IN THE HIGH COURT AT CALCUTTA

ORIGINAL SIDE

(Intellectual Property Rights Division)

BEFORE:

The Hon’ble Justice Ravi Krishan Kapur

IPDAID/21/2024

NEC CORPORATION

VS

THE CONTROLLER OF PATENTS AND DESIGNS AND ANR.

IPDAID/22/2024

ERBE ELEKTROMEDIZIN GMBH

VS

THE CONTROLLER OF PATENTS AND DESIGNS

IPDAID/1/2025

IA NO: GA-COM/1/2025

ABIOMED INC

VS

THE ASSISTANT CONTROLLER OF PATENTS AND DESIGNS AND ANR

IPDAID/2/2025

IA NO: GA-COM/1/2025

ABIOMED INC

VS

THE ASSISTANT CONTROLLER OF PATENTS AND DESIGNS AND ANR

IPDAID/3/2025

IA NO: GA-COM/1/2025

TVS MOTOR COMPANY LIMITED

VS

THE ASSISTANT CONTROLLER OF PATENTS AND DESIGNS

For the appellant in : Mr. Sayantan Basu, Senior Advocate

IPDAID/21/2024 Mr. Tanmoy Roy, Advocate

Ms. Aheriya Roy, Advocate

For the appellant in : Ms. Vindhya S. Mani, Advocate

IPDAID/22/2024 Ms. Taniya Roy, Advocate

For the appellant in : Mr. Sourojit Dasgupta, Advocate

IPDAID/1/2025 and Mr. Sudhakar Prasad, Advocate

IPDAID/2/2025 Mr. S. Banerjee, Advocate

Mr. Pratiksha Varshney, Advocate

Mr. Pradipta Bose, Advocate

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For the appellant in : Mr. Ranjan Bachawat, Sr. Advocate

IPDAID/3/2025 Ms. Smriti Yadav, Advocate

Mr. Shubrojyoti Mookherjee, Advocate

Mr. Sagnik Bose, Advocate

Mr. Shubham Shende, Advocate

Mr. Vishwas Sethuraman, Advocate

Ms. A. Sinha, Advocate

For the Controller in : Ms. Sanjukta Gupta, Advocate

IPDAID/21/2024 Mr. Madhu Jana, Advocate

Mr. Ujjal Rajak, Advocate

For the Controller in : Mr. Indrajeet Dasgupta, Advocate

IPDAID/22/2024

For the Controller in : Mr. Brajesh Jha, Advocate

IPDAID/1/2025 and Ms. Sumita Sarkar, Advocate

IPDAID/2/2025 and

For the Controller in : Mr. A. Banerjee, Advocate

IPDAID/3/2025 Ms. Sumita Sarkar, Advocate

Heard on : 10.12.2025

Judgment on : 09.03.2026

Ravi Krishan Kapur, J.:

1. All these statutory appeals have been filed under the Designs Act, 2000

(the Act) and raise a common question “Whether Graphic User Interface

(GUI) satisfies the criteria of a design making it eligible for registration

under the Act?”

2. GUI is a form of user interface which allows users to interact with

electronic devices through graphical icons and visuals in indicators such

as secondary notation. In computing, a GUI is a visual way for users to

interact with devices using elements like icons, windows, menus and

buttons instead of typing commands.

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The appellants:

3. The common thread in the arguments of all the appellants is that, there is

misconceived notion in the Office of Designs that GUIs are not per se

registrable under the Act. In construing the definitions of “article” under

section 2(a) and “design” under section 2(d) of the Act, the respondent

authorities have adopted an unduly strict and narrow interpretation. All

the impugned orders proceed on the basis that the Locarno classification

which had introduced GUI registration as a design is only of

administrative assistance and in the absence of any amendment to the

Act, does not aid in interpreting the definition of either “article” or

“design”. The impugned orders have also erroneously interpreted that

GUIs are not “applied by any industrial means or process” and hence do

not fall within the definition of “design”. In addition, the impugned orders

are flawed inasmuch as it has been held that since GUIs are neither sold

nor manufactured separately they cannot be treated as an “article”. The

impugned orders have also proceeded on the misconception that all

foreign decisions are inapplicable since the definitions of design, article

and industrial processes in those jurisdictions are different from the Act.

