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CASE NO.: Appeal (civil)  3185 of 2008

PETITIONER: Bharat Glass Tube Limited

RESPONDENT: Gopal Glass Works Limited

DATE OF JUDGMENT: 01/05/2008

BENCH: A.K.MATHUR & ALTAMAS KABIR

JUDGMENT: J U D G M E N T   CIVIL APPEAL NO.   3185 OF 2008 [Arising out of S.L.P.(C) No.16321 of 2006]

A.K. MATHUR, J.

1.      Leave granted.          2.      This appeal is directed against the order  dated  17.8.2005 passed by the  Calcutta High Court  whereby  learned Single Judge  has set aside the order passed by the  Assistant Controller of Patents & Designs, Kolkata dated  20.9.2004 whereby the Assistant Controller has cancelled  the registration of the respondent herein and held that  there was no material on record to show that the design had  previously been applied to glass sheets. It was also held  by learned Single Judge that the order impugned considered  with the materials on record, including in particular the  computer print-outs clearly revealed that the respondent  has only compared  the pattern and/or configuration  considered the visual appeal thereof, but not the visual  appeal of the pattern and/ or configuration on the article.  In other words,  the Assistant Controller has not  considered the visual appeal of the finished product. The  visual effect and/or appeal of a pattern embossed into  glass sheets by use of embossing rollers could be different  from the visual effect of the same pattern etched into  glass sheets manually. This aspect was not considered.  Aggrieved against this order passed by learned Single  Judge, the present appeal has been filed by the appellant.

3.              In order to appreciate the controversy involved  in the present appeal, a few facts may be dilated here. The  respondent herein claimed to carry on business inter alia  of manufacture and marketing of figured and wired glass  sheets since 1981.  The respondent claimed to be the  originator of new and original industrial designs, applied  by mechanical process to glass sheets. According to the  respondent, the glass sheets have eye catching shape,   configuration, ornamental patters, get up and colour shades  and the same were registered and/or were awaiting  registration as industrial designs under the Designs Act,  2000 (hereinafter to be referred to as the Act of 2000) and  the Rules framed thereunder.  For production of glass  sheets of the design registered as Design No.190336, two  rollers are required. The rollers are manufactured by M/s.  Dorn Bausch Gravuren GMBH of Germany (hereinafter to be  referred as the German Company).  According to the  respondent the rollers are not only used for manufacture of

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glass sheets, but for various other articles including  plastic, rexin and leather. The respondent placed an order  on the German Company for supply of the rollers for  launching a design of figured glass with new and novel  features not produced before by anyone else.  On or about   29.10.2002  the respondent applied to the Controller of  Patents and Designs under Section 51 of the Act of 2000 for  registration of the said design in Class 25-01.  The said  design was duly registered on 5.11.2002 and was to remain  valid for a period of 10 years from the date of its  registration. The respondent claimed the exclusive  copyright in India on the said design applied to glass  sheets. It was claimed that no other person has any right  to apply the said design to glass sheets as the respondent  has exclusive right over the said design  on the glass  sheets.  The respondent marketed the glass sheets of the  said design under the name of Diamond Square and that  became popular amongst the customers soon after its launch  in the market. After registration of the said design the  respondent issued a notice on 21.5.2003 cautioning  other  manufactures from infringing  copyright of the respondent  in respect of the said registered design. But in the  meanwhile the appellant and its associate IAG Co.Ltd  started imitating the said registered design, as a result  thereof the respondent was constrained to file a suit   being Civil Suit No.1 of 2004 against the appellant in the  District  Court of Mehsana. The respondent obtained a  restraint order restraining IAG Co. Ltd. from infringing  the copyright of the respondent against the said design.   In order to counter-blast the suit, the appellant herein  filed an application under Section 19 of the Act of 2000  before  the Controller of Patents & Designs for  cancellation of registration of Design No.190336 in  the  name of the respondent mainly on the ground that the design  has already been previously published in India and abroad  and on the ground that the design was not new or original.   The appellant primarily relied on a catalogue of the German  Company and letter dated 10.9.2003 of the German company  addressed to M/s. IAG Co. Ltd. the holding company of the  appellant stating that  the said German Company had  developed design No.2960-9010  in the year 1992 and the  other evidence relied on by the appellant was  a document  downloaded  from the internet from the official website of  the Patent Office of the United Kingdom on 22.9.2004 which  indicated that  the same design had been registered in  United Kingdom in the name of  M/s.Vegla Vereinigte  Glaswerke Gmbh sometime in 1992. As against this the  respondent filed an affidavit stating that the German  Company has been engaged in the manufacture of engraving  rollers and no other goods and it was contended that the  company was not engaged in manufacture of the goods other  than engraving rollers.  It was contended that the company  never manufactured engraved glass sheets by using engraved  rollers. The respondent also relied on the communication  dated 4.3.2004 of the German company confirming that the  embossing rollers covered by Design No.2950-910 had been  sold to the respondent on condition that all user rights  available in India under Indian laws would vest exclusively  in the respondent and that the respondent would be entitled  to exclusive user rights for at least five years.  The  German company was aware of the registration of the Design  No.190331 and it had no objection to  the design being  marketed by the respondent herein.  An affidavit was also  filed by  the Liaison Executive of the respondent  company  that he visited Germany  and upon enquiry  ascertained that

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M/s. Vegla Vereinigte Glaswerke Gmbh had never manufactured  glass sheets  of the design registered as Design No.2022468  in the United Kingdom.  The respondent also objected to the  admissibility of the materials alleged to have been  downloaded from the United Kingdom Patent Office. It was  also contended  that in absence of corroborative evidence,  such evidence cannot be tendered and it cannot be treated  as admissible evidence.  It was also contended that the  German Company only manufactured rollers  but did not  produce glass-sheets prepared out of these rollers.  

