Calcutta High Court
Shree Vari Multiplast India Pvt. Ltd vs Deputy Controller Of Patents & Designs on 30 August, 2018
Author: Soumen Sen
Bench: Soumen Sen
IN THE HIGH COURT AT CALCUTTA
Ordinary Original Civil Jurisdiction
ORIGINAL SIDE
BEFORE:
The Hon'ble JUSTICE SOUMEN SEN
AID No.1 of 2018
SHREE VARI MULTIPLAST INDIA PVT. LTD
VS.
DEPUTY CONTROLLER OF PATENTS & DESIGNS
For the Appellant : Mr. Ranjan Bachwat, Sr. Adv.
Mr. Debnath Ghosh, Adv.
Mr. Ramesh Ganapati, Adv.
Mr. Anjan Sen, Adv.
Ms. Swarupa Ghosh, Adv.
For the Respondent no.1 : Mr. Sunil Singhania, Adv.
For the Respondent no.2 : Mr. Sayantan Bose, Adv.
Smt. Soumya Ghosh
Hearing concluded on : 02/08/2018
Judgment on : 30/08/2018
Soumen Sen, J.:- This appeal is arising out of an order dated 12th March 2018, by which the application for cancellation of the design No.242843 registered on 3rd February, 2012 in class 06-01 in respect of application of the design to chair was dismissed.
The grounds for challenge before the controller are that the impugned design is not new or original, as it has been already disclosed to public and not significantly distinguishable from the known design or combination of known designs.
The contentions of the applicant before the controller are summarized below.
In the application for registration novelty is claimed in all views for the whole shape, configuration and surface pattern of the Chair. 'Original' means that the design originating from the other. There is a distinction between 'new' and 'original'. 'New' is referred to a case where the shape or pattern is wholly new in itself. 'Original' in relation to a design would refer to a case which could be old but new in its application to the particular subject matter. The word 'original' means that the person has originated something. The person has conceived an idea by exercising his intellectual faculty and thereby has produced a particular pattern or shape reduced in a tangible form applicable to a particular article to which he suggests that it shall be applied and only then a design can be said to be original. The design registered by the respondent is neither new or original as the same has already been disclosed to public and not significantly distinguishable from the known designs or combination of known designs and, accordingly, liable to be cancelled under Section 19(1)(c) of the Designs Act, 2000.
In the statement for cancellation of design as well as affidavit in evidence the petitioner has referred to four designs of chair which alleged to have already been registered in India prior to the application for registration of design by the respondent. It was contended that since the design has been previously registered in India, the said design is liable to be cancelled under Section 19(1)(a) of the Designs Act, 2000.
A list of designs of chair relied upon by the petitioner in the said proceeding which was alleged to have been registered in India prior to the application for impugned registrations are:-
The shape and configuration claimed as novel feature of the impugned design was conventionally used by the plastic chair industry since many years and thereby the design features are not new or original. The shape and configuration of the impugned design is stated to be common feature of all plastic chair having been published in various documents. There are various manufacturers already making such designs and have been marketing across the world. In view thereof the said design is liable to be cancelled under Section 19(1)(b) of the Designs Act, 2000.
The features of shape, configuration or pattern of the design must be appealing to the eye which is significantly lacking in respect of the impugned design. It is not a design as defined under Section 2(d) of the Designs Act, 2000. The design of the respondent is not significantly distinguishable from the known designs or combination of known designs under Section 4(c) of the Designs Act, 2000. In the matter of novelty the eye is to be the ultimate tests and the determination has to be normal ocular impression. In order to find its newness or originality it is necessary that a design identical with or even materially similar to the relevant design should not have been published or registered previously. A slight trivial or infinitesimal variation, from a pre-existing design will not qualify it for registration. Having regard to the nature of the article involved, the change introduced should be substantial. It is not necessary to justify registration that the whole of the design should be new, the newness may be confined only a part of it but that the part must be a significant one and it should be potent enough to import to the whole design a distinct identity, unless registration is sought for the said part alone. The introduction of ordinary trade variants into an old design cannot make it new or original. There are numerous third parties, apart from the respondent, who are using the same and similar designs in relation to the chair. The respondent cannot claim any monopoly over the impugned design registered by them. The other objection raised was that even the respondent has been selling the chair which is a different design than the registered one. The pictoral comparison between the registered design of the respondent and the chair which has been selling have been disclosed in the said cancellation proceeding.
