[Cites 24, Cited by 0]
Calcutta High Court
Nec Corporation vs The Controller Of Patents And Designs ... on 9 March, 2026
Author: Ravi Krishan Kapur
Bench: Ravi Krishan Kapur
IN THE HIGH COURT AT CALCUTTA 2026:CHC-OS:73
ORIGINAL SIDE
(Intellectual Property Rights Division)
BEFORE:
The Hon'ble Justice Ravi Krishan Kapur
IPDAID/21/2024
NEC CORPORATION
VS
THE CONTROLLER OF PATENTS AND DESIGNS AND ANR.
IPDAID/22/2024
ERBE ELEKTROMEDIZIN GMBH
VS
THE CONTROLLER OF PATENTS AND DESIGNS
IPDAID/1/2025
IA NO: GA-COM/1/2025
ABIOMED INC
VS
THE ASSISTANT CONTROLLER OF PATENTS AND DESIGNS AND ANR
IPDAID/2/2025
IA NO: GA-COM/1/2025
ABIOMED INC
VS
THE ASSISTANT CONTROLLER OF PATENTS AND DESIGNS AND ANR
IPDAID/3/2025
IA NO: GA-COM/1/2025
TVS MOTOR COMPANY LIMITED
VS
THE ASSISTANT CONTROLLER OF PATENTS AND DESIGNS
For the appellant in : Mr. Sayantan Basu, Senior Advocate
IPDAID/21/2024 Mr. Tanmoy Roy, Advocate
Ms. Aheriya Roy, Advocate
For the appellant in : Ms. Vindhya S. Mani, Advocate
IPDAID/22/2024 Ms. Taniya Roy, Advocate
For the appellant in : Mr. Sourojit Dasgupta, Advocate
IPDAID/1/2025 and Mr. Sudhakar Prasad, Advocate
IPDAID/2/2025 Mr. S. Banerjee, Advocate
Mr. Pratiksha Varshney, Advocate
Mr. Pradipta Bose, Advocate
2
2026:CHC-OS:73
For the appellant in : Mr. Ranjan Bachawat, Sr. Advocate
IPDAID/3/2025 Ms. Smriti Yadav, Advocate
Mr. Shubrojyoti Mookherjee, Advocate
Mr. Sagnik Bose, Advocate
Mr. Shubham Shende, Advocate
Mr. Vishwas Sethuraman, Advocate
Ms. A. Sinha, Advocate
For the Controller in : Ms. Sanjukta Gupta, Advocate
IPDAID/21/2024 Mr. Madhu Jana, Advocate
Mr. Ujjal Rajak, Advocate
For the Controller in : Mr. Indrajeet Dasgupta, Advocate
IPDAID/22/2024
For the Controller in : Mr. Brajesh Jha, Advocate
IPDAID/1/2025 and Ms. Sumita Sarkar, Advocate
IPDAID/2/2025 and
For the Controller in : Mr. A. Banerjee, Advocate
IPDAID/3/2025 Ms. Sumita Sarkar, Advocate
Heard on : 10.12.2025
Judgment on : 09.03.2026
Ravi Krishan Kapur, J.:
1. All these statutory appeals have been filed under the Designs Act, 2000
(the Act) and raise a common question "Whether Graphic User Interface
(GUI) satisfies the criteria of a design making it eligible for registration
under the Act?"
2. GUI is a form of user interface which allows users to interact with
electronic devices through graphical icons and visuals in indicators such
as secondary notation. In computing, a GUI is a visual way for users to
interact with devices using elements like icons, windows, menus and
buttons instead of typing commands.
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The appellants:
3. The common thread in the arguments of all the appellants is that, there is
misconceived notion in the Office of Designs that GUIs are not per se
registrable under the Act. In construing the definitions of "article" under
section 2(a) and "design" under section 2(d) of the Act, the respondent
authorities have adopted an unduly strict and narrow interpretation. All
the impugned orders proceed on the basis that the Locarno classification
which had introduced GUI registration as a design is only of
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 have also erroneously interpreted that
GUIs are not "applied by any industrial means or process" and hence do
not fall within the definition of "design". In addition, the impugned orders
are flawed inasmuch as it has been held that since GUIs are neither sold
nor manufactured separately they cannot be treated as an "article". The
impugned orders have also proceeded on the misconception that all
foreign decisions are inapplicable since the definitions of design, article
and industrial processes in those jurisdictions are different from the Act.