4.              On the basis of the pleadings , learned Assistant  Controller of Patents and Designs framed following  three   issues for determination:

(i)     Whether the design was not new or  original in view of the fact that the  roller bearing the design is published  before  the date of registration and the  registered proprietor is not owner of  design. (ii)    Whether the design was published  outside India as well as in India prior  to the date of application. (iii)   Whether the registered design was  in public domain due to sale/use of the  design prior to the date of application  of the registered proprietor.

The first two issues were decided against the respondent   and the third issue was not adjudicated  since the evidence  by way of affidavit was not taken on record on technical  reasons. Hence, the Assistant Controller of the Patents and  Designs set aside the registration of the respondent.  Aggrieved against this order the respondent filed a regular  appeal under Section 36 of the Act of 2000 before the High  Court.  Learned Single Judge after considering the matter  reversed the finding of the Assistant Controller and  dismissed the application filed by the appellant for  cancellation of registration of the respondent herein.  Aggrieved against this impugned order passed by learned  Single Judge of the Calcutta High Court  the present appeal  was filed by the appellant-complaint.

5.              We have heard learned senior counsel for the  parties at length and perused the record.  Before we  proceed to decide on the merit of the matter, it would be  profitable to refer to the relevant provisions of the Act.  It may be mentioned here that in 1911 the Designs Act was  passed by the then British Government in India.  But with  the advancement of science and technology and the number of  registration of the design having increased in India, the  Act of 1911 was amended wholesale by the Parliament and  this new Act known as Designs Act, 2000 came to be  introduced in the Parliament and the same was passed as  such.  The statement of objects and reasons read as under:

               " STATEMENT OF OBJECTS AND REASONS                 Since the enactment of the Designs  Act, 1911 considerable progress has been  made in the field of science and  technology. The legal system  of the  protection of industrial designs requires  to be made more efficient in order to

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ensure effective protection to registered  designs. It is also required to promote  design activity in order to promote the  design element in an article of  production. The proposed Design Bill is  essentially aimed to balance these  interests. It is also intended to ensure  that the law does not unnecessarily  extent protection  beyond what is  necessary to create the required  incentive for design activity while  removing impediments to the free use of  available designs."

Section 2 of the Act of 2000 deals with the definitions and  the Controller has been defined in Section 2 (b) as  follows:

               " (b)   "Controller" means the  Controller-General of Patents, Designs  and Trade Marks referred to in section  3."

"Copyright" means the exclusive right to apply a design to  any article in any class in which the design is registered.  Section 2 (d) defines design which reads as under :

               " (d) "design" means only the  features of shape, configuration,  pattern, ornament or composition of lines  of colours applied to any article whether  in two dimensional or three dimensional   or in both forms, by any industrial  process or means, whether manual,  mechanical or chemical, separate or  combined, which in the finished article  appeal to and are judged solely by the  eye; but does not include any mode or  principle of construction or anything  which is in substance a mere mechanical  device, and does not include any trade  mark as defined in clause (v) of sub- section (1) of section 2 of the Trade and  Merchandise Marks Act, 1958 (43 of 1958)  or property mark as defined  in section  479 of the Indian Penal Code (45 of 1860)  or any artistic work as defined in clause  ) of section 2 of the Copyright Act, 1957  (14 of 1957);"

Section 2 (g) defines original which reads as follows:                 " (g) " original", in  relation to  a design, means originating  from the  author of such design and includes the  cases which though old in themselves yet  are new in their application;"

Section 2 (i) defines ’prescribed’  which means prescribed  by rules made under this Act. Section 2(j) defines ’  proprietor of a new or original design’ which reads as  under:                 " (j) "proprietor of a new or original design".- (i)     where the author of the design, for  good consideration, executes the work  for some other person, means the

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person for whom the design is so  executed; (ii)    where any person acquires the design  or the right to apply the design to  any article, either exclusively of  any other person or otherwise, means,  in the respect  and to the extent in  and to which the design or right has  been so acquired, the person by whom  the design or right is so acquired;  and (iii)   in any other case, means the author  of the design; and where the property  in or the right to apply, the design  has devolved from the original  proprietor upon any other person,  includes that other person."

Section 3 deals with the Controller and other officers.  Section 4 deals with the prohibition of registration of  certain designs which has relevant bearing on our case. It  reads as follows:

               " 4. Prohibition of registration of  certain designs.- A design which- (a)     is not new or original; or (b)     has been disclosed to the public  anywhere in India or in any other country  by publication in tangible form or by use  or in any other way prior to  the filing  date, or where applicable, the priority  date of the application for registration;  or (c)     is not significantly  distinguishable from known designs or  combination of known designs; or (d)     comprises or contains scandalous or  obscene matter, shall not be registered." Section 5 deals with the application for registration of  designs. Section 6 deals with the registration to be in  respect of particular article. Section 7 deals with  publication of particulars of registered designs. Section 9  deals with the certificate of registration which reads as  under :

               " 9. Certificate of registration.-  (1) The Controller shall grant a  certificate of registration to the  proprietor of the design when registered.                 (2) The Controller may, in case of  loss of the original certificate, or in  any other case in which he deems it  expedient, furnish one or more copies of  the certificate."

Section 10 deals with register of designs which reads as  follows:                 " 10. Register of designs.-  (1)There shall be kept at the patent  office a book called the register of  designs, wherein shall be entered the  names and addresses of proprietors of  registered designs, notifications of

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assignments and of transmissions of  registered designs, and such other matter  as may be prescribed  and such register  may be maintained wholly or partly on  computer floppies or diskettes, subject  to such safeguards as may be prescribed.  (2)     Where the register is maintained  wholly or partly on computer floppies or  diskettes under sub-section (1), any  reference in this Act to any entry in the  register shall be construed as the  reference to the entry so maintained on  computer floppies or diskettes. (3)     The register of designs  existing  at the commencement of this Act shall be  incorporated with and form part of the  register of designs under this Act. (4)     The register of designs shall be  prima facie evidence of any matter by  this Act directed or authorized to be  entered therein."

