Graphical User Interfaces (“GUIs”) are “interfaces that allow users to interact with electronic devices through graphical icons and audio indicators such as primary notation, instead of text-based user interfaces, typed command labels or text navigation”, according to Wikipedia. To put it in simpler terms, GUIs are basically windows, icons, cursors and buttons that let us enjoy the benefits of computerization without having a degree in coding.

What a GUI essentially does is capture a string of text commands that we would otherwise have to type out and execute and collate that into a single visual component. Rather than having to open Run and type in the command for opening the Control Panel, one may simply scroll over to the little blue box-like icon called Control Panel and double-click the same.

As the above explanation highlights, GUIs essentially make it easier to navigate using a computer or any other software, and when today’s world looks at tailoring and customization to the needs of an average consumer, a friendly UI and UX design becomes key in ensuring that customers are happy, satisfied and are recurrent consumers of your software or service.

Why is Intellectual Property (“IP”) involved? IP has always been a businessperson’s tool in maintaining their competitive edge, by rewarding their efforts for pushing the envelope of innovation in their respective industry. Naturally, as the more traditional forms of protecting innovation expanded to incorporate the developments in the software technology space, the question of granting industrial design protection to GUIs arose. This article shall highlight the struggle of registering designs over GUIs in India, and also enjoin a proposal to resolve the situation by drawing from the experience of other jurisdictions.

The Hindrance to Design Registrations over GUIs in India

India adopted the Locarno Classification system for the registration of articles as designs by way of the Design Rules 2001 and the amendment in 2008. Pertinent to note here is that the Locarno Classification specifically created a Class 14 – Recording, telecommunication or data processing equipment, with a sub class “Class 14-04 – Screen Displays and Icons”. Now, given the accession of India to the Locarno Classification and the amendments to the Rules, it would seem but logical for the Design Office to explicitly agree to granting registrations over GUIs. But when Amazon attempted to register a design (Application Number: 240305) for a GUI for “providing supplemental information of a digital work to a display screen”[1], the Design Office refused the application, holding that the GUI was not integral to the article and was only a functional aspect of the article; along with the fact that the GUI was not a finished article of manufacture having consistent eye appeal and being able to be sold separately.

Interestingly enough, however, the Designs Office has allowed design registrations to GUIs post the Amazon decision, for GUIs not only pertaining to computer screen layouts, but also for GUIs pertaining to mobile screens and car display panels[2]. A seemingly common feature between the accepted registered designs for GUIs is that they have their priority established in a foreign country. Does this then mean that a possible registration in a foreign country implies the overcome of objections as to ‘design’ and ‘article’ under Sections 2(a) and 2(d) in the Designs Act 2000? The practice of patent law allows the use of patent grants over an invention in foreign jurisdictions to overcome objections of novelty and inventive step at the Indian prosecution stage. Whether the logic of this practice has now been extenuated into the field of designs is a bit of a grey area.

Registration of Designs in Other Jurisdictions

A landmark case speaking to design protection for GUIs in the US is the case of Ex Parte Strijland[3], which although rejected an application for registration of a GUI, nonetheless augmented the rules of allowability for a design patent for GUIs. The Board of Patent Appeals and Interference (“BPAI”) held that had the applicants included in the initial application that the Icon for which design protection was to be granted was to be applied to a display screen of a programmed computer system, and contained additional representations of the design being applied to the intended article, the application would have satisfied the subject matter requirement of US patent law (35 USC § 171). Ex Parte Tayama[4] is a similar case where the BPAI reiterated the same rational. The USPTO has subsequently come up with Guidelines for Examination of Design Patent Applications For Computer-Generated Icons[5] which capture the above elucidated principles.

There are a few important takeaways from this case. One, the Board explicitly agreed that a programmed computer system would suffice to be termed as the article of manufacture, and the GUI would be an ornamentation of the computer. Secondly, the Board took note of the declarations made by the inventors as to how the design was an integral part of the programmed computer system, which enunciated the operation of the icon (which when opened transitioned to a window which connected to a host system for retrieving and displaying information).

The first point counters the requirement of the Indian Design Office that the GUI does not fulfill the requirement of ‘article’, as the computer itself would be considered as the article under Section 2(a). The second point counters the objection of the Design Office as to the GUI not being an integral aspect of the article. The Designs Office appears to have muddled two important features of GUIs when examining the Amazon application. The first aspect is that while a particular function may not be protectable, a GUI specifically engenders one of the myriad expressions of a particular function, say the depiction of a start screen. The second aspect is that in achieving the desired aesthetic appeal of the programmed display screen, the GUI is an integral aspect of creating this result. To illustrate this further, one cannot claim protection over a clickable button, but one can claim protection over their depiction of a specific button. Similarly, protection cannot be claimed over a pop-up dialogue box, but over the specific representation of it.

