Karnataka High Court
M/S Metal Impacts Pvt Ltd vs M/S Impact Metals Pvt Ltd on 16 December, 2011
Equivalent citations: 2012 (2) AIR KAR R 549, (2012) 2 KCCR 853
Author: N.Kumar
Bench: N.Kumar
the same lines and, therefore, the design is to be ca.t1c'ei1éd: The defendant also contended that the registered :the plaintiff may be cancelled on theJgrounds'.las" under. Section 19(1) of the Act, i.e., it has bie:ei<:'lVpublishled: or J in any other country prior it:o"t.he datefiof and,/or the design is not new or 0riginal"desi.gn; the design is not registrable underT'tliis:_l§_"it is not a design as defined under Clause l'\ct. Therefore, the defendant iregistiation of the registered design is View of the prohibitory 4 of the Act to the effect that said new or original; and / or it has been disclosed V_the".pub1ic":anyWhere in India or in any other byzpubllication in tangible form or by use or in any to the filing date; and/ or the design is not distinguishable from known designs or combina.ti0n of known designs.
T 6
3. After taking up the above said written statement in both the suitls,"they'..pfi1edfVar1_application.
under Section 22(4) of the Designs A Court to transfer both the sjCourt of Karnataka for decision...' notfile objections to the said application; Léft/Cr hearing both the parties by an order application and directed to this Court for decisio_r_1_,H 05. No. l5376/ 2006 is and O.S.15349/ 2006 is numbered as o.s.'2'/r$0ov7."'-- V' _P_g§3A1)iNG"s Z w l ._pThe case in both the suits is that, the company incorporated under the Companies Act, engaged in manufacture of all kinds of collapsible and aluminum containers and easy open end lids with apertures. The company was established in the year 'E1978. It is committed to quality at every stage, right from \I// 8 one of the marketing strategies and a copy--;of the is produced. The plaintiff have maintained liilighxxqifiality of if their product. On account of high-qu:a_lity salesmanship and after sales_""~s.ervice', the "sold plaintiff has become Very popular in the " imvarlgeit. and have become ve o ular artlcularlifin "a<5'rocl11emical indust and V = . «C . Q -. .
multi national co.rr1panies'.'».--Tl1é that they have been selling several years. The plaintiff aifriount. of time on research, markC*Qting.l_A.'also advertising their products through print turnover for the past 5 years are as follows:-. A V " "
""" Sales Turn over Bottles in Rs. Lids in Rs.
2001902 1,85,94,160 52,03,400 2002-~i~03 2,39.84,977 29.27000 .. 2003-04 2,62,68,423 4944280 2004-05 4,77,34,591 77,92,508 '' ' 2005-O6 3,43,63,624 61,23,350 E/.
12 Klass Engineering. The defendant did not prosecute the plaintiff upon the adoption of deceptively Mental Impact Private Limited because the Managi'i'ig..il)ireCtorV Uffitlie defendant worked with the plaintiff foraill off."
respect for the Managing Dii'ec_tor had not resorted to any legal It is a clear case of eI1Vy on. to averuvthis point in the plaint. It is the casefofdthge it has been in the business ofg '1ji":ifi-:iT~1l1f8l:'f._2'[ui1f€:."': and:Vl":.lp'ro_d:Vuction of aluminum pesticide .":.«:o'«ri.§vtainers, food and beverage applications like gases, inks, and phannaceuticals.