The fact that a GUI is visible only when the device is switched ON and

remains ON is another factor which has weighed in rejecting registration

of GUIs. There is also no element of permanence in a GUI which makes

the same not registrable. The order dated 6 July, 2023 passed in UST

Global (Singapore) vs. Controller of Patents and Designs by the Controller

is based on a misinterpretation of the Act. An additional ground in some

of the appeals is one of violation of the principles of natural justice

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inasmuch as the orders are non speaking. In such circumstances, it is

contended that the impugned orders are liable to be set aside and all the

applications be remanded for rehearing.

4. For convenience, the respective appeals are summarized below:

IPDAID 21 OF 2024: NEC Corporation

This is an appeal against an order dated 1 October 2019 in application no

285453 whereby a design claimed on novelty residing in the shape and

pattern of the display screen with the GUI has been rejected on the

ground that GUI does not constitute an article within the meaning of

section 2(a) of the Act. It is the display screen hosting the GUI which

qualifies as an article and hence makes the GUI incapable of being

registered. It has also been held that GUI is not applied through an

industrial process to an article. In effect, the GUI fundamentally consists

of mere software codes and has no element of permanence and is only

seen when an associate device is switched on which does not justify

registration.

IPDAID 22 of 2024: ERBE Elektromedizin GMBH

This is an appeal against an order dated 20 September 2019 rejecting

application no 277243 titled ‘A Display Unit for a High Frequency

Generator’ which was subsequently amended to “Display Screen for an

Electrosurgical High Frequency Generator” claiming novelty in shape,

pattern and ornamentation on the ground that GUI cannot be categorized

as surface ornamentation or pattern as the same is only visible when

connected to a computing system and turned ON. Hence, GUI is based

solely as a software application and is merely functional lacking

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consistent eye appeal which fails to satisfy the ingredients both under

section 2(a) and 2(d) of the Act.

IPDAID 1 of 2025 and IPDAID 2 of 2025: Abiomed Inc

This is an appeal against the orders dated 17 February 2025 rejecting

applications no 397600-001 and 397600-002 respectively for ‘Display

Panel or Portion thereof with Graphical User Interface. The GUI claimed is

for a Vehicle Dashboard which is a pictogram displayed on a screen of an

electronic device in order to help users navigate the device. The novelty

statement resides in the shape and configuration of the Display Panel or

Portion Thereof with Graphical User Interface which has been found to be

incapable of registration.

IPDAID 3 of 2025: TVS Motor Company Limited

This is an appeal against an order dated 31 May 2024 rejecting

application no 393339-001 on the ground that the design of a GUI cannot

be considered as a finished article judged solely by the eye nor does the

same have a sense of touch. The primary ground urged by the appellant is

one of violation of natural justice on the ground that there are no reasons

in the impugned order.

The Controller

5. On behalf of the Controller, it is contended that though the Design

(Amendment) Rules 2021 had brought GUI as a category of industrial

design capable of registration, there has been no corresponding

amendment to the Act which permits such registration. There has been

no amendment to the definition of article or design under the Act. A

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design is an integral part of an article and such design cannot be

separated nor does the same have any independent existence from the

article to which it has been applied. Neither can the GUI be made or sold

separately. GUI is visible only when an electronic device in the finished

article is switched ON and hence it has no element of permanence. In any

event, such display becomes non-existent as soon as the device is

switched OFF. GUI is also not applied to an article manually, chemically

or in any combination by way of an industrial process. It is also

contended that GUI should not be protected under the Act since it is

protected under the Copyright Act 1957 as an ‘artistic work’ and there

can be no dual protection. There is also no judicial precedent in India

with regard to allowing GUI or Graphical Icons or contents of screen

display being accepted as an industrial design. In this context, any

reliance on any foreign decision is misplaced and erroneous in view of the

different definitions in those jurisdictions.

