Case Name – Ust Global (Singapore) Pte Ltd vs The Controller Of Patents And Designs
Citation – AID NO. 2 OF 2019
Court – Calcutta High Court
Corum/Judges – The Hon’ble Justice Ravi Krishan Kapur
ABSTRACT
Whether a graphical interface, a virtual object which is also a product of code, and therefore invisible when a device is switched off, can be considered to be an ‘article’ for the purposes of Section 2(a) of the Designs Act, 2000? The deceptively simple question that forms the crux of UST Global (Singapore) Pte Ltd v. The Controller of Patents and Designs and Anr. Courts across India have repeatedly found in favour of the digital design economy, and this ruling by the Calcutta High Court in March 2023 is a very significant – though partial – triumph. This comment challenges the ratio of the judgement and its connection with the intent of the legislature, the possible latent channelling effect of Section 15(2) of the Copyright Act, 1957, and lastly how the DPIIT’s Concept Note for January, 2026, along with India’s acceptance of the Riyadh Design Law Treaty, could potentially either reinforce or outright replace the judgement.
Factual Matrix
UST Global (Singapore) Pte Ltd, which is a multinational end-to-end IT services provider, had applied for the registration of a design on 30 October 2017 with the Indian Patent and Design Office (IPDO) for a “Touch Screen” design, which is a surface ornamentation that represents a Graphical User Interface (GUI). A GUI is in essence the visual interface by which a user interacts with a digital device: a collection of icons, menus, colour palettes and navigational elements managed for both beauty and efficiency.
The Assistant Controller of Patents and Designs rejected the application on three distinct grounds: first, that GUI is constitutionally incapable of being registered as a design; second, GUI is not perceptible in the ‘OFF’ or ‘not operating’ mode of the device, and so does not satisfy the requirement of ‘consistent eye appeal’ there is no design when the device is turned off; and third, the creation of the GUI is a software development process, which is entirely outside the concept of an ‘industrial process’ as envisioned under the Act, Section 2(d).
However, UST Global brought this order before the Calcutta High Court, which is empowered under the Designs Act. The Hon’ble Justice Ravi Krishan Kapur on 19 December 2022 set aside the Controller’s order and remanded the application for fresh consideration within three months on 20 March 2023.
The Legal Knot: Issues Framed
- Whether a Graphical User Interface (a non-tangible, computer-generated visual object that can only be seen when the device is being used) is an ‘article’, within the meaning of Section 2(a) of the Designs Act, 2000, or whether its creation and use is an ‘industrial process’, as envisaged in Section 2(d)?
- Whether the functional-aesthetic nexus of a GUI one that both has functional significance and is aesthetically pleasing forecloses its registration as a ‘functional’ design as opposed to a ‘purely aesthetic’ design, and what relationship this relationship bears to the ‘functional’ design standard of design infringement litigation?
- Whether, without any sui generis rights under Designs Act, a GUI can find refuge under the Copyright Act, 1957 and, if it can, what is the exact operation of the channelling effect under Section 15(2) of the Copyright Act, which provides that copyright in design cannot subsist if it is used in the practice or sale of any trade or business more than fifty times?
Ratio Decidendi
Justice Kapur’s reasoning is multi-layered. The court, in its discussion of what is an ‘article,’ relied on an English case, Gramophone Company Ltd. v. Magazine Holder Company[2] in which it was held that designs registered under the Act can be applied to “any external or internal feature” of an article, and can be registered provided they are “appealing to the eye and contribute to the improvement of the aesthetic qualities” of the article. The in-built Ness of the GUI, which appeared in the shops and advertisements, embedded in the commercial identity of the final product, was not considered to be an obstacle to registration.
The court took a pragmatic and purposive approach to the ‘ON mode’ controversy. The novelty of GUI is, by its nature, two dimensional, having length and width. The eye-appeal, as it is called, and which is the most important statutory criterion is already evident when the device is turned on; no interaction with the screen is necessary in order to notice the design. The court suggested, and as it has been noted, it would be an overreach of the language of the statute into the realm of technology not foreseen by the legislature to be met by the design to be registered.