The fact that a GUI is visible only when the device is switched ON and
remains ON is another factor which has weighed in rejecting registration
of GUIs. There is also no element of permanence in a GUI which makes
the same not registrable. The order dated 6 July, 2023 passed in UST
Global (Singapore) vs. Controller of Patents and Designs by the Controller
is based on a misinterpretation of the Act. An additional ground in some
of the appeals is one of violation of the principles of natural justice
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inasmuch as the orders are non speaking. In such circumstances, it is
contended that the impugned orders are liable to be set aside and all the
applications be remanded for rehearing.
4. For convenience, the respective appeals are summarized below:
IPDAID 21 OF 2024: NEC Corporation
This is an appeal against an order dated 1 October 2019 in application no
285453 whereby a design claimed on novelty residing in the shape and
pattern of the display screen with the GUI has been rejected on the
ground that GUI does not constitute an article within the meaning of
section 2(a) of the Act. It is the display screen hosting the GUI which
qualifies as an article and hence makes the GUI incapable of being
registered. It has also been held that GUI is not applied through an
industrial process to an article. In effect, the GUI fundamentally consists
of mere software codes and has no element of permanence and is only
seen when an associate device is switched on which does not justify
registration.
IPDAID 22 of 2024: ERBE Elektromedizin GMBH
This is an appeal against an order dated 20 September 2019 rejecting
application no 277243 titled 'A Display Unit for a High Frequency
Generator' which was subsequently amended to "Display Screen for an
Electrosurgical High Frequency Generator" claiming novelty in shape,
pattern and ornamentation on the ground that GUI cannot be categorized
as surface ornamentation or pattern as the same is only visible when
connected to a computing system and turned ON. Hence, GUI is based
solely as a software application and is merely functional lacking
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consistent eye appeal which fails to satisfy the ingredients both under
section 2(a) and 2(d) of the Act.
IPDAID 1 of 2025 and IPDAID 2 of 2025: Abiomed Inc
This is an appeal against the orders dated 17 February 2025 rejecting
applications no 397600-001 and 397600-002 respectively for 'Display
Panel or Portion thereof with Graphical User Interface. The GUI claimed is
for a Vehicle Dashboard which is a pictogram displayed on a screen of an
electronic device in order to help users navigate the device. The novelty
statement resides in the shape and configuration of the Display Panel or
Portion Thereof with Graphical User Interface which has been found to be
incapable of registration.
IPDAID 3 of 2025: TVS Motor Company Limited
This is an appeal against an order dated 31 May 2024 rejecting
application no 393339-001 on the ground that the design of a GUI cannot
be considered as a finished article judged solely by the eye nor does the
same have a sense of touch. The primary ground urged by the appellant is
one of violation of natural justice on the ground that there are no reasons
in the impugned order.
The Controller
5. On behalf of the Controller, it is contended that though the Design
(Amendment) Rules 2021 had brought GUI as a category of industrial
design capable of registration, there has been no corresponding
amendment to the Act which permits such registration. There has been
no amendment to the definition of article or design under the Act. A
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design is an integral part of an article and such design cannot be
separated nor does the same have any independent existence from the
article to which it has been applied. Neither can the GUI be made or sold
separately. GUI is visible only when an electronic device in the finished
article is switched ON and hence it has no element of permanence. In any
event, such display becomes non-existent as soon as the device is
switched OFF. GUI is also not applied to an article manually, chemically
or in any combination by way of an industrial process. It is also
contended that GUI should not be protected under the Act since it is
protected under the Copyright Act 1957 as an 'artistic work' and there
can be no dual protection. There is also no judicial precedent in India
with regard to allowing GUI or Graphical Icons or contents of screen
display being accepted as an industrial design. In this context, any
reliance on any foreign decision is misplaced and erroneous in view of the
different definitions in those jurisdictions.
