Calcutta High Court
Anuradha Doval vs The Controller Of Patents And Designs & ... on 13 April, 2017
Author: Soumen Sen
Bench: Soumen Sen
IN THE HIGH COURT AT CALCUTTA
SPECIAL JURISDICTION
ORIGINAL SIDE
BEFORE:
THE HON'BLE JUSTICE SOUMEN SEN
AID No.1 of 2015
ANURADHA DOVAL
VS.
THE CONTROLLER OF PATENTS AND DESIGNS & ORS.
For the Petitioner : Mr. Debnath Ghosh, Adv.,
Mr. Subhashish Sengupta, Adv.,
Mr. Sanjay Ginodia, Adv.,
Mr. Manoj Kumar Tiwari, Adv.
For the Respondent No.3 : Mr. Suddhasatva Banerjee, Adv.,
Mr. Supratik Roy, Adv.
For the Respondents : Mr. Rabi Prosad Mookherjee, Adv.
Heard On : 09.02.2017, 16.02.2017, 09.03.2017,
30.03.2017, 06.04.2017.
Judgment On : 13.04.2017
Soumen Sen, J.:- The appeal is directed against an order dated 10th December, 2014 under Section 36 of the Designs Act, 2000 by which the application for cancellation of the design registered on 7th May, 2009 being registered design No.222799 in respect of 'Bottle Cap' in Class 09-01 in the name of Anuradha Doval was allowed.
The novelty statement endorsed in each representation sheet reads:-
"The novelty of the said design resides in the shape and configuration of "Bottle Cap" as illustrated."
The private respondent applied for cancellation of the registered design of the appellant on 24th December, 2012. The ground stated in the petition for cancellation under Section 19 of the Designs Act, 2000 were:-
1. That the design has been previously registered in India.
2. That the design was published prior to the date of registration.
3. That the design is not a new or original design.
4. That the design is not registrable under the Act.
5. That it is not a design as defined under clause (d) of Section 2 of the Act.
The private respondent has contended before the Controller that a shape and configuration claimed as novel feature of the impugned design was conventionally used by the liquor industry since many years and thereby the design features are not new or original. The impugned registration of the appellant was previously registered in India in view of previous registrations of 'Bottle caps' and 'closures' under registrations Nos.195268, 195269, 200344, 200345 and 200682. The shape and configuration of the impugned design is stated to be common feature of all plastic caps having been published in various documents. The private respondent disclosed various documents including a magazine titled 'Ambrosia' for issue of January/February, 2009 and submitted that in view of this prior art documents, the impugned design is neither new nor original. It was further contended that the cylindrical shape of the cap as disclosed in the impugned design is conventionally used for bottles and the said shape is absolutely dictated by the nature of the product, as the containers where the impugned design is to be used conventionally has cylindrical mouth. The grid lines in the upper part of the bottle cap are used to provide maximum grip.
The appellant, however, contended that the design registered has distinct features of shape and configuration and it was never made and sold in India and other countries prior to its date of registration.
The representation of the registration consists of three sheets depicting front/rear view in the first sheet, top view in the second sheet and bottom view in the third sheet. Novelty of the design has been claimed to be residing in the shape and configuration of the bottle cap. Disclaimer statement was provided in respect of mechanical device, or other action of mechanism or in respect of any mode or principle of construction of the article. Also colour or colour combination, letters, numerals, words or trademarks appearing in the representation were disclaimed. The Assistant Controller after considering the definition of design in Clause (d) of Section 2 of the Act held that bottle cap is an article of manufacture and capable of being made and sold separately. The design features of the article are applied by industrial process or means whether be manual, mechanical or chemical, separate or combined thereby developing a finished product. The impugned design is not a mode or principle of construction and disclaimer statement regarding same has been provided in the representations.
The private respondent placed evidence of several registrations of India and abroad in respect of bottle caps having cylindrical shape and grid lines. It is not corroborated that all the features of the impugned design are dictated solely by the function or functions which the article has to perform and, accordingly, the Assistant Controller construed that the impugned design is not a mere mechanical device. However, on the issue relating to novelty or originality of the design, the Controller held that the appellant's design cannot be held as new or original in view of prior published art documents. The findings of the Controller on this issue are indicated below:-
"Petitioner's remaining evidences of prior publication are copies of one magazine 'Ambrosia'. Reference was particularly drawn to the pictures of bottles at rear page of front covers as well as back covers of the magazine issue of January 2009 (Vol. 16 No.8) and February 2009 (Vol.16 No.9). Comparison of the bottle caps of those pictures with the article of the impugned registration, it is observed that both the designs are substantially identical. The broad features of the shape and configuration of the impugned registered design is not significantly different from the same article depicted in those pictures.
