Disclaimer: This has been reported after the availability of the order of the Court and not on media reports so as to give an accurate report to our readers.
Calcutta High Court: In a batch of appeals, wherein the legal position pertaining to registration of the graphic user interface (GUI) as a “design” under the Designs Act, 2000, the Single Judge Bench of Ravi Krishan Kapur, J. flagged the need for clarificatory guidance either by Legislature or by the Controller issuing appropriate directions expanding the scope of protectable designs. However, till issuance of such clarification, the Court held that GUIs are registrable if the essential ingredients laid under Section 2(a) and 2(d) of the Act are satisfied when properly identified with an article and keeping in mind that the design elements are not purely function driven. A GUI is a form of user interface which allows users to interact with electronic devices through graphical icons and visuals on a display screen.
Background
A batch of appeals was filed before the Court challenging the rejection of applications seeking registration of the GUI as a ‘design’ under the Designs Act, 2000.
The impugned orders had proceeded on the basis that the Locarno Classification, which had introduced GUI registration as a design, is there only for administrative assistance and in the absence of any amendment to the Act, does not aid in interpreting the definition of either “article” or “design”.
The impugned orders further interpreted that GUIs are not “applied by any industrial means or process” and hence do not fall within the definition of “design”. Further, since GUIs are neither sold nor manufactured separately, they cannot be treated as an “article” and hence, denied registration on grounds that there is no element of permanence in a GUI and the graphics are only visible when connected to a computing system and turned on.
The impugned orders also proceeded with the belief that foreign decisions are inapplicable since the definitions of design, article and industrial processes in those jurisdictions are different from the Act.
Aggrieved, the appellants preferred an appeal against the respective orders of the Controller of Patents and Designs.
Issue
Whether GUI satisfies the criteria of a ‘design’ for registration under the Designs Act, 2000?
Analysis
At the outset, the Court defined GUI as “a visual way for users to interact with devices using elements like icons, windows, menus and buttons”.
The Court analysed the terms “articles” and “design”, along with various components of their definitions, to check whether authorities concerned applied correct legal tests in determining registrability of GUIs as design.
The Court perused the Section 2(d) of the Act, noted that the definition of a “design” contained both positive and a negative part. The positive part “refers to the features of shape, configuration, pattern, ornament, or composition of lines or colours which are applied to any article, in either two-dimensional or three-dimensional forms, through any industrial process, whether manual, mechanical or chemical, either separately or in combination and that is further applied in the finished article that can appeal to or is judged solely by the eye”. The negative part of the definition excludes any mode or principle of construction or anything which is in substance a mere mechanical device. It further excludes any trade mark as defined in Section 2(1)(v), Trade and Merchandise Marks Act, 1958; a property mark as defined in Section 479 of the Penal Code; or any artistic work as defined in section 2(c) of the Copyright Act, 1957.
Whereas, the definition of an “article” under Section 2(a) includes any (a) article of manufacture; (b) any substance artificial or partly artificial and partly natural; and (c) includes any part of an article capable of being made and sold separately.
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Comparison between a “design” and an “article”
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“Applied to an article by any industrial process”
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Updating construction
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Permanence of GUIs
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“Judged solely by the eye”
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Locarno Classification
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No dual protection: Comparison of ‘design’ and ‘artistic work’
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Foreign decisions
The Court noted that Section 2(d), Designs Act, mandates that a ‘design’ must be “applied” to an ‘article’ and opined that the design itself need not be the article, and thus stated that a ‘design’ and an ‘article’ are distinct, independent and separate. The Court observed that an ‘article’ in case of GUIs may vary as per the context of the case, it “could be the display unit (the screen or hardware component); or the finished product sold to consumers, for example, a phone, tablet, or automobile dashboard”.
The Court stated that the authorities concerned erred in associating the word “design” to a physical or tangible article and stated that although “an article may include any substance (artificial of partly natural) there is a pre-conceived mindset in tying it down to a physical embodiment of sorts and this is a fallacy in all the impugned orders”. The Court relied upon the judgment of the Supreme Court of the United States of America, in Samsung Electronics Co. Ltd. v. Apple, 2016 SCC OnLine US SC 88, and the United States Court of Appeals in Microsoft Corp. v. Corel Corp., Case No. 5:15-CV-06836-EJD (2018), to hold that the term “article” requires a broad, liberal and purposive interpretation.
The Court observed that a narrow interpretation of the word “industrial process” is wrong, as it would make the word “any” superfluous and redundant. Words manual, mechanical or chemical processes are not exhaustive and are only indicative of what may constitute an industrial process.
The Court stated that an “updating construction” is a principle of interpretation of statutes, which mandates interpreting legislation in light of latest conditions and developments. To ensure that its application remains effective and relevant despite changes since its enactment.
The Court opined that the same principle must be employed in interpretation of the term “industrial process” by taking into consideration technical and scientific advancements in modern day technology.
The Court stated that considering the integration of digital and physical processes, displaying or applying a GUI on a screen falls within the modern understanding of an industrial process. The Court stated that the displaying process involves systematic manipulation of electronic signals and precise rendering through advanced hardware, reflecting the nature of contemporary technology-driven industrial activity.