Amicus Curiae
6. In view of the importance of the issues raised and to assist the Court, Mr.
Adarsh Ramanujan, Advocate had been appointed as Amicus Curiae. The
Court acknowledges the immense assistance and painstaking efforts by
the Amicus Curiae. He submitted that the Locarno Classification only
provided clarificatory guidance which could assist in the filing and search
for an application of a design but cannot per se be interpreted to create a
grant or exclusion insofar as GUI design protection is concerned. The Act
protects shape, configuration, pattern, ornament and composition of lines
of colours. To this extent, a GUI inherently comprises of iconography,
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layout, colours schemes, composition of lines and ornamentation which
falls within the kind of visual features which the Act perceives as
registrable. There is nothing in section 2(d) of the Act which expressly
refers to a design being permanently visible. The criteria of permanence
has been erroneously read into the definition of design in the impugned
orders. There is also no statutory basis that the design element must be
intrinsic or integral to the article to any particular degree. Section 2(d)
contemplates features to be applied to an article. The definition of the
term applied is generic and broad. The ingredient of whether GUI in the
finished article is judged solely by eye is also complied with since the
finished article encompasses the final product received by a consumer
which can be analyzed to the complete computer device integrity in the
display unit. In registering a GUI, there is no dual protection being
granted under the Act and the Copyright Act 1957. In this background,
there is no exclusion of GUI and the same ought to be decided on a case
to case basis. In support of such contentions reliance was placed on
Cryogas Equipment Private Limited vs Inox India Ltd 2025 SCC Online SC
780, Samsung Electronics Co. Ltd. vs. Apple Inc 137 S.Ct.429, Microsoft
Corporation vs. Corel Corporation 5:15-cv-05836-EJD, K.K.Suwa Seikosha's
Design Application [1982] R.P.C. 166, In re: Hruby 54 C.C.P.A. 1196.
Construing "article" and "design"
7. For convenience, the definition of article and design are set out below:
2. In this Act, unless there is anything repugnant in the subject or
context.
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(a)"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;
d)"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; but does not include any mode or
principle of construction or anything which is in substance a mere
mechanical device, and does not include any trade mark as defined in
clause (v) of sub-section (1) of section 2 of the Trade and Merchandise
Marks Act, 1958 or property mark as defined in section 479 of the
Indian Penal Code or any artistic work as defined in clause (c) of section
2 of the Copyright Act, 1957.
8. Upon a reading of section 2(d) of the Act, the term design contains both a
positive and a negative meaning. In the positive sense of the definition, it
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. On the negative aspect, the
definition does not include any mode or principle of construction or
anything which is in substance a mere mechanical device. It also does not
include any trade mark as defined in section 2(1)(v) of Trade and
Merchandise Marks Act, 1958. It also does not include the definition of a
property mark as defined in section 479 of the Indian Penal Code or any
artistic work as defined in section 2(c) of the Copyright Act, 1957.
9. The focus in interpreting the above definitions is not on the novelty or
originality of the designs but whether they qualify as a design in terms of
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section 2(a) and 2(d) of the Act. It is also clear from the plain language of
section 2(d) that a design be applied to an article by any industrial
process. In this context, article as defined under section 2(a) means 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. Section 2(d) of the Act requires that a design is
to be applied to an article. This means that the design itself need not be
the article. Thus, the design and the article are distinct, independent and
separate. The relevant article for a GUI can vary from case to case. As an
example, 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 expression "article of manufacture" in section
2(a) is broad and generic. The misconception of the respondent
authorities is anchored in interpreting the word design to a physical or
tangible article. This is premised on the notion that every article must
have an element of physical embodiment. In following such a narrow
approach, GUI, icons, animations and screen based designs would never
be covered because they exist in a digital and virtual form. Thus, though
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. In Samsung
Electronics Co. Ltd. vs. Apple Inc., 137 S. Ct. 429 (2016) it has been found
that the expression article is a broad term to cover "a thing made by hand
or machine." The process of application of the GUI on the finished article
is a mechanical and manual process which falls within the definition of
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industrial process and there is no policy reason why registration should
be refused. The expression is so broadly understood that in a subsequent
judgment, the United States Court of Appeals in Microsoft Corp. v. Corel
Corp., Case No. 5:15-CV-06836-EJD (2018) held that even software is an
"article of manufacture." Thus, the term 'article' requires a broad, liberal
and purposive interpretation.