The private respondent opposed the said application. The respondent in its counter affidavit has contended that the impugned design is appealing to the eye and novel. The "Sunday Chair" design bearing No.242843, resonates strength and beauty with practicability and reliability in the chair and, accordingly, the design deserves to be protected under the Design Act 2000. The "Sunday Chair" cannot be compared to any ordinary easy chair. The respondent referred to definition of an "easy chair" by Merriam Webster's Dictionary to mean "roomy upholstered chair" and submitted that the common understanding of an easy chair would be a chair which has a soft padding, springs and webbing. The Sunday chair is a plastic chair with an ergonomic design with a high backrest and neck support. The chair designs cited by the petitioner have different configuration, shape and patterns of lines in comparison to that of the respondent's registered "Sunday chair" design. The operative top edge of the cited chair is convex whereas the "Sunday Chair" has adopted a contemporary style and the operative top edge of the chair is concave. The Sunday chair is unique and has a relaxed feel to it, assuring the consumer that he could be at ease when sitting on the Sunday chair. In order to enhance the aesthetics of the chair, the back of the chair from the top is bulging outwards and is followed by a series of five slits which create six pairs of ventilation slots in the chair with just one vertical reinforcing rib. The ventilation slots do not affect the smoothness of the chair's back and are solely present for enhancing the creative look of the chairs. The chair's handle has a riser as well a horizontal part, however, the inclination from the riser to the horizontal part of the handle is not too steep. The surface pattern of the Sunday Chair is novel and exclusive. The design in the Sunday Chair has been adopted after extensive research on the designs which may be appealing to the purchaser.
In the opposition, the respondent has distinguished its registered design No.242843 with the cited designs in a tabular form which is reproduced below:-
In respect of shape, configuration and pattern, it has been the contention of the respondent that the Sunday Chairs design, bearing registration No.242843 has an overall slender look; the back of the chair becomes narrower as it tapers down, there is a clear difference in the width of the back of the chair and its base. The overall shape of the back of the chair is a combination of different shapes for instance the overall shape of the upper half of the chair is similar to an hour glass profile. The operative top-edge of the 'Sunday' chair has a concave shape and the head rest is slightly bulging. Furthermore, even the base of the chair has an arcuate extension to add to the aesthetics of the chair. This design is exclusive as well as unique to the respondent alone.
On consideration of the pleadings, evidence and the written notes of argument filed by the parties, the Deputy Controller, Patents and Designs have arrived at a finding that the impugned design is not devoid of newness and originality, and accordingly dismissed the petition for cancellation of the registered design.
This order is under challenge.
Mr. Ranjan Bachawat, learned senior Counsel representing the petitioner, has submitted that the order suffers from perversity and complete misdirection of mind. It is argued that although the controller has granted novelty only in the shape, configuration and surface pattern of the chair and refused the claim of novelty in ornamentation, backrest, seat and arms of the chair as illustrated, however, while comparing the impugned design with the cited designs the controller has relied upon the backrest, seat and arms of the chair of the respondent's design in order to distinguish the registered design with the cited designs to find out novelty and thereby has completely misdirected its mind and has arrived at a wrong decision. Mr. Bachawat has submitted that a bare look at the impugned design would show that it looks like any ordinary chair and compared to the cited designs it could not be said that there was any newness or originality in the impugned design. Mr. Bachawat has submitted that the controller has failed to appreciate that chairs with same and/or similar designs were available in the market much prior to the registration of the impugned design. It is submitted that the controller has posed wrong questions and, accordingly, arrived at a wrong finding. The controller has applied wrong tests. The controller has relied upon backrest, slant of backrest, seat and legs of the impugned design in order to distinguish the impugned design from the other designs cited before the controller. The controller could not have relied upon such features as the claim for novelty in the ornamentation and on the backrest, seat and arms of the chair was rejected. The order suffers from total non-application of mind leading to perversity.