Amicus Curiae

6. In view of the importance of the issues raised and to assist the Court, Mr.

Adarsh Ramanujan, Advocate had been appointed as Amicus Curiae. The

Court acknowledges the immense assistance and painstaking efforts by

the Amicus Curiae. He submitted that the Locarno Classification only

provided clarificatory guidance which could assist in the filing and search

for an application of a design but cannot per se be interpreted to create a

grant or exclusion insofar as GUI design protection is concerned. The Act

protects shape, configuration, pattern, ornament and composition of lines

of colours. To this extent, a GUI inherently comprises of iconography,

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layout, colours schemes, composition of lines and ornamentation which

falls within the kind of visual features which the Act perceives as

registrable. There is nothing in section 2(d) of the Act which expressly

refers to a design being permanently visible. The criteria of permanence

has been erroneously read into the definition of design in the impugned

orders. There is also no statutory basis that the design element must be

intrinsic or integral to the article to any particular degree. Section 2(d)

contemplates features to be applied to an article. The definition of the

term applied is generic and broad. The ingredient of whether GUI in the

finished article is judged solely by eye is also complied with since the

finished article encompasses the final product received by a consumer

which can be analyzed to the complete computer device integrity in the

display unit. In registering a GUI, there is no dual protection being

granted under the Act and the Copyright Act 1957. In this background,

there is no exclusion of GUI and the same ought to be decided on a case

to case basis. In support of such contentions reliance was placed on

Cryogas Equipment Private Limited vs Inox India Ltd 2025 SCC Online SC

780, Samsung Electronics Co. Ltd. vs. Apple Inc 137 S.Ct.429, Microsoft

Corporation vs. Corel Corporation 5:15-cv-05836-EJD, K.K.Suwa Seikosha’s

Design Application [1982] R.P.C. 166, In re: Hruby 54 C.C.P.A. 1196.

Construing “article” and “design”

7. For convenience, the definition of article and design are set out below:

2. In this Act, unless there is anything repugnant in the subject or

context.

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(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;

d)“design” means only the features of shape, configuration, pattern,

ornament or composition of lines or colours applied to any article

whether in two dimensional or three dimensional or in both forms, by

any industrial process or means, whether manual, mechanical or

chemical, separate or combined, which in the finished article appeal to

and are judged solely by the eye; but does not include any mode or

principle of construction or anything which is in substance a mere

mechanical device, and does not include any trade mark as defined in

clause (v) of sub-section (1) of section 2 of the Trade and Merchandise

Marks Act, 1958 or property mark as defined in section 479 of the

Indian Penal Code or any artistic work as defined in clause (c) of section

2 of the Copyright Act, 1957.

8. Upon a reading of section 2(d) of the Act, the term design contains both a

positive and a negative meaning. In the positive sense of the definition, it

refers to the features of shape, configuration, pattern, ornament, or

composition of lines or colours which are applied to any article, in either

two dimensional or three dimensional forms, through any industrial

process, whether manual, mechanical or chemical, either separately or in

combination and that is further applied in the finished article that can

appeal to or is judged solely by the eye. On the negative aspect, the

definition does not include any mode or principle of construction or

anything which is in substance a mere mechanical device. It also does not

include any trade mark as defined in section 2(1)(v) of Trade and

Merchandise Marks Act, 1958. It also does not include the definition of a

property mark as defined in section 479 of the Indian Penal Code or any

artistic work as defined in section 2(c) of the Copyright Act, 1957.

9. The focus in interpreting the above definitions is not on the novelty or

originality of the designs but whether they qualify as a design in terms of

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section 2(a) and 2(d) of the Act. It is also clear from the plain language of

section 2(d) that a design be applied to an article by any industrial

process. In this context, article as defined under section 2(a) means any

(a) article of manufacture (b) any substance artificial or partly artificial

and partly natural and (c) includes any part of an article capable of being

made and sold separately. Section 2(d) of the Act requires that a design is

to be applied to an article. This means that the design itself need not be

the article. Thus, the design and the article are distinct, independent and

separate. The relevant article for a GUI can vary from case to case. As an

example, it could be the display unit (the screen or hardware component)

or the finished product sold to consumers for example, a phone, tablet, or

automobile dashboard. 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. Thus, though

an article may include any substance (artificial of partly natural) there is

a pre-conceived mindset in tying it down to a physical embodiment of

sorts and this is a fallacy in all the impugned orders. In Samsung

Electronics Co. Ltd. vs. Apple Inc., 137 S. Ct. 429 (2016) it has been found

that the expression article is a broad term to cover “a thing made by hand

or machine.” The process of application of the GUI on the finished article

is a mechanical and manual process which falls within the definition of

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industrial process and there is no policy reason why registration should

be refused. The expression is so broadly understood that in a subsequent

judgment, the United States Court of Appeals in Microsoft Corp. v. Corel

Corp., Case No. 5:15-CV-06836-EJD (2018) held that even software is an

“article of manufacture.” Thus, the term ‘article’ requires a broad, liberal

and purposive interpretation.

