Calcutta High Court Appoints Amicus Curiae to Resolve GUI Registrability Under Designs Act

 

Summary

The Calcutta High Court has appointed Adv. Adarsh Ramanujan as amicus curiae to comprehensively address the registrability of Graphical User Interfaces (GUIs) under the Designs Act, 1970, following repeated rejections by the Indian Patent Office despite previous judicial guidance favoring GUI design protection.

Background

The Calcutta High Court appears determined to definitively resolve the contentious issue of GUI registrability under the Designs Act, 1970. In Erbe Elektromedizin GmbH v. The Controller of Patents (IPDAID/22/2024), the Court appointed Adv. Adarsh Ramanujan as amicus curiae to assist in determining questions concerning GUI design registration. This development follows the Court's earlier ruling in Ust Global (Singapore) Pte Ltd v. The Controller of Patents and Designs, where it indicated that GUIs are registrable as designs and remanded the matter to the Indian Patent Office (IPO) for reconsideration. However, upon re-examination, the Controller again denied registration, prompting this fresh judicial intervention to resolve the persistent impasse.

IPO's Grounds for Rejection

The Patent Office has consistently relied on four primary grounds to refuse GUI design registration. First, GUIs are ephemeral in nature and fail to provide consistent eye appeal. Second, GUIs are inherently functional rather than ornamental, rendering them ineligible for design protection. Third, GUIs have not been applied through an "industrial process" to devices, a mandatory requirement under Section 2(d) of the Designs Act. Fourth, the mere existence of a class for GUIs in the classification system does not automatically confer registrability unless the application satisfies the threshold scrutiny under Section 2 of the Act.

The Ust Global Precedent

In 2023, the Calcutta High Court in Ust Global (Singapore) Pte Ltd v. The Controller of Patents and Designs set aside the Controller's refusal to register a GUI design and remanded the application for fresh determination. The Court observed that the Controller failed to consider the 2021 Design Amendment and the 2008 amendment adopting the Locarno classification system. Importantly, the Court held that the ephemeral nature of GUIs does not justify rejection, and that GUIs are applied through industrial processes, thereby satisfying Section 2(d)'s threshold requirements. Despite this judicial guidance, the Controller again rejected the application post-remand, highlighting the continuing discord between judicial interpretation and administrative practice.

Locarno Classification Framework

The Locarno Agreement, to which India is a signatory, harmonizes classification of articles among member countries through a uniform scheme. Since the Designs (Amendment) Rules, 2008, India has recognized "Screen display and icons" as a separate subclass, updated in 2021 to include "Graphical User Interfaces and Icons," tracking amendments to the international Locarno classification. The explicit inclusion of GUI-specific classes in India's design classification framework strengthens arguments for their registrability under the Designs Act.

Significance

The appointment of an amicus curiae in Erbe signals the High Court's serious intent to conclusively determine GUI registrability under Indian law. This case presents an opportunity to reconcile judicial pronouncements with Patent Office practice, provide clarity on the interpretation of Section 2(d), address the functionality versus ornamentation debate, and establish definitive standards for GUI design protection in India. The outcome will significantly impact technology companies, software developers, and the broader IP ecosystem by clarifying whether GUIs constitute protectable industrial designs under Indian law.