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IN THE HIGH COURT OF CALCUTTA
Soumen Sen, J.
ITC Limited - Petitioner
Versus
The Controller of Patents and Designs & Ors. - Respondents
AID No. 10 of 2016
Decided On : 06-03-2017
DESIGNS ACT, 2000 - SECTION 19 - CIGARETTE PACK DESIGN - CANCELLATION OF REGISTRATION - PRIOR PUBLICATION - NOVELTY AND ORIGINALITY - FUNCTIONALITY - EYE TEST - DISTINGUISHABLE FEATURES - DELAY IN FILING APPLICATION - ADDITIONAL EVIDENCE - DISMISSAL OF APPEAL.
Fact of the Case:
The appellant filed an application for cancellation of the registered design of a cigarette pack under Section 19 of the Designs Act, 2000, on the grounds of prior publication, lack of novelty and originality, functionality, and non-registrability. The Deputy Controller of Patents and Designs dismissed the application, prompting the appellant to file an appeal.
Finding of the Court:
The court held that the appellant failed to establish prior publication of the impugned design, as the evidence provided only showed drawings of the design and not the finished article. The court also found that the design had distinctive features that distinguished it from prior designs and that it was not devoid of novelty and originality. Furthermore, the court held that the design was not purely functional and had aesthetic appeal. The court dismissed the appellant's application for additional evidence, finding that the appellant had not provided a full explanation for the delay in submitting the evidence.
Issues: 1. Whether the impugned design was published prior to its registration, thereby invalidating its registration under Section 19 of the Designs Act, 2000? 2. Whether the impugned design lacked novelty and originality, rendering it ineligible for registration? 3. Whether the impugned design was purely functional, lacking aesthetic appeal and thus not registrable under the Designs Act, 2000? 4. Whether the appellant's application for additional evidence should be admitted?
Ratio Decidendi: 1. Prior publication requires the design to be made public in a tangible form, such as through a trade catalogue, brochure, or photograph, that clearly depicts the design applied to the same article. Mere drawings or specifications do not constitute prior publication. 2. Novelty and originality require that the design be new and not previously published or registered. A design may be considered original even if it is an application of an existing design to a new article. 3. Functionality is not a bar to registration if the design also possesses aesthetic appeal. The eye test is used to determine whether the design has visual appeal and is judged solely by the eye. 4. Additional evidence may be admitted if the party can demonstrate that it was not available despite due diligence or that it is necessary for the court to pronounce judgment.
Final Decision: The appeal was dismissed, and the impugned design's registration was upheld.
Soumen Sen, J.
This is an appeal under Section 36 of the Designs Act, 2000 from a decision of the Deputy Controller of Patents and Designs on 14th June, 2016 in respect of an application filed by the appellant under Section 19 of the Designs Act, 2000 for cancellation of the Registered Design No.196859.
2. The design in question was registered on 8th March, 2004 for the article "Cigarette Pack" in Class 27-06 in the name of Phillips Morris Products S.A., a corporation organized under laws of Switzerland.
3. The said application for cancellation was filed on 30th November, 2012.
4. The Controller has dismissed the said application.
5. The grounds stated in the petition for cancellation under Section 19 of the Designs Act, 2000 were:-
1. That the design was published in India or in any other country prior to the date of registration.
2. That the design is not a new or original design.
3. That the design is not registrable under the Designs Act, 2000. (hereinafter referred to as the "said Act")
6. The point here is this: the design is for a cigarette pack. There is apparently, prior published designs known to the world through prior publication based on German Patent Application No. 1008196 dated 13th February, 1952 and published on 9th May, 1957, UK Registered Design No. 2038787 dated 30th April 1994 published on Official Journal No. 5517 dated 4th January 1995, UK Registered Design No. 2026527 dated 17th October 1993 published on Official Journal No. 5453 dated 29th September 1993 and Appellant's 20s cigarette pack under its brand 'CLASSIC' published by way of advertisement on 1st August 1995 which on examination by the controller were found to be different from the impugned design.
7. The Controller although harboured doubts about publication of UK registered design Nos.2038787 and 2026527 registered on April 30, 1994 and 17th October, 1992 respectively depicting a pack for smoking articles considered both the German patent specifications as well as UK registered designs and did not arrive at a definite finding but opined that the impugned registration cannot be considered to be devoid of newness.
8. Mr. S.N. Mookherjee, learned Senior Counsel appearing with Mr. Ranjan Bachawat, learned Senior Counsel, on behalf of the appellant/petitioner submits that the Deputy Controller has gone along comparing the minute details of the said designs with the impugned designs and has only highlighted the small differences and not the substantial similarities of the said designs with the impugned design. The Controller has not compared the said designs and the impugned design as a whole even though the alleged novelty in the impugned design resides in the shape, surface pattern, configuration and/or colour combination of "CIGARETTE PACK" as illustrated. I was referred to the decision of the Bombay High Court in Harish Chhabra v. Bajaj Electricals Ltd. reported at (2005) 5 Bom CR 153 (Paragraphs 5-6) where the learned Single Judge following the decision in William J. Holdsworth v. Henry C. M'crea, 1887 Vol. II English and Irish Appeal 380 at page 388 observed that the designs are to be compared as a whole in order to ascertain if the said design is new or original. Castrol India Ltd. v. Tide Water Oil Co. (I) Ltd. reported at 1996 (16) PTC 202 was referred to in which the same principle was reiterated following Benchairs Ltd. v. Chair Center Ltd. reported at 1974 RPC 429. In Benchairs Ltd. (supra) it was held ".....the question whether or not the design of the defendant's chair is substantially different from that of the plaintiff is to be answered by consideration of the respective design as a whole".
9. The view expressed in Castrol India (supra) has been approved in Rotomac Pens Ltd. v. Milap Chand reported at (1999) 19 PTC 757. My attention has been drawn to the following observation of the Hon'ble Division Bench :-
"It is not necessary to break the articles down into integers for descriptive purposes but in the ultimate result it is the art
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