Mr. Bachawat submits that it has been the consistent views of all the Courts that a mere trade variant, a slight trivial infinitesimal variation from a pre-existing design does not make a design new or novel. It has to be substantial. Mr. Bachawat submits that the designs that were produced before the Controller as evidence to show that the impugned design is not new or novel and there are prior published designs were not properly considered by the Controller. Mr. Bachawat submits that the broad features of shape and configuration of the impugned registered design is not significantly different from the prior published designs inasmuch as the appellant has failed to show any distinctiveness in its design. There is no substantial difference between that which had been published previously and the registered design so as to entitle the private respondent as the proprietor of the registered design to contend that on the date of registration its design was a new or original design and, therefore, capable of registration. It is submitted that disclosures of prior publication are of the same pattern, shape and/or configuration as are applied to the impugned design and the Controller on the basis of the materials on record should have held that the said impugned design could not be regarded as new or novel, as there has been substantial identity with the prior published designs. The earlier designs disclosed are in respect of the same article. Mr. Bachawat refers to Anuradha Doval vs. Controller of Patents and Designs reported at 2017 SCC Online Cal 2920: CDJ 2017 Cal HC 114 and submits that in the said decision it has been held that a mere trade variant without significant and substantial noticeable features would destroy novelty. A person with ordinary prudence while seeing the designs in questions would be easily able to relate in its mind's eye that he had seen same antecedent designs without any necessity of making further experiments. The moment he looks at the design, he would be able to say at once "oh? I have seen it before".
It is argued that the question of novelty or originality should be judged by the eye of an instructed person, i.e., that he should know what was common trade knowledge and usage in the class of following articles to which the design applies. Mr. Bachwat has referred to the observation of Lord Multon in Phillips vs. Harbro Rubber Company reported at (1920) 37 RPC 233 in relation to a sports shoe. Mr. Bachwat submits that the introduction of slight bulge in the head rest or creating six pairs of inclined ventilation slits are ordinary trade variants which are insufficient to make the design 'new' or 'original'.
On the aspect of novelty, the learned Counsel has relied upon the decision in Brighto Auto Industries vs. Raj Chawla reported at (1978) ILR (1) Del. 20, PTC (Suppl) (1) 851 (Del): for the proposition that in the matter of novelty, the eye has to be the ultimate arbitrator and the determination has to rest on the general ocular impression. To secure recognition for its newness or originality, it is imperative that the design identical with or even materially similar to the relevant design should not have been published or registered previously. A slight, trivial or infinitesimal variation from a pre-existing design will not qualify it for registration.
The learned Senior Counsel submits that the judgment of the learned single Judge was affirmed by the Division Bench in M/s B. Chawla and Sons vs. M/s Bright Auto Industries reported at AIR 1981 Del 95 in which the Hon'ble Division Bench has observed that an addition of curve here or there in a shape which is well recognized shape of an article of common use in the market cannot make it an article new or original in design.
Mr. Bachwat submits that 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. In this context the learned Senior Counsel has relied upon the following decisions:-
i) Western Engineering Co. vs. Paul Engineering Co. reported at 1967 SCC Online Cal 17: AIR 1968 Cal 109;
ii) The Wimco Limited vs. M/s Meena Match Industries reported at ILR (1984) 121;
iii) Rukmini Properties Private Limited vs. Mira Ghosh reported at 2013 SCC Online Cal 11301: (2013) 5 CHN 309 (DB);
iv) Khaitan (I) Ltd. vs. Metropolitan Appliances reported at 1993 SCC Online Cal 269: (1994) 2 CHN 247: 1994 PTC 170;
v) Anchor Health and Beauty Care Pvt. Ltd. vs. Controller of Patents and Designs reported at 2011 SCC Online Cal 1340.
The submission of the learned Senior Counsel in short is that the impugned design is a mere modification of existing design and it does not have any identifiable novel feature, therefore, it lacks novelty for registration of design. Moreover the shape or configuration of surface pattern of the impugned design is not new or original. The shape and configuration of the impugned design for "easy (relaxation) chair" is well-known in the plastic manufacturing industry and even the surface pattern of the present invention exist in the chair for the last 10 years. The impugned design is a general shape, configuration and surface pattern of any plastic chair including the easy chair, which does not possess any specific features of shape, configuration and pattern of the design. Moreover the private respondent is selling the chair having a different design than the registered one. Mr. Bachwat has also referred a pictorial comparison but the registered design of the respondent and the chair which the respondent has been selling. It is submitted that in view of such misrepresentations the design is liable to be cancelled. The controller however, has failed to exercise its jurisdiction in not cancelling the design the order of the Controller suffers from perversity and is required to be set aside.