Applied to an article by any industrial process:
10. The next aspect which requires consideration relates to the phrase
"applied to an article by any industrial process". In UST Global (Supra),
the Controller had taken a view that the statute was restricted only to
manual, mechanical or chemical processes. This is a glaring mistake in
the order and ignores the term "any" which precedes industrial process.
On a plain reading of the section, the word any indicates a broad
interpretation of the term industrial process. The words manual,
mechanical or chemical are not exhaustive and are only indicative as to
what may constitute an industrial process. Any other interpretation would
make the word any superfluous and redundant. There is nothing in the
section which suggests that a restrictive interpretation is mandated under
this section. On the contrary, the words used in section 2(a) and 2(d) of
the Act must be construed liberally having regard to the use of inclusive
language and the broad width of the expression used in the definitions. To
this extent, any reliance on Selvel Industries vs. Om Plast (India) 2016 SCC
OnLine Bom 6495 is misplaced. In the said decision, the Court had not
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placed any such restrictive meaning on the words industrial process
(Paras 21 to 23).
Updating construction:
11. In interpreting the Act, one should apply the principles of updating
construction which suggests a construction which takes into account
relevant changes which have occurred since the enactment was made.
This would require analyzing the nature of the particular Act and taking
into account the relevant changes in modern day technology. In such
cases, legislature intended that the Court's interpretation takes into
account advancements which have occurred since the enactment of the
legislation. In the light of the above, the term industrial process must be
interpreted to take into account technical and scientific advancements.
Moreso, while interpreting intellectual property legislation which are
fundamentally linked to such developments. [Bennion on Statutory
Interpretation 7th Edition at paragraphs 409-424 and State of Punjab vs.
Amritsar Beverages Ltd. and Ors. (2006) 7 SCC 607 at paras 14 and 15].
12. In a recent decision of the Federal Court of Australia, in Aristocrat
Technologies Australia Pty. Ltd. vs. Commissioner of Patents [2025] FCAFC
131) a question was raised which centered on whether innovation in a
gaming machine specifically computer implemented game features
constitute a manner of manufacture under section 18(1)(a) of the Patents
Act 1990. In construing the relevant provision, the Federal Court applied
the principle of updating construction which mandates interpreting
legislation to account for technological advances. Any contrary
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interpretation would be impractical and would fail to recognize the
efficiencies and changes of technology. It is true that the above decision
does not pertain to designs. Nevertheless, the analogy followed by the
Federal Court of Australia is squarely applicable when interpreting similar
legislation which accounts for technological advancement. From a
different perspective, why amend the Rules to include GUI registration if
the intent was not to permit GUI design registration in the first place? In
such cases, 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." (at para 134)
13. 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. Such activities exemplify the modern industrial
enterprise inherent in technology driven industries. Thus, there are strong
reasons to contend that the process of displaying a GUI fulfills the
definition of industrial process. In view of the above, the contention of the
Controller that the expression 'industrial process' is limited and restricted
is also rejected.
Permanence:
14. 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
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intrinsic or integral to an article to any particular degree. The law only
requires the features to be applied to an article. The term applied is
generic and broad. The legislative intent does not require that the design
features be "permanently applied" or "permanently affixed". The concept of
permanence of the design is not to be found in section 2(d) of the Act and
this facet has been wrongly included in all the impugned orders.
Similarly, there is no requirement of touch under section 2(d) of the Act.
All that the statute requires and contemplates is an association between
the design and the article. The statutory intent is to prevent a design
being registered in the abstract without association to the article. In Re:
Hruby 373 F.2d 997, where the scope of an article of manufacture was
interpreted to include the ornamental display of a fountain, it has been
held that the "Permanence of the design is a function of the materials it
employs". The Court further highlighted that many designs rely on
external conditions to manifest their full appearance, which does not
undermine their eligibility for protection. There are many designs which
depend upon an outside factor for the production of the appearance
which the beholder observes in the design. For example, a lampshade
may not be apparent unless the lamp is lighted. It was further held that
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. In K.K.
