Appellant (Ust Global (Singapore) Pte. Ltd.) had filed a Design Application No. 298921 with the Indian Patent Office on 30th October 2017, titled “Touch Screen” for a novel surface ornamentation which is a GUI. On 4 September 2019, the Controller refused the design application under the Designs Act 2000 (as amended). Aggrieved by the refusal, the Appellant filed an appeal before the Calcutta High Court.

Grounds of refusal: The Controller rejected the design application on the ground that a GUI is incapable of design registration. It was held that a GUI cannot be treated as a design of any article as a GUI is only visible when it is in the ‘ON’ mode or operating mode, and that there can be no design when the product is in the ‘OFF’ mode. Further, it was held that an ICON/GUI cannot be treated as a design of any article as it does not follow the process of industrial manufacturing, but is mainly created by software development processing.

Submissions by the Appellant:

The Appellant submitted that a GUI is a software, an intellectual property, an article of value and hence, capable of registration. Moreover, the subject design is original and has never been put in the public domain. A well-implemented GUI can positively influence customers in buying such products.

Decision by the Calcutta High Court:

The Design Rules (Amendment) 2019 recognise Classes 14.02 and 14.04 of the Locarno Classification, which enlist articles belonging to “Screen Displays and Icons”. Additionally, the amended Rules introduced a new class 32 which containgraphic symbols, graphic designs, logos, ornamentation and surface patterns.

The GUI in the present case is in-built. Designs may be applied to any external or internal features and are capable of registration if they appeal to the eye and enhance the aesthetic value of the product. Ordinarily, the design of a product is concerned with the external appearance of an article. However, the pertinent feature of visual appeal may in the case of certain articles be considered as features of a registrable design.

The design filed by the Appellant is a 2-dimensional design. The novelty of the same can be judged by the eye as soon as the device is turned on. There is no requirement to touch the device in respect of the design. The design of GUI is applied to the article by industrial process and means. A software developer develops a source code which creates the GUI. This source code is then embedded in the micro-controllers and micro-processors and is displayed in screen by illuminating pixels by electronic means.

Decision:

The Court set aside the order of the Assistant Controller, and remanded the matter back to the Controller for fresh consideration.