“The pertinent feature of visual appeal may, in the case of certain articles, be considered as features of a registrable design — designs registered may be applied to any external or internal feature and are capable of registration if they appeal to the eye.”
— Kapur J., citing Gramophone Company Ltd. v. Magazine Holder Company (1910) 27 R.P.C. 152
Perhaps most importantly, on the issue of the industrial process question, the court found that the process a software developer engages in when writing source code and incorporating it into micro controllers and microprocessors and causing the GUI to appear on the screen by electrically illuminating pixels was a mechanical and manual process, properly encompassed within the definition of ‘industrial process’ under Section 2(d). The court also relied on the recognition of ‘Screen Displays and Icons’ under Classes 14.02 and 14.04 of the Locarno Classification which are incorporated into the Indian Design Rules (Amendment) 2019, as well as introduction of Class 32 (graphic symbols, logos and surface patterns) of the Design Rules, 2008 (amended in 2021). Most importantly, the court pointed out that the very same design had already been registered in the United States and in the European Union — something the Controller’s order had not even mentioned.
Critical Analysis
The Intent of the Legislature: A Statute Frozen in Industrial Time
The Designs Act, 2000 was enacted in the era of pre-digital manufacturing economy in India. The legal term ‘article of manufacture’ that underlies its concept of design is one that resonates with a legislative imagination that has been rooted in the real, the factory floor. A spinning top, a teapot, a gear casing: these are the subjects the legislature envisioned. The GUI: a category-breaking interloper — it is fungible, scalable to millions of instances by a single deployment, and physically inseparable from the device it inhabits.
The court’s creative interpretation of the term ‘industrial process’ to mean “software embedding” is not just creative, it is also constitutionally required in order to allow the statute to remain relevant. However, it is important to recognize its susceptibility. The court does not say that a GUI is an ‘article’ and therefore does not modify Section 2(a). It simply states that the decision of the Controller was wrong. The definitional chasm—where the statute nowhere suggests a virtual product is an article that can be registered—has proven to be tough to crack. The judgment is actually a patch, not a repair, in this sense.
4.2 The ‘Functional vs Aesthetic’.
The functional / aesthetic dichotomy has always been a challenge for design law. By design, a GUI must be functional (navigable) and at the same time be beautiful and distinctive. By excluding ‘mere mechanical devices’ from design protection, Parliament was looking to avoid design law granting protection to a functional innovation, a subject of patent law. The color scheme, icon layout, boldness of the lettering in a GUI is quite aesthetic; the logic of navigation is not. Deceptive similarity, a test for infringement of a design, can be a tricky one in the case of GUIs, where it is a challenge to distinguish copying an aesthetic from copying a user experience. But the court doesn’t deal with this fault line with the depth this fault requires, leaving it as a live vulnerability in future litigation.
4.3 The Channelling Effect of Section 15(2):
The Copyright Trap The Copyright Act, 1957, Section 15(2) is an ad hoc policy provision that shall place industrially reproduced items that are design eligible into design registration regime once they have been reproduced over fifty times. The drive behind the provision is valid – it is not intended to protect what is essentially an Industrial Design, and is subject to a maximum of 25 years under the Designs Act, but rather the ‘rights-holder’ should be prevented from using the Copyright system in order to obtain a 60-year exclusive right. For those who design GUI, however, Section 15(2) presents a uniquely evil situation. The Controller consistently refuses to grant design registration, and the GUI owner finds himself in a legal limbo: his GUI is protected by copyright, but once it is industrialised (after 50 units), it falls out of copyright protection. This ends up in the form of overall unprotectability, which isn’t what any of the statues mean on their own, but what they create together. This conundrum is half solved by UST Global. Even when a GUI applicant has considered the same issue again in the future, a change of views by a future Controller could still cause the design to be refused registration, and leave the design completely unprotected. This channelling effect thus turns into a trapdoor instead of a corridor.
Conclusion
We have come to the end of our journey. We have reached the end of our path.