Applied to an article by any industrial process:

10. The next aspect which requires consideration relates to the phrase

“applied to an article by any industrial process”. In UST Global (Supra),

the Controller had taken a view that the statute was restricted only to

manual, mechanical or chemical processes. This is a glaring mistake in

the order and ignores the term “any” which precedes industrial process.

On a plain reading of the section, the word any indicates a broad

interpretation of the term industrial process. The words manual,

mechanical or chemical are not exhaustive and are only indicative as to

what may constitute an industrial process. Any other interpretation would

make the word any superfluous and redundant. There is nothing in the

section which suggests that a restrictive interpretation is mandated under

this section. On the contrary, the words used in section 2(a) and 2(d) of

the Act must be construed liberally having regard to the use of inclusive

language and the broad width of the expression used in the definitions. To

this extent, any reliance on Selvel Industries vs. Om Plast (India) 2016 SCC

OnLine Bom 6495 is misplaced. In the said decision, the Court had not

11

placed any such restrictive meaning on the words industrial process

(Paras 21 to 23).

Updating construction:

11. In interpreting the Act, one should apply the principles of updating

construction which suggests a construction which takes into account

relevant changes which have occurred since the enactment was made.

This would require analyzing the nature of the particular Act and taking

into account the relevant changes in modern day technology. In such

cases, legislature intended that the Court’s interpretation takes into

account advancements which have occurred since the enactment of the

legislation. In the light of the above, the term industrial process must be

interpreted to take into account technical and scientific advancements.

Moreso, while interpreting intellectual property legislation which are

fundamentally linked to such developments. [ Bennion on Statutory

Interpretation 7

th Edition at paragraphs 409-424 and State of Punjab vs.

Amritsar Beverages Ltd. and Ors. (2006) 7 SCC 607 at paras 14 and 15].

12. In a recent decision of the Federal Court of Australia, in Aristocrat

Technologies Australia Pty. Ltd. vs. Commissioner of Patents [2025] FCAFC

131) a question was raised which centered on whether innovation in a

gaming machine specifically computer implemented game features

constitute a manner of manufacture under section 18(1)(a) of the Patents

Act 1990. In construing the relevant provision, the Federal Court applied

the principle of updating construction which mandates interpreting

legislation to account for technological advances. Any contrary

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interpretation would be impractical and would fail to recognize the

efficiencies and changes of technology. It is true that the above decision

does not pertain to designs. Nevertheless, the analogy followed by the

Federal Court of Australia is squarely applicable when interpreting similar

legislation which accounts for technological advancement. From a

different perspective, why amend the Rules to include GUI registration if

the intent was not to permit GUI design registration in the first place? In

such cases, legislation must be interpreted to encourage invention,

innovation and technological advancement “where physical cogs, reels

and motions are replaced by complex software and hardware that

generate digital images.” (at para 134)

13. 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 displaying process involves

systematically manipulating electronic signals and precise rendering by

advanced hardware. Such activities exemplify the modern industrial

enterprise inherent in technology driven industries. Thus, there are strong

reasons to contend that the process of displaying a GUI fulfills the

definition of industrial process. In view of the above, the contention of the

Controller that the expression ‘industrial process’ is limited and restricted

is also rejected.

Permanence:

14. Section 2(d) nowhere refers to a design being permanently visible. There is

no statutory basis for the standard that the design element must be

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intrinsic or integral to an article to any particular degree. The law only

requires the features to be applied to an article. The term applied is

generic and broad. The legislative intent does not require that the design

features be “permanently applied” or “permanently affixed”. The concept of

permanence of the design is not to be found in section 2(d) of the Act and

this facet has been wrongly included in all the impugned orders.

Similarly, there is no requirement of touch under section 2(d) of the Act.

