In a batch of statutory appeals filed before the Calcutta High Court under the Designs Act, 2000 (Act), raising a common question as to whether Graphic User Information (GUI) satisfies the criteria of a design to make it eligible for registration under the Act, a Single Judge Bench of Justice Ravi Krishan Kapur set aside all impugned orders and remanded the matter back to the Controller for hearing them afresh.
All the appeals were against orders by the Controller of Patents rejecting applications seeking registration of a GUI. The basis of the arguments of all appellants was that there was a misconceived notion in the Office of Designs that GUIs are not registrable under the Act. It was contended that all impugned orders holding that GUI is not registrable mentioned that the Locarno classification, which had introduced GUI registration as a design, was only of administrative assistance and that it does not aid in interpreting the definition of either ‘article’ or ‘design’ in the absence of any amendment to the Act.
The Controller contended that even though the Design (Amendment) Rules 2021 had included GUI as a category of industrial design capable of registration, there had been no corresponding amendment to the Act to permit such registration. It was asserted that GUI is visible only when an electronic device is switched on, lacking any element of permanence. The rejections were also argued to be based on the fact that GUI could neither be made nor sold separately. It was also contended that GUI is already protected under the Copyright Act, 1957, as an ‘artistic work’ and that there could not be any dual protection.
The Amicus Curiae submitted that the Locarno Classification provided only a clarification that could assist in filing and search for an application of a design, but cannot, per se, be interpreted to create a grant or inclusion as far as GUI design protection is concerned. It was mentioned that a GUI inherently comprises iconography, layout, colour schemes, line composition, and ornamentation, which are among the visual features that the Act deems registrable. It was submitted that Section 2(d) of the Act did not refer to a design being permanently visible.
The Court stated that, as per Section 2(d), the term ‘design’ had both a positive and a negative meaning. The positive side was that it refers to the features of shape, configuration, pattern, etc., which are to be applied to any article, in either two-dimensional or three-dimensional forms, through any industrial process, either separately or in combination, which is further applied in the finished article that can be judged solely by the eye. The negative aspect was that the definition did not include any mode or principle of construction or anything which is, in substance, a mere mechanical device.
It was also noted that the term design did not include any trade mark as defined in Section 2(1)(v) of Trade and Merchandise Marks Act, 1958, the definition of a property mark as defined in Section 479 of the Indian Penal Code, 1860 (IPC), or any artistic work as per Section 2(c) of the Copyright Act, 1957. The Court found that the design itself need not be the article, meaning the design and the article are distinct, independent, and separate, which meant that the relevant article for a GUI could vary from case to case.
The Court stated that the misconception of the Controller of Patents was anchored in interpreting the word ‘design’ as a physical or tangible article, and that in following such a narrow approach, GUI, icons, animations, and screen-based designs would never be covered since they exist in a digital form.
While considering the phrase “applied to an article by any industrial process”, the Court said that the word ‘any’ indicated a broad interpretation and that the words manual, mechanical, or chemical was not exhaustive. It was stated that the provision contained nothing suggesting a mandatory restrictive interpretation. The Court stated that the words used in Section 2(a) and 2(d) of the Act must be construed liberally due to the use of inclusive language and the broad width of expressions used. It was stated that, when interpreting the Act, one must apply the principle of ‘updating construction’, which requires analysing the nature of the Act and taking into account relevant changes in modern-day technology. Hence, the Court said that ‘industrial process’ must include technical and scientific advancements.
The Court stated that displaying or applying a GUI to a display surface undeniably fits within the evolving concept of an industrial process and rejected the contention of the Controller that ‘industrial process’ is limited and restricted. Regarding permanence, the Court stated that the correct test to decide this was whether a design was visible when the article was put to its normal use. It was further noted that the impugned orders ignored the test of noticeability, which expressly recognised that internal features visible only during use may be registered as designs. Hence, it was said that the Controller’s objection that a GUI is only visible when the device is switched on was flawed, hyper-technical, and incorrect.
Regarding the test of being ‘judged solely by the eye’, the Court said that all impugned orders had proceeded on a misconception of what constitutes a finished article. It was said that the authorities had confused the functional aspect of a GUI, i.e., how it operates, with its ornamental aspect, i.e., how it looks. Further, while discussing the Locarno Classification, the Court said that it was suggestive or indicative regarding the inclusion of GUIs and did not automatically guarantee registration unless conditions under Sections 2(a) and 2(d) of the Act were satisfied.
The Court stated that the decision to adopt the Locarno Classification and being bound by it, evidenced a clear legislative and administrative intent to recognize and protect digital designs as well as GUIs, provided they meet the requirements of the Act. As far as dual protection was concerned, the Court said that it was addressed in the statutory framework itself. The Court said that even though a GUI is produced by a computer program, it itself is not a computer program in the sense of a literary work under the Copyright Act. It was stated that a GUI as a design does not create dual protection because the legal character of a GUI, when integrated and industrially applied to an article, differs from a standard artistic work or computer programme.
Noticing the reliance by respondent authorities on UST Global (Singapore) v. Controller of Patents and Designs, the Court stated that the decision in this case must be read and interpreted in light of the findings of the present case. It was also stated that the Controller’s blind refusal to consider foreign authorities was misplaced and based on an erroneous appreciation of the law.
The Court stated that a GUI inherently falls within the kind of visual features contemplated by the Act and also meets the qualitative requirements for design protection. It was said that there was no per se exclusion for GUIs under Section 2(d) of the Act, and hence, the Controller’s contention that a GUI was not explicitly protected was incorrect and legally untenable. Noting the lack of clarity in the Designs Office, the Court said that registering GUIs is also important from a business perspective and that this approach would align India with international practice.
The Court said that the definitions of design, article, and industrial process require clarification and elaboration so that GUIs are recognized as products of industrial design activity, thereby facilitating the global integration necessary for conformity with the Hague Agreement and the Riyadh Design Law Treaty. It was stated that clarificatory guidance was necessary, either by the Legislature or by the Controller, with appropriate directions to expand the scope of protectable designs. Until then, the Court stated that nothing prevented GUIs from being registrable once the requirements under Sections 2(a) and 2(d) were satisfied.
Thus, the Court set aside all impugned orders and remanded the matters back to the Controller for fresh hearings.
Appearances:
For Appellants – Mr. Sayantan Basu (Sr. Adv), Mr. Ranjan Bachawat (Sr. Adv), Mr. Tanmoy Roy, Ms. Aheriya Roy, Ms. Vindhya S. Mani, Ms. Taniya Roy, Mr. Sourojit Dasguota, Mr. Sudhakar Prasad, Mr. S. Banerjee, Mr. Pratiksha Varshney, Mr. Pradipta Bose, Ms. Smriti Yadav, Mr. Shubrojyoti Mookherjee, Mr. Sagnik Bose, Mr. Shubham Shende, Mr. Vishwas Sethuraman, Ms. A. Sinha
For Controller – Ms. Sanjukta Gupta, Mr. Madhu Jana, Mr. Ujjal Rajak, Mr. Indrajeet Dasgupta, Mr. Brajesh Jha, Ms. Sumita Sarkar, Mr. A. Banerjee, Ms. Sumita Sarkar