The defendantisgiii thaislbusiness since 1976 that is even before Eplainfiff compa--r1y"was formed. On account of the intrinsic, V .supegriorf'qu'aliVty and excellent finishing, care and skill exercised marketing their products and the huge sums of labour expended by the defendant in promoting the ~ Aigsales, the defendant has achieved large and extensive sales and built up a valuable reputation for its products and in t 15 recruited personnel whose main work is to do research and to infuse better quality. Because of its r.',__.aii,d proficiency it has been getting several covevteidu o'rders.The defendant has spent huge amountg--..Qf1 la,dVertiserr1e_n"t;;Va_and publicity for popularizing the-._produc_ts, designs, as per the specificvatiori of customers. The fundamental forrns are adopted by the defendant, amon_gs'tA._oth_er's. industry, since long time and and of late I.S.O standards; only one unit in Bangalore hayinlgllfour units. The design No. 18509;/. i2..--l.3.200l and was registered on 26.9_.200li.l"~ pl-ainvtiff"*'has chosen to issue the public notice on:ly'~op._:20_.2.2OC6'*a:'Id not prior to that. It clearly shows that Vthleplaintifflwith a View to harass fellow manufacturer in 'g¢fiéra1'a'i::: fldefendant in particular and to monopolize the rnarl\:et}_by resorting to restrictive as well as unfair trade * xplracptice has chosen to issue the notice by way of publication in newspaper at the time when the defendant is able to procure it 18 purchase orders from the plaintiffs erstwhile custo~rn'er_s--..v The defendant was constrained to address a letter to Controller General of Patents, gIQesigns"'a11d:j'_Trade-- Mumbai. The copy of the letter en:elo.sed';...The plaintifihas concealed the material fact.»that registered is universal in and have any novelty and or/originality. the case the defendant has Vnever obtain exclusive 1'ight/copy1*ightll'ic;jfi§i"p by registration thereof Indian Designs Act. The fact that the design which it haslgotl or original as the same is in use all over the since"'"l96O when Mr.Ermat (Earnie) Fraze, founder Reliable Tool and Manufacturing L' l.fnovv'-'known as DRT Manufacturing Company) who '1e§o1ut1¢n':izg;i the concept of opening the lids of any cans with the device; which has become popular and prevalent over the xyears and used throughout the world. produced by many lrnanufacturers and used for packaging a variety of products l8 that the said registered designs have been in use sin_ce_f_l'ast 46 years unhindered all over the world. The plaintiff in the business of all kinds of collapsible and .1"igid4n1_.u the best of the defendant's knowle:dge,;_-t-he? aforesaid' of the plaintiff are being rnanufachtlured constituting the very same fundamental' 'forlm'v'ltheVi;eof, without any distinctiVe/st1ikir1g._'feati.ires l.Afor..V_appealingtolthe eye. The plaintiff has in India of designs applied or to" aluminum packaging ranging which are nothing but of a malafide object of stifling the business defendant in the same field and also to haye afwrovngfulllflenefit in reduced or no competition in thgccminion field""of'Vbusiness activities. The plaintiff herein, ?causce'd~.:_:a lV4ii1<::W's"paper notice to be published through Holla .lAss'ociatiels';_ <:5Attorneys. Bangalore. By the said notice the defendant was also asked to comply with certain wrongful, illegal and non--tenab1e requirements. The defendant has also filed a petition under Section 19(1) of the Act for it 20 through Metal Box Company. The plaintiff just to harass the defendant as it is instru__m'e.ntal_i*in geLting'=._ more orders, establishing more factories at -:different"'plac.es,it T employing more people, _ Spend»._Ull1l8._A. infrastructure and machin"ergly';V--. adoptingf research orientation. The suit a disguise. The plaintiff for long has business activities of the defendant; the plaintiff and the defendantiarei and lfirlesident of the All India muminum defendant apart from website the brochures to promote its busineslszil in the advertisements of both the ;plaintiff andldefeiidants have been published on side by inl'l:the'*«same pages. The very website suggests that the ai*e--:"in the trade since 1976. The defendant has ever infringed or committed fraud on the plaintiff. The defendant cannot be held liable for action under Section 22 of ,the"~«Act as the registered design is neither new nor original. Therefore, they sought for dismissal of the suit. lt
7. On the aforesaid pleadings, this _Cou1'}: framed the following issues:--
prot>e'*--t;=hat the registered _[a)q _has been publ__ished..stn~':India or in any other u "the date of registration:
('19) that ~is»'not a new or original design:
{c)"g_ that thefdesigjn is not registerable under this Act _ not a design as defined under clause (b) of A 'Section 5 of the Act".
As the burden of proving the aforesaid issues was 'g_o'n-Vthe defendant, the defendant was called upon to lead it/«-23
OBJECTS
9. Before answering the said issues, 'it:__gisvrire.cessary to.
have a glimpse of the Designs Act and re;l«eva15_t provisions. it governing the issues.
This case arises undeiithe came into force from ptirpose the Act is protection of the gpt of the original design for avpeiiod further period extendable.-' enactment is to benefit the persori..for_'lii.s'_l' put in by him to evolve the new and is the sole aim of enacting this Act. Certairi been engrafted in the Act so as togpjrotect theoriginalipersoii who has created a new design by .4.\«,i_,t't.1i-e hisi,..Qwn efforts by researching for a long time. The by the law relating to designs to those who pr'"C~-ducge new and original designs, is primarily to advance ..indust"ries, and keep them at a high level of competitive "g_p'1--'o~gress. The object of design registration is to see that the l\/ W 24 originator of a profitable design is not deprived of by others applying it to their goods. The purpose Act is to protect novel designsmdevised' particular articles to be ma»nufactured. -and' marketed commercially. It is not to.protect"principleslof invention which, if profitablehdiatpb made the subject matter of a the copying of the direct product jvproducing a drawing.
