In a significant development for intellectual property law in India, the Calcutta High Court (Intellectual Property Rights Division) has delivered a landmark ruling addressing a question that had long remained contested in the Designs Office: whether a graphic user interface satisfies the criteria of a "design", making it eligible for registration under the Designs Act, 2000.
The judgment on March 9 consolidates five appeals filed by NEC Corporation, Erbe Elektromedizin GmbH, Abiomed Inc (two appeals), and TVS Motor Co. and decisively answers the question in favour of registrability, subject to the satisfaction of statutory conditions on a case-to-case basis.
What Has Been Held In Order
The Calcutta High Court set aside all five impugned orders passed by the Controller of Patents and Designs and remanded the matters for fresh hearing. The respondent authorities were found to have failed to apply the correct legal tests in determining design registration in cases concerning GUIs.
At the heart of the ruling is a clear finding: there is no per se exclusion for GUIs under section 2(d) of the Designs Act, 2000. The contention of the Controller of Patents and Designs that there is no explicit provision under the Act entailing protection of GUIs within the scope of section 2(a) and 2(d) was considered incorrect and legally untenable.
The court held that a GUI reflects creative choices in arrangement, proportion, spacing, color palette and icon design that produces a visual impression capable of being judged by the eye, thereby meeting the qualitative requirements for design protection.
Why GUIs Have Now Been Considered Registrable
The court methodically dismantled each ground on which the Controller had refused GUI registrations.
1. Broad, Liberal Interpretation of 'Article'
Section 2(a) defines "article" as 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.
The court found a fundamental error in the Controller's approach. The court held that the Controllers findings while refusing GUI's was based on the misconception of the respondent authorities in interpreting "article" to mean only a physical or tangible article, premised on the notion that every article must have an element of physical embodiment.
Relying on the US Supreme Court's decision in Samsung Electronics Co. Ltd. v. Apple Inc., 137 S.Ct. 429 (2016), the Court held that the expression "article" is a broad term covering "a thing made by hand or machine." The expression is so broadly understood that even software has been treated as an "article of manufacture" by the United States Court of Appeals in Microsoft Corp. v. Corel Corp. Thus, the term 'article' requires a broad, liberal and purposive interpretation.
2. 'Industrial Process' Must Be Broadly Construed
The court held that the word "any" which precedes "industrial process" in the definition indicates a broad interpretation. The words manual, mechanical or chemical are not exhaustive and are only indicative of what may constitute an industrial process. Any other interpretation would make the word "any" superfluous and redundant.
The court applied the principle of updating construction, holding that in interpreting the Act, one should apply a construction that takes into account relevant changes, which have occurred since the enactment. This would require analyzing the nature of the particular Act and taking into account the relevant changes in modern-day technology.
Drawing analogy from the Federal Court of Australia's decision in Aristocrat Technologies Australia Pty. Ltd. v. Commissioner of Patents [2025] FCAFC 131, the Court noted that legislation must be interpreted to encourage invention, innovation and technological advancement "where physical cogs, reels and motions are replaced by complex software and hardware that generate digital images."
Accordingly, the Court concluded that given the interplay of digital and physical processes, displaying or applying a GUI to a display surface undeniably fits within the evolving concept of an industrial process. The displaying process involves systematically manipulating electronic signals and precise rendering by advanced hardware, exemplifying the modern industrial enterprise inherent in technology-driven industries.
3. Permanence Not Statutory Requirement
One of the consistently applied grounds for rejection was the lack of "permanence". GUIs being visible only when a device is switched on. The court firmly rejected this approach. Section 2(d) nowhere refers to a design being permanently visible. There is no statutory basis for the standard that the design element must be intrinsic or integral to an article to any particular degree.
Relying on the US case In re: Hruby, 373 F.2d 997, the Court held that "permanence of the design is a function of the materials it employs." Many designs rely on external conditions to manifest their full appearance, which does not undermine their eligibility for protection. Dependence of the existence of a design on something outside itself is not a reason for holding that it is not a design or an article of manufacture.
