In UST Global (Singapore) Pte Ltd v The Controller of Patents and Designs and Anr, the Kolkata High Court set aside the order passed by the Assistant Controller of Patents and Designs (Controller). The Court held that the Controller’s refusal to grant design protection for UST Global (Singapore) Pte Ltd. (UST) GUI design of “Touch Screen”, a new surface ornamentation, was unsustainable. The Court ordered the Controller to consider the matter afresh and provide an opportunity to UST for a hearing.

On September 4, 2019, the Controller rejected the design registration for UST’s ‘touch screen’ GUI, stating that a GUI is only visible when the device is activated, and thus cannot be considered a design for an article. The Controller had also noted that GUIs are primarily created through software development, not industrial manufacturing processes.

Challenging the Controller’s order, UST appealed before the High Court on December 6, 2019, arguing that this order is erroneous as GUI is a software, an intellectual property, and an article of value, and hence capable of registration. Further, UST added that the design is original and has never been in the public domain. UST also added that GUI is a 2D design that is visible as soon as the display is turned on, without the need to touch the device vis-à-vis the design. Additionally, UST stated that a well-implemented GUI can positively influence customers in buying such products.

The Court agreed to the observations submitted by UST and further added that the process of application of the subject design i.e., GUI on the finished article is a mechanical and manual process that falls within the definition of “industrial process”. In support of this, the Court held that a software developer creates a source code for a GUI, which is embedded in micro-controllers and micro-processors and is displayed on the screen by electronically illuminating pixels. Therefore, the design is applied to the article by an industrial process and means. The Court considered the following judgments while dealing with the appeal:

• Gramophone Company Ltd. v Magazine Holder Company (1910) 27 R.P.C. 152;
• P. Ferrero and CSPA’s Application (1978) RPC 473;
• Re: Apple Computer Inc.’s Design Applications [2002] F.S.R. 38; and,
• K.K. Suwa Seikosha’s Design Application [1982] R.P.R. 166.

The Court passed the order on March 20, 2023, and directed the Controller to reconsider the matter afresh within three months from the order and provide an opportunity for UST to be heard.

This first-of-its-kind order deals with the design registration of GUIs in India. Orders like these give the confidence to file design registrations for GUIs in India.