Indeed the that it shall not stand on its lbut shall be copied by a:;fcoinni.e.rciallyVproduced artefact. Thus, the primary finished article is to look like and not.V_V1'th doesland the monopoly provided for the prioduprige-t:o1~r. is a'ffecte'd by according not, as in the case of "0r.dina'ry. a right to prevent direct reproduction of the dlimage registered as the design but the right, over a much more limitedjperiod. to prevent the manufacturer and sale of article design not substantially different from the registered M/y artistic work as defined in clause (C) of l . V' the Copyright/let, 1957 (14 o_f._i.957).'i«""""--- ' ' The word 'original' is also defined autSee_tion Zlglasv "
"2(g) "original", in relation to adesign, means originating from" the a;uthor.ijofi"such design and includes the cases which }Ehouyh?_old"~in themselves yet are new in their~a_pplic--at=ion."'v ~ " ' Section 4 of the p1o_hibii;s registration of certain designs. It reads a_s__iiIid.ef :"1.;___ _ i «. registration of certain designs. -- A .de3iy n.."which--
_{ja) new or original: or has been disclosed to the public anywhere in India or in any other country by publication in tangible fonn or by use or in any other way prior to the filing date, or where L. 27 applicable, the priority dazfe-._:of applicationfor registratiorirlorvléll"
(c) is not significicintlyiiezd1;stinguishab'le it from known designs or combiitdtioln known g
(d) comprises o_r____c'ontains slcandalyous or obscene nufitterii "
shall not be registered Section 5 of tile pro_v_i_de.s forijfapplication for registration of designs. as i3;n_iier=::,_., "5. Applicai.ion_ registration of designs.-- (1) ll the application of any person cvlairnilng toibelthe proprietor of any new or ' dges'ignl'noTt previously published in any s;oun.try and 'which is not contrary to public order or V' " register the design under this Act. ' l%'rO'i§ided that the Controller shall before such registration refer the application for examination. .. an examiner appointed under sub-section (2) of Section 3, as to whether such design is capable of being registered under this Act and the Rules made in/l 28 thereunder and consider the report of the exa.:v'r1i_r'1ef'~V.vv on such reference.
{2} Every applicationmunder (1.) it shall be in the prescribed anrlishalhl the patent office in sih-e__ prescribed and VA shall be accompanied prescribedfee. (3) A desigri beacvlregis--tered in not more than one class, :_nlg¢¢.s"e of doubt as to the class in a:7.deisi"g"n ouglh't.'io----be registered, the Conitrolle-r mzzy desjjc-r_ibe__ the 'qLie--s tion.
bbbb may, if he thinks fit, 'refuse'tolreyisterhllany'design presented to him for registrlatiolr'; person aggrieved by any such ' ~ refusal-maylappeal to the High Court. Y5) An application which, owing to any ' neglect on the part of the applicant, has not'b'ee:: completed so as to enable registration to be z effected within the prescribed time shall be deemed "to. be abandoned.
29 (6) A design when registered"-.l:s"hCdl.:: it registered as of the date ofltjhe a_ojjlicaltion"'forV registration. "
Section 11 of the Act ahhouththef'con.selqulenceslVof registration of a design,' It;lpror.iides'<.that,l'When;a design is registered, the registered shall, subject to the proVision:sv.._of in the design during ten registration. Sub~clause (2) of Sec.tioVn_hill"lproyiidestfor eX't:en.slon of the said period of 10 years} V ' L' V Seciionv. it Act deals with cancellation of registration andthe grounds on which the registration granted blielicantelled. It reads as under : ~ Cancellation of registration.--(l ) 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 thi 30 Controller on any of the following namely. ~
(a) that the design--""ha:s. y llbieen it previously registered India;«.Vo'r_y '7 V {b} that; it has"Lbe'en India or in any othefeountry =p_ri'o.r to the date of registration; or_..... A" C C' 1 (C) that not a new or original des1'gn;:orV "
1:./.C7l}" t_h'a,t the design is not registered V l H " lei » it-is not a design as defined " under "of section 2.
('2)_l " Xinlvaplilyeal shall lie from any order of the Controllefunder this section to the High Court, Controller may at any time refer any such . lpet_tvtion@'to'. the High Court, and the High Court shall any petition so referred."