Section 11 deals with copyright on registration which reads  as under :                 " 11. Copyright on registration. \026 (1) When a design is registered, the  registered proprietor of the design  shall, subject to the provisions of this  Act, have copyright in the design during  ten years from the date of registration.  (2)     If, before the expiration of the  said ten years, application for extension  of the period of copyright is made to the  Controller in the prescribed manner, the  Controller shall, on payment of the  prescribed fee, extend the period of  copyright for a second period of five  years from the expiration of the original  period of ten years."

Section 12 deals with restoration of lapsed designs  which  reads as under :

               " 12. Restoration of lapsed  designs.- (1) Where a design has ceased  to have effect by reason of failure to  pay the fee for the extension of  copyright under sub- section (2) of  section 11,  the proprietor of such  design or his legal representative and  where the design was held by two or more  persons jointly, then, with the leave of  the Controller one or more of them  without joining the others, may, within  one year from the date on which the  design ceased to have effect, make an  application for the restoration of the  design in the prescribed manner on  payment of such fee as may be prescribed.

               (2) An application under this  section shall contain a statement,  verified in the prescribed manner, fully  setting out the circumstances which led

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to the failure to pay the prescribed fee,  and the Controller may require from the  applicant such further evidence as he may  think necessary."

Section 17 deals with inspection of registered designs  which reads as under:

               " 17. Inspection of registered  designs.- (1) During the existence of  copyright in a design, any person on  furnishing such information as may enable  the Controller to identify the design and  on payment of the prescribed fee may  inspect the design in the prescribed  manner.                 (2)  Any person may, on an  application to the Controller and on  payment of such fee as may be prescribed,  obtain a certified copy of any registered  design."

Section 18 deals with information as to existence of  copyright which reads as under:

               " 18. Information as to existence  of copyright.- On  the request of any  person furnishing such information as may  enable the Controller to identify the  design, and on payment of the prescribed  fee, the Controller shall inform such  person whether the registration still  exists in respect of the design, and, if  so, in respect of what classes of  articles, and shall state the date of  registration, and the name and address of  the registered proprietor.

Section 19 deals with cancellation of registration which  reads as under:

               " 19. Cancellation of registration.- (1) Any  person interested may present a petition for the  cancellation of the registration of a design at any time  after the registration of the design, to the Controller on  any of the following grounds, namely:- (a)     that the design has been previously  registered in India; or (b)     that it has been published in India or in  any other country prior to the date of  registration; or (c)     that the design is not a new or original  design; or (d)     that the design is not registerable under  this Act; or (e)     that it is not a design as defined under  clause (d) of section 2. (2)     An appeal shall lie from any order of the  Controller under  this section to the High Court,  and the Controller may at any time refer any such  petition to the High Court, and the High Court  shall decide any petition so referred."

Section 22 deals with piracy of registered design. Chapter  VI deals with fees, notice of trust not to be entered in

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registers etc.  with which we are not concerned. Section 32  in Chapter VII deals with the powers and duties of the  Controller which  reads as follows:

               " 32. Powers of Controller in  proceedings under Act.- Subject to any  rules in this behalf, the Controller in  any proceedings before him under this Act  shall have the powers of a civil court  for the purpose of receiving evidence,  administering oaths, enforcing the  attendance of witnesses, compelling the  discovery and production of documents,  issuing commissions for the examining of  witnesses and awarding costs and such  award shall be executable in any court  having jurisdiction as if it were a  decree of that court."

Section 36 deals with the appeals to the High Court.  Section 37 in Chapter VIII says that evidence can be  tendered by affidavit or it can be by way of viva- voice in  lieu of or in addition to evidence by affidavit  and the  party may be allowed to cross-examine  on the contents of  the affidavit. Section 44 deals with reciprocal arrangement  with the United Kingdom  and other convention countries or  group of countries or inter-governmental organizations.   The Central Government in exercise of power conferred under  sub-section (3) of section 1 of the Act of 2000 framed the  rules known as The Designs Rules, 2001 (hereinafter to be  referred to as the Rules of 2001). It  has framed necessary  rules to implement the provisions of the Act.  Rule 11 says  how the application is to be made for registration and says  the mode of submission of application for registration.  Rule 29 deals with the procedure  how the cancellation of  the registration can be made and a detailed provision  has  been made for implementation of Rule 29 of the Rules of  2001. Form of application for applying for registration is  also provided as Form 1. Form 8 deals with the petition for  cancellation for the registration of a design. This is the  whole background of the Act.

6.              In fact, the sole purpose of this Act is  protection of the intellectual property right of the  original design for a period of ten years or whatever  further period extendable. The object behind this enactment  is to benefit the person for his research and labour put in  by him to evolve the new and original design.  This is the  sole aim of enacting this Act.  It has also laid down that  if design is not new or original or published previously  then such design should not be registered. It further lays  down that if it has been disclosed to the public anywhere  in India or in any other country by publication in tangible  form or by use or in any other way prior to the filing  date, or where applicable, the priority date of the  application for registration then such design will not be  registered or if it is found that it is not significantly  distinguishable from known designs or combination of known  designs, then such designs  shall not be registered.  It  also provides that registration can be cancelled under  section 19 of the Act if proper application is filed   before the competent authority i.e.  the Controller that  the  design has been previously registered in India or  published in India or in any other country prior to the

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date of registration, or that the design is not a new or  original design or that the design is not registerable   under this Act or that it is not a design as defined in  clause (d) of section 2. The Controller  after hearing both  the parties if  satisfied that  the design is not new or   original or  that it has already been registered or if it  is not registerable, cancel such registration and aggrieved  against that order, appeal shall lie to the High Court.  These prohibitions have been engrafted so as to protect the  original person who has designed a new one by virtue of his  own efforts by researching for a long time.  The new and  original design when registered is for a period of ten  years. Such original design which is new and which has not  been available in the country or has not been previously  registered or has not been published in India or in any  other country prior to the date of registration shall be  protected for a period of ten years. Therefore, it is in  the nature of protection of the intellectual property  right. This was the purpose as is evident from the  statement of objects and reasons and from various  provisions of the Act. In this background, we have to  examine whether the design which was registered on the  application filed by the respondent herein can be cancelled  or not on the basis of the application filed by the  appellant. In this connection,  the law of Copyright and  Industrial Designs by P.Narayanan (Fourth Edition), Para  27.01 needs to be quoted.