Per contra, Mr. Sayantan Bose, learned Counsel representing the respondent, in support of the impugned order has submitted that the features of the impugned design are significantly different from the design cited in all respect. Mr. Bose has referred to the counter-statement and the affidavit evidence filed by the respondent before the controller and has submitted that the respondent was able to demonstrate the unique features of the impugned design. It is submitted that the controller is not an ignorant person on the subject and it is only on examination of the features, for which novelty was claimed, that the controller has allowed limited registration with disclaimers. Mr. Bose submits that the shape, configuration and surface pattern of the impugned design is significantly different from the ordinary chairs available in the market or cited by the respondent, inasmuch as the controller, on examination of each of the drawing has come to a finding that the design of the private respondent is not devoid of newness or originality. There is no substantial identity between the designs cited and the impugned design inasmuch the petitioner has failed to establish that the design of molded plastic chairs of "VV National" is a prior published document. Mr. Bose in this context has relied upon the decision of this court in Khaitan India Ltd. (supra).
Mr. Bose, accordingly, has submitted that the decision of the controller is to be upheld.
The Designs Act, 2000 was enacted for protection of designs. The Act protects design element in an article of production. Section 2(d) of the Designs Act 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 which in the finished article appeal to and are judged solely by the eye. It excludes any mode or principle of construction or anything which is in substance a mere mechanical device. Section 2(g) of the Act defines "original" in relation to a design. It means originating from the author of such design and includes the cases which though old in themselves yet are new in their application. Accordingly, in relation to designs, the expression "original" includes designs which though old in themselves but were new in their application. In other words even though a design is old in itself but if the same is applied to a new article to which it has never previously applied, then the said design needs to be protected.
The novelty of a design can be claimed if it is established that the design features of the impugned design are not taught by the prior designs. If it is found that it is taught by a prior design it loses its claim of novelty. Unless it is established that there are significant features in the impugned design which were not capable of being taught or having other distinguishable features, a design would not be registered. It is no answer to an application for cancellation of the design that while considering the application for grant of design at the initial stage, the said designs were examined by the examiners and only on a satisfaction being recorded that it has unique and/or distinctive features, the said designs were registered. The legislatures were aware that at the time of registration it may not be possible for the registering authority to come across all the design not qualified to be registered if the conditions of Section 4 are attracted. In other words, a design shall not be registered if it is not new or original or has been disclosed to the public prior to the filing date or is not significantly distinguishable from known designs or combination of known designs. The right to challenge a registration of design is not lost merely because it was registered by the authority. Section 19 of the Design Act, 2000 permits any person interested may present a petition for the cancellation of the registration of a design, at any time after the registration of the design, to the Controller on any of the following grounds, namely:-
(a) that the design has been previously registered in India; or
(b) that it has been published in India or in any other country prior to the date of registration;
or
(c) that the design is not a new or original design;
or
(d) that the design is not registrable under this Act;
or
(e) that it is not a design as defined under clause(d) of section 2.
A design does not become new or original if it is not significantly distinguishable from known designs or combination of known designs.
In Gammeter v. The Controller of Patents and Designs reported at AIR 1919 Cal 887, it has been 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 question of eye appeal came up for consideration in Interlego A.G. v. Tyco Industries Inc. reported at 1987 FSR 409, in relation to toys. The Court observed:-
"In relation, however, to an assessment of whether a particular shape or configuration satisfies the former and positive part of the definition, the fact that an important part of the very purpose of the finished article is to appeal to the eye cannot be ignored. ...One starts with the expectation of eye-appeal, for part of the very purpose of the article is to have eye-appeal.
You have to design so that the article in question will make an immediate visual appeal to a child or to the parent or other person buying for a child."
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. 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. The concept of new and original has been discussed in Gammeter (supra). 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 the said case, the novelty band used by the plaintiff was held to be new and original even though the said band was similar to the bracelet produced by the defendants as the Court was of the view that the purpose and use of the band was entirely different from the purpose and use of the bracelet. It was further observed that the said band had never been previously applied to wrist watches and the fact that as soon as this article was produced there was a large and immediate sale which strongly indicates that the article sold was novel and original. It was further observed that applying an old design to a new use must be protected. There must be a mental conception expressed in a physical form which has not existed before, but has originated in the constructive brain of its proprietor and that must not be a trivial or infinitesimal degree, but in some substantial degree is the test of novelty as observed by Buckley L.J. in Simmons vs. Mathieson & Cald reported at (1911) 28 R.P.C. 486.
