Prior publication of a design in print media or electronic media constitutes grounds for cancellation of the design under Section 21(1) of the Designs Act, 2000.

( 1 ) RESPONDENT No. 1, Bata India Limited (hereinafter referred to as "bata") is manufacturer of various rubber slippers commoniy known as Hawai. The petitioner, Khadim Shoe Pvt. Ltd. (hereinafter referred to as "khadim") is also a manufacturer of similar product and sales it in the market with the brand name "vibrato".

( 2 ) BATA got a particular design of rubber slippers registered on 10th september, 1998 being the design No. 177386. Before the said design was registered Bata made a wide publicity in print media as well as in electronic media under the banner Hawai Revolution.

( 3 ) KHADIM applied for cancellation of the said design on the ground that the said design was published prior to the date of registration and hence such registration was liable for cancellation.

( 4 ) PRIOR to initiation of the said cancellation proceeding before this court, on 9th April, 1999 Bata filed a suit for infringement of their registered design as against the Khadim before this Court being Civil Suit No. 1888 of 1999. Bata obtained an interim order restraining Khadim from infringing three registered designs which include design No. 177386 dated December 10, 1998. The said civil suit is still pending before this Court and awaiting its disposal.

( 5 ) ALTHOUGH several points were taken in the petition Mr. Goutam chakraborty, learned senior Counsel appearing in support of the application prayed for cancellation of the design only on the ground of prior publication.

( 6 ) IN support of the contention of prior publication two items were relied upon, one is an advertisement in Business Telegraph published on august 12, 1998 wherein a picture of several slippers with the heading "hawai revolution" was published. The said picture includes the subject item.

( 7 ) MR. Chakraborty in support of his contention also relied on compact Disc (CD) containing the advertisement published by Bata on various dates in television. He relied on a list of different slots telecast from march, 1998 being Annexure-C to the petition appearing at page 18-19 thereof. The said Compact Disc was displayed in a lap top computer in Court. The said display was made in usual speed as well as in slow motion. Photographs of the particular slipper as shown in slow motion were filed in court in a sheet produced in Court.

( 8 ) FROM the photograph it would clearly show that not only the front portion but also the back portion of the slipper was clearly visible in slow motion.

( 9 ) MR. Chakraborty relied on various paragraphs from the book by the title "law of Copyright and Industrial Designs" by P. Narayanan, 3rd edition. According to Mr. Chakraborty the word "publish" by no means limits to the publishing of a design in a printed publication, although it includes that. According to him there are two main ways in which a design can be published; by prior use or by sale or display by paper publication of one short or another. Mr. Chakraborty further contended that if a design had been given in a book or catalogue which had been circulated that would amount to publication. According to him, it was, however, not necessary that large number of documents should be proved to have been actually circulated. Presence of even only one copy of a document in public library was earlier held to be publication.

( 10 ) MR. Ranjan Bachawat, learned Counsel appearing for Bata, opposing the application for cancellation contended that the publication of the picture in the newspaper would show the front portion of the slipper where from shole of the slipper was not visible. Hence it could not be said that it was a publication of the design as a whole. According to Mr. Bachawat a partial disclosure of the design would not amount to publication which could warrant cancellation thereof. On the Compact Disc. Mr. Bachawat contended that display of the short film for about 10 seconds did not reveal the exact nature of the design unless it was played in slow motion and as suc