This magazine under evidence is stated to be a monthly journal printed and published in Mumbai. It is stated to be of restricted circulation with rate of subscription by air as Rs.1000.00 in India and Euro 100/- a year worldwide. This shows that those issues of the magazine 'Ambrosia' were available in India as well as some other countries upon payment of subscription. No condition has been mentioned in those issues of the magazine about non disclosure of secrecy to be maintained by the subscriber readers about the contents of the magazine. It was held by Hon'ble High Court in the matter of the Wimco Limited Vs. Meena Match Industries [Manu/DE/0255/1983] that:
Para 10: ......It is not, however, necessary to prove that large number of copies of the specification have been actually sold or circulated. It is sufficient to show that the design was so described in the specification and some persons may fairly be supposed to have known of it. The purpose of specification is an anticipation. It was open to inspection in the Patent Office. The presence of the specification or copies thereof constitute publication. There is reasonable probability that a large number of persons obtained the knowledge of the specification including the design on the sides of the match box. It constitutes a prior publication.
Para 15: The 'Newsletter', Ext. P10, for the month of August 1977 contains the evidence of publication of the design prior to the date of registration.... "NEWSLETTER" apart from being subscribed by M/s Pioneer Match Works was also having circulation in India. Annexure 'D' to the affidavit of Sri Maheshwaran dated November 23, 1981 is the original publication of December 1976 of the British Matchbox Label and Booklet Society. It gives the names of subscribers and members of the society. In India it gives the names of Nahide Fatime, Sagar Rustom and Thiagraj Sri M.... These thre persons in India were members and subscribers of the British Matchbox Label and Booklet Society in the years 1976, 1977 and 1978. The copies of the "Newsletter" in the normal course would have been sent to those three subscribers and it is reasonable to infer that they would have been received by them... The publication of the identical pattern in "NEWSLETTER" would be a publication in India on the receipt of the "NEWSLETTER" by those three persons.
Being published in India and as there is no obligation on the readers of those magazines in respect of disclosure and secrecy of the contents, the magazine can be considered as publication to destroy the novelty of a registered design. Looking into the advertisements in those issues of the magazine 'Ambrosia', it is seen that the bottle cap of the impugned registration is substantially identical to the caps as seen in the advertisements in pages mentioned above.
Referring particularly to the rear page of front cover as well as internal page number 9 of the January 2009 issue of the magazine "Ambrosia", the design features of the impugned registration no.222799 have been already taught by said publication prior to the date of registration of the impugned design. Similar advertisement showing the design of the bottle cap of impugned design can also be seen from the internal page 15 of the Vol.16 No.9 issue of the said magazine. This issue was published in February 2009 which is prior to the date of registration of the registered design. Hence, I construe that the impugned design was published prior to its date of registration. Comparing the bottle cap of impugned registration with those of previous publications, it has to be avowed that nothing new design has been emerged from the impugned registration. In some of these advertisements, colour of the article is different. Change of colour will not make any difference in the design features of the article as the colour is interchangeable or could be the claim in respect of colour or colour combination appearing in the design has been disclaimed.
Thus, the impugned design is not something that was not in existence before its date of registration. It is not significantly distinguishable from previously published designs and as such is not a new design. As per Section 2(g) of the Designs Act, 2000, ' "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'. Here the application of prior designs in the respondent's design is not original as the application of prior designs has been made to same article. Hence the respondent's design cannot be held as new or original and registrable.
In view of preceding analysis, I allow the petition filed under Section 19 of the Designs Act 2000, for cancellation of the registered Design No.222799 Dated 07/05/2009 in respect of 'Bottle Cap' in Class 09-01 and order to cancel the said design from the Register of Designs." (emphasis added) Mr. Debnath Ghosh, learned Counsel appearing on behalf of the petitioner submits that the Controller has committed a fundamental error in arriving at the said finding with regard to the novelty or originality of the design without the actual article being produced in reliance whereof prior publication has been alleged. A design cannot be cancelled as reproduction of a design on a piece of paper will have a different eye appeal with viewing product itself.
The novelty of the petitioners' design has not been destroyed by prior publication and same is sufficiently distinguishable from the pictures published in the magazine 'Ambrosia' in the month of January, 2009 and publication of same 'Bottle Cap' in the said magazine cannot constitute prior publication of the petitioners' design under the Designs Act, 2000.
The concept of eye appeal has not been applied at all which is the only test to be applied in judging as to whether a particular design is novel or original. Where the novelty of an article is tested against a prior published document, the main factor that is required to be adjudged is visual effect and the appeal thereof.