               " 27.01. Object of registration of  designs.  The protection given by  the law  relating to designs to those who produce new and  original designs, is primarily to advance  industries, and keep them at a high level of  competitive progress.

       " Those who wish  to purchase an article for  use are often influenced in their choice not only  by practical efficiency but the appearance. Common  experience shows that not all are influenced in  the same way. Some look for artistic merit. Some  are attracted by a design which is a stranger or  bizarre. Many simply choose the article which  catches their eye. Whatever the reason may be one  article with a particular design may sell better  than one without it: then it is profitable to use  the design. And much thought, time and expense may  have been incurred in finding a design which will  increase sales". The object of design registration  is to see that the originator of a profitable  design is not deprived of his reward by others  applying it to their goods.

       The purpose of the Designs Act is to protect  novel designs devised to be applied to ( or in  other words, to govern the shape and configuration  of) particular articles to be manufactured and  marketed commercially. It is not to protect  principles of operation or invention which, if  profitable at all, ought to be made the subject- matter of a patent. Nor is it to prevent the  copying of the direct product of original artistic  effort in producing a drawing. Indeed the whole  purpose of a design is that it shall not stand on  its own as an artistic work but shall be copied by  embodiment in a commercially produced artefact.

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Thus the primary concern, is what the finished  article is to look like and not with what it does  and the monopoly provided for the proprietor is  effected by according not, as in the case of  ordinary copyright, a right to prevent direct  reproduction of the image registered as the design  but the right, over a much more limited period, to  prevent the manufacture and sale of article of a  design not substantially different from the  registered design. The emphasis therefore is upon  the visual image conveyed by the manufactured  article. "

7.              As mentioned above, the Assistant Controller  primarily has taken into consideration the two evidence,  (i)  that the design was registered way back 1992 by the  German company  on the roller to be used either on glass,  or rexin or on leather, therefore it is not new and  original and (ii)  that the same design has been obtained  in United Kingdom as is evident from the downloading of  Patent website of the United Kingdom. On the basis of this  two evidence, the Assistant Controller has held that the  design which was registered on the application filed by the  respondent herein was not a new and original. Therefore, on  the application filed by the appellant, the Assistant  Controller of Patents and Designs cancelled that design of  the respondent.

8.              Now, we shall examine to what extent the view  taken by the Assistant Controller can be sustained and  whether the view taken by learned Single Judge  was correct  or not. Now, coming to the first issue which has been  framed by the Assistant Controller,  the Assistant  Controller found that M/s.Dornbusch Gravuren Gmbh, a German  Company published a brochure bearing distinctive number  2960-910 for the first time on 10.9.1993 and the registered  proprietor  took the user’s right  and got it registered.  The Assistant Controller found that it is not the inventive  ingenuity of the respondent and found that in order to  register  the design it should be new or original and the  Assistant Controller found that there is insufficient   evidence of originality and therefore, he came to the  conclusion that the design is not a new and original one  registered prior to the date of registration. Therefore,  the question is whether  the design is new and original.  Section 4 which is couched in the negative terms, says that  the design which is not a new or original then such design  cannot be registered. Therefore, the question is  the  design which has been prepared by the German Company and  which has been sold to the respondent which became the  proprietor of it, is a new or original or not. In this  connection, the burden was on the complainant to show that  the design was not original or new. We have no hesitation  in recording a finding that  the burden was not discharged  by the complainant. It only tried to prove on the basis of  the letter of the German company that they produced the  rollers and sold in market but it was nowhere mentioned  that these rollers have been reproduced on the glass sheets  by the German company or by any other company.  The  expression, "new or original" appearing in Section 4 means  that the design which has been registered has not been  published anywhere or it has been made known to the public.   The expression, "new or original" means that it had been  invented for the first time or it has not been reproduced

