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High Court Of Calcutta
Indira Banerjee
GOPAL GLASS WORKS LTD. - Appellant
Versus
ASSISTANT CONTROLLER OF PATENTS AND DESIGNS - Respondent
AID 1 Of 2005
Decided On : 08/17/2005
DESIGN - CANCELLATION - GROUNDS - NEW OR ORIGINAL - PRIOR PUBLICATION - INTERPRETATION OF SECTIONS 4 AND 19 OF THE DESIGNS ACT, 2000 - HELD, prior publication of design specifications, drawings and/ or demonstrations by a registering authority, particularly a registering authority in a foreign country, in connection with registration of a design, in itself, does not amount to prior publication that would prohibit future registration of that design in India.
Fact of the Case:
Appellant, the registered proprietor of Design No. 190336, challenged the cancellation of its registration by the respondent on the grounds of prior publication and lack of novelty. The design was applied to glass sheets using rollers manufactured by a German company, which had developed the design in 1992 and sold it to the appellant in 2002. The respondent relied on a catalogue of the German company, a letter from the company to a third party, and a document downloaded from the internet from the official website of the Patent Office of the United Kingdom, which showed that the same design had been registered in the United Kingdom in 1992.
Finding of the Court:
The court held that the respondent erred in finding that the design was not new or original and had been published prior to the date of its registration. The court noted that the German company did not apply the design to glass sheets and that the catalogue and letter from the company were not relevant. The court also held that the document downloaded from the internet was not sufficient to constitute prior publication, as it did not depict the application of the design to glass sheets and did not provide clear instructions for producing glass sheets of the pattern illustrated.
Issues: 1. Whether the design was not new or original in view of the fact that the design had been published before the date of registration and the registered proprietor was not the owner of the design. 2. Whether the design had been published outside India as well as in India, prior to the date of application and 3. Whether the registered design was in public domain due to sale/use of the design prior to the date of application of the registered proprietor.
Ratio Decidendi: 1. The court held that the respondent erred in finding that the design was not new or original. The court noted that the German company did not apply the design to glass sheets and that the catalogue and letter from the company were not relevant. 2. The court also held that the document downloaded from the internet was not sufficient to constitute prior publication, as it did not depict the application of the design to glass sheets and did not provide clear instructions for producing glass sheets of the pattern illustrated.
Final Decision: The appeal was allowed, and the impugned order was set aside and quashed.
( 1 ) THIS appeal under section 19 (2) read with section 36 of the designs Act, 2000, hereinafter referred to as the said Act, is from an order dated 20th September, 2004 of the Assistant Controller of Patent and Designs, being the respondent No. 1, directing cancellation of Design No. 190336 registered in the name of the appellant.
( 2 ) THE appellant claims to carry on business inter alia of manufacture and marketing of figured and wired glass sheets since 1981. The appellant claims to be the originator of new and original industrial designs, applied by mechanical process, to glass sheets.
( 3 ) ACCORDING to the appellant the glass Sheets have eye-catching shape, configuration, ornamental patterns, get up and colour shades and the same are registered and/or are awaiting registration as industrial designs under the designs Act, 2000 and/or the rules framed thereunder.
( 4 ) FOR production of glass sheets of the design registered as Design No. 190336, two rollers are required. The rollers are manufactured by M/s. DORN bausch GRAVUREN GMBH of Germany, hereinafter referred to as the german Company. According to the petitioned the rollers are not only used for manufacture of glass sheets, but for various other articles including plastic, rexin and leather.
( 5 ) THE appellant claims to have placed orders on the German Company, for supply of the rollers for launching a design of figured glass with new and novel features, not produced before by any one else.
( 6 ) ON or about 29th October, 2002 the appellant applied to the Controller of patent and Designs under section 51 of the Designs Act, 2000, hereinafter referred to as the said Act, for registration of the said design in Class 25-01. The said design was duly registered on 5th November, 2002 and was to remain valid for a period of 10 years from date of its registration.
( 7 ) THE appellant claims exclusive copyright in India, in the said design applied to glass sheets. According to the appellant, no other person has any right to apply the said design to glass sheets, in violation of the exclusive copyright of the appellant, on the said design on glass sheets.
( 8 ) THE appellant has been marketing glass sheets of the said design under the name of Diamond Square which according to the appellant, has become popular amongst customers soon after its launch in the market. The appellant has relied on a statement of sales figures for the period from December, 2002, to February, 2004 in support of its contention of popularity of and demand for glass sheets of the said design.
( 9 ) AFTER registration of the said design the! appellant issued a notice dated 21st May, 2003 cautioning other manufacturers from infringing copyright of the appellant in respect of the said registered design.
( 10 ) IT is alleged that the respondent No. 2 and/or its associate IAG Co. Ltd. started imitating the said registered design, as a result whereof the appellant was constrained to file a suit being Civil Suit No. 1 of 2004 against the respondent No. 3 and its associate IAG Co. Ltd. in the District Court at Mehsana. The appellant obtained an interim order of injunction restraining IAG Co. Ltd. from infringing the copyright of the appellant in the said registered design.
( 11 ) IN the meanwhile, the respondent No. 3 as counterblast to the aforesaid notice, filed an application under section 19 of the said Act, before the respondent no. 1 for cancellation of registration of Design No. 190336 in the name of the appellant, mainly on the ground of prior publication of the design in India and abroad and on the ground of the design not being new or original.
( 12 ) THE respondent No. 3 relied on inter alia a catalogue of the German company, a letter dated 10th September, 2003 of the German Company addressed to M/s. IAG Co. Ltd. stating that the said German Company had developed Design No. 2960-9010 in the year 1992, and a document downloaded from the internet from the official website of
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