It is submitted that the top and bottom view of the cap in respect where the petitioners has claimed novelty and the same was allowed by the Controller has not at all been considered in the impugned order. The 'Bottle Caps' said to have same design and published earlier to the registration of the impugned design was never produced and in absence thereof, the Controller could not have made a proper comparison of the Bottle Caps and could not have arrived at a finding that the design of the bottle of impugned design could be seen from an internal page 15 of the Vol. 16 No.9 of the magazine 'Ambrosia'. It is submitted that the impugned order is perverse as the eye alone test was not applied and an ocular impression could not be formed until bottle caps are produced and physically examined as it would be possible for the Assistant Controller to decide in absence of such article as to whether the novelty claimed in respect of the shape and configuration of the top or bottom view of the bottle cap was taught by any earlier published design.
The learned Counsel has relied upon a Co-ordinate Bench decision of this Court in M/s. Mahendra Perfumery Works Vs. The Assistant Controller of Patent and Designs & Anr. reported at 2014 SCC OnLine Cal 14664 for the proposition that design is protected for the features of shape, configuration, pattern, ornament and in order to challenge the validity of a design, what is required is evidence of prior publication of an identical design in terms of its features of shape, configuration, pattern, ornament and composition of lines and colours. It is submitted that the learned Single Judge on physical examination of the boxes produced has opined that the visual impact created by using two articles (box and display flap) cannot be prior art to invalidate a new design which gives rise to a combined visual feel. The unique features of 'Bottle Cap', it is submitted, has not been considered at all by the Deputy Controller.
The learned Counsel has relied upon a decision of Chancery Division in Cow (P.B.) & Coy. Ld. v. Cannon Rubber Manufacturers, Ltd. reported at 1959 RPC 240 for the proposition that surface features particularly if they are pronounced may be treated as features of shape or configuration as in Cow & Coy (supra) series of ribs on the surface of hot water bottle were held to be features of configuration within the scope of statement of novelty of claim of such features. It is submitted that registrable design must have a reference to some specific article to which it is applied and the Controller having held that the 'bottle cap' which is an article should have considered the features and configuration of the said article along with the other bottle caps in order to find out whether there has been any novelty or originality. It is submitted that in the impugned order, there is no finding that the design lacks novelty or originality, per se, but registration was cancelled on the ground of prior art documents without insisting for the production of the other similar bottle caps and examination thereof.
The decision of Registered Designs Appeal Tribunal in P. Ferrero And C.S. pA's Application reported at 1978 RPC 473 RDAT has been relied upon in support of the submission that from the picture it is not possible to discern the top and bottom view of the cap in respect whereof a novelty is claimed by the petitioner and in absence of examining the said features, the Assistant Controller could not have held that the design features of the impugned design have been already taught by the publication made in the magazine 'Ambrosia' on 9th January, 2009 or from the internal page 15 Vol. 16 No.9 issue of the said magazine.
Per contra, Mr. Suddhasatva Banerjee, the learned Counsel appearing on behalf of the respondent submits that the impugned design is substantially taught by the earlier design which is manifest from the evidence adduced before the authority concerned and having regard to the fact that the said authority is an expert on the field, the said findings based on examination of such documents and evidence may not be interfered with inasmuch as the impugned design is not significantly distinguishable from known designs or combination of known designs. Introduction of trade variants into an old design cannot make it new or original. In this regard reliance has been placed on the decision in ITC Limited Vs. The Controller of Patents & Designs & Ors. reported at 2017 SCC OnLine Cal 415 and an unreported decision in Atul Narsibhai Patel v. The Assistant Controller of Patents & Designs & Ors. dated 17th January, 2017. It is submitted that the impugned design is not original as the application of prior design has been made to same article and the broad features of the shape and configuration of the impugned registered design is not significantly different from the same article depicted in the pictures produced by the private respondent before the Assistant Controller.
Section 2(d) defines "design" to mean only the features 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 or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye.
Thus, a registrable design as defined by the Designs Act must have reference to some specific article to which it is applied. The article itself does not, however, constitute the design. In Dover Ltd. v. Nurnberger Celluloidwaren Fabric Gebruder Wolff, (1910) 27 RPC 498, 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.... It is a suggestion of form or ornament to be applied to a physical body."
Accordingly, it can be said 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. (King Features Syndicate Inc and Betts v. O. & M. Kleemann Ltd., (1941) 58 R.P.C. 207 at 228) The definition makes it clear that design means the features of shape, configuration, pattern, ornament or composition of lines or colours applied to an article and not the article itself. The definition of "design" is applicable to an article in two dimensional or three dimensional forms or in both the forms. Thus, as a general rule, a design consists of:
(i) three-dimensional features, such as the shape of a product;
(ii) two-dimensional features, such as ornamentation, patterns, lines or color of a product; or
(iii) a combination of one or more such features.