Section 22 deals with piracy of registered design and proceedings that could be initiated under the Act for \/r 31 preventing the imitation of a registered "the permission of the proprietor of the designs. of'. Section 22 provides that, in any lsuit_or:,an.y {other-pzjoceedinglr- for relief under sub-section:[_2), grou1naA.on:whieh the registration of a design maybbbtelllreancellliedll"under: Section 19 shall be available as at 'igisgunribnof
11. R1isse1--C1Aarl:«liefs Industrial Designs (1951) Edition agiage 162 r-éads .;§ls-"and.»§r; _'5."t[t_ itsV..s'aid;,;_tha-tjllproteetionntvill be given to any lv:desigln'l'dtvgh.ieh is.r7ie_av or original. As to what vdistinctt0r1\'i"~jto be drawn between the words rleu} and original is doubtful. It may be that anew' nieansv different from what has gone before Eaiidub'th_at has the same meaning as in the by _ i.e.. originating from the author. It is valsoipossvible that the view advanced by Buckley. L. 'J. :':Ir1 Dover Ltd. v. Numberger Celluloid Waren dd (1910) 27 RPC 498 is the correct one. There he said that 'new' referred to cases where the shape or pattern was completely new in itself, L 40 idea of a shape or of a picture or of a device.«'or:"'~of"--some arrangement which can be applied to an manual, mechanical or chemical. _means.""' "design necessarily part and parcel of thev'arti;:'le.. a trade mark is not necessarilyll_so. 'l'heIefore, gthlingls required to go together, i.e., and design which is to be applied to an is'g~that:_zthe design has to be registered which is on any article.
Registration the impugned deign has been publishedlllby date of registration. NOV_ELTY 4"' ~ .A _44v*~NOVe1ty so as to sustain a patent, the thing must to any one before. Mere novelty of form is not sufficient. Novelty involves the presence of some element or ..ne_xv position of an old element in combination, different from l"AV_larly'thing found in any prior structure. If the same shape or 41 pattern, or one substantially similar, has prev-iousl'y"h'een thought of in connection with any article of the idea published, or registered,.....then be deprived of its novelty. Protection':.wi1l'be given 2 which is new or original. «--_gz1eans..('jjii"fef§n:tA gone before and that as in the Copyright Act, i.e.. fsgiorn ..¢}1te:a'4_thor. 'New' referred to cases wherethe 'completely new in itself, whilstfjforiginalyv::i'eférred':to::Vvc'as(;3:where, though old in itself, it the article in question.
The has to be construed in the context has ever been reproduced by any other,Cornp'any'earlier. is only the new and original design wl1.ichi,is new andvflwhich has not been available in the country "or_ previously registered or has not been published linhlndia yorinlilany other country prior to the date of registration shall be. protected for a period of ten years. It is in the nature 1' MW} protection of the intellectual property right. lit, 42 ORIGINAL
15. The word 'original' refers to de'si:gr1,;"whicl*i-- previous designer had created for anypurposeydandvV"11ew".as?' L referring to a design which was not.__in;_this was newly and for the first tim.:e'l"a.ppli.ed..to of article with reference_.not&..to' lclassificlationfin the third schedule of the Designs kind of article having regard its use. The word 'original' person had originated somet_h.in.g_that intellectual activity he has started an occurred to anyone before, that a particularpvatterr1::o'r,:l:shape or ornament may be rendered apyplicvable to l'the.l:particular article to which he suggests that it shall "New or original" involve the idea of novelty shape or ornament itself or in the way in which pattern, shape, or ornament is to be applied to s0I_ne special subject matter. There must be the exercise of Kilntelllectual activity so as to originate, that is to say, suggest for it 43 the first time, something which had not occurred»to' before as to applying, by some manual, chemical means, some pattern, s'hap'e;.or..Ao1jnament to some,' special subject matter to which it ii-iotbeen applied
16. Generally,the ilntegrityd 'ar1d..vvoriginality is dependent on dlioiimyeiital activity involved in conceiving the design design is original, then the have Coneeivedlsomething new. If the a previous design, then the desigrier merely keep an existing design in in its. The introduction of ordinaiy trade variants into an old design cannot make it new "n.The working world, as well as the trade world, is to take, in all cases. its choice or ordinary trade vafiaiits for use in any particular instance and no patent and no registration of a design can prevent an ordinary ll "workman from using or not using trade knowledge of this kind. \L 46 THE NOVELTY RESIDES IN THE V AND CONFIGURATION OF" THE. A_ I As -
ILLUSTRATED" ' ' ' "
In the handwriting it is mentionedfas undergl-I ' "Particularly in thépofafiinl 'gv__'A' qf the article" _ __ 3
19. In lzéuvpport of '"'their_ respective contentions. the parties have and examined experts. Sri G.Rarnaclhand.rar1l§fVINliifigéiginghlulbirector of the defendant company,' has d:ep'Io'3eId4..sIub:s.tantiating the aforesaid stand. He has asserted in his evidence that Mr.Ermat Fraze is the original of easlvflopening lid and it is he who should be given I sfhfe-credlitdistinction for the invention. Plaintiff was not the design but had merely copied the same. In fact even the time of registration of the easy and open design 2 , "O'y---thelialaintiff the design was globally used and manufactured Acforfllpackaging foods including pesticides. It was used and it 47 updated for four decades before its attempted regi.s'tr,fa--t:ion in India by the plaintiff. During these four decades"
universally exposed and globally acAkn.owle_dge:d;'ea. if has mischievously got the design rlegistered a future date against its com.p'e.titors"-ands -false claim that it is his own. Mere cosrneticchapnge.'does create any distinctive principle Though the plaintiff got regi;stered:.im~.the& chosen to issue public at any point of time prior the plaintiff with a View to harass _' general and defendant in particularll and the market by resorting to restrictive as well 'as unfair trade practices has chosen to issue lnotioe" publication in newspapers at the time :whe1i__Vth._edeafelndantt company was able to procure purchase orders the plaintiffs erstwhile customers. The said DWl has produced 42 documents in all in support of his case. Exs.