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by anyone. The respondent company purchased the rollers  from the German company and got it registered with the  registering authority that by these rollers they are going  to produce the design on the glass sheets. Design has been  defined in section 2(d) which means that a feature of  shape, configuration, pattern, ornament or composition of  lines or colours applied to any article whether in two  dimensional or three dimensional  or in both forms, by any  industrial process. That  means that a feature or a pattern  which is registered with the registering authority for  being produced on a particular article by any industrial  process whether manual, mechanical or chemical or by any  other means which appears in a finished article and which  can be judged solely by eye appeal.  The definition of  design as defined in section 2(d) read with application for  registration and rule 11 with form 1 makes it clear that  the design which is registered is to be applied to any  finished article which may be judged solely by eye appeal.  A conjoined reading of these three provisions makes it  clear that a particular shape or a particular configuration  is to be registered  which is sought to be produced on any  article which will have visual appeal. Such design once it  is registered then it cannot be pirated by any other  person. But the question is whether it is new or original.  In the present case, the complainant relied on  the  correspondence of the German company which produced the  rollers and sold it to the respondent herein and it gave  the proprietary right to the present respondent company.  ’Proprietor’ as defined in section 2 (j) of the Act means  that any person who acquires the design or right to apply   the design to any article, either exclusively of any other  person or otherwise, means, in the respect and to the  extent in and to which the design or right has been so  acquired. Therefore, this right to reproduce this design on  an article has been given by the German company to the  respondent.  But again the question is whether the  complainant had discharged their burden to show that this  design is not new or original. For this purpose, they only  banked upon the letter of the German company which prepared  these rollers and there is no evidence to show that the  design which was reproduced on glass sheets was either  produced by any other agency.  Therefore, the expression  that ’ new or original’ in this context has to be construed   that whether this design has ever been reproduced by any  other company on the glass sheet or not. There is no  evidence  whatsoever produced by  the complainant either  before the Assistant Controller or before any other forum  to show that this very design  which has been reproduced on  the glass sheet was manufactured anywhere in the market in  India or in United Kingdom. There is no evidence to show  that  these rollers which were manufactured or originally  designed by the company was marketed by this company to be  reproduced on glass sheets in  India or even in United  Kingdom. This proprietorship of this design was acquired by  this respondent from the German company and there is no  evidence on record to show that these rollers were used for  designing them on the glass sheets in Germany or in India  or in United Kingdom. What is required to be registered is  a design which is sought to be reproduced on an article.   This was the roller which was designed and if it is  reproduced on an article it will give such visual feature  to the design. No evidence was produced  by the complainant  before the Assistant Controller that anywhere in any part  of the world or in India this design was reproduced on  glass or it was registered anywhere in India or in any part

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of the world. The German company only manufactured the  roller and this roller could have been used for bringing a  particular design on the glass, rexin or leather but we are  concerned here with the reproduction of the design from the  roller on glass which has been registered before the  registering authority.  Therefore, this design which is to  be reproduced on the article i.e. glass has been registered  for the first time in India and the proprietary right was  acquired from the German company. We have gone through the  letter of the German company and it nowhere says that this  was reproduced on a glass sheet. No evidence was produced  by the complainant that this design was reproduced on a  glass sheet in Germany or in India.  The contents of the  letter are very clear. It shows that it was designed in  1992 and was marketed in 1993. But there is no evidence to  show that this design was reproduced on glass sheet any  where in Germany. Section 4 clearly says that the  Controller will only register a design  on application made  under Section 5 by the proprietor of any new or original  design not previously published in any country and which is  not contrary to public order or morality and it further  says that this application shall be in a prescribed form  and the prescribed form has been given in form 1. Form 1  clearly says that the design  is to be applied. Relevant  column of the form reads as under :  Insert  number of class                You are requested to                                                  register the accompanying                                                 in Class No\005.. in the name of                                                 \005\005\005\005\005\005\005.

Insert ( in full) the name       Address and nationality                . . . . . . . . . . . . . . .                                                  .... . who claim(s) to be the                                                  proprietor thereof.

State whether drawings,                Four exactly similar\005    of   Photographs, tracings or       the design accompany this   specimens.                             request.     Insert name of article or      The design is to be applied   articles to which the          to\005\005\005\005\005\005\005\005  design is to be applied  or state trade description  of each of the articles  contained in the set.

That shows that for name of the article on which the design  is sought to be transcripted has to be mentioned at the  time of registration. The respondent moved an application  filling this form that this roller which has been  manufactured by the German company  with that design shall  be reproduced on the glass. Therefore, when the application  was filed by the respondent for registration, it was  registered on the basis that the roller which will be used  by mechanical process will bring design on a glass which is  registered. Therefore, what is sought to be protected is  that the design which will be reproduced on the roller by  way of mechanical process  and that design cannot be  reproduced on glass  by anybody else. Now, the question is  whether  it is new or original design. For that it is clear  that there is no evidence to show that this design which is  reproduced on the glass sheet was either registered in  India  or in Germany or for that matter in United Kingdom.  

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The expression,’ design’ has come up for interpretation in  English courts. The expression, design is almost pari  materia with the definition of design in the Indian  context. The expression, ’design’  in the English Act which  is known as the Registered Designs Act, 1949 reads as under  :

               "  In this Act the expression,’  design’ means features of shape,  configuration, pattern or ornament  applied to an article by any industrial  process, being features which in the  finished article appeal to and are judged  solely by the eye, but does not include  (a)     a method or principle of construction or  (b)     features of shape or configuration which  (i)     are dictated solely by the function  which the article has to perform, or (ii)    are dependent upon the appearance  of another article of which the article  is intended by the author of the design  to form an integral part."

The history of this definition has been detailed by Russel-  Clarke and Howe  on Industrial Designs (Seventh Edition) at  para 3.11 at page 74 which reads as under :

               " 3-11. This definition contains a  cumulative series of requirements, many  of which have been the subject of  judicial decision and analysis. The  historical process by which this  definition has evolved is of importance  to its present day interpretation and  application. Some of the more important  embellishments to the definition, such as  those dealing with eye appeal and methods  or principles of construction, have found  their way into the pre-2001 statutory  definition as a result of the explicit  adoption such requirements were held to  be implicit in the earlier and less  elaborate statutory definitions of  "design". This manifests an intention by  the legislature to adopt and make  explicit the principles developed in  those cases.  