The design must be such that in the finished article the features of it 'appeal to and are judged solely by the eye'. It does not relate features which are dictated by function. The rationale behind this exclusion is that the point of design protection is to reward and encourage good product design by protecting the skill, creativity and labour of product designers. Design is concerned with both form and function. Design law is not seeking to reward advances in function. A good subject of design must be visually appealing, though it need not be an artistic work or possess artistic merit. In Parle Products Private Limited v. Surya Food & Agro Limited reported at 2009 (40) PTC 638 (Mad.) (DB) at p.648, the court stated that the purpose of the Designs Act was to protect novel designs devised to be applied to particular articles to be manufactured and marketed commercially. The main concern was what the finished article was to look like and not with what it did.
In Brighto Auto Industries Vs. B.Chawla & Sons reported at PTC (Suppl) (1) 851 (Del) in Paragraph 12 it was held:-
"12. .......what a substantial difference is, is a question upon which no general principle can be laid down at all; it must depend on the particular facts in each case. In one case a quite small variation in the details of a design may be enough to make the design something quite different from an existing design. On the other hand, there are cases even where quite large alterations in details leave two designs for all practical purposes the same. The Court has to consider and look at the designs in question with an instructed eye and say whether there is or is not such a substantial difference between that which had been published previously and the registered design as to entitle to proprietor of the registered design to say that at the date of registration that was a new or original design and therefore properly registered."
Good design involves two fundamental elements: the product must perform its function and it should be pleasant to look at and appealing to the eyes. Predominance and pre-eminence of the aesthetic elements over the functional element would satisfy the definition of 'design' under the Act.
The eye alone is to be the judge of identity for the purpose of deciding whether a particular design has been anticipated or not by another has long been settled law. (Kestos Ltd. v. Kempat Ltd., (1936) 53 RPC 139). In Gammeter v. The Controller of Patents and Designs, AIR 1919 Cal.887 it was held by the court:
"The design should be protected provided it was not merely an analogous and that the test of novelty is the eye of the Judge who must place the two designs side by side and see whether the one for which novelty is claimed is new."
The word 'new' in relation to a design means a design which is completely new in the sense that it is invented or created for the first time and was hitherto unknown. The word 'original' in relation to a design may mean a new application of an existing or known design to a subject-matter. Thus, a design may not be new in the sense that it is completely new. It may be an existing or known design but has been applied to a particular article for the first time. Such a design, therefore, may be original in the sense that its application to the article is new. A "new" design is one which comes into existence in public knowledge for the first time, whereas an "original" design may not be strictly new in the sense that the shape of the design is available in public domain but there is newness or originality in applying the existing design to a particular article which no one thought of before which amounts to newness in creation. (Reckitt Benkiser (India) Ltd. v. Wyeth Limited, 2010 (44) PTC 589 (Del.) (DB) at p.595; Reckitt Benckiser India Ltd. V. Wyeth Ltd. 2013 (54) PTC 90 (Del) (FB) at p.102.). "Original" means that the design is originated from the author. (Steelbird Hi-tech India Ltd. v. S.P.S. Gambhir & Ors., 2014 (58) PTC 428 (Del) at p.445).
Drawing a distinction between "new" and "original", Buckley L.J. stated in Dover Ltd. (supra), that "new' referred to cases where the shape or pattern was completely new in itself and on the other hand "original" referred to cases where though old in itself, it was new in its application to the article in question. The word "original" contemplates that the person has originated something, that by the exercise of intellectual activity he has started an idea which had not occurred to anyone before, that a particular pattern or shape or ornament may be rendered applicable to the particular article to which he suggest that it shall be applied. He said:-
"If the design be new it may be registered under that expression. But the Act by section 49 seems to contemplate that it may be registered, even if it be not new, provided it be original. The explanation of this lies possibly in the fact that the novelty may consist not in the idea itself, but in the way in which, the idea is to be rendered applicable to some special subject-matter. The word 'original' contemplates that the person has originated some thing that by the exercise of intellectual activity he has started an idea which had not occurred to anyone before, that a particular pattern or shape or ornament may be rendered applicable to the particular article to which he suggests that it should be applied... It is easier by illustration in the concrete than by words in the abstract to explain what I mean. First, a few illustrations as to shape. The traditional figure of Falstaff is as old as Shakespeare, but if a person conceived for the first time, the idea of making a wine beaker in the form of the figure of Falstaff, that would be an original design for a wine beaker. The same would be true of an Uncle Toby jug for beer. The words new, or original, involve the idea of novelty, either in the pattern, shape, or ornament itself, or in the way in which an old pattern, shape, or ornament is to be applied to some special subject-matter."
