The Calcutta High Court ruled that icons, menus and screen layouts on digital devices can qualify as registrable designs under the Designs Act, 2000. Justice Ravi Krishan Kapur set aside orders of the Controller of Designs rejecting GUI-based design registrations.
KOLKATA: The Calcutta High Court recently ruled that icons, menus and screen layouts on phones and computers can qualify as registrable “designs” under the Designs Act, 2000.
Justice Ravi Krishan Kapur set aside several orders of the Controller of Designs that had denied registration, on the ground that these were merely software-based graphical user interfaces (GUIs) and not designs applied to physical articles.
The Court observed,
“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.”
The dispute arose from multiple appeals by international entities including NEC Corporation, Abiomed Inc. and TVS Motor Company challenging refusals to register design applications for visual elements such as vehicle dashboard pictograms and display screen layouts.
The Controller had taken the position that these elements were essentially software-driven and therefore lacked the “permanence” necessary for registration, concluding that a GUI did not qualify as an “article” or as a design applied through an industrial process.
The Court found a “pre-conceived mindset” within the Controller’s office that treated the term “article” as necessarily meaning a physical object.
In examining Section 2(a) of the Designs Act, the Court stated:
“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.”
ALSO READ: Delhi High Court Bars Acqualite from Copying Relaxo’s Iconic Hawai Slippers
On the requirement of an “industrial process,” the Court emphasised the significance of the word “any” used in the statute:
“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 Court also rejected permanence as a prerequisite, explaining that the Act does not demand that a design be permanently visible.
It held:
“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.”
Acknowledging that GUIs serve functional roles, the Court said they remain registrable when they exhibit aesthetic “eye appeal” beyond pure functionality.
Addressing potential overlap with copyright protection, the Court concluded:
“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.”
The Court noted that about 92% of jurisdictions globally already extend design law protection to GUIs.
ALSO READ: Delhi HC Slams Swiggy & Zepto Over App Inaccessibility for Visually Impaired Users
Applying the doctrine of updating construction to keep the statute in step with technological developments, Justice Kapur reiterated:
“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.”
As a result, the Court set aside the Controller’s decisions and sent the matters back for fresh consideration by the Controller.
Representation:
- NEC Corporation: Senior Advocate Sayantan Basu; Advocates Tanmoy Roy and Aheriya Roy.
- Erbe Elektromedizin GmbH: Advocates Vindhya S Mani and Taniya Roy.
- Abiomed Inc.: Advocates Sourojit Dasgupta, Sudhakar Prasad, S. Banerjee, Pratiksha Varshney and Pradipta Bose.
- TVS Motor Company Limited: Senior Advocate Ranjan Bachawat; Advocates Smriti Yadav, Shubrojyoti Mookherjee, Sagnik Bose, Shubham Shende, Vishwas Sethuraman and A. Sinha.
- Controller of Patents and Designs: Advocates Sanjukta Gupta, Madhu Jana, Ujjal Rajak, Indrajeet Dasgupta, Brajesh Jha, Sumita Sarkar and A. Banerjee.
- Amicus curiae: Advocate Adarsh Ramanujan.
Case Title: Nec Corporation v. Controller of Patents and Design.
FOR MORE LEGAL UPDATES FOLLOW US ON YOUTUBE