" 12 and 13 are the extracts of article on the subject of open fiend lids taken from web. Exs. P14, 15 and 16 are letters 48 issued by their customers. Ex. P17 is the s<:jatF.frn.¢1a¢ of supplies and Ex.Pl8 is the minutes of the meeting. the journal of Pesticides Associatio,n~o.f_ 1nc1:::§f _ are extracts of journal of Minerals an_"d~Meltals' C P24, 25 and 26 is a journal Foodll:E::poii"tl_CHarli Malééia Magazine. Exs. P27 isa copy__of:'the* from Willet Flexi Cup. Ex.P28 is issued by Willet and Company. by Daton Reliable Tool than album containing designs 'Corporation of USA in the year l994:.:vEx.f§3l1'j'i*sg specification issued by Automatic Corporati_on,p 'prospectus issued by the Indian Institute of Packaging, "Bombay. Ex.P33 is the brochure of jdefendant"companlylwC Exs. P34 and 35 are the advertisements by plaintiff and defendant in the magazine. Ex_.P36~ another brochure issued by the defendant company. Ex.P'3_7"iis an extract of Scan Holdings Company extracted from .thle"A_web. Ex.P38 is a pamphlet of a company KALL. Ex.P39 is lfian extract of web site of Dongguan Mansua Company Limited, L. 49 China. Ex.P4O is a letter of Can Maker ad_dres-sledjithe defendant company. Ex.P4l is pamphlet issi_1edVVby:.A_a~ by name CANTEC of Korea. Ex.Pv4.a'5.Aalis'an7extraet"of.a'journal L from the Can Maker Summit,_2004l'?__ l
20. This witness ha"s* _:"oee'n_ exhaustively cross- examined. In the crosls_{e:~:arnin'ati_oii_fitis elicited that the design developed aitailable to everyone universally.<.. year 1962 and after the expiry of to the public domain.
Theregfi is ifdai.fference«lbety§2een the design formulated by Mr. Er1nalAlF1:_aze and which the plaintiffs have got it regi.st--er_ed. Vfiowexl/er." he admits in the case of design of Mr. pErmalE=7Fra'z.e the do not peel of whereas in the case of 'lregist:e_li'ed" the tab peels of. According to him it is a lsaibseqvuent. development. He denies the suggestion that the design of Mr. Ermal Fraze is meant for use and throw whereas .the'plaintiff design is re--usable. 50
21. Then we have the evidence of one a Mechanical Engineering Graduate, who is anlexpert field. He has deposed that Can making orig'inated 7. V more than 50 years ago. Can 'technology a:uri1d.Vb:easy open end lids are universalvifcjlpidangd globally technology is available .througl'io.u_:t-- the world'i--wi*~h no royalty charges. Easy open end' dates itself to as old as the year l962'with Fraze, the founder of Dayton Company. The articles Fraze is published in newspapers -'produced. These articles are availablewat-ad Newslibrafy.com which is an autf-fientic dat'ab_ase of millions of newspaper articles published «inrAme.r:icari«newspapers. The plaintiff company has concealed 'the that the designs which it has got registered are..not"new' or original. Since 1960 when Mr. Ermal Fraze, the xfounderlof Dayton Reliable Tool and Manufacturing Company T' 'i"ev_c'lutionized the concept of opening the lids of any can with __;%the device which has become popular and prevalent over t e L 51 years and used throughout the world, it is produc'ed*lo"yVgrm,any manufacturers and used for packaging in a variety ranging from foods to poisons. Thedesign thefsubjgefct . matter of the suit pertains to easy end if pour aperture. The allegatio_ri*~.that"the' n.o3{e»]:vltly:{.r_:es.ide--;s in shape and configuration of with round pour aperture is too §ilagiie',:l»f'Neither the shape nor its configuration. nor The plaintiff has got what prevalent registered in general No. 185097 in the 'top View' No.2. below the Opener, there are two semi, (layers of wedges or protrusions) in around and semi circular shape running almost parallel to each of,her.~_This portion may be marked as 'a' for inner circle circle. Defendant cornpany's easy open end does nvotcontain such a design. If this portion is contrasted with"do«:ument No. 4 of the plaint which is the photograph of .defendant's and plaintiffs design there is no imitation at all. %Th€ apertures come in various forms and shapes. The aperture ll/""
