JUDGMENT :

Ravi Krishan Kapur, J.

1. The appellant assails an order dated 4 September 2019 passed by the Assistant Controller of Patents of Designs under the Designs Act 2000 refusing an application being Application no.298921 filed on October 30, 2017 for registration of a design titled “Touch Screen” for a novel surface ornamentation which is a Graphical User Interface (GUI).

2. Briefly, the appellant is a global leading provider of end-to-end IT services and solutions for different companies. The appellant offers services in areas like Advanced Analytics, Data Engineering Services, Data Strategy Consulting, Industry Point Solutions, Data Management Cyber Security, Infrastructure etc.

3. It is contended that the claimed design is a novel surface ornamentation displayed on a touch screen. The concept of GUI contemplates visual representation of configuration of icons and several elements on a touch screen. GUI is also used as a powerful differentiation of products and user experience with the ultimate aim of influencing customer decision when buying such products.

4. By the impugned order, the application for registration has been rejected on the ground that a GUI is incapable of design registration. It has also been held that since the GUI is only visible when it is in ‘ON’ mode or operating mode there can be no design when the product is on ‘OFF’ mode. Hence, GUI cannot be treated as a design of any article. It has also been found that the ICON/GUI does not follow the process of industrial manufacturing but is mainly created by software development processing.

5. On behalf of the appellant it is contended that the impugned order is erroneous and is liable to be set aside. It is alleged that GUI is a software, an intellectual property, an article of value and hence capable of registration. Moreover, the subject design is original and has never been in the public domain. A well implemented GUI can positively influence customers in buying such products.

6. Section 2(a) and 2(d) of the Designs Act, 2000 provides as follows :

(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 (43 of 1958) or property mark as defined in section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957 (14 of 1957).

7. The amendments caused to The Design Rules 2001 provide for classification of designs and articles. The 2008 amendment provides for an elaborate classification of goods and articles on which designs can be applied and registered. In fact, Class 14.02 and 14.04 of the Locarno Classification specifies articles belonging to “Screen Displays and Icons” which has also been recognised in the Design Rules (Amendment) 2019. Additionally, the amendments made in 2021 to the Design Rules, 2008 introduced a new class 32 containing graphic symbols, graphic designs, logos, ornamentation and surface patterns. In view of the aforesaid, the finding that GUI/ ICON is incapable of registration is incorrect and ignores the aforesaid amendments.

8. Similarly, the finding that the GUI is visible only in ON mode or operating mode and hence not capable of registration is erroneous. The GUI in the present case is in-built. In-built ICON