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2016 Supreme(Cal) 389
IN THE HIGH COURT OF JUDICATURE AT CALCUTTA
Nadira Patherya, J.
Yash Plastomet Pvt. Ltd. – Appellant
Vs.
The Assistant Controller of Patents & Designs & Another – Respondents
AID No. 1 of 2008
Decided On : 02-09-2016
For the Appellants :Mr. Ranjan Bachwat and Mr. Debnath Ghosh, Advocates.
For the Respondents:Mr. Anjan Sen, Mr. Sayantan Bose, Mr. Sourav Moitra and Mr. Avirup Chatterjee, Advocates.
A design is considered new and original if it possesses features of shape, configuration, pattern, ornament, or composition of lines or colors that appeal to the eye and are judged solely by the eye, and which are not mere mechanical devices or trademarks.
Headnote:
DESIGN REGISTRATION - CANCELLATION - PRIOR PUBLICATION - NOVELTY - DISTINGUISHABILITY - Designs Act, 2000 (2000 Act) - Sections 2(a), 2(d), 4.
Fact of the Case:
Appellant challenged the order of the Assistant Controller of Patents and Designs, which dismissed their application for cancellation of Respondent No. 2's design registration for a "Container Lid." Appellant claimed that the design was not new or original, had been prior published, and was not significantly distinguishable from known designs.
Finding of the Court:
The Court held that the design in question, registered as Design No. 180660 in 1999, was different from the previously registered designs, namely, Design Nos. 177677 and 177678 of 1998, and from a U.S. patented design. The Court found that the novelty in Design No. 180660 resided in the shape, configuration, and pattern of the lid, particularly the ribbed surface and the narrower rim.
Issues: 1. Whether the impugned design in the lid of the respondent No. 2 was registered for a second time in October 1999, which was not permissible as the design was not only previously registered in October 1998 but had been prior published too in October 1997 in Andhra Times. 2. Whether the design was also patented in the U.S. in March 1998. 3. Therefore, the registration of 1999 being registered design No. 180660 was liable to be set-aside as the same was neither new nor original and, therefore, was not a design as defined under Section 2(d) of the 2000 Act. Its purpose was functional and did not have any independent use.
Ratio Decidendi: 1. The Court relied on Section 2(d) of the 2000 Act, which defines "design" as "only the features of shape, configuration, pattern, ornament or composition of lines or colors applied to any article whether 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)." 2. The Court also referred to Section 4 of the 2000 Act, which prohibits the registration of designs that are not new or original, have been prior published, or are not significantly distinguishable from known designs.
Final Decision: The Court dismissed the appeal, upholding the order of the Assistant Controller of Patents and Designs. The Court found that the design in question was new and original, had not been prior published, and was significantly distinguishable from known designs.
Patherya J.
1. This appeal has been filed by the appellant from order dated 16th January, 2008 whereby the application of the appellant for cancellation of the respondent No. 2’s design No. 180660 dated 26th October, 1999 for “Container Lid” registered under Class 3 was dismissed.
2. Counsel for the appellant submits that the respondent No. 2 has obtained registration of design contained in a lid. In October 1997 a publication was made in the Andhra Pradesh Times. There can be no registration of a design prior published. The design was also registered earlier. U.S. Patent was granted to the design in May 1998. The registered design is functional and has no independent utility nor can it be sold separately. The registration granted on 26th October, 1999 is the second registration of a design which is not a design under Section 2(d) of the Designs Act, 2000. The first registration was granted on 9th October, 1998. Section 4 of the Designs Act, 2000 (2000 Act) prohibits registration of –
“A design which –
(a) is not new or original; or
(b) has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration; or
(c) is not significantly distinguishable from known designs or combination of known designs; or
(d) xxx xxx xxx xxx xxx
shall not be registered.”
3. “Design” has been defined in Section 2(d) and must be in an “article” which has been defined in Section 2(a). For it to be entitled to registration it must be new, original, not in use, not published earlier to the filing of application for registration and must be distinguishable from known designs.
4. None of these conditions have been satisfied in the instant case as the design was in use prior to the date of application, was neither new nor original had been published in Andhra Pradesh Times, had been disclosed to the public and had no distinct or distinguishing feature, and the application filed by the appellant ought to have been allowed and design 180660 cancelled.
5. Reliance is placed on AIR (1981) Delhi 95, for the proposition that addition of a further curve will not make the variation a striking one to constitute novelty, AIR (1968) Cal 109 for the proposition that unless there is substantial difference from the earlier registered design will not make it new or original.
6. Prior registration is prior publication as held in MIPR (2009) 3202. For the design being functional reliance is placed on AIR (1983) Delhi 255.
7. Opposing the said appeal Counsel for the respondent No. 2 submits that Paragraph 21 of the statement for cancellation be looked into. Sections 2(a) and 2(d) be also considered.
8. Reliance is placed on (2008) PTC 109 to highlight the objectives of the Designs Act, 2000 vis-a-vis the 1911 Act, namely, to create the required incentive for design activity and remove impediments to free use of available designs and it is only for this reason that the definition of “article” and “design” was enlarged and “original” defined.
9. “Lid” and “Container” are articles per se and can be registered. In 1999 by design No. 180660 “Container Lid” alone was registered.
10. There has been no prior registration in respect of the present design. The first registration of 1999 was in respect of a broad rim skirting on the lid with ribs on surface while the second registration is in respect of a narrow rim. In Paragraph 3.71 of Russell-Clarke and Howe on Industrial Designs 7th edition it has been clearly stated that a design may be new and original by virtue of an omission so also addition.
11. According to Narayanan on Law of Copyright and Industrial Designs the design as a whole must be looked into and it must appeal to the eye of the customer not Court as held in (1988) 16 RPC 343.
12. Reliance is also placed on (2001) 21 PTC 23. The ornamental rib and size cutting on the top exhibits a different design and in a