UST Global is most commonly thought of not as a definitive end, but as a judicial distress signal (a judge trying to stretch the meaning of statute to make a commercially viable result in the absence of sufficient legislative support). The judgment of Justice Kapur is courageous and right in its conclusions, but uses borrowed statutory language. It was always subject to legislative action for its durability.
That action looks like it’s coming true now. The statistics show that India jumped from 11th rank in 2019 to 7th rank in 2024 in the WIPO design ranking table, reflecting the need and significance of the reform program. India’s accession to the Riyadh Design Law Treaty (DLT) in 2024 and the Concept Note’s inclusion of India’s accession to the Hague Agreement indicate that India is making a conscious decision to join the global design architecture, where GUI protection is not a jurisprudential oddity but, rather, a baseline expectation. This course should be a thing of the past: The period when a pixel has to pose as a product to gain legal protection. The issue, really, is whether Parliament will show the same sense of urgency as the digital economy requires, or whether practitioners will continue to deal with the reality of the world and the statute as it is case order by case order.
References
UST Global (Singapore) Pte Ltd v. The Controller of Patents and Designs and Anr., AID No. 2 of 2019, High Court at Calcutta (Special Jurisdiction), judgment dated 20 March 2023, Kapur J.
Gramophone Company Ltd. v. Magazine Holder Company (1910) 27 R.P.C. 152.
K.K. Suwa Seikosha’s Design Application [1982] R.P.R. 166.
Re: Apple Computer Inc.’s Design Applications [2002] F.S.R. 38.
P. Ferrero and CSPA’s Application (1978) R.P.C. 473.
See Amazon Technologies Inc., Application No. 240305, Order of the Assistant Controller of Patents & Designs (2014) (refusing GUI registration on grounds of non-qualifying as ‘article of manufacture’).
Department for Promotion of Industry and Internal Trade (DPIIT), Concept Note: Proposed Amendments to the Designs Act, 2000 (23 January 2026).
NEC Corporation v. The Controller of Patents and Designs & Anr., IPDAID/22/2024, High Court at Calcutta, decided 9 March 2026 (consolidating five GUI design appeals).
Designs Act 2000, ss 2(a), 2(d), 15, 21; Copyright Act 1957, s 15(2).
WIPO, World Intellectual Property Indicators Report 2025 (Geneva: WIPO, 2025).
Ust Global (Singapore) Pte Ltd vs The Controller Of Patents And Designs
Prabhakar Roy
Chanakya National Law University
Case Name – Ust Global (Singapore) Pte Ltd vs The Controller Of Patents And Designs
Citation – AID NO. 2 OF 2019
Court – Calcutta High Court
Corum/Judges – The Hon’ble Justice Ravi Krishan Kapur
ABSTRACT
Whether a graphical interface, a virtual object which is also a product of code, and therefore invisible when a device is switched off, can be considered to be an ‘article’ for the purposes of Section 2(a) of the Designs Act, 2000? The deceptively simple question that forms the crux of UST Global (Singapore) Pte Ltd v. The Controller of Patents and Designs and Anr. Courts across India have repeatedly found in favour of the digital design economy, and this ruling by the Calcutta High Court in March 2023 is a very significant – though partial – triumph. This comment challenges the ratio of the judgement and its connection with the intent of the legislature, the possible latent channelling effect of Section 15(2) of the Copyright Act, 1957, and lastly how the DPIIT’s Concept Note for January, 2026, along with India’s acceptance of the Riyadh Design Law Treaty, could potentially either reinforce or outright replace the judgement.
Factual Matrix
UST Global (Singapore) Pte Ltd, which is a multinational end-to-end IT services provider, had applied for the registration of a design on 30 October 2017 with the Indian Patent and Design Office (IPDO) for a “Touch Screen” design, which is a surface ornamentation that represents a Graphical User Interface (GUI). A GUI is in essence the visual interface by which a user interacts with a digital device: a collection of icons, menus, colour palettes and navigational elements managed for both beauty and efficiency.