52
itself in the form registered in l85097 cannot matter of registration. The said aperture is neither' original. It has been already in _use,.__ ltsignifigcantlyg' distinguishable from known or corinbiiiiationffiof knowrjdesigns. T There is no novelty in the saidge-asy end the manner they are registered:hayeuubeen' used far and wide much before _re'gists:ra1tionv;vA':Apart from being used the design hasalso design is not the invention of Z: alleged. He has referred to sgai§i_o;iiiVs andffmarked in the case which showsithe aforesaid design much prior to the registration of design. The said publications show. that 'the design been disclosed to the public in a ptaiigible fdrm mucfhffpiior to the alleged filing and registration by It also shows that the design has been in use and manuufactured since many years prior to the alleged date of regis'trai,ion. The entire operation of the usage of the easy open . end} lid is based on the same principle of construction which is fgmerely mechanical in nature. Easy open end lid and round Ls 53 pour aperture are common in every day usage. faliimintim cans of various shapes and configurations.are~».manufaetured*__ throughout the world. Their principle' ovfvithe same. There can be various dimensions. Thedse T' aluminum bottles have been in much use-before the. registrationf' Through him also Exs. P43 to P66 werer-marked-»
22. deposed that in 1962 one. easy open lid. He applied in and it was patented in his namelin -are two types of easy open ends. Type 1 ab stays and in the other it comes out. In thegcanymakihgindusntry, an easy open lid is also called as end based on the technology adopted the number of cars' ar:e--..Vriiaf.m:iactured per hour. While manufacturing this easy open lid, it does not involve other sizes. The manufacturer of easydopen lids require precision tooling. EX.Ml is a bottle is of hexagonal shape. It is the hexagonal shape which Emay be a novelty in the bottle. A11 aperture comes in various lL > 54 shapes. Therefore, it cannot be a novelty. The ei'1tireV'o_pe51'ati.on of the use of the easy open end lid is b_a,se_uc_i'-..yonffithe principle of construction. The design registeyreidlfithe plaintiff is vague because it notflj.Acontai'n.V any measurements. 9 V " l ' '
23. On behalf llofllthél'/Mr. Gopalakrishna, Sales Manageriofvptheplaintiff 'wasp In examination in chief he stated in the plaint.
In the that plaintiff and defendant are »"rn_anu_factun'ng bottles from the year 1976. :_4pl_:ai'ntiff was incorporated in the year 197.8,. the samejin the year 1969 a company by name Engineering Vf'rlil\/late Limited was incorporated to carry on "business. He admits that both the plaintiff and competing with each other in the same business. He also 'iadmits not only they are in the same business. they are V dealing with the same products. He pleads his ignorance lfiabout the fact whether Alcan Exports Private Limited was the \,/, 55 first to bring into India aluminum bottles lids. He is not aware whether the defend~a--n.t:'foompany vlwas using easy open end lids and aluminum b.ot'tle's.: 7 registration of the designs Vbyj_'the«"*p_laintiff seeing the registered design the top View of the said narneljrthe lid, the upper portion tab and porttiori.'bi_a'perttire. Ex. K is referable to lEx.E is the basis on which he has copied the designs.
