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Mahima Sharma, an intern at Khurana & Khurana looks into the intricacies involved in the process of protection of Graphical User Interface in India which seems to be in the limelight wherein there exists some uncertainty over the same.
GUI Protection under Designs Act, 2000:
In India, a Design registration can be obtained for new or original features of shape, configuration pattern, ornamentation, or composition of lines or colors as applied to an article, whether in 2 or 3 dimensions or both.
India enacted the New Design Act, 2000 to protect the rights and designs of creators and innovators in compliance with TRIPS. The new Design Act which replaced the preceding Design Act, 1911 has widened the scope of the classification system as an earlier act was based on the material categorization of the article whereas the new act provided an elaborate classification adopted in 2008 based on the Locarno Classification System which deals with the subject matter for a particular design to be registered according to the respective classes, for instance: Class 2 deals with the article of Clothing, Class 14 deals with Recording, Communication or Information Retrieval Equipments. While India not being a signatory to Locarno Agreement, its new design classification system is a prototype of the Locarno classification system includes Class 14-04 titled “Screen Displays and Icons”. This new classification acknowledges visual images, graphical user interfaces or Icons shown on an image display of a portable electronic device which includes tablet computers and Smartphone and all other electronic gadgets which have an image display to be registrable under Design Law. Through the records as maintained and reflected on the IPO website for Design Registration, it has been observed that icons as such have usually been registered under Class 14-99, titled “Miscellaneous” and not in class 14-04 while none of GUI is registered under class 14-04.
A Questionnaire dealing with the Design Registration in India titled “SPECIAL TOPICS for Design Committee of APAA 2013” deals with certain aspects related to GUI Protection in India under the Designs Act, 2000. In the same article it was explicitly mentioned in Question 3-2:
“What matters should an applicant/attorney be aware of when preparing or drafting an application request and drawings of a design for a visual image, graphical user interface (GUI) or icon shown on an image display of a tablet computer and a smartphone to be submitted at your national Office under your Design Law?
“Under Section 6 of the Act, a design may be registered in respect of any or all the articles comprised in a prescribed class of article. Under Section 2(a) “article” means any article of manufacture or any substance, artificial, or partly artificial and partly natural; and includes any part of an article capable of being made and sold separately.
In the circumstances, the Applicant/Attorney must ascertain that the visual image, GUI, or icon is shown on an image display of a tablet computer or smartphone must be an article capable of being made and sold separately. Alternatively, an application for registration of a design can be made in respect of a tablet computer or a smartphone bearing the visual image GUI or Icon shown on an image display thereof. In such a case the application and each of the representations should be endorsed with a brief statement that novelty resides in the visual image, GUI or icon is shown on an image display of a tablet computer or a smartphone as the case may be (Rule 12).”
Instances of Attempt to protect GUI under the Designs Act, 2000:
There are certain incidents where certain designs and icons have been registered under the Design Act, 2000 vide application no. 205350 under class 14-99. However, regarding GUI there was one incident known from the past wherein Amazon filed for Design Registration for GUI in India, but the same was refused by the Patent Office on the ground that impugned design does not fall within the purview of definition as provided under section 2(a) and 2(d) of the Design Act, 2000. After the verdict of Amazon’s case, the Patent Office has started considering the stringent interpretation of the definition of the word “article‟ in the Act and it can be concluded that no screen display could be registered.
GUI as a subject matter under the Copyright Act, 1957..?
Artistic work, literary, dramatic, musical, or sound recording, source code for software among others are the subject matter of Copyright. GUI as a subject matter also seems to be governed and protected under the Indian Copyright Act, 1957 to some extent. As such there are no specific guidelines as to armor GUI in India. This led to an anomalous situation particularly in view of section 15 of the Copyright Act which specifically states that “Copyright in any design, which is capable of being registered under the Designs Act, 2000, but which has not been so registered, shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright, or, with his license, by any other person.” So if at all GUI is a subject matter under Designs Act as prima facie it seems from the newly adopted classification based on Locarno Classification, the Copyright in the same will cease immediately after application of the same more than 50 times to any article.
It is clear from above that there are a few occurrences, where certain icons have been registered under the Design Act, 2000 underclass 14-99 while GUI is considered as a subject matter under Copyright. Thus fundamentally, there is an earnest call to amend our current Design law to an extent which shall make GUI as a subject matter of Designs Act, 2000, also to bring uniformity in the protection of Intellectual Property at International level. It is pertinent to note that Design Act, 2000 provides for any applicant, who has applied for protection of the design in convention countries or countries which are members of inter-governmental organizations, can claim registration of the design citing a priority date in India. This is the date of filing of the application in any of such countries provided the application is made in India within six months. Thus accordingly the fate of any application from Convention country filed in India for GUI protection is at stake which is not desirable particularly in the era of commercialization and globalization and ‘Makes in India’ regime. This, in fact, may discourage the growth of the software/GUI domain in India which is not desirable.
To cut a long story short, it is high time that legislature step in and revise the definitions of article and design in the Act to make way for the new age communication devices and their embedded applications-design eligible, the status of protection of GUI under Designs Act seems ambiguous. It is indeed needed of the hour that our laws need to be timely updated and such amendments shall also be in total consonance with the complete law in that regard, especially law related to Intellectual Property Rights.
About the Author: Mahima Sharma, Intern, Khurana & Khurana, Advocates, and IP Attorneys and Abhijeet Deshmukh, Trade Mark Attorney, Khurana & Khurana, Advocates and IP Attorneys who can be reached at [email protected].