Similarly, in K.K. Suwa Seikosha's Design Application (1982) RPC 166, a watch display which became visible only when activated was held to be registrable. The features of the design, though not necessarily visible at the time of purchase, become visible only when the article is used as intended.
The court further held that the correct legal test is whether the design is visible when the article is put to its intended or normal use. A design which appears during normal operation of the article is nonetheless applied to that article if it is reproducible and man-made. The objection that a GUI is only visible when the device is turned ON is inherently flawed, hyper-technical and incorrect.
4. The "Judged Solely by the Eye" Test
The impugned orders proceeded on a misconception of what constitutes a "finished article". The term "finished article" is not expressly defined in the Act, and the legislature has deliberately distinguished "finished article" from "any article."
The Court clarified that while a GUI may have functional elements, there may also be design features which involve aesthetic considerations that are not solely dictated by function. The respondent authorities confused the functional aspect of the GUI (i.e. how it operates) with its ornamental aspect (i.e. how it looks). A design is unregistrable only if its appearance is solely dictated by function with no room for eye appeal.
5. No Dual Protection Conflict
The Controller had also argued that GUIs should not be registered as designs because they are already protected as artistic works under the Copyright Act, 1957, and dual protection is impermissible.
The Court rejected this, holding that although a GUI is produced by a computer program, a GUI is not itself a computer program in the sense of a literary work under the Copyright Act. GUI is a visual configuration displayed on an article. The visual effect displayed or produced is not protected as a computer programme.
Citing the Supreme Court's ruling in Cryogas Equipment (P) Ltd. v. Inox India Ltd., 2025 SCC Online SC 780, the Court held that if a work is reproduced by employing an industrial process, manual, mechanical or chemical, that results in a finished article that appeals to the eye, the features of shape, configuration, pattern, ornament or composition of lines or colours applied by such industrial process constitute a "design" under section 2(d) of the Act.
The intent of producing an original artistic work is not determinative of its protection under either the Copyright or Designs regime. The legislative intent is to harmonise the two statutes so that while an "artistic work" qualifies for copyright protection, its commercial or industrial application, the "design" derived from the original work for industrial production is subject to the limitations set out in Section 15(2) of the Copyright Act.
The court conclusively held that once specific features of 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. 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 a computer programme.
International Framework Supporting Order
India accepted the Locarno Agreement, which subsequently resulted in amendments to the Designs Rules, 2008 in 2021. Significantly, Rule 10(1) was revised to stipulate adherence to the "current edition" of the Locarno Convention. This revision explicitly brought GUIs within the classification structure for design applications in India. The Locarno-Classification, specifically includes Class 14-04: "Screen Displays and Icons", covering Graphic symbols for screen display, Graphical user interface (computer screen layout), Icons for computers, and Web banners.
The court recognized that the legislative intent in adopting the Locarno Classification and being bound by it evidences a clear legislative and administrative intent to recognize and protect digital designs and GUIs, provided they meet the requirements of sections 2(a) and 2(d) of the Act.
Hague Agreement, Riyadh Design Law Treaty
The Court noted that global integration is necessary for conformity in terms of the Hague Agreement and The Riyadh Design Law Treaty, both of which recognize virtual designs. The Court also noted that clarification of the definitions of design, article and industrial process so that GUIs are recognized as products of industrial design activity would ensure technological neutrality and lead to global integration.
The Calcutta High Court's ruling in NEC Corporation v. Controller of Patents and Designs marks a watershed moment in Indian design law. By holding that GUIs are not per se excluded from design protection and by directing that a recent survey conducted by the World Intellectual Property Organization (WIPO) found that 92% of jurisdictions already protect GUIs under design laws, the Court has firmly placed India on the path of alignment with international best practices.
The ruling calls for the modernisation of India's design protection regime through either legislative amendment or clarificatory guidance from the Controller so that GUIs are explicitly recognized as industrial designs.
The article has been authored by Swati Sharma and Gitika Suri
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