The Assistant Controller of Patents and Designs rejected the application on three distinct grounds: first, that GUI is constitutionally incapable of being registered as a design; second, GUI is not perceptible in the ‘OFF’ or ‘not operating’ mode of the device, and so does not satisfy the requirement of ‘consistent eye appeal’ there is no design when the device is turned off; and third, the creation of the GUI is a software development process, which is entirely outside the concept of an ‘industrial process’ as envisioned under the Act, Section 2(d).
However, UST Global brought this order before the Calcutta High Court, which is empowered under the Designs Act. The Hon’ble Justice Ravi Krishan Kapur on 19 December 2022 set aside the Controller’s order and remanded the application for fresh consideration within three months on 20 March 2023.
The Legal Knot: Issues Framed
Ratio Decidendi
Justice Kapur’s reasoning is multi-layered. The court, in its discussion of what is an ‘article,’ relied on an English case, Gramophone Company Ltd. v. Magazine Holder Company[2] in which it was held that designs registered under the Act can be applied to “any external or internal feature” of an article, and can be registered provided they are “appealing to the eye and contribute to the improvement of the aesthetic qualities” of the article. The in-built Ness of the GUI, which appeared in the shops and advertisements, embedded in the commercial identity of the final product, was not considered to be an obstacle to registration.
The court took a pragmatic and purposive approach to the ‘ON mode’ controversy. The novelty of GUI is, by its nature, two dimensional, having length and width. The eye-appeal, as it is called, and which is the most important statutory criterion is already evident when the device is turned on; no interaction with the screen is necessary in order to notice the design. The court suggested, and as it has been noted, it would be an overreach of the language of the statute into the realm of technology not foreseen by the legislature to be met by the design to be registered.
“The pertinent feature of visual appeal may, in the case of certain articles, be considered as features of a registrable design — designs registered may be applied to any external or internal feature and are capable of registration if they appeal to the eye.”
— Kapur J., citing Gramophone Company Ltd. v. Magazine Holder Company (1910) 27 R.P.C. 152
Perhaps most importantly, on the issue of the industrial process question, the court found that the process a software developer engages in when writing source code and incorporating it into micro controllers and microprocessors and causing the GUI to appear on the screen by electrically illuminating pixels was a mechanical and manual process, properly encompassed within the definition of ‘industrial process’ under Section 2(d). The court also relied on the recognition of ‘Screen Displays and Icons’ under Classes 14.02 and 14.04 of the Locarno Classification which are incorporated into the Indian Design Rules (Amendment) 2019, as well as introduction of Class 32 (graphic symbols, logos and surface patterns) of the Design Rules, 2008 (amended in 2021). Most importantly, the court pointed out that the very same design had already been registered in the United States and in the European Union — something the Controller’s order had not even mentioned.
Critical Analysis
The Intent of the Legislature: A Statute Frozen in Industrial Time
The Designs Act, 2000 was enacted in the era of pre-digital manufacturing economy in India. The legal term ‘article of manufacture’ that underlies its concept of design is one that resonates with a legislative imagination that has been rooted in the real, the factory floor. A spinning top, a teapot, a gear casing: these are the subjects the legislature envisioned. The GUI: a category-breaking interloper — it is fungible, scalable to millions of instances by a single deployment, and physically inseparable from the device it inhabits.
The court’s creative interpretation of the term ‘industrial process’ to mean “software embedding” is not just creative, it is also constitutionally required in order to allow the statute to remain relevant. However, it is important to recognize its susceptibility. The court does not say that a GUI is an ‘article’ and therefore does not modify Section 2(a). It simply states that the decision of the Controller was wrong. The definitional chasm—where the statute nowhere suggests a virtual product is an article that can be registered—has proven to be tough to crack. The judgment is actually a patch, not a repair, in this sense.
