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High Court of Calcutta
A.N. Ray, J.
Khaitan (I) Limited – Appellant
Versus
Metropolitan Appliances – Respondent
Matter No. 42 of 1993
Decided On: Sep 21, 1993
DESIGN - CANCELLATION - GROUNDS - PRIOR REGISTRATION AND PUBLICATION - SUBSTANTIAL SIMILARITY - VISUAL IMPACT - EYE OF THE CUSTOMER - TRADE VARIANT - INFRINGEMENT.
Fact of the Case:
The petitioner, a manufacturer of ceiling fans, filed a petition for cancellation of the respondent's design registration for a ceiling fan, alleging prior registration and publication of a substantially similar design. The petitioner's design featured a fan head with 18 radial ribs and a canopy with 12 vertical slender lines, while the respondent's design had 9 radial ribs on the fan head and 9 vertical lines on the canopy.
Finding of the Court:
The court held that the respondent's design was substantially similar to the petitioner's design and that the differences between the two designs were mere trade variants that did not save the respondent's design from being canceled. The court found that the central idea of the design, a blank round center with thin ray reliefs proceeding therefrom, had been copied by the respondent.
Issues: 1. Whether the respondent's design was substantially similar to the petitioner's design. 2. Whether the differences between the two designs were sufficient to avoid infringement.
Ratio Decidendi: 1. In determining substantial similarity, the court applied the following principles: - The visual impact of the two designs is all important. - The designs should be looked at together, considering how they would appear if seen at different times or from a distance. - The eye of the customer interested in design is the relevant perspective. 2. The court found that the respondent's design had the same central idea as the petitioner's design, namely, a blank round center with thin ray reliefs proceeding therefrom. The court held that this central idea was the most striking feature of the design and that the differences between the two designs were not sufficient to avoid infringement.
Final Decision: The court ordered the cancellation of the respondent's design registration and awarded costs to the petitioner.
1. THIS is a motion for cancellation of the respondent's design on ceiling fans, bearing registered No 161219 dated 25th July 1989 erroneously mentioned as No. 161129 in the prayer portion.
2. THE application is made under the Designs Act of 1911. Large portions of the original Act. Being the Patents and Designs Act, 1911 were subsequently deleted so as to bring about a separate legislation for Patents, which is the Patents Act, 1970.
The ground of cancellation of respondents design are prior registration and publication of the substantially similar design of the petitioner, both being, allegedly the same in their broad and essential aspects.
3. THE papers before me contain various copy photographs (quite unclear) of the designs of which registrations were obtained by petitioner in or about 1987. THE respondent's registration is of 1989. However, neither a picture, nor a description of a design can ever substitute the substance itself containing the design. I have, therefore, directed the fan head, the blade and the canopy of the petitioner's prototype fan to be preserved as material Exhibits I and III and the fan head, blade cad canopy of the respondent's prototype fan to be preserved similarly as material Exhibits II and IV.
4. THE case was, with respect, excellently argued on both sides Mr. Samaresh Chakraborty appearing for the petitioner, and Mr. Biswarup Gupta for the respondents. I have had the advantage of the citation of many authorities and the best possible assistance that can be had from the Bar.
The cancellation is to be had, if at all, under Section 51A of the Designs Act of 1911. It need not be reproduced, and it suffices to state that the High Court can at any time after its registration, cancel, upon a petition, of any person interested, a design, which has either been previously registered in India or has been published there or in cases where the design is neither new nor original.
5. ALTHOUGH the section in express words, only states about the presentation of the cancellation petition, and does not go on to state with the High Court is to do upon receiving it, yet that is only an unhappy drafting of legislation, and the only purposive way of construction is to imply, by reason of unavoidable necessity, the power of the High Court to disposes of any presented petition in accordance with the law of the land. I do imply such a power.
6. THE parties have been ad interim on this issue that a design can be registered and maintained on the register, if the same is either a completely new invention or even if the same if the same is an original application of what was already in existence prior to the registration.
The case of the reproduction of the Westminster Abbey on spoon handles, reported in 52 R.P.C. page 358 was referred to by Mr. Gupta. He said on that case that though Westminster Abbey had been in existence for a long time past, yet the reputation of the same on a spoon handle was an original application of something already in existence and thus a registration of design could be had therefor.
7. SINCE there is no application for cancellation of the petitioner's design, I need not dwell upon the nice question, whether the petitioner's fan design is registrable as a complete novelty or as an original application in a new field of ideas already in existence. The registration of the petitioner's design must be taken as good, and a substantial copy of the same cannot be saved, without challenging the said design as being originally unregisterable.
8. THE point at issue between the petitioner and the respondent put simply is this: does the fan of the respondent as designed resemble so closely the fan of the petitioner that it can be said to come within mischief of the section 51A of the Design Act? Can it be said that the design of the respondent's fan has already been registered in India? Can it be said that the design of the respondent's fan has already been published in India?
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