                       Xx              xx              xx

3.13.   The words of the section are:"\005 design  means features of shape configuration,  pattern or ornament applied to an  article\005\005 . ."(emphasis supplied). Thus a  registrable design, as defined by the RDA  (A), must have reference to some specific  article to which it is to be applied. The  design to be registered " is a shape,  configuration or pattern to be applied a  particular specified article". It can be  readily seen that a particular pattern of  surface ornamentation could be applied to   wide range of different articles. An  application for registration was not in

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respect of the pattern as such, but in  respect of its application to the  specific article named. If it was desired  to register the same design, e.g. a  surface pattern or decoration, in respect  of a series of different articles (apart  from the special case of articles which  together form a set), then a separate  application had to be made in respect of  each article, and each application to  register was numbered separately and  treated as a separate and distinct  application.  In the case of designs consisting of  features of shape or configuration, there  may of course be cases where the design  is intrinsically applicable  only to a  specific kind of article. The article  itself does not, however, constitute  the  design. In Dover v. Nurnberger Celluloid  Waren Fabrik Gebruder Wolff, Buckley L.J.  said:         "Design means, therefore, a conception  or suggestion or idea of a shape or of a  picture or of a device or of some  arrangement which can be applied to an  article by some manual, mechanical or  chemical means. It is a conception,  suggestion, or idea, and not an article,  which is the thing capable of being  registered\005. It is a suggestion of form  or ornament to be applied to a physical  body." [ Pugh v. Riely Cycle Co Ltd. (1912) 29  R.P.C. 196] Accordingly, it is submitted that a  design is an idea or conception as to  features of shape, configuration, pattern  or ornament applied to an article.  Although that idea, while still in the  author’s head, may be potentially capable  of registration, in fact it must be  reduced to visible form to be  identifiable, and until it is so reduced  there is nothing capable of registration,  It may be so rendered either by its being  embodied in the actual article, or by its  being placed upon a piece of paper in  such a way that the shape or other  features of the article to be made are  clear to the eye. Whenever the means of  identification ( under some of the old  Acts, provision was made whereby a mere  verbal description could in some cases be  accepted as sufficient), as soon as the  idea is reduced to a form which is  identifiable, there is something which is  a "design", and which, if new or  original, may be registrable."

Similarly our attention was also invited to para 27.07 of  the law of Copyright and Industrial Designs by P.Narayanan  (Fourth Edition) which  reads as under :

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       " 27.07. Design as a conception or idea    "Design means a conception or suggestion or idea  of a shape or of a picture or of a device or of  some arrangement which can be applied to an  article by some manual, mechanical or chemical  means mentioned in the definition clause. It is a  suggestion of form or ornament to be applied to a  physical body". It is a conception, suggestion or  idea, and not an article, which is the thing  capable of being registered. It may according to  the definition clause, be applicable to any  article whether for the pattern or for the shape  or configuration or for the ornament thereof (that  is to say of the article) or for any two or more  of such purposes. The design, therefore, is not  the article, but is the conception, suggestion, or  idea of a shape, picture, device or arrangement  which is to be applied to the article, by some one  of the means to be applied to a physical body."         A design capable of registration cannot  consist of a mere conception of the features  mentioned in the definition, or in the case of an  article in three dimensions, of a representation  of such features in two dimensions It must, in  such a case, in order to comply with the  definition, consist of the features as they appear  in the article to which they have been applied by  some industrial process or means. An applicant for  registration of a design has to produce a  pictorial illustration of the idea or suggestion  which he has to establish as new or original;"

Therefore, the concept of design is that a particular  figure conceived by its designer in his mind and it is  reproduced in some identifiable manner and it is sought to  be applied to an article. Therefore, whenever registration  is required then those configuration has to be chosen for  registration  to be reproduced in any article. The idea is  that the design has to be registered which is sought to be  reproduced on any article. Therefore, both the things are  required to go together, i.e.  the design and the design  which is to be applied to an article.  In the present case,  the design has been reproduced in the article like glass  which is registered. This could have been registered with  rexin or leather. Therefore,  for registration of a  particular configuration or particular shape of thing which  is sought to be reproduced on a particular article  has to  be applied.  As in the present case the design sought to be  reproduced on a glass-sheet has been registered and there  is no evidence to show that this design was registered  earlier to be reproduced on glass in India or any other  part of the country or in Germany or even for that matter  in United Kingdom,  therefore, it is for the first time  registered  in India which is new and original design which  is to be reproduced on glass sheet. Therefore, the  submission of learned senior counsel for the appellant,  Mr.Gupta cannot be accepted that this design was not new  and original.  

9.              In this connection, our attention was invited to  the decisions  of the Delhi High Court in 1981 PTC 239  [M/s. Domestic Appliances  and Others v. M/s. Globe Super  Parts] and 1983 PTC 373[ The Wimco Ltd. Bombay v. M/s.  Meena Match Industries, Sivakasi & Ors.].  In M/s. Domestic

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Appliances & Ors.,  M/s. Globe Super Parts, Faridabad  manufactured gas tandoors and they got the design  registered in respect of gas tandoor.  The petitioners-  M/s. Domestic Appliances & Ors. also manufacture gas  tandoors under the trade mark ’Sizzler’. They were selling  the same in Delhi market. The respondent filed a suit  against the petitioners alleging inter alia infringement of  the design and obtained temporary injunction restraining  the petitioners from selling the seasonal goods. The  petitioners filed an application under Section 51A of the  Designs Act, 1911 for cancellation of the design No.145258  before the Controller of Designs, Calcutta. The  cancellation was sought on the allegations that the design  No.145258 was pre-published in India on the date of  registration in as much as  the respondents themselves were  manufacturing and selling the gas tandoors earlier to the  date of application for registration of design No.145258  and sold the same to various parties in Delhi, Punjab,  Haryana, Jammu & Kashmir & Uttar Pradesh and also  advertised the said supercook gas tandoor in several  newspapers.  It was also alleged that the respondents were  not the originators or the owners of the design. Therefore,  it should be cancelled. This was resisted by the  respondents.  Similarly in this case here also it was  alleged that this application has been filed as a  counterblast  to the suit filed by the respondent and it  was also pleaded that the petitioners were not interested  in cancellation of the design. In the suit certain issues  were framed and the High Court held that there was no  definite evidence produced by the parties that  the design  had been previously registered in India. It was also held  that the respondents were manufacturing the gas tandoors of  the impugned design prior to 1977 and ultimately the Court  held that the gas tandoors of the impugned design had been  sold prior to the date of its publication. In other words  the design had been published for the first time in India  in 1977. Therefore, this case was decided  purely on the  question of fact and no ratio has been laid down. Similarly  in 1983 PTC 373, this was a case by the Wimco Limited, a  public limited company  which carried on business of  manufacturing  and selling match boxes. It was claiming  that they were one of the famous manufacturers of matches  and they developed a design and  gave it a name as  ’HOTSPOT’ and made an application for registration under  the provisions of  the Designs Act,1911  and the same was  registered. Thereafter a suit was instituted against  M/s.  Meena Match Industries, M/s. Thilgaraj Match Works and Ms.  Sanjay & Co to restrain the defendants from manufacturing,  producing, selling and/or  marketing or offering for same  match boxes bearing the impugned  pattern/ design on the  match boxes. After review of the evidence on record the  Court held that the design given to M/s. Wimco was liable  to be cancelled on the ground that it has been published in  India prior to the date of registration and the design was  not a new or original one. Therefore, this was also decided  basically on the question of fact. Similarly in the present  case, as we have  discussed above, that this design which  was registered in the name of M/s. Gopal Glass Works was  not published in India or in Germany. Therefore, it was a  new and original design.  