Their Lordships discussed the concept of new and original in Gammeter v. The Controller of Patents and Designs, AIR 1919 Cal. 887. In this context, it was observed:
"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."
In Saunders v. Wiel reported in Reports of Patent, Design and Trade Mark, Vol. X, No.4, Page 29, it was held that new or original design not previously published did not require novelty in the idea of the design but novelty in the application of the design to some article of manufacturer. If it is found that the design is novel in its application, its novelty and originality is not destroyed by its being taken from source common to mankind.
A design is not registrable, inter alia, if it is found that it has been disclosed to the public in India or abroad by publication in tangible form or by use or in any other way prior to the filing of the application for registration.
Design is a conception, suggestion or idea of a shape and not an article. It if has been already anticipated or pre-published it is not "new or original". A design which is prior published cannot be considered as new. Publication before registration defeats the proprietor's right to protection under the Act. (Niki Tasha Pvt. Ltd. Vs. Faridabad Gas Gadgets P. Ltd., AIR 1985 Delhi 136) The features of shape, configuration, pattern and ornament, when applied to an article are design. What actually constitutes the design is, therefore, that peculiar combination and arrangement of lines which give such features. A design is necessarily part and parcel of the article manufactured.
The learned Counsel appearing on behalf of the petitioner referred to Bharat Glass Tube Limited Vs. Gopal Glass Works Limited reported at (2008) 10 SCC 657 to submit that when a design is sought to be applied to an article unless two articles are simultaneously produced for examination, the controller could not have held that there was no novelty or originality in the design of the petitioner.
In Gopal Glass Works Limited v. Assistant Controller of Patents & Designs & Ors. reported at 2006 (3) CHN 188 originates from this court. In Paragraph 30 of the said judgment, it was observed that under the law presently in force in India, specifications, drawings and/ or demonstrations in connection with registration of a design do not per se constitute publications which prohibit future registration of that design. Had publication of design specifications by a registering authority, particularly a registering authority in a foreign country, in connection with registration of a design, in itself, amounted to prior publication, that would hit all future applications in India for registration of designs, prior registration in India would not separately have been made a ground for cancellation of a registered design. Moreover, it is significant that Parliament consciously, made publication in a country other than India a ground of cancellation, in addition to publication in India, but expressly restricted the embargo of prior registration to registration in India. Registration in a country other than India has not been made a ground for the cancellation of a registered design.
Moreover, in order to destroy the novelty of a design registration, prior disclosure whether by publication or use or any other way, must be of the pattern, shape and/or configuration applied to the same article.
The relevant observations can be found in Paragraphs 39 to 46 of the report which are:-
"39. The next question, in issue before this Court, is whether the finding of the respondent No. 1 that the document downloaded from the internet from the website of the Patent Office of the United Kingdom, might be taken as prior publication of the impugned design, is legally sustainable.
40. It is true that publication has not been defined in the 2000 Act. Yet, for reasons discussed above, mere publication of design specifications, drawings and/or demonstrations by the Patent Office of the United Kingdom, or for that matter, any other foreign country, in connection with an application for registration, would not, in itself, amount to publication that would render a design registered in India liable to cancellation.
41. To constitute prior disclosure by publication to destroy the novelty of a registered design, the publication would have to be, in tangible form, of the design applied to the same article. Prior publication of a trade catalogue, brochure, book, journal, magazine or newspaper containing photographs or explicit picture illustrations that clearly depict the application of the design on the same article, with the same visual effect would be sufficient.
42. When the novelty of an article is tested against a prior published document, the main factor required to be adjudged is the visual effect and the appeal of the picture illustration.
43. If the visual effect of the pattern, the shape or the combination of the pattern, shape, dimension, colour scheme, if any, are not clear from the picture illustrations, the novelty cannot be said to have been destroyed by prior publication, unless there are clear and unmistakable directions to make an article which is the same or similar enough to the impugned design.
44. In the case of Rosedale Associated Manufacturers Ltd. v. Airfix Ltd., reported in 1957 RPC 239, Lord Evershed M.R. held as follows:
"In this respect the test of prior publication of an alleged invention, should, in my judgment, be no less applicable in the case of a registered design, and as regards the former, I venture to cite once more the oft-quoted language of Lord Westbury in Hills v. Evans : 'The antecedent statement must, in order to invalidate the subsequent patent, be such that a person of ordinary knowledge of the subject would at once perceive and understand and be able practically to apply the discovery without the necessity of making further experiments.' By a like reasoning, to my mind, if a document is to constitute prior publication, then a reader of it, possessed ordinary knowledge of the subject, must from his reading of the document be able, at least, to see the design in his mind's eye and should not have to depend on his own originality to construct the design from the ideas which the document may put into his head."