Suwa Seikosha's Design Application (1982) RPC 166, where a watch
display which became visible only when activated was held to be
registrable. It was held that even though the features of the design may
not be necessarily visible at the time of purchase, it becomes visible only
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when the article while used as it is intended to be used that is to say as
the display panel for electronic timepiece and when it is connected to the
circuitry, including the battery on the timepiece.
15. The impugned orders also ignore the test of noticeability which expressly
recognizes that internal features visible only during use may be registered
as designs. (See: Manual of Designs Practice and Procedure published by
the office of the Controller General of Patents, Designs and Trade Marks,
India.) The Manual also mentions the decision in Ferrero Cs.P.As
application (1978) RPC 473 in providing guidance on section 2(d) in
construing the expression 'judged solely by the eye' to explain design
features which are visible only during use may be the subject matter of
registration. All this has been disregarded in the impugned orders. In this
background, 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. A
design which appears during normal operation of the article is
nonetheless applied to that article if it is reproducible and manmade. To
this extent, the objection of the Controller that GUI is only visible when
the device is turned 'ON' is inherently flawed, hyper-technical and
incorrect.
Judged solely by the eye :
16. An additional test to fulfil the criteria of being considered a design is
whether GUI as a finished article appeals to or can be judged solely by the
eye. The two limbs which require consideration are (a) What is the
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finished article and (b) Whether GUIs being functional are excluded from
protection. To this extent, all the impugned orders proceed on a
misconception of what constitutes a finished article. The term "finished
article" is not expressly defined in the Act. Moreover, the legislature has
deliberately distinguished "finished article" from "any article" which is
evident from the criteria in section 2(d) of the Act. The rationale behind
employing these different terms become evident upon a contextual
analysis of the definition. A specific shape, pattern, or ornamentation can
be applied to an article which also serves as a component to an end
product sold to consumers. For example, consider the front grill of a car:
the pattern is applied to the grill (an article) while the grill itself is
typically marketed as part of the overall vehicle (finished product).
Similarly, a particular pattern or configuration may be applied during an
intermediate stage of manufacturing, followed by additional processes to
arrive at the finished article, such as the design of a smartphone that
undergoes styling before it is ultimately assembled. These can vary from
case to case and are protectable based on eye appeal. In this context,
while a GUI may have functional elements there may also be design
features which involve aesthetic considerations which are not solely
dictated by function. To this extent, the respondent authorities have in
the impugned orders confused the functional aspect of the GUI i.e. how it
operates with its ornamental i.e. how it looks. A design is unregistrable
only if its appearance is solely dictated by function with no room for eye
appeal.
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Locarno Classification
17. It is argued that mere inclusion of GUI in the Locarno Classification as a
design does not automatically guarantee registration under the Act
although the Locarno Classification has been adopted and incorporated in
Rule 10(1) of the Design Rules 2003 which specifically mentions GUI as a
category for registration. India had accepted the Locarno Agreement
which subsequently resulted in amendments to the Designs Rules, 2008
in 2021. Significantly, Rule 10(1) was revised to stipulate to the adherence
to the "current edition" of the Locarno Convention which includes the
following classes:
14-04
SCREEN DISPLAYS AND ICONS
Note(s)
Including those for goods belonging to other classes.
104993 Graphic symbols for screen display.
102529 Graphical user interface [computer screen layout]
102530 Icons [for computers]
104994 Web banners
18. In this background, the Locarno Classification insofar as it includes GUIs
is suggestive or indicative and does not automatically guarantee
registration. The aim behind the Locarno classification was to establish
an international classification for industrial designs. The agreement itself
expressly stipulates that the same is solely of an administrative character.