The sameness of features is to be decided by the eye, that is to say, by seeing the two and getting a total synoptic view of the same. The sameness of features does not necessarily mean that the two designs must be identical on all points and differ on no point. If the same shape or pattern, or one substantially similar, has previously been thought of in connection with any article of manufacture and the idea published, or registered, then the design will be deprived of its novelty. (Western Engineering Vs. Paul Engineering reported at AIR 1968 Cal 109) A design showing merely a combination of known features and without any real mental activity being required for its production is not registrable. (Sebel & Coy. Ld. reported at 1959 RPC 12) Where the design is original, the designer conceives something new; but where the design is a mere trade variation of a previous design, then the designer could have merely kept an existing design in view and made some changes in that. In order to determine whether a design is new or original, there must be substantial difference from the design which was known or had been published prior to the date or registration of the earlier design. What is "substantial difference"? This is a question upon which no general principle could be laid down at all and it must depend upon the particular facts in each case. Sometimes, a small variation in the details of a design may be enough to make the design different from an existing design, whereas in some cases even large alterations in detail may not make the two designs different. The court has to consider and look at the designs in question with an instructed eye and observe whether there is or is not such a substantial difference between the two. There must be a substantial novelty in the design having regard to the nature of the article and not a mere novelty of outline. (Ravinder Kumar Gupta v. Ravi Raj Gupta and Others reported at1986 (6) PTC 50) In Brighto Auto Industries (supra) the question arose whether on account of further curve in the sloping upper length side in rear view mirrors a novelty can be claimed. In the application for registration the extent and nature of novelty was not endorsed and accordingly it has to be taken only as regards shape and configurations. The issue therefore arose as to whether addition of further curve on either side makes the variation a striking one or a substantial so as to constitute a novelty meriting for registration. The learned Single Judge in paragraph 11 has stated: In appeal, the Hon'ble Division Bench while affirming the judgment has stated:
"11. It goes without saying that in the matter of novelty the eye has to be the ultimate arbiter and the determination has to rest on the general ocular impression. To secure recognition for its newness or originality it is imperative that a design identical with or even materially similar to the relevant design should not have been published or registered previously. A slight trivial or infinitesimal variation, from a pre-existing design will not qualify it for registration. Taking into account the nature of the article involved the change introduced should be substantial. It is not necessary to justify registration that the whole of the design should be new, the newness may be confined to only a part of it but that part must be a significant one and it should be potent enough to impart to the whole design a distinct identity, unless registration is sought for the said part alone."
In order to decide the novelty, a design has to be looked as a whole and ocular impression or eye appeal is the foremost criterion for deciding the novelty of a design. In this context reference can be made to the following passage from Amp. V Utilax reported at 1971 RPC 103 at 113.
"...where a design sets out to produce an article that would perform a particular function, but where in producing it he has added or applied some features of shape that are additional to or supplementary to what is functionally needed, with the result that in the finished article there are features that appeal to eye there may be a design which is registerable within the statutory definition..."
An unreported judgment of this Court in the matter of AID No.1 of 2013 (M/s. Devans Modern Breweries Ltd. Vs. Controller of Patents & Designs & Ors.) decided on 29th April, 2015 has held that 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.
In ITC Limited Vs. Controller of Patents & Designs reported at 2017 (2) CHN (Cal) 367 this Court had the occasion to consider the question of novelty and originality of a design as well as what would constitute a prior publication. It was held that a design is an idea or conception as to features of shape, configuration, pattern or ornament applied to an article. Although an idea may be potentially capable of registration, in fact, it must be reduced to visible form to be identified with. The design must be such that in the finished article, the features of it appeal to the eye and are judged solely by the eye. The Court followed the dictum of Buckley L.J. as to the distinction between new or original.
In Anuradha Doval (supra), this Court had the occasion to consider what would constitute in the prior publication and after considering the laws on the subject held:-
"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".
The private respondent claims novelty in the shape, configuration and surface pattern of the chair as illustrated which consists of the Front view, rear view, side view/other side view and perspective view. The chair as illustrated and in respect of which registration was allowed with disclaimers is reproduced below:
Shape and configuration have been regarded as synonymous in various decisions including Saunders v. Wiel reported at (1893) 10 R.P.C. 29 and in a fairly recent decision in Lambretta Clothing Co. Ltd. v. Teddy Smith (U K) Ltd. reported at (2014) EWCA (Civ) 886. However, Lord Reid in Amp Inc v. Utilux Pty Ltd. reported at (1972) R.P.C. 103 at 108 and 111 held a view that configuration may have a meaning slightly different from shape. Again, it has been said that pattern and ornament can in the majority of cases be treated as synonymous (Kestos Ltd. v. Kempat Ltd.