All that the statute requires and contemplates is an association between

the design and the article. The statutory intent is to prevent a design

being registered in the abstract without association to the article. In Re:

Hruby 373 F.2d 997, where the scope of an article of manufacture was

interpreted to include the ornamental display of a fountain, it has been

held that the “Permanence of the design is a function of the materials it

employs”. The Court further highlighted that many designs rely on

external conditions to manifest their full appearance, which does not

undermine their eligibility for protection. There are many designs which

depend upon an outside factor for the production of the appearance

which the beholder observes in the design. For example, a lampshade

may not be apparent unless the lamp is lighted. It was further held that

dependence of the existence of a design on something outside itself is not

a reason for holding it is not a design or an article of manufacture. In K.K.

Suwa Seikosha’s Design Application (1982) RPC 166, where a watch

display which became visible only when activated was held to be

registrable. It was held that even though the features of the design may

not be necessarily visible at the time of purchase, it becomes visible only

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when the article while used as it is intended to be used that is to say as

the display panel for electronic timepiece and when it is connected to the

circuitry, including the battery on the timepiece.

15. The impugned orders also ignore the test of noticeability which expressly

recognizes that internal features visible only during use may be registered

as designs. (See: Manual of Designs Practice and Procedure published by

the office of the Controller General of Patents, Designs and Trade Marks,

India.) The Manual also mentions the decision in Ferrero Cs.P.As

application (1978) RPC 473 in providing guidance on section 2(d) in

construing the expression ‘judged solely by the eye’ to explain design

features which are visible only during use may be the subject matter of

registration. All this has been disregarded in the impugned orders. 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. A

design which appears during normal operation of the article is

nonetheless applied to that article if it is reproducible and manmade. To

this extent, the objection of the Controller that GUI is only visible when

the device is turned ‘ON’ is inherently flawed, hyper-technical and

incorrect.

Judged solely by the eye :

16. An additional test to fulfil the criteria of being considered a design is

whether GUI as a finished article appeals to or can be judged solely by the

eye. The two limbs which require consideration are (a) What is the

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finished article and (b) Whether GUIs being functional are excluded from

protection. To this extent, all the impugned orders proceed on a

misconception of what constitutes a finished article. The term “finished

article” is not expressly defined in the Act. Moreover, the legislature has

deliberately distinguished “finished article” from “any article” which is

evident from the criteria in section 2(d) of the Act. The rationale behind

employing these different terms become evident upon a contextual

analysis of the definition. A specific shape, pattern, or ornamentation can

be applied to an article which also serves as a component to an end

product sold to consumers. For example, consider the front grill of a car:

the pattern is applied to the grill (an article) while the grill itself is

typically marketed as part of the overall vehicle (finished product).

Similarly, a particular pattern or configuration may be applied during an

intermediate stage of manufacturing, followed by additional processes to

arrive at the finished article, such as the design of a smartphone that

undergoes styling before it is ultimately assembled. These can vary from

case to case and are protectable based on eye appeal. In this context,

while a GUI may have functional elements there may also be design

features which involve aesthetic considerations which are not solely

dictated by function. To this extent, the respondent authorities have in

the impugned orders confused the functional aspect of the GUI i.e. how it

operates with its ornamental i.e. how it looks. A design is unregistrable

only if its appearance is solely dictated by function with no room for eye

appeal.

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Locarno Classification

17. It is argued that mere inclusion of GUI in the Locarno Classification as a

design does not automatically guarantee registration under the Act

although the Locarno Classification has been adopted and incorporated in

Rule 10(1) of the Design Rules 2003 which specifically mentions GUI as a

category for registration. India had accepted the Locarno Agreement

which subsequently resulted in amendments to the Designs Rules, 2008

in 2021. Significantly, Rule 10(1) was revised to stipulate to the adherence

to the “current edition” of the Locarno Convention which includes the

following classes:

14-04

SCREEN DISPLAYS AND ICONS

Note(s)

Including those for goods belonging to other classes.

104993 Graphic symbols for screen display.

102529 Graphical user interface [computer screen layout]

102530 Icons [for computers]

104994 Web banners

18. In this background, the Locarno Classification insofar as it includes GUIs

is suggestive or indicative and does not automatically guarantee

registration. The aim behind the Locarno classification was to establish

an international classification for industrial designs. The agreement itself

expressly stipulates that the same is solely of an administrative character.