The Court noted that Section 2(d) nowhere refers to a design being permanently visible. The Court observed that the Act merely mandates the design features to be applied to an article, and thus does not require the design features to be “permanently applied” or “permanently affixed”. The Court relied on In Re: Hruby, 373 F.2d 997, wherein it was primarily held that the dependence of the existence of a design on something outside itself is not a reason for holding it is not a design or an article of manufacture. The Court noted that impugned orders ignored the test of noticeability which expressly recognises that internal features visible only during use may be registered as designs.
“The correct legal test is whether the design is visible when the article is put to its intended or normal use. Dependency does not preclude a design from being considered an article of manufacture.”
The Court accordingly held that a design that appears during the normal operation of an article is still considered “applied” to that article, provided it is man-made and capable of reproduction.
The Court stated that, for being considered as a design, a GUI as a finished article must appeal to or can be judged solely by the eye. This involves two aspects, identifying the “finished article”; and determining whether the functional nature of a GUI excludes it from protection.
The Court stated that a GUI, though functional in operation, may also contain aesthetic elements, and the authorities concerned erred in conflating its functionality with its appearance. The Court noted that a design is excluded from protection only where its form is entirely dictated by function, leaving no scope for visual or aesthetic appeal.
The Court noted that India had accepted the Locarno Agreement and the Locarno Classification, was adopted under Rule 10(1), Design Rules, 2003, expressly recognising a GUI as a category for registration. The Court stated that the adoption of the Locarno Classification reflects a clear legislative and administrative intent to recognise and protect digital designs and GUIs
The Court stated that recognition of GUIs as designs under the Locarno Classification does not confer automatic registrability; the requirements under Section 2(a) and 2(d) of the Act must still be satisfied.
The Court noted that since Section 2(d) of the Act excludes from design registration any artistic work as defined under Section 2(c), Copyright Act, 1957. Further, Section 15, Copyright Act prevents dual protection by providing copyright does not subsist in a design that is registered under the Designs Act. Thus, the statutory framework itself addresses the issue of overlapping protection.
The Court noted that “once the specific features, that is shape, configuration, pattern, ornamentation etc. are applied to an article and meant for industrial purposes it becomes a design and is no longer an artistic work”. The Court held that the legal character of a GUI when integrated and industrially applied to an article differs from that of an artistic work or a computer program. Thus, does not create dual protection; however, needs to be determined on a case-to-case basis.
The Court stated that a blind refusal to consider foreign authorities is contrary to the settled position laid by the Supreme Court. The Court referred to Forasol v. ONGC, 1984 Supp SCC 263 and Cryogas Equipment (P) Ltd. v. Inox (India) Ltd., (2025) 10 SCC 317, wherein the Supreme Court found the foreign decisions to have high persuasive value.
Conclusion and Decision
The Court held that GUIs typically embody creative choices which create a visual impression that can be judged by the eye, thereby satisfying the requirements for design protection. The Court stated that “GUIs are a critical asset in modern day technology, commerce and digital services” and its registration is important for businesses.
The Court held that there is a need for expanding the scope of protectable designs, either by the legislature or by the authorities concerned. The Court held that, in the meanwhile, there is no per se exclusion of GUIs from being registered on a case-to-case basis. Provided they satisfy the requirements under Section 2(a) and 2(d) of the Act, are properly associated with an article, and their design features are not solely dictated by function.
The Court held that the authorities concerned did not employ correct legal tests to determine the registrability of GUIs as designs. The Court accordingly allowed all the appeals while setting aside the impugned orders, and remanded all the matter for a fresh hearing.
[NEC Corporation v. Controller of Patents and Designs, IPDAID/21/2024, decided on 9-3-2026]
Also read: DPIIT Proposes Amendments to the Designs Act, 2000: Key Reforms
Advocates who appeared in this case:
Amicus Curiae: Adarsh Ramanujan, Advocate
For the appellant: –
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in IPDAID/21/2024: Senior Advocate Sayantan Basu, Tanmoy Roy and Aheriya Roy, Advocates
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in IPDAID/22/2024: Vindhya S. Mani and Taniya Roy, Advocates
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in IPDAID/1/2025 and IPDAID/2/2025: Sourojit Dasgupta, Sudhakar Prasad, S. Banerjee, Pratiksha Varshney and Pradipta Bose, Advocates
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in IPDAID/3/2025: Senior Advocate Ranjan Bachawat, Smriti Yadav, Shubrojyoti Mookherjee, Sagnik Bose, Shubham Shende, Vishwas Sethuraman and A. Sinha, Advocates
For the respondent-Controller: –
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in IPDAID/21/2024: Sanjukta Gupta, Madhu Jana, and Ujjal Rajak, Advocates
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in IPDAID/22/2024: Indrajeet Dasgupta, Advocate
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in IPDAID/1/2025 and IPDAID/2/2025: Brajesh Jha and Sumita Sarkar, Advocates
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in IPDAID/3/2025: A. Banerjee, Sumita Sarkar, Advocate