45. 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 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 clear unmistakable instructions or directions for production of glass sheets of the pattern illustrated.
46. 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 aforesaid judgment was considered by a Full Bench of the Delhi High Court in Reckitt Benkiser India Ltd. v. Wyeth Ltd. reported at AIR 2013 Delhi 101 (FB) in Paragraphs 21 and 22 of the report which read:-
"21. We have reproduced a large number of paragraphs both of the judgments, of the learned Single Judge in Gopal Glass work's case, and of the Supreme Court in the appeal from the judgment of Gopal Glass Work's case in Bharat Das Tools Ltd. because, it is only on the reading of these paras it becomes clear that the Supreme Court in no manner laid down an absolute rule that there can never be prior publication although in the public record of the Registrar of Design abroad a particular design is found to be registered. The Supreme Court in fact has specifically held that facts in each case have to be very minutely examined and Courts have to be extremely cautious by thoroughly scrutinizing the evidence in each case for deciding whether the public record available in Registrar of Design abroad could or could not be taken as prior publication, and in the peculiar facts of the case before the Supreme Court when we refer to paragraphs 45 to 47 it becomes clear that the Supreme Court approved the view of the learned Single Judge of the Calcutta High Court in Gopal Glass Work's case because even the Supreme Court found that sufficient evidence was not led on behalf of the objector to the registered design and that the documents downloaded through internet from the website of U.K. Patent Office did not add that amount of clarity for the same to be said to be prior publication for seeking cancellation on the basis of such alleged prior publication of a design registered in India.
22. What has been observed by the Supreme Court in the case of Bharat Das Tools Ltd. is reinforced by the following paragraphs of Russell-Clarke and Howe on Industrial Designs VIIIth Edition:
What counts as "published" for the purpose of calling into question the novelty of a later design registration? This is broader than the word at first suggests. It is by no means limited to the publishing of a design in a printed publication, although it includes that. In practical terms, there are two main ways in which a design can be published: by prior use of the design, by selling or displaying to the public articles to which the design has been applied; and by paper publications of one sort or another. It is not, in fact, necessary that publication should be on paper; an oral disclosure, provided it is non-confidential, will amount to publication.
Re-registration of the same design for different articles, or a similar design for same or different articles.
A special exception existed to the general rule that the novelty of a design will be destroyed by the prior registration or publication of that design as applied to any kind of article. By S.4(1) of the RDA(A), the proprietor of a registered design was entitled to apply for registration of the same design, or a design with modifications or variations not sufficient to affect its identity, in respect of another article. His own previous registration, or the publication of his design as registered, does not then destroy the novelty of his new design registration in respect of the new article, but his term of protection is limited to the term of the original design. This, in effect, gave the proprietor of a design registration the ability to extend the scope of the registration during its lifetime to cover further articles, although in formal terms each application to protect his design on a new article will be a separate application leading to a separate design registration. It appears that his application for registration of the design on the new article must precede his actual use of the design on the new article. This is because, if he uses the design on an article which falls outside the scope of his earlier registration, then that will not 3-106 count as a publication "of the registered design", which is all that s.4(1) of the RDA(A) shields him against as regards the novelty of his new application.
A person who makes an application to register a design and finds that it has previously been registered in respect of a different article was allowed to buy up the earlier design registration while his own application was still pending, and if he did so he could take advantage of this rule in the same way as if he had himself been the owner of the earlier registration all along.
The same rule applied to the registration (whether in respect of the same article or a different article) of a design which is not exactly the same as the earlier registered design, but has "modifications or variations not sufficient to alter the character or substantially to affect the identity thereof". However, this provision has been interpreted narrowly so that practically any significant change or difference between the earlier and later design will destroy the protective effect of this provision. For an applicant to rely on s.4(1)(b), the subject of his application must have substantial identity with his prior published design.
In Sebel Ltd's Application (No.1), it was held that substitution in the old design of a different stand did substantially alter the identity of the article (a rocking horse), and that the subsection did not apply. Since the stand had already been published in an advertisement showing it applied to another horse, it was held that design failed to qualify for novelty under s.1, the said stand being a mere trade variant. In Sebel Ltd's Application (No.2), a design was held not to fall within s.4 because the character of the design was different from the character of the applicant s earlier design. Thus it seems that the applicant s own earlier design may be sufficiently similar to destroy the novelty of his later application for protection of his modified design, and yet too different to allow him to take advantage of the protection of RDA(A) s.4(1). This is an odd and unfortunate result if it is indeed correct.