4.2 The ‘Functional vs Aesthetic’.
The functional / aesthetic dichotomy has always been a challenge for design law. By design, a GUI must be functional (navigable) and at the same time be beautiful and distinctive. By excluding ‘mere mechanical devices’ from design protection, Parliament was looking to avoid design law granting protection to a functional innovation, a subject of patent law. The color scheme, icon layout, boldness of the lettering in a GUI is quite aesthetic; the logic of navigation is not. Deceptive similarity, a test for infringement of a design, can be a tricky one in the case of GUIs, where it is a challenge to distinguish copying an aesthetic from copying a user experience. But the court doesn’t deal with this fault line with the depth this fault requires, leaving it as a live vulnerability in future litigation.
4.3 The Channelling Effect of Section 15(2):
The Copyright Trap The Copyright Act, 1957, Section 15(2) is an ad hoc policy provision that shall place industrially reproduced items that are design eligible into design registration regime once they have been reproduced over fifty times. The drive behind the provision is valid – it is not intended to protect what is essentially an Industrial Design, and is subject to a maximum of 25 years under the Designs Act, but rather the ‘rights-holder’ should be prevented from using the Copyright system in order to obtain a 60-year exclusive right. For those who design GUI, however, Section 15(2) presents a uniquely evil situation. The Controller consistently refuses to grant design registration, and the GUI owner finds himself in a legal limbo: his GUI is protected by copyright, but once it is industrialised (after 50 units), it falls out of copyright protection. This ends up in the form of overall unprotectability, which isn’t what any of the statues mean on their own, but what they create together. This conundrum is half solved by UST Global. Even when a GUI applicant has considered the same issue again in the future, a change of views by a future Controller could still cause the design to be refused registration, and leave the design completely unprotected. This channelling effect thus turns into a trapdoor instead of a corridor.
Conclusion
We have come to the end of our journey. We have reached the end of our path.
UST Global is most commonly thought of not as a definitive end, but as a judicial distress signal (a judge trying to stretch the meaning of statute to make a commercially viable result in the absence of sufficient legislative support). The judgment of Justice Kapur is courageous and right in its conclusions, but uses borrowed statutory language. It was always subject to legislative action for its durability.
That action looks like it’s coming true now. The statistics show that India jumped from 11th rank in 2019 to 7th rank in 2024 in the WIPO design ranking table, reflecting the need and significance of the reform program. India’s accession to the Riyadh Design Law Treaty (DLT) in 2024 and the Concept Note’s inclusion of India’s accession to the Hague Agreement indicate that India is making a conscious decision to join the global design architecture, where GUI protection is not a jurisprudential oddity but, rather, a baseline expectation. This course should be a thing of the past: The period when a pixel has to pose as a product to gain legal protection. The issue, really, is whether Parliament will show the same sense of urgency as the digital economy requires, or whether practitioners will continue to deal with the reality of the world and the statute as it is case order by case order.
References
UST Global (Singapore) Pte Ltd v. The Controller of Patents and Designs and Anr., AID No. 2 of 2019, High Court at Calcutta (Special Jurisdiction), judgment dated 20 March 2023, Kapur J.
Gramophone Company Ltd. v. Magazine Holder Company (1910) 27 R.P.C. 152.
K.K. Suwa Seikosha’s Design Application [1982] R.P.R. 166.
Re: Apple Computer Inc.’s Design Applications [2002] F.S.R. 38.
P. Ferrero and CSPA’s Application (1978) R.P.C. 473.
See Amazon Technologies Inc., Application No. 240305, Order of the Assistant Controller of Patents & Designs (2014) (refusing GUI registration on grounds of non-qualifying as ‘article of manufacture’).
Department for Promotion of Industry and Internal Trade (DPIIT), Concept Note: Proposed Amendments to the Designs Act, 2000 (23 January 2026).
NEC Corporation v. The Controller of Patents and Designs & Anr., IPDAID/22/2024, High Court at Calcutta, decided 9 March 2026 (consolidating five GUI design appeals).
Designs Act 2000, ss 2(a), 2(d), 15, 21; Copyright Act 1957, s 15(2).
WIPO, World Intellectual Property Indicators Report 2025 (Geneva: WIPO, 2025).
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