10.             The question of eye appeal came up for  consideration in Interlego A.G. v. Tyco Industries Inc.  ([1988] 16 R.P.C. 343). In that their Lordships have laid  down important test in the matter of visual appeal of the

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eye. It was observed as follows:

               " In relation, however, to an  assessment of whether a particular shape  or configuration satisfies the former and   positive part of the definition, the fact  that an important part of the very   purpose of the finished article is to  appeal to the eye cannot be ignored. That  factor was one which was conspicuously  absent from the articles upon which the  courts were required to adjudicate in the  cases of Tecalemit Ltd. v. Ewarts  Ltd.(1927) 44 R.P.C. 503, Stenor and Amp  and in the more recent Irish case of  Allibert S.A. v. O’Connor [1981] F.S.R.  613, in all of which the claim to  registration failed. It was one which was  present in the case of Kestos where the  claim to the validity of the design  succeeded. It is present in the instant  case. One starts with the expectation of  eye-appeal, for part of the very purpose  of the article is to have eye-appeal.  That was aptly expressed by Whitford J.  in relation to the same subject-matter as  in this appeal in the case of Interlego  A.G. v. Alex Folley (Vic) Pty.Ltd.  [1987]F.S.R. 283 at page 298:-

               " I would have expected a  designer designing toys to have the  question of the appeal of the toy to  the eye, even in the case of a  functional toy, in mind. Mr.Rylands who  have evidence for the defendants said  that when designing a functional toy it  is necessary to have regard not only to  suitability for purpose but to overall  appearance. You have to design so that  the article in question will make an  immediate visual appeal to a child or  to the parent or other person buying  for a child.""

One has to be very cautious unless two articles are  simultaneously produced the Court then alone the Court will  be able to appreciate. But in the present case no design  reproduced on the glass-sheets was either  produced before  the Assistant Controller or before the High Court or before  us by the appellant to appreciate the eye appeal. The  appellant could have produced the design reproduced on  glass-sheet it manufactured in United Kingdom or Germany.  That could have been decisive. 11.             Our attention was invited to Dover Ltd. v.  Nurnberger Celluloidaren Fabrik Gebruder Wolff ([1910] 27  R.P.C. 498). This was a case in which the question was of  the pattern or ornament of hand grip for cycle handles  brought an action for infringement against a German firm of  manufacturers, and against their London agents. The  defendants admitted that they were selling cycle handles   with the design resembling the plaintiffs’ registered   design but pleaded that the plaintiffs’ registered design  was not a new or original design not previously published  in the United Kingdom and alleged that it was commonly

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known for many years prior to the date of the registration.  Though the Single Judge held that the design was new and  original having regard to the kind of article for which it  was registered and that it had been applied by  the  defendants to the cycle handles sold by them but  the Court  of Appeal held that the design was not new or original  within the definition of  the Patents and Designs Act,  1907, and that the defendants had not infringed. Therefore,  this case was decided on   the question of fact and  evidence lead by the parties. In this case, Buckley,J.  observed as follows:                 " In my opinion, there is in this  no originality. If, however, the  Respondents’ Counsel are right in saying  that the Design is the whole thing as  shown in the picture, then, it seems to  me, that the Defendants have not  infringed. Their handle is not divided  into six panels but into nine panels.  Their grooves are so much more shallow  than the Plaintiffs’ grooves as to be  easily distinguishable from them.  Fraudulent imitation there was certainly  none; neither was there obvious imitation  either.                  In my judgment, this Act was  intended to protect Designs which really  have some merit by way of novelty or  originality and not to give colour to  such paltry and trivial claims as have  been set up in this case. The appeal  must, I think, succeed and the action be  dismissed with costs."

Kennedy L.J. also took the similar view and observed as  follows: " In the present case, as I have already  said, if I rightly appreciate  the  evidence, a paneled hand grip with  grooved divisions was not new, nor was  the engine-turning of surfaces as an  ornamentation of those surfaces new, for  it had been applied to what I may, I  think, fairly call the kindred surfaces  of knife handles and penholders, where  the hand grips them. I cannot find either  novelty or originality in the Plaintiffs’  Design by reason of such a combination."

Therefore, both the case was distinguishable on question of  facts only.

12.             Our attention was also invited to King Features  Syndicate Incorporated and Frank Cecil Betts, the Personal  Representative of Elzie Chrisler Segar, Deceased. V. O. &  M. Kleeman Ld. ([1941] 58 R.P.C. 207). In this case also,  action was brought for alleged infringement of  certain  copyright in certain drawings. It was contended by the  defendants that they had not manufactured or imported and  sold as alleged by the plaintiffs and there was no  infringement. Leave was granted. The Court of Appeal   allowed the appeal. The plaintiffs appealed to the House of  Lords  and the appeal was allowed. There also much turned  on the question of evidence.