Publication in documents In cases of publication of a design by prior use as applied to an article, normally the only questions which arise are whether it has been published at all (i.e whether the articles to which it has been applied have been disclosed to the public), and whether the design is similar enough to the design in suit to destroy the latter s novelty. But where the novelty of a design is tested against a prior published document, a number of additional questions can arise which do not arise in the case of a prior use.
First, it may not be clear whether or not the document discloses a design as applied to an article at all. A trade catalogue containing photographs or illustrations of articles to which a design has been applied may be a clear enough case.
But the publication in a document of a pattern or picture does not as such destroy the novelty of a design which consists of applying that pattern or picture to an article. For it to destroy the novelty of such a design, the paper publication must suggest explicitly or implicitly by context that the pattern or picture should be applied to an article.
Secondly, the pattern (if it is two-dimensional) or shape (if it is three-dimensional) of the design may not be clear from the document. Particularly in a case where it involves a written description rather than an explicit picture or illustration, there may be room for argument as to the precise nature of the design which the document discloses, before one can go on to ask whether or not it is similar enough to the later design to destroy novelty.
Thirdly, a paper publication may be shielded from destroying the novelty of a later design registration by the special provisions of subss.6(4)-(5) of the RDA(A). These provisions allowed the owner of copyright in an artistic work to exploit his work so long as he did not apply it industrially to an article, without his own exploitation of it counting against the novelty of his own later application for a design registration covering the artistic work as applied to an article.
Does the document disclose a design applied to an article?
In order to destroy the novelty of a design registration, an earlier design must be published "in respect of the same or any other article".
Mere publication of the pattern which constitutes the design was therefore not sufficient to destroy the novelty of a design registration, which consisted of the application of that pattern to an article. In principle, the same holds true of the publication of a shape, although it is less easy to envisage cases where the publication of a shape does not implicitly convey the article to which that shape is to be applied. Thus, novelty may reside in the application of an old shape or pattern to new subject-matter. This was first laid down in the leading case of Saunders v Wiel. There, the design consisted of the handle of a spoon made to represent Westminster Abbey seen from a particular point of view. The design had actually been copied from a photograph of the Abbey.
The validity of the design was upheld, Bowen L.J. saying "It seems to me that the novelty and originality in the design, within this section, is not destroyed by its being taken from a source common to mankind...The novelty may consist in the applicability to the article of manufacture of a drawing or design which is taken from a source to which all the world may resort. Otherwise, it would be impossible to take any natural or artistic object and to reduce it into a design applicable to an article of manufacture, without also having this consequence following, that you could not do it at all in the first place unless you were to alter the design so as not to represent exactly the original; otherwise there would be no novelty in it, because it would be said that the thing which was taken was not new. You could not take a tree and put it on a spoon, unless you drew the tree in some shape in which a tree never grew, nor an elephant unless you drew it and carved it of a kind which had never been seen. An illustration, it seems to me, that may be taken about this is what we all know as the Apostles spoons. The figures of the Apostles are figures which have been embodied in sacred art for centuries, and there is nothing new in taking the figures of the Apostles, but the novelty of applying the figures of the Apostles to spoons was in contriving to design the Apostles figures so that they should be applicable to that particular subject-matter. How does a building differ from that? In no sense it seems to me.
It should be recalled that under the 1949 Act, if a pattern (or shape) has been published in respect of any article, the publication will destroy the novelty of any design which consists of the application of that pattern (or shape) to an article of any kind, however different it is from the kind of article to which the publication suggests that the design should be applied. However, the publication will not invalidate such later design registrations if it does not suggest the application of the pattern (or shape) to an article at all. Thus, a series of pictures published in a fine art catalogue would not destroy the novelty of a later design consisting of the application of one of those pictures to, say, the back of a chair, because a painting or picture simpliciter is not an "article". But the same pictures published in a catalogue of patterns for application to wallpaper would destroy the novelty of such a later design registration, because wallpaper is an article.
What design is disclosed by a prior published document? Assuming that a prior published document does satisfy the requirement that it discloses a design, i.e a shape or pattern, as applied or to be applied to an article, the next question may be what is the shape or pattern which it discloses? In some cases this will be clear, for instance where the publication contains explicit pictures or illustrations. However, it may be less clear and the disclosure may consist in whole or in part of written text which needs to be interpreted, or general instructions which can be put into practice in a variety of ways. In such cases the test to be applied is that borrowed from the pre-1977 patent law of anticipation, i.e that the prior art document must contain "clear and unmistakable directions" to make an article with the shape or pattern which is the same as , or similar enough to the registered design in suit to deprive it of novelty.
