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High Court Of Delhi
WIMCO LIMITED - Appellant
Versus
MEENA MATCH INDUSTRIES - Respondent
Decided On : 05/26/1983
DESIGNS ACT, 1911 - SECTION 51-A - CANCELLATION OF REGISTRATION - GROUNDS - PRIOR PUBLICATION - NOVELTY AND ORIGINALITY - INFRINGEMENT.
Fact of the Case:
Wimco Limited, a public limited company, claimed to have developed a pattern/design and chemically applied it to both sides of the pannels of their match boxes by mechanical means. They registered the design under the Designs Act, 1911, and claimed exclusive rights to apply the design to match boxes manufactured, produced, and marketed by them. Meena Match Industries and Thilgaraj Match Works filed a petition for cancellation of the registration under Section 51-A of the Act, alleging that the design was previously published in India and was not a new or original design.
Finding of the Court:
1. The design was previously published in India prior to the date of registration, as evidenced by a Government of India publication of a patent specification in 1942 and a matchbox manufactured in Sweden in 1976, both of which contained an identical pattern/design. 2. The design was not a new or original design, as it had been previously applied to match boxes and was a mere mechanical device to achieve the function of igniting the match head.
Issues: 1. Whether the Design No. 146498 dated January 5, 1978 is liable to be cancelled on the grounds mentioned in the application for cancellation under Section 51-A? 2. Is the defendant infringing plaintiff's registered design?
Ratio Decidendi: 1. Prior publication of a design means that the design is no longer a secret and has been disclosed to the public. Publication can be through prior documents or prior user. 2. Novelty and originality in a design require that it be new and not previously published in India, and that it possesses a substantial difference from any previously published design. 3. The design in question was not new or original as it had been previously applied to match boxes and was a mere mechanical device to achieve the function of igniting the match head.
Final Decision: The petition for cancellation of the design registration was allowed, and the design was ordered to be cancelled. The suit filed by Wimco Limited for infringement of the design was dismissed.
( 1 ) the Wimco Limited is public limited company incorporated under the provisions of the Companies Act, 1913 (for short called Wimco ). They carry on the business of manufacturing and selling, inter alia, of match boxes . They claim to be one of the famous manufacturers of matches and the total turnover for the years 1975 to 1980 is given in paragraph 3 of the plaint. Wimco claim to have developed, in order to distinguish their products from those of others and in order to improve the aesthetic appearance of their match boxes, a pattern/design and chemically applied it to both sides of the pannels of their match boxes by mechanical means. This pattern is in rectangular form with multiple diamond-shaped spots and Wimco gave it a name to this pattern as "hot SPOTS". Wimco made an application foe registration of this design claiming to be new and original design under the provisions of the Designs Act, 1911 (hereinafter called the Act) in class 5 of the Schedule. The application was numbered as 146498 dated January 5, 1978. Subsequently, the said design was registered with effect from January 5, 1978 and a certificate to that effect was issued on October 19, 1978. A photostat copy of the said certificate together with the Design of the match box is filed in Court, The said design is valid and subsisting on the Register of Designs maintained in the office of the Controller of Patents and Designs, Calcutta. Wimco allege that from May 1978 onwards they started applying the said pattern/design to Ship Kapas, Tekka brands of their match boxes and started marketing the same. Within a short itme after May 1978, the aesthetic appearance and utility value of match boxes bearing the said design/pattern on their match boxes was liked and recognised by the public at large. The sales of such match boxes bearing the said pattern design have tremendously gone high and have exceeded Rs. 10 crores in the year 1979 and Rs. 20 crores in the year 1980. Wimco believe that the sudden rise in the sale of the said matches is mainly due to the said pattern [design which has aesthetic appearance and utlity value. By, virtue of its novelty, originality, high publicity and sale, Wimco aver to have acquired a unique reputation and goodwill in respect of the said registered design and the same is exclusively associated with the Wimco goods in the minds of the traders, consumers and members of the public and with no one else. it is alleged that the said registered design is to be applied exclusively by Wimco to match boxes manufactured, produced and marketed by them and no one else has any right to apply the said registered design/ pattern to any match box. With these allegations the relief claimed in Suit No. 415-of 1981 which was instituted on May 13, 1981 against M/s. Meena Match Industries, M/s. Thilgaraj Match Works and M/s. Sanjay and Co. , is to restrain the defendants etc. from manufacturing, producing, selling and/or marketing or offering for sale match boxes bearing the impugned pattern/design on their match boxes like Annexure x which is an infringement of Wimco s registered design No. 146498, i. e. , the pattern in a rectangular form with multiple diamond-shaped spots or any other design which is identical to and/or fraudulent obvious imitation of Wimco s pattern/design. The further reliefs claimed are for a permanent injunction restraining the defendants etc. from pirating the registered design of Wimco, from passing off and the ancillary relief of destruction of the offending articles and rendition of accounts.
( 2 ) THE suit was registered and summons issued on May 14, 1981 to the defendants who put in appearance on the first dale of hearing. As an interim measure defendants 1 and 2 were directed to furnish statements of their figures of sales in respect of the period after the institution of the suit. Defendants 1 and 2 in. the suit then filed on May 20, 1981 a Civil Original Petition, being C. O. 8 of 1981 for cancellat
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