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31 March 2023
In a recent ruling (March 20, 2023), the High Court of Calcutta has provided much needed relief to the IT and design industry by holding that the look and feel of mobile apps and graphical user interfaces (GUIs). [UST Global (Singapore) PTE Ltd v. Controller of Patents and Designs, AID 2 of 2019, High Court of Calcutta]
This decision in comes in the wake of a reversal of a 2019 order by the Designs Office, which had taken the position that GUIs are not registrable designs, and that this particular GUI was visible only when the device was powered “ON”.
While the possibility of GUIs being registered as designs has existed for a few years, and has even been recognized by the Designs Rules, 2001 (amended in 2008, 2019 and 2021), what makes this decision special is that it has taken the following positions:
Just because the GUI is born out of a source code, does not disqualify it from design protection.
The law does not require a design to deliver haptic perception (the sense of touch). It requires visual appeal, which a GUI satisfies.
As regards the application of the design to an article by an “industrial process”, this test is satisfied by the source code, which is embedded in the microprocessors, which make the GUI visible by illuminating pixels on the screen.
It borrowed the test from Re: Apple Computer Inc’s Design Applications [2002] F.S.R. 38, which has recognized design protection for “icons” on a computer screen, as such icons were built into software, and the presence of such software on the computer machine constituted “industrial practice.”
It is not necessary that a design must be always visible. That the GUI in question was visible only when the device was powered “ON” did not disqualify it from registration. The GUI is always present and is visible when used. Besides, icons and GUIs are also visible in advertisements, or are put on display in shops.
The court boiled it down to basics and held that hidden or concealed features of products are very much protectable, so long as, when revealed, those features contain visual and aesthetic appeal.
Cases on point were the “jack-in-the-box” design (Gramophone Co. Ltd. Magazine Holder Company (1910) 27 R.P.C. 152 and the chocolate egg with a hidden white and yolk design (P. Ferrero and CSPA’s Application (1978) RPC 473).
The court’s decision as also backed by the fact that mobile icons, app interfaces and GUIs have also found mention in the Design Rules and are specifically recognized as protectable designs in class 14.02 and 14.04 under the subject “Screen Displays and Icons” in the Locarno Classification and the Design Rules 2019.
Moreover, in 2021, the Designs Rules 2001 were further amended to include a new class “32” relating to graphic symbols, graphic designs, logos, ornamentation, surface patterns. These amendments had not been brought in force when the Designs Office had refused registration to the GUI in 2019.
Having said that, the Designs Office’s order has been reversed on fundamental reasons, and for taking the view that GUIs are not registrable per se, and that a design must always be visible in order to secure protection.
In reversing the fundamental flaws of the Design Office’s order, the court has taken a design friendly and industry friendly approach, which will go a long way in proliferating work in the visual design and visual arts space in the IT industry.
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