This was laid down in Rosedale Associated Manufacturers Ltd v Airfix Ltd. Lord Evershed M.R. said "In this respect the test of prior publication of an alleged invention should, in my judgment, be no less applicable in the case of a registered design, and as regards the former, I venture to cite once more the oft-quoted language of Lord Westbury in Hills v Evans: 'The antecedent statement must, in order to invalidate the sub-sequent patent, be such that a person of ordinary knowledge of the subject would at once perceive and understand and be able practically to apply the discovery without the necessity of making further experiments. By a like reasoning, to my mind, if a document is to constitute prior publication, then a reader of it, possessed 3-123 of ordinary knowledge of the subject, must from his reading of the document be able at least to see the design in his mind's eye and should not have to depend on his own originality to construct the design from the ideas which the document may put into his head."
On the same point Romer L.J. said:
"In Flour Oxidising Co v Carr & Co Parker J. (as he then was) said: „Where the question is solely a question of prior publication it is not, in my opinion, enough to prove that an apparatus described in an earlier specification could have been used to produce this or that result. It must also be shown that the specification contains clear and unmistakable directions so to use it. These observations by Parker J. were cited with approval by Lord Dunedin in British Thomson Houston Co v Metropolitan-Vickers Electrical Co, and again (when delivering the judgment of the Judicial Committee) in Pope Alliance Corporation v Spanish River Pulp & Paper Mills, Ltd. In the latter case and at the same page Lord Dunedin posed the test as follows: „would a man who was grappling with the problem solved by the Patent attacked, and having no knowledge of that Patent, if he had had the alleged anticipation in his hand, have said "that gives me what I wish"? It is true that these citations were related to anticipation of inventions, but it seems to me that they apply by analogy to alleged anticipation by "paper publications" of registered designs."
It is not permissible to make a mosaic of a number of prior documents for the purpose of attacking novelty. If the attack on novelty is to succeed, the design must be disclosed in the single prior document. If, however, one document contains a reference to another document, the two may be read together." (emphasis supplied) Referring to the Rosedale judgment, the court in Dart Industries Inc. And Another v. Techno Plast and others, 2007 (35) PTC 129 (Del) at p.140 observed that "a person with ordinary prudence while seeing the designs/documents in question is able to relate, in his mind's eye, the same antecedents designs/statements without the necessity of making further experiments i.e., the moment he sees the designs, he is able to at once say 'Oh! I have seen before'."
The principle that emerges from the judicial decisions as well as from the authorities on the subject is that, in the event, it is found that the impugned design has substantial identity with the prior published design, it is liable to be cancelled. In order to claim novelty, there has to be a significant change or difference in the design, although, it may have a common source. A mere trade variant without significant and substantial noticeable features would destroy novelty. A drawing or publication of a design in any form must suggest explicitly or implicitly by context that the pattern or picture should be applied to an article.
In the instant case, it cannot be said that the impugned design is new in its application. The prior published documents show almost similar features if not identical and it cannot be doubted that both the designs are substantially identical and the impugned design has been already taught by the publication prior to its registration. "Oh! I have seen before" would be the immediate and prompt reaction of a man looking at the impugned design.
It has to be remembered that the respondent No.1 is an expert body and has the required expertise to decide the matter. The said authority on consideration of all aspects of the matter clearly observed that the design features of the impugned registration no.222799 have been already taught by said publication prior to the date of registration of the impugned design. Similar advertisement showing the design of the bottle cap of impugned design can also be seen from the internal page 15 of the Vol.16 No.9 issue of the said magazine. This issue was published in February 2009 which is prior to the date of registration of the registered design. Comparing the bottle cap of impugned registration with those of previous publications, it has to be avowed that nothing new design has been emerged from the impugned registration.
The impugned design is devoid of newness and originality. The Appellate Court ordinarily will not interfere with the finding of the controller unless it is found that the controller has proceeded on some wrong principle. The controller must, prima facie, be the judge of novelty having regard to its knowledge and experience in the matter and certainly in this case, I see nothing wrong in principle what the said controller has done. This court is of the view that the controller was justified in the circumstances in cancelling the registered Design No.222799 dated 7th May, 2009, in respect of 'Bottle Cap' in Class 09-01.
The appeal being AID 1 of 2015 stands dismissed. However, there shall be no order as to costs.
The original record produced before this Court is returned to the Learned Counsel representing the statutory authorities.
Urgent xerox certified copy of this judgment, if applied for, be given to the parties on usual undertaking.
(Soumen Sen, J.)