Ex.E the plaintiff and defendant lids. v:Fl_e aware whether the tap portion in Ex.K is aman3i:_"~~'years prior to the registration of the sa'i'd, design. He Cannot say whether the tap portion Contained * in Igxs, 'p.3o(a)_,_ (b), (c), (d) and Ex. 55(a) and the tap portion in the same. He admits that the lid MO.A is sin1ilar:to'vt'he two lids shown in EXE where it is marked as Ml , and IM: After seeing Exs. K and Mo.A he admits there is ' gfdifference in the lower aperture region. The difference is in Ex. There are two ribs whereas in Ex.Mo.A there are no ribi; He 56 admits that the ribs are projecting outside. "a.__ semi inner circle with a projecting like 'a« bead in 'semi' --c'irc'tilar f if manner. The same is not there of Ex.K is similar to that offthe_gbottorn ariew.:vlof«:._l:3>:..Bdat page No.3. There is a difference in its bottom view. In EX.l\/l(_.)f'j:A'tl--iere'"depression which is not in Ex.K. That apart, in ai*e~.vvtw:ojVV.circles which is not there in a difference between the and Ex.MO.A. He also admits to both to the shape and design of the bottle. He denies the sugges-t_ion thatAl1e'is7not producing the original as it does noficontain the"'po.1:tion marked 'A' in EX.A. According to him ' there ~vi._sl'no«v_dlfference between the View of the bottle in the first the bottle EX.J. The dimension of the bottle is diameters whereas the height is 236 millimeters of the V ~ registered design at EX.A. In Ex.J the diameter is 54 mm whereas the height is 80 mm. He admits that the bottle shown Vin EX.A and Ex.E are of different sizes. Similarly, the sifie of 57 the bottle shown at Ex.J and Ex.A are different. his ignorance about the fact that for the first time'E--n boxes were introduced by a company ,calle_d"M'eta'l Pgri-vate _ Limited. He has no document Vhe».re'qucst ::fI*QIVlii.i_hiS customers acknowledging hislginventionlliand the basis of such invention the registered designs. He pleads Ermal Fraze is the inventor of thisreasy op--e--n_ the suggestion that the design universal in nature.
24. dddd 1" the Works Manager of the plaintiff" working for the last 24 years. He haspcalso 'evidedncewsin support of the plaintiff. He is a ADiplom'a Holderdirimlvlechanical Engineering. He admits in lcrosssveyiarnirtation that bottles are being manufactured since in_numerab§l_.e'fyears. Similarly, bottles of various metals and ingredients are being manufactured since innumerable years to registration. Even aluminum bottles are being Emanufactured since innumerable years prior to registration. 58 He admits that that bottles of aluminum metals gaie to the market. He further admits that of aluminum bottles by impact extrusion' .method.:_.Vis_g .in"l'lvog«ue T. much prior to registration.
which are in the market today'areiinianufaycturefil impact extrusion method. T'z'ie.__'technloi'ogylladopteldlis impacting an aluminum billet with in can forming.
He do not this technology during 11 W esisentilally has two portions, a mouth __'l'h_je.' the neck of a bottle can be combined in__He -has been working in the plaintiff Company. Jl.He admits that, to get a design registlered one hasllto make a claim of novelty. ln the easy open 'A «end there _is1=an aperture. Once the said aperture is open. The opening of the said aperture could be cc.ntro_l.led_nbyl the amount of pressure used on the tap. He do not whether the end user at his discretion can open the vapefrture depending on the pressure he applies on the tab. It lfican be opened partially. lt can also be opened fully. He do not 59 know the extent of pressure applied besides of opening of the tab. EX.L is not registered. the aperture comes out when the is op_en(" lid Completely open the tab do not stay "l:ijiow whether this pulling up of the 'tab 'called He do not know whether the} tap is the invention of Ermal whether this pull off tab caused environmental.:l_itteri_nggwhenllitfipwas changed over to stay on tab; pull off tab is in vogue admits that the two semi found in MO--A. He further of these two lids vary. In the formation of borttlef-theldmetal flow is an important factor. In . there is nofeapfvat the top of the design. lt is an open in the said design there is nothing stated about the stovppeij. the lid. The mark 'A' is not Visible at pages 1, 2 and llof Ex.A. He cannot say whether the said portion is there vVQ>I"."fl_{1Ot at all. He admits that apart from shape and Econfiguration in the design which is registered, there is no lp» A"
60
reference to any novelty. He admits that there is in the shape of the neck in Ex.M--2 and M-8*.» difference in the shape of these tvvo l' the registered design there,' nod"angulati.Qh.'R.. not compared the plaintiffs and do not know whether the used Inuch prior to the plaintiffs design. which is available on V A V
25. If evidence it is clear that one Mr. Dayton Reliable Tool and Manufacturing this easy open end in 1960s and the said._:fact.v"is published in various international Aafidanatioiial jo{ii4r"i'.e1Is' of repute. The said technology is used years before its registration by the plaintiff. It it is necessary to look into the documentary evidence produced which is not disputed which came into 'QXlS_t€11C€ at an undisputed point of time. Exs. P11 and P12 is lb 62 realized he had forgotten to bring an openerfor"
canned beverages at the event so he was :_. use a car bumper to pry them open. ~.go't:.l_lhim thinking of possible solutions"to*~the would eliminate the need for a ope_n"erl'in future. _ _ V VV 1 Fraze concentrated on' ---- .ariV.titiea'£r that would use a lever attachettto a--»_.rivetl at .theVA,reenter of the top of c_an."'--.._"I1le.believed. that strengthening the secret to success. help.3"_theV' stand up to the of and. if the alilmi.nu.'fnf_were' pref-scored "with an opening, the beulstrong enough for pulling the" can the "lever snapping off.