The proviso to Rule 10(1) clearly states that registration is the subject to
the fulfillment of sections 2(a) read with section 2(d). Thus, the
acknowledgement of GUIs as a design in the Locarno Classification does
not imply automatic registrability unless the conditions in sections 2(a)
and 2(d) of the Act are satisfied. Article 2(1) of the Locarno Classification
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explicitly states that the "international classification shall be solely of an
administrative character", and that "each country may attribute to it the
legal scope which it considers appropriate". In conclusion, classification
guidance may assist in filing and search, but it cannot be used to create,
grant or exclude GUIs from design protection. Despite this, the legislative
intent in adopting the Locarno classification and being bound by it
evidence a clear legislative and administrative intent to recognize and
protect digital designs and GUIs provided they meet the requirement of
sections 2(a) and 2(d) of the Act. This is also in conformity with Article 25
of the TRIPS Agreement which emphasize the protection of independently
created industrial designs which are new and original.
No dual protection
19. It has been contended that GUIs should not be protected under the Act
since it can be protected as an artistic work under the Copyright Act,
1957 and dual protection is impermissible. The aspect of dual protection
needs to be judged from two different perspectives (i) Whether a GUI is a
computer program and therefore, can't be registered as a design? and (ii)
Whether a GUI is an artistic work and therefore cannot be registered as a
design? Both aspects bring about a common concern that dual protection
must not be granted to the same subject matter. In view of this policy,
section 2(d) itself excludes from design registration, any artistic work as
defined in section 2(c) of the Copyright Act, 1957. Similarly, section 15 of
the Copyright Act, 1957 states that copyright protection shall not subsist
for any design registered under the Act and copyright protection shall also
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cease as soon as any article to which the design has been applied has
been reproduced more than 50 times. To this extent, dual protection is
taken care in the statutory framework itself.
20. It is pertinent that while the impugned orders keep emphasizing that GUI
is a computer program, there is no exclusion for computer programs in
section 2(d) of the Act. 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. Though the process of displaying the GUI involves the
underlying computer programme, the visual effect displayed or produced
is not protected as a computer programme. To obviate such concerns, in
Hulm Entertainment Pvt. Ltd. v. Fantasy Sports Myfab11 Pvt. Ltd. 2023
SCC Online Del 6591 (where no copyright had been pleaded), it was held
as follows:
"17. As this matter also concerns the GUL, a little backdrop to this concept is also
imperative, GUI is a digital interface in which a user interacts with graphical
components such as icons, buttons and menus GUI is a visual component different
from the underlying codes i.e. source code and object code and is a feature in
various devices such as computers, smart phones etc. In other words, 'user
interface' refers to the underlying non-graphic code of a software programme, while
the term 'GUI or 'graphical user interface refers to the visual elements, le., the 'look'
of the program. Upon interacting with a GUI i.e. the graphics on the screen, the GUI
instantly communicates through the software's underlying code, which then
performs the desired function and from the time the user interacts and executes a
command to the moment the computer performs the function, there are multiple
layers of interactions taking place within the software."
21. Recently, in Cryogas Equipment (P) Ltd. (Supra), the Supreme Court had
held as follows:
63. The expression "artistic work" under Section 2(c) of the Copyright Act
has a very wide connotation and may also include abstract work(s)
comprising a few lines or curves arbitrarily drawn, which could be either
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two or three-dimensional. It may be clarified that such a work may or
may not have any visual appeal. Further, the holder of such an artistic
work is entitled to draw protection under Section 14(c) of the Copyright
Act, including the exclusive right to reproduce such work in any material
form. Such a reproduction may also involve depicting a three-dimension
work of a two-dimensional work or vice versa.
64. However, if such reproduction is done by employing an industrial
process, which may be manual, mechanical or chemical, and which
results in a finished article that may appeal to the eye, then "the features
of shape, configuration, pattern, ornament or composition of lines or
colours applied to the article by such an industrial process", constitutes
"design" within the meaning of Section 2(d) of the Designs Act.
65. It thus seems that the intent of producing an original artistic work is
not determinative of its protection under the Copyright or Designs
Regime. Rather, the legislative intent is to harmonise the two statutes so
that while an "artistic work" qualifies for copyright protection, its
commercial or industrial application--i.e. 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. Such a design gets protected
only if it is registered under the Designs Act.