and Kemp reported at (1936) 53 R.P.C. 139 at 152). A pattern or ornament, though it may stand out to a certain extent from the article to which it is applied, as in embossing or engraving, may to all intents and purposes be considered as something in two dimensions only, which is placed upon the article simply for the purpose of its decoration. However, surface features, particularly if they are pronounced, may be treated as features of shape or configuration, as in Cow & Co Ltd v. Cannon Rubber Manufacturers Ltd. reported at (1959) R.P.C. 240 at 347 where it was held that a series of ribs on the surface of a hot water bottle were features of configuration within the scope of the statement of novelty which claimed such features. Similarly, in Sommer Allibert (UK) Ltd v. Flair Plastics Ltd reported at (1987) R.P.C. 599 at 621 it was held that grooves moulded into plastic garden chairs constituted part of the "shape and configuration" of the chairs. In Khaitan (India) Ltd. (supra) in considering the design of a ceiling fan Late Justice Ajay Nath Ray discussed the concept of Shape & Configuration in the following words.
"22. In understanding what is shape and configuration as opposed to a pattern or ornament, a passage from a judgment of Mr. Justice Luxmoore in Kestos Lt's case [(1936)53 R.P.C. 139 at 152)] has often been quoted. The quotation is also to be found in one of the cases relied upon by Mr. Chakraborty being the Chair case reported in 87 R.P.C. 599 at 621. The said passage is as follows:
"Shape and configuration, are for all practical purposes considered as synonymous see Bayer's Design, ubi supra, (at page 80). Each signifies something to three dimensions; the form in which the article itself is fashioned. 'Pattern' and 'ornament' can, I think, in the majority of cases be treated as practically synonymous. It is something which is place J on an article for its decoration. It is substantially in two as opposed to three dimensions. An article can exist without any pattern or ornament upon it, whereas it can have no existence at all apart from its shape or configuration. As Lindley U. said i.e. Re Clarke's Registered Design (1896) 13 R.P.C 351 at 358, 'a design applicable to a thing for its shape can only be applied to a thing by making it in that shape'. The application may according to the statutory definition be by any industrial process and it must be such that in the finished article it will appeal to the eye, and is to be judged solely by the eye. The design must be new or original."
23. The distinction between shape and configuration on the one hand, and pattern, on the other hand, arises in this case because Mr. Gupta has relied upon the manner in which the monopoly has been claimed in the design of the petitioner. In all the registrations the petitioner has claimed that the novelty resides in the shape and configuration of the designed article as illustrated. Surface pattern or ornamentation is not mentioned in the petitioner's claim. Mr. Gupta has emphasised that it is possible for a party to claim novelty only in a part of the design as illustrated. Mr. Gupta thus submitted that there is nothing in the shape or configuration of the illustrated fan of the petitioner or the illustrated fan parts relied upon by the petitioner which can be said to have been offended specially by the respondent's design. Mr. Gupta pointed out that in contrast, the respondent has claimed their novelty to reside in the surface pattern and ornamentation of the ceiling fan. Thus, it is important to resolve at this stage what is the effect of the claim of novelty as made by the petitioner in the registered designs.
24. To my mind, it is important to understand that the same novel design might carry with it royalty not only with regard to shape or configuration, or pattern, or ornamentation but might combine any two or even more of these elements. A particular design which is novel in shape can at the same time be novel as to ornamentation also. It is more helpful, therefore, to understand the basic concepts of shape, configuration, pattern and ornamentation rather than to try and define these, for such simple concepts are notoriously elusive of exact definition.
25. We understand by shape the spherical nature of a sphere. It is easier to understand the meaning of the word "shape" by an example like this, than to try to get an exact definition of it. Similarly, if a sphere is placed on top of a cone and both are placed on top of a cube, we have a configuration of three shapes. The same three shapes can be arranged in a different configuration if, say, the cone is inverted and placed at the bottom aped then the cube and the sphere are side by side placed on top of it. In deciding the novelty of a configuration, the way of arrangement is more important than what is arranged.
26. The pattern of or an article would, I respectfully agree, rather be a two dimensional novelty of design than a three dimensional one. An ornamentation is a particular type of a pettern and this also is more to be understood in the two dimensional sense than three. A pattern is something more central than an ornament, which gives the impression of a fringe design. Hearts and spades of cards can well be cut out into patterns, and there can be made to have ornaments on the lines or edges, as can be seen on many cards actually.
