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1973 Supreme(Del) 112
High Court Of Delhi
WESTERN ENGINIRING COMPANY - Appellant
Versus
AMERICA LOCK COMPANY - Respondent
C.O. 7 of 1967
Decided On : 04/06/1973
MOHINDER NARAIN, N.K.ANAND, P.L.VOHRA, R.L.GUPTA, S.L.Bhatia, S.N.Artishi, V.M.TARKUNDE
The concept of novelty and originality in the context of design registration under the Indian Patents and Designs Act, 1911.
Headnote:
DESIGN - REVOCATION - NOVELTY AND ORIGINALITY - TRADE VARIANT - INFRINGEMENT - SUIT FOR INJUNCTION AND DAMAGES - CONSOLIDATION OF PROCEEDINGS - INTERPRETATION OF RULES AND SECTIONS - INDIAN PATENTS AND DESIGNS ACT, 1911, SECTIONS 51-A, 53.
Fact of the Case:
Two partnership firms, America Lock Company and Western Engineering Company, applied for the registration of designs of horse-shoe shaped cycle locks. Both designs were registered. America Lock Company filed a petition for cancellation of the design registered in favor of Western Engineering Company, alleging prior publication and lack of novelty and originality. Western Engineering Company filed a suit for injunction and damages against America Lock Company for infringement of its registered design. Western Engineering Company also filed a petition for cancellation of the design registered in favor of America Lock Company. The three proceedings were consolidated.
Finding of the Court:
The Court held that the design of Western Engineering Company was not new or original and was a mere trade variant of the previously existing design. The Court also held that the design of America Lock Company was not new or original and was a mere imitation of the design of Western Engineering Company. The Court dismissed the petition for cancellation of the design registered in favor of Western Engineering Company and the suit for injunction and damages. The Court allowed the petition for cancellation of the design registered in favor of America Lock Company.
Issues: 1. Whether the design of Western Engineering Company was new and original or a mere trade variant of the previously existing design? 2. Whether the design of America Lock Company was new and original or a mere imitation of the design of Western Engineering Company?
Ratio Decidendi: 1. The test for novelty and originality is dependent on determining the type of mental activity involved in conceiving the design in question. 2. A design is new or original if the designer has conceived something new, whereas a design is a mere trade variation of a previous design if the designer has merely kept an existing design in view and made some changes in it. 3. A design can be treated as a new or original design, or it can be treated as being merely a trade variant of an already existing design.
Final Decision: The petition for cancellation of the design registered in favor of Western Engineering Company and the suit for injunction and damages were dismissed. The petition for cancellation of the design registered in favor of America Lock Company was allowed.
( 1 ) THE America Lock Company is a partnership firm which carries on business as a manufacturer of locks of various types. Among other products, it manufactures cycle frame locks of horse-shoe shape for locking bicycles. Similarly, Western Engineering Company, is another partnership firm carrying on business as a manufacturer of locks, which also manufactures bicycle locks. The latter firm, i. e. . Western Engineering Company applied for the registration of a design of horse-shoe shape cycle lock used for locking bicycles, under the Indian Patents and Designs Act, 1911. This design was registered and allotted the number 125728 on 25th May, 1965. The former firm, i. e. , America Lock Company also applied under the Indian Patents and Designs Act, 1911, for the registration of he design of a somewhat similar horse-shoe cycle lock for locking bicycles. Its design was also registered on 25th March, 1967, the application having been made on 29th October, 1966. The number allotted to this registered design was 129675. Thus, it came about that both the America Lock Company as well as the Western Engineering Company obtained registrations of their respective designs for horse-shoe shaped cycle lock.
( 2 ) ON 22nd November, 1966, the America Lock Company instituted a petition under Section 51-A of the Indian Patents and Designs Act, 1911, for the cancellation of the design registered in favour of the Western Engineering Company. That petition was C. O. No. 1 of 1966, in this Court; it was subsequently amended on 28th July, 1967. According to the petition, the registration of the design of M/s. Western Engineering Company was liable to be cancelled because of prior publication and also because the design in question was neither new nor original. The petition has been contested by the respondents, M/s. Western Engineering Company, on various grounds. It is pleaded that design No. 125728 in question, is new and original and had not previously been published in India, and was rightly registered under the Act; the respondent is claimed to be the owner and inventor of a new and original design as on the date of the application for registration. A rejoinder was filed by the petitioner which stated inter alia that there were previously in existence, horse-shoe shaped cycle locks bearing trade marks Chivalry and Wings even prior to 25th May, 1965, whose design had been exactly copied and got registered by M/s. Western Engineering Company.
( 3 ) ON 2nd June, 1967, M/s. Western Engineering Company instituted a suit on the original side of this Court, for an Injunction and damages by rendition of accounts, against M/s. America Lock Company and two of its partners, under Section 53 of the Indian Patents and Designs Act, 1911. That suit was numbered as Original Suit No. 3 of 1967, on the Original Side of this Court. According to the allegations in the plaint, the plaintiff was the owner of registered design No. 125728, the particular feature of which was that it had a protruding portion in front for the lock cylinder into which the key was inserted. Before this lock was introduced, it was said locks had the kev-hole in the side without any raised portion. The registration of this new design lor a cycle lock was issued on 20th January, 1966 against an application dated 25th May, 1965. The plaintiff claimed a copyright for the design registered, which prevented any other person from copying the same, or making a fraudulent or obvious imitation of the cycle lock covered by the registered design. The plaintiff was manufacturing locks, called the king Cycle Locks in accordance with its registered design, which were being sold throughout India. A warning notice concerning this design had been published in various journals and newspapers specified in the plaint. It was claimed that the defendants had started manufacturing cycle locks which were approximately, of the same design as the plaintiffs registered design, without any written or
