Protecting graphical user interface (GUI) through design registration is still a grey area in India. Although the Indian Design Office follows the classification which has class 14-04 for screen displays or icons, the office has issued most registrations to icons in class 14-99. These are all old registrations granted to Microsoft, for which applications were filed in 2006. Since Microsoft’s design registrations, the office has not granted registrations for icons.
In 2014, the office also rejected a GUI application filed by Amazon and subsequently has raised objections to all GUI applications. The controller refused Amazon’s design application for “graphical user interface for providing supplemental information of a digital work to a display screen” under class 14-02, holding that a design had to satisfy the definition under sections 2(a) and 2(d) of the Designs Act, 2000, and would not be registered simply based on the class number as prescribed in the rules. The controller held that a GUI is merely a function or application based on software connected to a computing device in switched-on condition. A GUI does not have consistent eye appeal as per section 2(d) of the act and cannot be considered as an article of manufacture as per section 2(a). It was also held that a GUI cannot be considered as a finished article and does not contain the features of shape or configuration and other design parameters.
Despite the refusal of Amazon’s application for registration, some GUIs have been protected in India. In one such instance, the GUI was registered in India in class 14-02, claiming priority from an international design application which was filed in class 14-04. In this case, to obtain protection of the GUI in India, the applicant filed the design application in class 14-02, in relation to a touch screen. Recently, a “graphical user interface for an account identifier” was registered in class 99-01 in the name of Visa International Service Association, claiming priority from a US design application. In this case, the class number for the Indian design application was amended to 99-01, which covers miscellaneous items, and the drawings were amended to show a touch/mobile screen.
A particularly interesting aspect of the protection of GUIs is the question of whether they should be protected under copyright law or designs law. A GUI may qualify as an “artistic work” under the provisions of the Copyright Act, 1957, and may simultaneously be protected and registered under the Designs Act. However, if a GUI is registered as a design, protection would be limited to use of the design on a particular article and would not extend to reproduction of the design on any other articles. It is also important to note that the Designs Act does not provide for design protection to graphics, logos or labels which are not applied to any article. In other words, Indian design rules do not have a class equivalent to class 32 of the Locarno Classification.
A GUI is primarily shown on a computer or mobile screen. To protect GUIs in the US, applicants apply for registration of the design with a box around it shown in broken lines, suggesting a use of the design on a computer screen. However, the Indian Design Office generally objects to broken or dotted lines in drawings and therefore these must be converted into solid lines around the display screen. The Manual of Designs Practice & Procedure published by the Office of the Controller General of Patents, Designs and Trade Marks provides that dotted lines may be used in representation to indicate those elements of an article for which no protection is sought, and it is also mentioned that dotted lines identify elements which are not part of the claimed design. However, the manual is not strictly followed by the examiners and they are still asking applicants to file drawings in solid lines. If applicants follow the manual, the GUI as ornamentation on an article can be protected and the representation can contain a solid line drawing for the claimed ornamentation and dotted line for rest of the article.
There is lot of ambiguity as far as design protection of GUIs is concerned and therefore it is highly desirable that the Indian Design Office formulate clear guidelines for the examination and protection of GUIs as designs. With the advancement of technology and new methods of communication, the practice of the Indian Design Office along with corresponding provisions of the law need to be examined and streamlined keeping in mind industry requirements.
Omesh Puri is an associate partner at LexOrbis.
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