Image from here
The Calcutta High Court (CalHC) seems poised to resolve the issue of registrability of GUI under the Designs Act (Act) once and for all. In a recent order in Erbe Elektromedizin GmbH v. Controller of Patents (Erbe, IPDAID/22/2024), CalHC has appointed Adv. Adarsh Ramanujan as amicus curiae to assist the Court on a matter, which seems to involve questions on the registrability of GUI under the Designs Act (See Adarsh’s post). This comes at a time when the same Court and judge, previously in Ust Global (Singapore) Pte Ltd vs The Controller Of Patents And Designs, had expressed views indicating that GUIs are registrable as designs and remanded the case back to the Indian Patent Office (IPO). On re-examination there, the Controller seems to have once again denied registration (see comments of Adarsh’s post). Hence, the appointment of an amicus in Erbe indicates some serious intention on the part of CalHC to resolve the GUI impasse. Before one gets into the details, it’s useful to brush up on some basics.
Some Basics and Some Context:
Every design needs to be applied to an article. Both “design” and “article” have been defined in Section 2(a) and (d) of the Act. To get a design registration, you should be able to show that you have a “design” as defined under Section 2(d) and that it is being applied to an “article” as provided in Section 2(a). After clearing Section 2, the design in question must not fall under Section 4 (defines designs which are prohibited from registration). Once the design clears the two-level scrutiny, it is eligible for registration with respect to only one class, which is provided under Rule 10 of the Design Rules, 2001.
As one can ascertain from the screenshot below, the design registration process seems to operate in an opaque vacuum, with the design search website offering minimal details on the prosecution history of a design application. One can track registered designs through IPO’s website. As to the documents filed during the design prosecution and orders issued by Controllers with respect to a design registration are not publicly available in a digitally accessible format. Thus, most of what we know about the orders of Controllers is from secondary sources.
The IPO also seems to have been playing ping-pong on the question of registrability of GUIs under the Act. Three posts previously published in SpicyIP discuss the ping-ponging position of the Indian Patent Office (IPO) with regard to the registerability of GUI. The position changed from first registering GUIs under the miscellaneous class 14-99, later taking the opposite legal position that GUIs are non-registrable since they do not fulfill the requirements under Section 2(a) and 2(d) of the Act.
As Nikhil had pointed out earlier, the Section 2(a) objection seems odd, since GUIs are sought to be registered as a design that would be applied to an article, not as an article itself. But nevertheless, the objections under Section 2(d) remain.
The argument of the IPO seems to be premised on four grounds: Firstly, since GUIs are ephemeral, they do not provide consistent eye appeal. Secondly, GUIs are functional in nature, hence not eligible for design protection. Thirdly, GUIs have not been applied by an “industrial process” to devices (a requirement under 2(d)). Fourthly, the existence of a class (for GUIs) in itself is not sufficient to support the claim of design registration unless the application passes through the first level scrutiny under Section 2.
The position of the IPO that GUIs are not registrable came for a rejig in 2023 when the Calcutta High Court in Ust Global (Singapore) Pte Ltd vs The Controller Of Patents And Designs (UTS) set aside the order of the Controller that refused to register a GUI design application and remanded the application for fresh determination. The Court had observed that the Controller had failed to take into account the recent 2021 Design amendment and the 2008 amendment that had adopted the Locarno classification.
Secondly, the ephemeral nature of the GUI is not a reason to reject its registration and finally GUIs are applied through an industrial process and hence are capable of clearing the Section 2(d) requirement or the first tier scrutiny. But post-remand, the application for registration was again rejected by the Controller.
It’s also important to note that IPO might have been a bit inconsistent in applying its own legal position. On a quick search, around 6 GUI applications seem to be registered under the subclass 14-04 (all of them seem to have been applied for during the 2015-16 period). In the miscellaneous class 14-99, there are applications filed for display devices and display panels, with a journal number, indicating the application was granted. So there seems to be at least some divergence in decisions of the Controllers on the question of the registrability of GUI. Such inconsistencies are a prelude to more deeper theoretical confusion as to the place of GUIs within the universe of IP.
GUI and the in-between space of IP
GUI occupies some kind of in-between space in IP where it can be protected by copyright, maybe designs and also sometimes patents (as we will see below). One wonders why this is the case. How is it possible that GUIs or the information good associated with a GUI can possibly be protected by all three legislations, which have their own distinct design and purpose?
It seems to me that IP’s expansionary logic is in play, absent any clear legal conceptual moorings on how to exactly facilitate this expansion. It can be summed up by the argument that was advanced by the appellant before the Calcutta High Court in UTS: “GUI is a software, an intellectual property, an article of value and hence capable of registration”. The reasoning itself borders on an if value/then right principle and embodies an expansionary logic of IP, where all benefits imposed by any informational good (in this case, a particular visual appeal or functionality of element(s) of a GUI or both) have to be appropriated through an exclusionary rights regime (be it patents, designs or copyright) by the supposed owner of such “knowledge”. The only issue in this framing, it seems, is the manner, scope and the legal regime through which this appropriation should take place. Consequently, in all the discussions that have happened surrounding GUIs, no one seemed to have asked the question of whether any exclusionary right for GUIs is needed in the first place. It has just been taken for granted.
