Calcutta High Court
M/S.Devans Modern Breweries Ltd vs Controller Of Patents And Designs And ... on 29 April, 2015
Author: Biswanath Somadder
Bench: Biswanath Somadder
AID 1 OF 2013
IN THE HIGH COURT AT CALCUTTA
Special Jurisdiction
ORIGINAL SIDE
M/S.DEVANS MODERN BREWERIES LTD.
Versus
CONTROLLER OF PATENTS AND DESIGNS AND ORS.
BEFORE:
The Hon'ble JUSTICE BISWANATH SOMADDER
Date : 29th April, 2015.
Appearance:
Ms. Moushumi Bhattacharya, Adv.
Mr. Prithviraj Sinha, Adv.
Ms. Mitul Das Gupta, Adv.
Ms. S. Chatterjee Singh, Adv.
Ms. Debamitra Adhikari, Adv.
..for the appellants
Mr. Somenath Bose, Adv.
...for U.O.I
The Court : The instant appeal arises out of an order dated 7th November,
2012, passed by the Assistant Controller of Patents and Designs, Kolkata, in connection
with an application bearing no. 233798, which was filed by the appellant under section
5(4) of the Designs Act, 2000. By the impugned order, the Assistant Controller refused
registration of a design under the application filed by the appellant before it.
It appears from the facts of the instant case that challenging an earlier
order passed by the Assistant Controller of Patents and Designs, Kolkata, being order
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dated 11th January, 2012, the appellants had approached this Court in a previous
appeal, being AID No.2 of 2012. That appeal was disposed of by a judgment and order
dated 2nd August, 2012, whereby the order dated 11th January, 2012, passed by the
Assistant Controller of Patents and Designs, Kolkata, was set aside and the entire
matter was directed to be considered de novo by the said authority based on the
observations contained in the said judgment and order dated 2nd August, 2012.
Upon perusing the impugned order dated 7th November, 2012, it appears
that the same authority, ie. the Assistant Controller of Patents and Designs, Kolkata,
has virtually overlooked the specific observations made by this Court in its judgment
and order dated 2nd August, 2012, passed in AID No.2 of 2012. Relevant portion of the
judgment and order dated 2nd August, 2012, passed by this Court is reproduced
hereinbelow:
"While considering whether a particular design can be registered, the
registering authority should, at first, carefully consider the statutory
definition of the word, "design", as provided under section 2(d) of the
Designs Act, 2000, and thereafter, consider the prohibitions laid down
under section 4 of the Designs Act, 2000, which specifically debars
registration of certain designs. If any of the prohibitions laid down under
section 4 of the Designs Act, 2000, is attracted in respect of a design placed
for registration, the same cannot be registered. However, in the facts of the
instant case, in view of what has been observed hereinbefore, it cannot be
held with certainty that the design that was placed for registration was not
significantly distinguishable from known designs or combination of known
designs. The yardstick applied for registering a design under a particular
class is required to be maintained and adhered to evenly and consistently
by the Controller while deciding on the issue of registration of a design
falling under the same class and cannot be varied in any manner. In other
words, the parameters for registering a design under a particular class
cannot be altered in any manner while the Controller decides on the issue
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of registration of a design falling under the same class. Therefore, the issue
as to whether the design in question can be registered or not is required to
be revisited by the registering authority, namely, the Assistant Controller of
Patent & Designs, Kolkata."
It appears that while refusing the design application of the appellant, the
concerned authority was, inter alia, of the view that design application no.233798 "did
not have any inventive ingenuity and appeal to the eye as possessing for reason of its
shape and configuration and features which distinguished it from the cited designs in
the same class." It was further observed to the effect that the applicant (being the
appellant herein) "did not take any pain to create any new or original design rather than
to simply modify some minor features" and such "microscopic variation failed to
establish an overall new aesthetic effect which was judged solely by ocular effect." The
concerned authority, while passing the impugned order, also observed that "novelty
alone was not sufficient for registration of design; there must be substantial originality in
the impugned design and if the design features of shape and configuration of cited
designs are same or nearly the same with the subject design, then the subject design
ought not to be proceeded for registration due to lack of sufficient originality with bare
novelty."
It appears that while making such observations, as indicated above, the
Assistant Controller of Patents and Designs, Kolkata, forgot to take into consideration
the observations made by this Court in its earlier judgment and order dated 2nd August,
2012, wherein it was, inter alia, held to the effect that the yardstick applied for
registering a design under a particular class is required to be maintained and adhered to
evenly and consistently by the Controller while deciding on the issue of registration of a
design falling under the same class and cannot be varied in any manner. In other
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words, the parameters for registering a design under a particular class cannot be altered
in any manner while the Controller decides on the issue of registration of a design falling
under the same class.
During the course of hearing of the matter, the appellant produced a
specimen for which registration was sought for under application no.233798. Upon
examining it, this Court observed the presence of a significant curve at the shoulder of
the bottle and another significant curve at the start of the neck of the bottle and
thereafter a bulge in the neck of the bottle. For a design to be registered, it is not
necessary that the whole of the design should be new. It is sufficient if some part of it is
new or original. A new combination of two or more old features may form good subject
matter for valid registration. The observations made by the Assistant Controller of
Patents and Designs in the last paragraph of the impugned order dated 7th November,
2012, cannot be held to contradict the fact that in the present case, the design of the
bottle is original. Section 2(d) of the Designs Act, 2000, makes it abundantly clear that
eye appeal of a finished article has to be judged solely by eye alone having regard to the
article applied for registration and not by conducting a comparative study with other
articles. There is nothing provided in section 2(d) of the Designs Act, 2000, wherefrom it
would appear that eye appeal has to be judged relative to the eye appeal of articles of the
same kind. If an article has an eye appeal, it cannot lose such appeal only because
another article has eye appeal. The entire concept of "eye appeal" is , however, quite
subjective and the Assistant Controller of Patents and Designs, while considering the
matter de novo, ought to have at least relied on the observations of this Court in its
earlier judgment and order dated 2nd August, 2012, relevant portion whereof is quoted
hereinbefore.
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In such facts and circumstances, the impugned order dated 7th November,
2012, passed by the Assistant Controller of Patents and Designs, in respect of
application no.233798, is liable to be set aside and is, accordingly, set aside.
The respondents are directed to register the design, under application
no.233798 dated 10th January, 2011, in the same class it has been applied for.
Urgent certified photostat copies of this order, if applied for, be supplied to the parties subject to compliance with all requisite formalities.
(BISWANATH SOMADDER, J.) kc.