The proviso to Rule 10(1) clearly states that registration is the subject to

the fulfillment of sections 2(a) read with section 2(d). Thus, the

acknowledgement of GUIs as a design in the Locarno Classification does

not imply automatic registrability unless the conditions in sections 2(a)

and 2(d) of the Act are satisfied. Article 2(1) of the Locarno Classification

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explicitly states that the “international classification shall be solely of an

administrative character”, and that “each country may attribute to it the

legal scope which it considers appropriate”. In conclusion, classification

guidance may assist in filing and search, but it cannot be used to create,

grant or exclude GUIs from design protection. Despite this, the legislative

intent in adopting the Locarno classification and being bound by it

evidence a clear legislative and administrative intent to recognize and

protect digital designs and GUIs provided they meet the requirement of

sections 2(a) and 2(d) of the Act. This is also in conformity with Article 25

of the TRIPS Agreement which emphasize the protection of independently

created industrial designs which are new and original.

No dual protection

19. It has been contended that GUIs should not be protected under the Act

since it can be protected as an artistic work under the Copyright Act,

1957 and dual protection is impermissible. The aspect of dual protection

needs to be judged from two different perspectives (i) Whether a GUI is a

computer program and therefore, can't be registered as a design? and (ii)

Whether a GUI is an artistic work and therefore cannot be registered as a

design? Both aspects bring about a common concern that dual protection

must not be granted to the same subject matter. In view of this policy,

section 2(d) itself excludes from design registration, any artistic work as

defined in section 2(c) of the Copyright Act, 1957. Similarly, section 15 of

the Copyright Act, 1957 states that copyright protection shall not subsist

for any design registered under the Act and copyright protection shall also

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cease as soon as any article to which the design has been applied has

been reproduced more than 50 times. To this extent, dual protection is

taken care in the statutory framework itself.

20. It is pertinent that while the impugned orders keep emphasizing that GUI

is a computer program, there is no exclusion for computer programs in

section 2(d) of the Act. Although a GUI is produced by a computer

program, a GUI is not itself a computer program in the sense of a literary

work under the Copyright Act. GUI is a visual configuration displayed on

an article. Though the process of displaying the GUI involves the

underlying computer programme, the visual effect displayed or produced

is not protected as a computer programme. To obviate such concerns, in

Hulm Entertainment Pvt. Ltd. v. Fantasy Sports Myfab11 Pvt. Ltd. 2023

SCC Online Del 6591 (where no copyright had been pleaded), it was held

as follows:

"17. As this matter also concerns the GUL, a little backdrop to this concept is also

imperative, GUI is a digital interface in which a user interacts with graphical

components such as icons, buttons and menus GUI is a visual component different

from the underlying codes i.e. source code and object code and is a feature in

various devices such as computers, smart phones etc. In other words, 'user

interface' refers to the underlying non-graphic code of a software programme, while

the term 'GUI or 'graphical user interface refers to the visual elements, le., the 'look'

of the program. Upon interacting with a GUI i.e. the graphics on the screen, the GUI

instantly communicates through the software's underlying code, which then

performs the desired function and from the time the user interacts and executes a

command to the moment the computer performs the function, there are multiple

layers of interactions taking place within the software."

21. Recently, in Cryogas Equipment (P) Ltd. (Supra), the Supreme Court had

held as follows:

63. The expression “artistic work” under Section 2(c) of the Copyright Act

has a very wide connotation and may also include abstract work(s)

comprising a few lines or curves arbitrarily drawn, which could be either

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two or three-dimensional. It may be clarified that such a work may or

may not have any visual appeal. Further, the holder of such an artistic

work is entitled to draw protection under Section 14(c) of the Copyright

Act, including the exclusive right to reproduce such work in any material

form. Such a reproduction may also involve depicting a three-dimension

work of a two-dimensional work or vice versa.

64. However, if such reproduction is done by employing an industrial

process, which may be manual, mechanical or chemical, and which

results in a finished article that may appeal to the eye, then “the features

of shape, configuration, pattern, ornament or composition of lines or

colours applied to the article by such an industrial process”, constitutes

“design” within the meaning of Section 2(d) of the Designs Act.