first."version used a lever that pierced * --.a hole the can resulted in sharp, sometimes gdangerous 'edges. Later he created the familiar version, which had a ring attached at the it pulling. and which would come ojj' co.rrzpletely to be tossed aside. He received U.S. 3 .. patent N03, 349, 949 for his pull~top can design in 963 and sold his invention to Alcoa it 64
26. The aforesaid facts which are not 'm:g{1:.es it abundantly clear that the registered plaintiff has been published in thzjéé inte_rr1ati;onai«.jo,urnals1in if various countries abroad prior Therefore, defendant has that design owned by the plaintiff has been"pu._b1is'hed lIn'dia"as well as in other countries prior of of the design owned by the.pl.aDintiff.fl if V i ll
27. -------- plaint, the plaintiff has not plead-ed new or an original design. In other words the Even in the evidence neither he nor;hisr..witne'$sgeslhave led any evidence to show what is the «sulbstanftial'irnprovement if any made by the plaintiff to what Mr. Ermal Fraze. They are also unable to point ou~tl_wVhat is the novelty involved in this design for which they claiming any credit. Section 4 as aforesaid prohibits " 'registration of certain designs if a design is not new or original. is only any new or original design not previously published in I 65 any country which could be registered under thefrctll of Section 5 of the Act. Therefore, a registered if the design is not newA"'o'r«origina1._:"7i'herel.'isfino T V statutory definition of the term new:_' the term is sought to be appllieidl relation means originating from the author and includes designs which though' are new in their applications.
28. .... _ full'_V'.lS:':~l3:lCa1'-._fllfeit from_tf1e certificate of registration that respect.'*QfVregiste.red -l design No.187526 the novelty resides l in configuration of the bottle as illustrated. 'l'he"eVidvence on record discloses that there is a 'considerable difference between the plaintiffs and defendants »v/'l1"'r;.«_3vll"V;::lefendant is not imitating the plaintiff in the n;atterv.of:is;h'ape and configuration' In fact, it is not the case pleaded by the plaintiff at all. Relying on the evidence of it was pointed out that it is admitted in case of design of 'Mr. Ermal Fraze the tab do not peel of whereas in the case of 66 registered design the tab peels of. A faint attempt _'made to contend that this technology of tab is the plaintiff. Though there is no plea,_thC_1_'e is_7no_ regard. It is on the basis of the a_dmlissiodn'~' examination, such a casedgwag However, the evidence on clearly' that Mr. Ermal Fraze is the V easy opening lid.
Plaintiff is not the oIigin..ator:ioi;'tVhegp it merely copied the same. .--g'Miyhe design, this design was globally for packaging foods and updated for four decades befored'd'=it§<-- in India by the plaintiff. During the4sc..:Vfo'ur" decades it had become universally exposed «and. globally acldioivledged. Mere cosmetic change does not VVcpreact<:_x'a.nj'y' dvdisltinctive principle of design or construction. At the bestit' be construed as trade variant. The plaintiff has got iegiistered the design for more than 40 years prior to its ,r_e"gi_stration by suppressing the true facts. In fact. after the 'invention of the said design by Mr. Ermat Fraze many designs u// .
67 similar to the registered designs have been in various magazines and journals both in Indian it plaintiff concealing this material fact it it. had got registered is universalin andfifil, does .i{:u<e any novelty and or/Originalitylf:j*hereforc.the haye clearly established that.__the by the plaintiff has been other country prior to the date of which is new or original. desigii could not have been registered' it is not a design defined in clauspeltb) Act. In that View of the matter, the plaintiffllis to any of the relief sought for in re_spect of these"twQ___designs.
" other material on record clearly establishes that both plaintiff and defendants are in the very same business. Their products are being published in Various vmagazines. Some times, side by side. They have common customers. In fact. Mr. Late G.V.Subba Rao, the earlier l,/ e 68 Managing Director of the plaintiff Company waspV...t_l414'_6 of Aluminium Bottle Manufacturers Assocliatioiigi.Vl'ivTr'.--..:
Ramachandran, the Managing D'i'rector of_."thte_ defendant j 9 Company was its Vice President. the Rallis India Limited shows_L4"'~i..tVl1at largest Agrochemical producers in aluminium containers in large qua.riti.ties_ the Agrochemicals they manufacttiie a new design of rriouth fitted with a Easy Open products to ensure prevent duplication of their products, such type of containers from M/s'A1can uE;;ports (P) during 1997-99. As the demand for Athesae of «containers increased, they also took up two other manufacturers namely the plaintiff 'and the .defendant. They have purchased such containers from E all the sources developed by them.
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