With that being said, let’s take stock of the legal developments surrounding GUI.
Copyright or Designs, where is your home, O’ GUI?
Copyright law already protects software code as a literary work, while the visual elements the software code generates can be protected as an artistic work. Delhi High Court, in the Single Bench decision of HULM Entertainment v. Fantasy Sports (2023), had indicated that artistic/visual elements that are produced on the screen through software code are subject to separate copyright protection. Unfortunately, the Division Bench had stayed the order because it thought there was some misunderstanding of some facts in the SB order. The DB did not address the legal aspects of the SB order and the matter is still pending before the DB, with the injunction still in effect! (read more on this here)
The Calcutta High Court decided to throw a curveball by expressing views that seem to indicate that GUIs can also be registered as designs, as we had seen above. This position, if upheld going forward in Erbe, brings GUIs under the cross hairs of Section 15(2) of the Copyright Act, which denies copyright protection to works that are also capable of being registered as designs if there are more than 50 reproductions of an article with the work applied to it. Section 15(2) would effectively have a channeling effect and would force applicants to seek a design registration if they are going to exceed the 50-times limit. It is possible that soon, GUIs might be banished from the in-between space it awkwardly occupies.
A Class(ic) Case of Confusion?
As I had discussed earlier, every design is to be registered in relation to a class. The Locarno classification provided by the Locarno Treaty (of which India is a signatory) seeks to harmonise among member countries the classification of articles and adopt a uniform classificatory scheme. Since the Designs (Amendment) Rules, 2008, “Screen display and icons” and “Graphical User Interfaces and Icons” in the 2021 amendment have been separate subclasses under the Designs rules, tracking the changes being made to the Locarno classification. The latest 2021 amendment expressly incorporates the Locarno classification under rule 10 with an important proviso.
Article 2 of the treaty clarifies that “international classification shall be solely of an administrative character” and further clarifies that the treaty does not affect the nature and scope of rights as granted under the national legislation. It nevertheless states that the countries are free to attribute legal scope to the international classification within their own national law as they deem fit.
The confusion, as was expressed in UTS, stems from the conflicting position the IPO finds itself in with respect to the Central government. On one hand, the IPO seems to be steadfast in its decision to deny registration of GUI, while on the other hand, the central government prima facie through the amendment to the design rules, seems to be pulling in the opposite direction by adopting the classification without any modifications that might reflect the legal and policy preference of the IPO i.e. removing the class 14.02 or making a statement to the effect that GUIs are not registerable under the Designs Act. But a closer look reveals a different picture.
As the preamble of the 2021 amendment tells us, the draft rules were initially published in 2019 and public comments were sought. Only after duly considering the public comments, rules have been adopted as per the procedure provided under Section 47 of the Act. One is curious as to how the draft rules could have missed the attention of the IPO, who also process design registrations. Did not the IPO raise its concerns and explain its position regarding the GUI to the Central government?
I do not have a definitive answer to the above questions, but it is quite possible that concerns were raised. Because in the initial draft rules, rule 10 merely stated that ‘articles shall be classified as per the Locarno classification’. The final rules in the 2021 amendment included a provisio to rule 10 stating that “Provided that registration of any design would be subject to the fulfillment of provisions of the Act specifically 2(a) and 2(d)”.
The proviso provided under the new Rule 10 reflects the position taken by the IPO. The position being that the existence of a separate sub-class in itself is not a sufficient reason to grant a design registration and any design registration must fulfil the strictures of Section 2(a) and (d). That GUIs do not fulfill this requirement.
With this finding, one has to ask the question: Was the Calcutta High Court in UST right in observing that the Controller, in his order, ignored the 2021 and 2008 amendments? Yet this might also not matter, since the Court in UTS had also expressed an opinion that GUIs would constitute a design under Section 2(d).
Be that as it may, it seems that GUIs are also patent-eligible subject matter, who would have thought that was possible!
GUI and Patents!?
Thanks to an anonymous reader, it was brought to my notice that applicants have also tried to get patent protection with some success for inventions that are directed towards graphic user interfaces or at least the major portion of the claim incorporates what seems to be a claim over GUIs. To give some examples (see Patent no. 491715 and 439676). First of the invention ‘715 patent is directed towards an “instrument cluster” with a display screen. A good chunk of the independent claim 1 and the subsequent dependent claims are directed towards the organisation of this display screen and the kind of information it can display. It seems the claims are directed towards a display panel with a GUI that is slapped onto a vehicle. As to the ‘676 Patent, the preamble of claim 1 explicitly states that it is directed towards a “vehicle information display system”.
In conclusion, it seems GUIs can be protected through multiple routes and multiple IP systems. Whether Erbe will bring order to this chaos is something we have to wait and watch. If software programmers can boast of dual protection. GUI designers can one-up them soon and say We get triple protection!
Thanks to an anonymous reader and Swaraj for their input !