65. It thus seems that the intent of producing an original artistic work is

not determinative of its protection under the Copyright or Designs

Regime. Rather, the legislative intent is to harmonise the two statutes so

that while an “artistic work” qualifies for copyright protection, its

commercial or industrial application—i.e. the “design” derived from the

original work for industrial production—is subject to the limitations set

out in Section 15(2) of the Copyright Act. Such a design gets protected

only if it is registered under the Designs Act.

66. To further simplify, the original artistic work, which initially enjoys

copyright protection, does not lose the same merely because a “design”

derived from it has been industrially applied to create a product. While

the expression “artistic work” has a broad spectrum, “design” is

restricted to specific features such as shape, configuration, pattern,

ornamentation, or composition of lines or colours, applied to an article

through an industrial process, resulting in a finished product that

appeals to the eye. These visually appealing features, when applied

industrially, define a “design” under the Designs Act.

67. Our analysis further reveals that the inquiry cannot be concluded

merely by assuming that what does not qualify as an “artistic work”,

within the meaning of the Copyright Act, would automatically receive

protection under the Designs Act. While protection under the Designs Act

is not as enduring as that under the Copyright Act, it is not granted by

default and requires specific criteria to be met. In this regard, courts in

India and globally consistently apply the test of “functional utility” to

determine whether a work qualifies for protection under the Designs Act.

68. It would therefore be appropriate to espouse the approach already

undertaken by the courts in India, as it not only emulates the best

practices employed by US courts and the principles enshrined in

International Conventions, but it also gives due consideration to

contemporaneous laws and legislations. We have thus formulated a two-

pronged approach in order to crack open the conundrum caused by

Section 15(2) of the Copyright Act so as to ascertain whether a work is

qualified to be protected by the Designs Act. This test shall consider:

(i) whether the work in question is purely an “artistic work” entitled to

protection under the Copyright Act or whether it is a “design” derived

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from such original artistic work and subjected to an industrial process

based upon the language in Section 15(2) of the Copyright Act;

(ii) if such a work does not qualify for copyright protection, then the test

of “functional utility” will have to be applied so as to determine its

dominant purpose, and then ascertain whether it would qualify for

design protection under the Designs Act.

69. The courts, while applying this test, ought to undertake a case-

specific inquiry guided by statutory provisions, judicial precedents, and

comparative jurisprudence. It must be kept in mind that the overarching

objective is to ensure that rights granted under either regime serve their

intended purpose without unduly encroaching upon the domain of the

other. With this approach, we have attempted to clarify the treatment of

works at the intersection of “copyright” and “design” law(s), thereby

ensuring coherence and consistency in the application of IP rights in

India.

22. For the above reasons, once the specific features, that is shape,

configuration, pattern, ornamentation etc. are applied to an article and

meant for industrial purposes it becomes a design and is no longer an

artistic work. 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.

This would require examination on a case to case basis.

UST Global (Singapore) vs. Controller of Patents and Designs

23. The order dated 6 July 2023 passed by the Controller on which great

reliance was placed by the respondent authorities is also incorrect and

based on a misconstruction of the Act. The findings in this case are

largely in tune with what has been held in the impugned orders. In this

decision, the Controller held that a design must be "integral with the

article itself and this is not fulfilled in the case of a GUI since it is not

visible with the touchscreen per se, requiring integration/association with

an electronic device. It was also found that the article to which the design

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is applied becomes the "finished article" only after the application of the

design, and yet, the design in question (GUI) would not be available on the

finished article itself in the absence of integration/association with an

electronic device. It was also been held that the "industrial process under

the Act is limited only to manual/mechanical/chemical processes and

does not extend to any other type of processes. All these aspects have

been individually dealt with above and require no further consideration.

In such circumstances, the UST Global Singapore decision requires to be

read and interpreted in the light of the above findings.

Foreign decisions

24. The blind refusal to consider foreign authorities in all the impugned

orders by the Controller is also misplaced and based on an erroneous

appreciation of the law. This approach is contrary and in violation of the

well settled decisions of the Supreme Court that foreign decisions are of

highly persuasive value. [Forasol v. ONGC AIR 1984 SC 241 @ Para 1 (m)].