66. To further simplify, the original artistic work, which initially enjoys
copyright protection, does not lose the same merely because a "design"
derived from it has been industrially applied to create a product. While
the expression "artistic work" has a broad spectrum, "design" is
restricted to specific features such as shape, configuration, pattern,
ornamentation, or composition of lines or colours, applied to an article
through an industrial process, resulting in a finished product that
appeals to the eye. These visually appealing features, when applied
industrially, define a "design" under the Designs Act.
67. Our analysis further reveals that the inquiry cannot be concluded
merely by assuming that what does not qualify as an "artistic work",
within the meaning of the Copyright Act, would automatically receive
protection under the Designs Act. While protection under the Designs Act
is not as enduring as that under the Copyright Act, it is not granted by
default and requires specific criteria to be met. In this regard, courts in
India and globally consistently apply the test of "functional utility" to
determine whether a work qualifies for protection under the Designs Act.
68. It would therefore be appropriate to espouse the approach already
undertaken by the courts in India, as it not only emulates the best
practices employed by US courts and the principles enshrined in
International Conventions, but it also gives due consideration to
contemporaneous laws and legislations. We have thus formulated a two-
pronged approach in order to crack open the conundrum caused by
Section 15(2) of the Copyright Act so as to ascertain whether a work is
qualified to be protected by the Designs Act. This test shall consider:
(i) whether the work in question is purely an "artistic work" entitled to
protection under the Copyright Act or whether it is a "design" derived
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from such original artistic work and subjected to an industrial process
based upon the language in Section 15(2) of the Copyright Act;
(ii) if such a work does not qualify for copyright protection, then the test
of "functional utility" will have to be applied so as to determine its
dominant purpose, and then ascertain whether it would qualify for
design protection under the Designs Act.
69. The courts, while applying this test, ought to undertake a case-
specific inquiry guided by statutory provisions, judicial precedents, and
comparative jurisprudence. It must be kept in mind that the overarching
objective is to ensure that rights granted under either regime serve their
intended purpose without unduly encroaching upon the domain of the
other. With this approach, we have attempted to clarify the treatment of
works at the intersection of "copyright" and "design" law(s), thereby
ensuring coherence and consistency in the application of IP rights in
India.
22. For the above reasons, 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. 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.
This would require examination on a case to case basis.
UST Global (Singapore) vs. Controller of Patents and Designs
23. The order dated 6 July 2023 passed by the Controller on which great
reliance was placed by the respondent authorities is also incorrect and
based on a misconstruction of the Act. The findings in this case are
largely in tune with what has been held in the impugned orders. In this
decision, the Controller held that a design must be "integral with the
article itself and this is not fulfilled in the case of a GUI since it is not
visible with the touchscreen per se, requiring integration/association with
an electronic device. It was also found that the article to which the design
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is applied becomes the "finished article" only after the application of the
design, and yet, the design in question (GUI) would not be available on the
finished article itself in the absence of integration/association with an
electronic device. It was also been held that the "industrial process under
the Act is limited only to manual/mechanical/chemical processes and
does not extend to any other type of processes. All these aspects have
been individually dealt with above and require no further consideration.
In such circumstances, the UST Global Singapore decision requires to be
read and interpreted in the light of the above findings.
Foreign decisions
24. The blind refusal to consider foreign authorities in all the impugned
orders by the Controller is also misplaced and based on an erroneous
appreciation of the law. This approach is contrary and in violation of the
well settled decisions of the Supreme Court that foreign decisions are of
highly persuasive value. [Forasol v. ONGC AIR 1984 SC 241 @ Para 1 (m)].
In fact, in the recent decision Cryogas Equipment (P) Ltd. vs. Inox India
Ltd. (Supra) where the overlap between the Copyright Act 1957 and the
Designs Act, 2000 was in issue, the Hon'ble Supreme Court has not only
exhaustively gone into the interpretation of "design" by the English Courts
and the US Courts but after going into a review of the authorities
acknowledged that the term design has been extensively interpreted by
English Courts, considering that the expression was pari materia with the
definition consecrated in the Indian context and are of highly persuasive
value. In this background, the outright rejection of foreign decisions in the
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impugned orders as also in the UST Global decision is misconceived and
erroneous.
