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IN THE HIGH COURT OF JUDICATURE AT CALCUTTA
SOUMEN SEN, J.
M/s. Lucky Exports – Appellant
Versus
The Controller Of Patents & Designs & Others – Respondents
AID. No. 1 of 2012
Decided on : 10-05-2019
DESIGN - Cancellation of Registration - Coaster Brake Sub Assembly - Whether the impugned design is a mere mechanical device and hence not registrable - Whether the design of the sub assembly can be independently considered as a subject-matter of design irrespective of the design of its principle component - Whether the design of the principle component within which the sub assembly would subsume or fitted in would be a ground for non- consideration or disqualification of the sub assembly for registration of the design even if as an article of commerce it is found to be novel and original.
Fact of the Case:
The appellant filed an appeal against an order dated 31st January, 2012 under Section 36 of the Design Act, 2000 by which the application for cancellation of the design no. 202108 registered on 11th November, 2005 for article "Coaster Brake Sub Assembly" under Class 12- 11 in the name of the private respondent, namely, International Cycle Gears, was rejected.
Finding of the Court:
The Court held that the impugned design is not a mere mechanical device and hence is registrable. The Court further held that the design of the sub assembly can be independently considered as a subject-matter of design irrespective of the design of its principle component. However, the Court held that the design of the principle component within which the sub assembly would subsume or fitted in would be a ground for non- consideration or disqualification of the sub assembly for registration of the design even if as an article of commerce it is found to be novel and original.
Issues: 1. Whether the impugned design is a mere mechanical device and hence not registrable? 2. Whether the design of the sub assembly can be independently considered as a subject-matter of design irrespective of the design of its principle component? 3. Whether the design of the principle component within which the sub assembly would subsume or fitted in would be a ground for non- consideration or disqualification of the sub assembly for registration of the design even if as an article of commerce it is found to be novel and original?
Ratio Decidendi: 1. A design for shape in which all the features are dictated solely by the function which is to be performed by the article to which the shape is applied, and that shape possesses no features beyond those necessary to enable the article fulfil its function is a mere mechanical device. 2. A design may be possible for an article to be functional and at the same time has an eye appeal. As long as the article is not merely a functional device and has an eye appeal, it is capable of design registration, if other requirements are met. 3. The design of the principle component within which the sub assembly would subsume or fitted in would be a ground for non- consideration or disqualification of the sub assembly for registration of the design even if as an article of commerce it is found to be novel and original.
Final Decision: The appeal is allowed and the impugned order dated 31st January, 2012 is set aside.
JUDGMENT :
1. The appeal is directed against an order dated 31st January, 2012 under Section 36 of the Design Act, 2000 by which the application for cancellation of the design no. 202108 registered on 11th November, 2005 for article "Coaster Brake Sub Assembly" under Class 12- 11 in the name of the private respondent, namely, International Cycle Gears, was rejected.
2. In AID No. 3 of 2012 an appeal by International Cycle Gears in relation to "Coaster Brake Hub" I have held that the controller was justified in cancelling the registered Design No.201728 dated 11th May, 2007, in respect of 'Coaster Brake Hub' in Class 12-11.
3. The present appeal which was heard along with AID 3 of 2012 as same and the similar points arose with the only difference being that the definition of "Article" in relation to "Design" in this appeal requires a deeper consideration in view of the submissions made by the parties.
4. The primary ground for challenge is that the impugned Design No. 202108 is purely functional and mechanical in nature and hence is not registrable. The contention of the petitioner is that the product is a combination of small components, and is not visible to the eye when applied to the cycles and could not have constituted a design under the provisions of the Designs Act 2000. The appellant relied on a certificate of a chartered engineer to demonstrate that the "Coaster Brake Sub Assembly" is the mechanical part/functional part of "Coaster Brake Hub". The private respondent had been selling the products since 2003 onwards as would be evident from the sale invoices. The impugned design was previously published in Indian bicycles channels Velo Bike Special Issue, February 2005. Each and every part of the "Coaster Brake Sub Assembly" of the impugned design were itemised and published in the advertisement in Velo Bike Special Issue, February 2005. If all the parts were to be put together the result would be the very same sub assembly as registered under the Registered Design No. 202108. There is no feature of shape or configuration or pattern or ornament or composition and colours on the face of the product and it is just a mechanical device. The design is a mere mechanical contrivance which is the working part of the coaster brake hub and it goes completely into the brake hub not being visible to eye.
5. In brief these were the submission made before the controller for cancellation.
The defence of the registered proprietor with reference to the advertisement in the Velo Bike Special Issue February 2005 was that it pertains to Coaster Brake Hub (Russian model) of Eagle brand. It also forms a part of the plaint filed by the registered proprietor before the District Court, Ludhiana. The distinguishing features of the registered design to the article in question in its finished state had not been shown in any manner whatsoever in the said advertisement of February, 2005. The parts shown in the advertisement dated February 2005 would not result in the article being the impugned design in its finished state as the instant registered design is to be considered and judged solely by eye in the finished state of the article. The design is not a mechanical device and the representations of the said design contain disclaimer against mechanical and/or function of the article. None of the sale invoices on which the private respondent has placed reliance contains any specific indication of the said design part. The registered proprietor appears to have produced before the Controller for visual inspection, one sample of Coaster Brake Sub Assembly bearing design registered Design No. 202108 to which the response of the appellant was that there was no evidence to show that it was in any way different from the sub assembly which has all along been fitted into the Russian model advertised in the Velo Bike Special Issue February 2005 and if all of the parts advertised therein were to be put together, the result would be the very same sub assembly of regis
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