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13.             Our attention was invited to Gammeter v.  Controller of Patents & Designs and others A.I.R.1919  Cal.887. Their Lordships discussed the concept of new and  original. In that context, it was observed as follows:

               " A design in order to be new or  original within the meaning of the Act,  need not be new or original in the sense  of never having been seen before as  applied to any article whatever, there  might be a novelty in applying an old  thing to a new use, provided it is not  merely analogous. Where the design of a  metal band called the "Novelty band,"  intended to attach a watch to the wrist,  was similar in shape and configuration to  a bracelet previously manufactured for  ornamental purpose."

Their Lordships further held as follows:                 " Though the shape of the  "Novelty" band by itself could not be  said to be new and original, the  application of it to a watch to be worn  on the wrist was for a purpose so  different from and for a use so similar  to the purpose and use of the bracelet  that the design in question might be  said to be original. worn on the wrist  was for a purpose so different from and  for a use so similar to the purpose and  use of the bracelet that the design in  question might be said to be original."

Therefore, this case also depended on the appreciation of  the material placed before the Court.

14.             The next evidence which was  lead by the  appellant was a website  had been downloaded from the  United Kingdom Patent Office effecting patent that may be  applied to glass sheets. No evidence has been produced to  show that M/s.Vegla Vereinigte Glaswerke Gmbh had  manufactured this design in glass sheet or not.  It is only  a design downloaded from the website of the Patent office  in U.K. and it is not known whether it was reproduced on  glass-sheet  in U.K. or not. In this connection, the  Assistant Controller has only observed that he has made a  visual comparison of the U.K. registered design No.2022468  with the impugned design No.190336 and he was satisfied  that both the designs make same appeal to the eye and there  was sufficient resemblance between the two designs.  Therefore, the Assistant Controller held that the impugned  design was prior published and it could not be said to be  new or original. The Assistant Controller further observed  that the proprietor of this design had not been able to  make a difference between the U.K. design and the present  design. This was not accepted by learned Single Judge of  the Calcutta High Court and for the good reason. It was  observed by learned Single Judge as under :

               " The illustrations in the form of  drawings downloaded from the website of  the United Kingdom Patent Office depict  the patterns  that may be applied to  glass sheets. The patterns may be same

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but the illustrations do not give the  same visual effect as the samples of the  glass sheets produced by the appellant in  Court. There are also no clean  unmistakable instructions or directions  for production of glass sheets of the  pattern illustrated.                 The visual effect and/or appeal of  a pattern embossed into glass sheets by  use of embossing rollers could be  different from the visual effect of the  same pattern etched into glass sheets  manually. The respondent no.1 has not  considered these factors.

               The order impugned considered with  the materials on record, including in  particular the computer print outs  clearly reveals that the respondent no.1  has only compared the pattern and/or  configuration considered the visual  appeal thereof, but not the visual appeal  of the pattern and/or configuration on  the article. In other words, the  Respondent No.1 has not considered the  visual appeal of the finished product.                  There are no materials on record to  show that the design had previously been  applied to glass sheets. On the other  hand, an affidavit was sworn on behalf of  the appellant by a Liaison Executive  affirming that he had ascertained that  the proprietor of the design registered  in the United Kingdom had never  manufactured glass sheets of the design  registered."

From this it appears that in fact the pattern of the design  which is reproduced  on the glass-sheet  and the design and  the pattern which was reproduced on the glass-sheet of the  United Kingdom was not common.  The affidavit sworn on  behalf of the respondent herein, the liaison Executive that  he had ascertained from the proprietor of the design  registered in United Kingdom and they have never  manufactured glass-sheet of the design registered. This  affidavit  evidence of the Liaison Executive of the  respondent company has remained un-rebutted.  Secondly, the  learned Assistant Controller has not properly compared the  two designs that on what comparison he found that the same  configuration or pattern are identical with that of the  impugned design. Simply by saying visually one can liable  to commit the mistake but if the comparison is to be judged  whether the pattern of the United Kingdom and that of the  present pattern is three dimension or not. Both the designs  were placed before us as was done before the High Court  also.  Learned Single Judge recorded its finding after  seeing both the designs that there is distinguishable  difference between the two.  Similar attempt was made  before us to show that both the designs i.e. one that is  published in United Kingdom and the impugned design are  identical. We have seen the original glass pattern produced  before us and the photograph of the pattern produced on  record. If the complainant was serious about the same, it  could have produced the pattern which was reproduced on the  glass-sheet in the United Kingdom and the pattern which is

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reproduced on the glass-sheet by the rollers of the design  

produced before us.  If these two glass-sheets were placed  before learned Single Judge or before us we would have been  able to record the finding. The finding recorded by the  Assistant Controller  is most inconclusive and it does not  give us any assurance that it was a proper comparison of  the two patters by the Assistant Controller.  Learned  Single Judge of the Calcutta High Court had occasion to go  through both the patterns and found that there is no  comparison. Likewise, the glass-sheets were placed before  us with all dimensions along with a copy of the print out  of the United Kingdom and we are of opinion that there is  no comparison between the two.  From the visual appeal  placed before us, learned Single Judge has rightly  concluded that there is no comparison of pattern or  configuration of two designs. We fully agree with the view  taken by learned Single Judge. Hence on this count also   the view taken by the Assistant Controller does not appear  to be correct and the view taken by learned Single Judge of  the Calcutta High Court is correct.

15.          As a result of our above discussion, we do not  

find any merit in this appeal and the same is dismissed  with  costs of Rs.50,000/-(Rupees fifty thousand only).