In fact, in the recent decision Cryogas Equipment (P) Ltd. vs. Inox India

Ltd. (Supra) where the overlap between the Copyright Act 1957 and the

Designs Act, 2000 was in issue, the Hon’ble Supreme Court has not only

exhaustively gone into the interpretation of “design” by the English Courts

and the US Courts but after going into a review of the authorities

acknowledged that the term design has been extensively interpreted by

English Courts, considering that the expression was pari materia with the

definition consecrated in the Indian context and are of highly persuasive

value. In this background, the outright rejection of foreign decisions in the

22

impugned orders as also in the UST Global decision is misconceived and

erroneous.

Conclusions

25. 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. These choices are aesthetic decisions that

produce a visual impression capable of being judged by the eye and

therefore meet the qualitative requirements for design protection. In

summary, there is no per se exclusion for GUIs under section 2(d) of the

Act. In view of the above, the contention of the Controller that there is no

explicit provision under the Act entailing protection of GUI within the

scope of section 2(a) and 2(d) of the Act is incorrect and legally untenable.

26. Nevertheless, there is undoubtedly a lack of clarity in the Designs Office

with regard to the registrability of GUIs. This would appear from the

different approaches adopted by the Designs Office. It is a matter of

record that GUIs have been granted registration in the following cases:

(a) No. 274917-Siemens; Class 14-02- Monitor with GUI,

(b) No. 2749178-Siemens: Class 14-02- Monitor with GUI,

(c) No. 274925-Simens, Class 14-02- Monitor with GUI,

(d) No. 284680-Kneevoice; Class- 14-04 Mobile (GUI Shown),

(e) No. 276736-LG: Class 14-04-Navigation Device for vehicle with

GUI.

The importance of registering GUIs is also significant from a business

perspective. GUIs are a critical asset in modern day technology, commerce

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and digital services. There would also be legal certainty more explicit

protection reduction in litigation and this approach would align India with

international practice. A recent survey conducted by would Intellectual

Property Organization (WIPO) has found that 92% of jurisdictions already

protect GUIs under designs laws. A similar study conducted by the

International Chamber of Commerce also reported that GUI protection is

granted in most jurisdictions. This is also based on an expansive

definition of ‘product’ and ‘designs’ in the European jurisdiction which

covers animation, movement, transition and intangible products.

Similarly, in the United Kingdom there have been clarifications which

cover GUIs in animation and transitions as products eligible for design

protection. Similar changes have been made both in Australia, Hong-Kong

and United States of America. To this extent, the definitions of design,

article, industrial process require clarification and elaboration so that

GUIs are recognized as products of industrial design activity. This would

also ensure technological neutrality and lead to global integration which

is necessary for conformity in terms of the Hague Agreement and The

Riyadh Design Law Treaty both of which recognize virtual designs. This

would also help Indian designers knowing that they have enforceable legal

rights. The existing practice in the Manual published by the Controller

contemplates the possibility of using dotted lines dashed lines to

differentiate between protectable design elements from portions which are

disclaimed. In this background, it is necessary for clarificatory guidance

either by Legislature or by the Controller issuing appropriate directions

expanding the scope of protectable designs. During the interregnum,

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there is nothing which prevents GUIs being registrable on a case to case

basis after satisfying the requirements under sections 2(a) and 2(d) of the

Act when properly identified with an article and keeping in mind that the

design elements are not purely function driven.

27. For the above reasons, all these appeals succeed. The respondent

authorities have failed to apply the correct legal tests in determining

design registration in cases concerning GUIs. The orders dated 1

October,

2019 in IPDAID 21 of 2024, 21 January, 2024 in IPDAID 22 of 2024, 17

February, 2025 in IPDAID 1 of 2025 and IPDAID 2 of 2025 respectively

and 31 May, 2024 in IPDAID 3 of 2025 are set aside. All these matters are

remanded to the Controller for hearing afresh and after giving an

opportunity of hearing to each of the appellants. With the above

directions, IPDAID/21/2024, IPDAID/22/2024, IPDAID/1/2025,

IPDAID/2/2025, IPDAID/3/2025 and all connected applications stand

disposed of.

(Ravi Krishan Kapur, J.)