Can GUIs be protected as designs in India?

Graphical User Interface, or GUI, refers to the use of icons, windows and menus, as used in operating systems, to offer a method to visually interact with a computer or other electronic devices. Those who have used MS-DOS machines, for example, will perhaps remember the text-only command-line interface (see) that was used to access the computer drive. Command-line access is still possible on modern machines, such as, “Terminal” in a Mac, but popular usage has shifted to GUI-based usage. Indeed, Apple’s Lisa computer, introduced in 1983, was the first commercially available computer to use a GUI (see).

The question arises as to whether GUI is offered any protection as a form of intellectual property. Many countries offer some form of design protection or other to GUIs, such as USA, China, Brazil, EU, South Africa and so on. In India, however, while the Designs Act, 2002, recognises the protection of GUI, but the Indian Design Office is reluctant to register them under Industrial Design Protection. The argument is that GUI cannot be regarded as an article of manufacture, and is hence disqualified as a design under this Act.

In theory, it can be argued that the Designs Rules, 2001, through its Third Schedule, which provides for the classification of designs and articles, allows for registering GUIs. The Third Schedule was amended in 2008 to comply with the Locarno classification. And in the new classification of goods thus introduced, class 14-04 was dedicated to articles belonging to “Screen Displays and Icons.”

Till 2009, the Indian Design Office did grant a few registrations to Microsoft Corporation, for icons and screen displays, under Class 14-99, which is a “Miscellaneous” category. However, the Design Office lately appears to have taken a stand that GUIs do not qualify as designs, defined under Section 2(a) and 2(d) of the Designs Act, and hence are not eligible for design protection under law.

The interpretation of the statutory provision has not been without dispute. In the decision issued by the Controller in a case involving Amazon Technologies, Inc. (Amazon), class 14-02 of the Design Act came under fire. The disputed registration pertained to a “Graphic user interface for providing supplemental information of a digital work to a display screen.” (Design application no. 240305). In its objections, the office noted that the proposed design was not a design as defined under section 2(a) and 2(d) of the Designs Act, 2000.

It drew attention to the particular language of the two provisions. As per Section 2(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. Section 2(d) provides at least the following conditions, amongst other things, should be satisfied for the “design” to be registrable:

1. Design means only the features of shape, configuration, pattern, ornament or composition of lines or colors; and
2. Design has to be applied to an article.

The Controller, while refusing Amazon’s application, made the following observations:

1. Firstly, it said that the Graphic Display Screen was a function of the computer screen, which became operative only when the computer was switched on. Thus, it failed to fulfill the requirement of consistent eye appeal, as required under Section 2(d).
2. Secondly, it said that the GUI could not be considered as an article under Sec 2(a), as it could not be converted to any output. GUI did not fit into this category, and also did not qualify as an article of manufacture.
3. Thirdly, as the GUI was not physically accessible it could not be sold separately as a commodity in the market, and hence failed to meet the provision of section 2(d) of the Act.
4. Fourthly, it said that the design proposed under the GUI did not come under the purview of meaning defined in the Act.

It seems obvious that, in the light of this decision passed by the Controller in the Amazon matter, the fate of applications pending with the Indian Design Office in relation to GUIs is uncertain until there is more clarity on the terms ‘article’ and ‘design’. The Designs Act is not a particularly litigated legislation in India, and it remains to be seen whether this issue of legislative interpretation will reach higher judicial authorities any time soon. In the interim, a recently published design registration for “Graphical User Interface for An Account Identifier” under class-99-01 (Design Application No.: 243808) has once again created a stir as to registration of GUIs in India. However, it is to be seen if this registration is of one of a kind or will set a trend for design registration of GUIs in India.

As an alternative, according to the Ministry of Electronics & Information Technology, copyright protection may be obtained for GUIs. However, the extent and enforceability of copyright protection for GUIs is as yet ambiguous.