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IN THE HIGH COURT OF JUDICATURE AT CALCUTTA
Soumen Sen, J.
Klassic Wheels Private Ltd. – Appellant
Versus
The Assistant Controller of Patents and Designs and Another – Respondents
G.A. No. 2407 of 2017, AID No. 6 of 2013
Decided On : 04-06-2018
Designs Act - Cancellation of Design No. 229267 - Section 19 - Class 12-16 - Summary of Acts and Sections: The court discussed the application filed under Section 19 of the Designs Act, 2000 for cancellation of registration of Design No. 229267 under Class 12-16. The court analyzed the grounds for cancellation, including prior publication and lack of novelty, and the evidence presented by both parties. The court referred to various legal provisions and case laws to interpret the concept of prior publication and novelty under the Designs Act, 2000.
Fact of the Case:
The petitioner filed an application for cancellation of a design registered in favor of the respondent under the Designs Act, 2000, citing prior publication and lack of novelty. The petitioner claimed to have designed the 'Wheel Rim Assembly' and supplied it to Piaggio before the registration of the impugned design. The respondent contended that their design was novel and not disclosed to the public.
Finding of the Court:
The court found that the grounds for cancellation were unsustainable and that the impugned design was novel and registrable under the Designs Act, 2000. The court analyzed the evidence presented by both parties and concluded that the impugned design was not disclosed to the public prior to its registration.
Issues: The issues revolved around the novelty and prior publication of the impugned design, as well as the evidence presented by the parties to support their claims.
Ratio Decidendi: The court relied on the evidence presented, legal provisions of the Designs Act, 2000, and case laws to determine the novelty and prior publication of the impugned design. The court emphasized the need for evidence to establish prior publication and the concept of novelty under the Designs Act, 2000.
Final Decision: The court dismissed the appeal and the application for additional evidence, upholding the registration of Design No. 229267 under Class 12-16 of the Designs Act, 2000. The court also dismissed the application for additional evidence, citing the lack of due diligence and substantial cause for permitting additional evidence at the appellate stage.
Soumen Sen, J.
1. The appeal and the application for additional evidence being G.A. No. 2407 of 2017 are taken up together and disposed of by this order.
2. This appeal is arising out of an order passed by the Assistant Controller of Patents and Designs on 8th July, 2013 in connection with an application filed under Section 19 of the Designs Act, 2000 for cancellation of registration of Design No. 229267 under Class 12-16 filed by the applicant/petitioner.
3. The petitioner on 25th July, 2011 filed the application for cancellation of the design registered in favour of the respondent No. 2 on 13th May, 2010 for article “Wheel Rim” under Class 12-16 in the name of Steel Strips Wheels Ltd. The grounds for cancellation were that it was published in India prior to the date of registration, it was not a new or original design and lastly the design was not registrable under the Act. The primary grounds as would appear from the record are prior publication and lack of novelty.
4. Sworn of details, the petitioner claims to be, in the business of manufacturing and supply of Wheel Rim Assemblies to Piaggio Vehicles Ltd. (hereinafter referred to as “Piaggio”) for their three wheelers and mini trucks. The petitioner acquired essential data required for designing Wheel Rim Assemblies from Piaggio. Based on the design data, the petitioner designed the “Wheel Rim Assembly” and proposed Design – drawings for the “Wheel Rim Assembly” bearing drawing No. 60001.00P. The petitioner started manufacturing and supplying such Wheel Rim Assemblies since 31st May, 2009. On 29th April, 2009, Piaggio provisionally approved the drawing No. 60001.00P for the “Wheel Rim Assembly” and placed a purchase order on 29th April, 2009 for the “Wheel Rim Assembly” bearing drawing no. 60001.00P as provisionally approved by the Piaggio on 29th April, 2009 followed by a letter from Paiggio dated 5th May, 2009 confirming such provisional approval. The petitioner also applied for type approval certificate as per AIS-037 standard from the Automotive Research Association of India (ARAI). The invoice of ARAI dated 6th April, 2009 would confirm that the petitioner had approached ARAI for testing of the Wheel Rim Assemblies and the testing fee was deposited on 12th May, 2009. The testing report of ARAI pertaining to Wheel code 3.50B x 10, part no. 6001.00.PA drawing no. 60001.00PA was submitted to ARAI on 29th May, 2009 for conducting such tests. Piaggio thereafter inspected the samples and forwarded one inspection report on 31st May, 2009. The petitioner received the type approval certificate being No. A94845 from ARAI on 23rd September, 2009 for their Wheel Rim Assemblies corresponding to their design approved from Piaggio. After receiving the said certificate the petitioner supplied “Wheel Rim Assemblies” on a mass scale to Piaggio. The petitioner disclosed copies of invoices bearing invoice number 1910, 1993, 2071 and 2290 dated 30th September 2009 and 12th November 2009 respectively. The comparison of the impugned design vis-a-vis the design corresponding to the petitioner’s design drawings of the wheel rim assembly it would be clear that the impugned design is an exact copy of design corresponding to the petitioner’s design drawing approved by Piaggio.
5. The respondent No. 2 filed its counter-statement objecting to the locus of the petitioner to maintain the action. The respondent, inter-alia, contended that under a non-disclosure agreement between the respondent No. 2 and Piaggio entered into by and between the parties on 31st July, 2007, the respondent is not authorized to disclose such drawings. Several drawings were developed by the respondent and shared with Piaggio. The respondent no. 2 contended that even if the designs disclosed in the application for cancellation were obtained unauthorisedly from a third party the design no. 229267 would still remain novel. The Wheel Rim Assemblies duly registered in favour of the applicant is novel in nature. The wheel ri
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