Conclusions
25. The Act protects shape, configuration, pattern, ornament and composition
of lines or colours. A GUI inherently comprises iconography, layout,
colour schemes, composition of lines and ornamentation, and therefore
falls within the kind of visual features the Act contemplates. GUIs
typically reflect creative choices in arrangement, proportion, spacing,
colour palette and icon design. These choices are aesthetic decisions that
produce a visual impression capable of being judged by the eye and
therefore meet the qualitative requirements for design protection. In
summary, there is no per se exclusion for GUIs under section 2(d) of the
Act. In view of the above, the contention of the Controller that there is no
explicit provision under the Act entailing protection of GUI within the
scope of section 2(a) and 2(d) of the Act is incorrect and legally untenable.
26. Nevertheless, there is undoubtedly a lack of clarity in the Designs Office
with regard to the registrability of GUIs. This would appear from the
different approaches adopted by the Designs Office. It is a matter of
record that GUIs have been granted registration in the following cases:
(a) No. 274917-Siemens; Class 14-02- Monitor with GUI,
(b) No. 2749178-Siemens: Class 14-02- Monitor with GUI,
(c) No. 274925-Simens, Class 14-02- Monitor with GUI,
(d) No. 284680-Kneevoice; Class- 14-04 Mobile (GUI Shown),
(e) No. 276736-LG: Class 14-04-Navigation Device for vehicle with
GUI.
The importance of registering GUIs is also significant from a business
perspective. GUIs are a critical asset in modern day technology, commerce
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and digital services. There would also be legal certainty more explicit
protection reduction in litigation and this approach would align India with
international practice. A recent survey conducted by would Intellectual
Property Organization (WIPO) has found that 92% of jurisdictions already
protect GUIs under designs laws. A similar study conducted by the
International Chamber of Commerce also reported that GUI protection is
granted in most jurisdictions. This is also based on an expansive
definition of 'product' and 'designs' in the European jurisdiction which
covers animation, movement, transition and intangible products.
Similarly, in the United Kingdom there have been clarifications which
cover GUIs in animation and transitions as products eligible for design
protection. Similar changes have been made both in Australia, Hong-Kong
and United States of America. To this extent, the definitions of design,
article, industrial process require clarification and elaboration so that
GUIs are recognized as products of industrial design activity. This would
also ensure technological neutrality and lead to global integration which
is necessary for conformity in terms of the Hague Agreement and The
Riyadh Design Law Treaty both of which recognize virtual designs. This
would also help Indian designers knowing that they have enforceable legal
rights. The existing practice in the Manual published by the Controller
contemplates the possibility of using dotted lines dashed lines to
differentiate between protectable design elements from portions which are
disclaimed. In this background, it is necessary for clarificatory guidance
either by Legislature or by the Controller issuing appropriate directions
expanding the scope of protectable designs. During the interregnum,
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there is nothing which prevents GUIs being registrable on a case to case
basis after satisfying the requirements under sections 2(a) and 2(d) of the
Act when properly identified with an article and keeping in mind that the
design elements are not purely function driven.
27. For the above reasons, all these appeals succeed. The respondent
authorities have failed to apply the correct legal tests in determining
design registration in cases concerning GUIs. The orders dated 1 October,
2019 in IPDAID 21 of 2024, 21 January, 2024 in IPDAID 22 of 2024, 17
February, 2025 in IPDAID 1 of 2025 and IPDAID 2 of 2025 respectively
and 31 May, 2024 in IPDAID 3 of 2025 are set aside. All these matters are
remanded to the Controller for hearing afresh and after giving an
opportunity of hearing to each of the appellants. With the above
directions, IPDAID/21/2024, IPDAID/22/2024, IPDAID/1/2025,
IPDAID/2/2025, IPDAID/3/2025 and all connected applications stand
disposed of.
(Ravi Krishan Kapur, J.)