GUIs in the EU are generally registered under the Community Design Regulation (Council Regulation No. 6/2002/EC), but may also exist as unregistered Community Designs. Article 3(a) of the Community Design Regulations clearly provides that a ‘design’ only consists of the appearance of the whole or a part of a product, comprising lines, colours, contours, etc., while a ‘product’ under Article 3(b) of the Community Design Regulation consists of an industrial or handicraft item other than a computer program, and particularly includes graphic symbols and typographic type-faces. It is however clarified that GUIs are not barred protection by Article 3(b), as GUIs would not only fall under the categories of graphic symbols and typographic type-faces, but also the intended exclusion of computer programs is to give effect to the carved out spheres of technical functions and the source codes of computer programs, which are protected by patent law and copyright law respectively[6]. Furthermore, EU design protection does not require the embodiment of the design on the intended article, meaning that applications are usually made without reference of the hardware or display screen to which the design would be applied to.

Additionally, while the Australian Designs Office does not accept design registrations for GUIs, GUIs are allowed to be registered by merely clearing a formalities check, without undergoing substantive examination. These design registrations remain uncertified, and do not embody an enforceable right as they are unexamined. The Australian Designs Office objects to their registration on the ground that the article to which the design is to be applied is considered in a state of rest, and for electronic devices, this means that the powered-on appearance is discounted. Further, GUIs and icons are not considered to be products by themselves. However, a review conducted in 2015 of Australian Design Law proposed that virtual designs be covered by design protection, by allowing them to be examined in their powered-on state, which has been accepted by the Australian Government[7].

The Designs (Amendment) Rules 2021 and the way forward

On 25^th January 2021, the Ministry of Commerce and Industry notified the Designs (Amendment) Rules 2021, which substituted Rule 10 of the Design Rules 2001, and incorporated the current edition of the “International Classification for Industrial Designs (Locarno Classification), which provides for a Class 32, allowing for two dimensional graphic designs, graphic symbols and logos, with the requirement of satisfaction of Section 2(a) and 2(d) of the Act tacked on as a proviso.

Curiously enough, as pointed out here, the Manual of Design Practices & Procedure cites a UK decision, Ferrero and CspA’s Application[8] wherein the ratio of the Court, reiterated by the Manual, is that design features that are internal but visible only during use may be the subject matter of registration. This effectively defeats the need for a constant eye appeal of the design. Another practice that seems to have evolved through the registration of GUIs as designs is the depictions of the display screens in solid lines, which appears to be reminiscent of the USPTO’s requirement that representations of the GUI be augmented with the surfaces to which it is to be applied to, i.e., the surfaces to be ornamented. The Manual, however, at page 19, specifically provides that dotted lines are to be used to depict elements which are not part of the claimed design. Ideally, monitors and display screens should be depicted with dotted lines, to ensure that the monitor or display screen itself is a part of the registered design. These features only serve to provide context to the design, as to the article to which it is to be applied to and resolving this issue can go a long way in simplifying the concept of protection given to GUIs.

Continuing Challenges

While currently, GUIs appear to have been registered for stand along or single screens, the question then arises as to the scope of protection for animated or projected GUIs. The Korean Intellectual Property Office currently allows applicants to submit design applications in animated formats, by way of .swf, .mpeg, .wmv and .gif files. Animation GUIs hold a sufficiently higher level of aesthetic appeal, which can also avoid the need for having to file multiple design applications for variations of a single GUI. The Indian law as it stands follows a reactive approach, rather than a pre-emptive approach, and the registration of animated GUIs has a long road ahead.

That being said, GUIs in India seem to take a middle path between the Australian approach and the US/EU approach, where design registration is granted to GUIs despite the fact that no clear guidance has been provided post the Amazon decision. One can only hope that the adoption of the current edition of the Locarno Classification would imply a drop of the limitations of representations of GUIs in design applications, given that Class 32 contains as an explanatory note the item “Graphic designs [two-dimensional]”, which going by the EU law on Community designs, does not require a depiction of the physical embodiment on which the GUI would be displayed. Paraphrasing Rachel Stigler’s pronunciation of GUIs, the future of design protection for this seems GUI (read gooey).

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