27. Now, what is the design of the petitioner's fan head? Is it in three dimensions or is it in two. The 18 rib sun-ray pattern on the petitioner's fan head is no doubt, speaking in exact terms, a three dimensional design, because if the fan head is made totally smooth, the entire design will disappear. Again the said design does present two dimensional characteristics because the percentage of relief on the fan head is minimal and the design is more two dimensional, than three if, one can be permitted to use such an unscientific expression. But on such unscientific basis, the petitioner's claim to design cannot be rendered meaningless altogether.
28. The claim to monopoly of the petitioner would thus lose all significance whatsoever if their claim to shape and configuration were limited to the starkly three dimensional designs only. In such a case, in my opinion, the claim is to be read in a manner meaningful, rather than in a manner destructive of meaning. If any novelty is there in the petitioner's fan design, then such novelty resides in the 18 radial ribs on the fan head and in the 12 vertical matching ribs on the fan canopy, not to mention of their claim to novelty as claiming novelty in shape and configuration only, then it would have to be held that they have registered a design which was no design at all. I am not minded to rob the registration of the petitioner of all content whatsoever. The petitioner's is a design where the fan head and the canopy are so shaped as to produce a relief pattern on the surface.
29. The aforesaid Chair case is a decision of the Court of Appeal reported in 87 R.P.C. 599 and this contains passages which would go to support the above conclusion of mine. At page 621 it was said as follows (ornamentation being also shape):
"The mere fact that these features may have been thought or intended to add decorative or ornamental value to the Madrigal Chair, in our judgment, renders them no less features of is shape or configuration. These were not mere features of two dimensional ornament or decoration applied to it at a later stage. If and so far as they may be said to embody a pattern or ornament, this has been produced by the shaping and configuration of the plastic of the chair in the course of its creation".
30. The Court of Appeal in that judgment was concerned with the two competing designs of Chairs, containing back to front lines; grooves or slits as opposed to side to side lines on the sitting surface, and the back rest containing vertical lines as opposed to horizontal ones. To my mind, the above passage is all the more applicable in the facts of this case, although as a reverse instance, because the shape of the fan head and the canopy both of the petitioner and of the respondent were designed at the time of their manufacture itself; and not with later imprints.
31. I am, therefore, of opinion that the claim to novelty as made by the petitioner, in the registry, is sufficiently comprehensive so as to include, at least by implication in it, the resulting surface relief pattern that came to be imprinted upon the fact head and the canopy surface by reason of the shaping of the same in the particularly industrially process employed by the petitioner."
The two words 'shape' and 'configuration' are not tautologous. The word 'shape' prima facie imports and certainly includes, the external form of the article, configuration conveys the idea, not of the external form only but of the construction of a composite article. The word "configuration" imports the arrangement by which the shape of a composite article is arrived at. (Gramophone Co. v. Magazine Holder Co. reported at (1910)27 RPC 152 at p. 159 (CA), decision affirmed (1911)28 RCP 221 (HL) Configuration may have a meaning slightly different from shape. The first requirement is that the shape is 'applied' by an industrial process.
"Applies" is an appropriate word for pattern or ornament but is an awkward word with regard to shape. The idea must be that there can be two articles similar in every respect except shape and that the novel feature of shape which is the design has been added to the article by making it in the new shape instead of in some other shape which is not novel. (Amp Inc. v. Utilux Pty. Ltd. reported at (1972) RPC at p. 108 (HL).
While it could be said common for a chair to have a backrest, seat, arms and legs that does not mean that an overall slender look with the back of the chair becomes narrower as it tapers down a clear difference in the width of the back of it and its base, the top-edge of the chair being of a concave shape, and the head rest slightly bulging and the base of the chair having an accurate extension to add to the aesthetics of the chair would not be considered to be novel or would not be considered as the uniqueness in shape. It appears that the upper half of the chair is similar to an hour glass profile, the upper part of the back of the chair is semi-oblong and bulging out followed by five slits resulting in six pairs of ventilation slots with a vertical reinforcing rib with which the slits meet at the centre. The design is having both functional and aesthetic features. In fact the brochure relied upon by the petitioner of "VV National" is a virtual reproduction of the plaintiffs design and there is no evidence to show that such designs are prior published. This was also noticed by the Deputy Controller.
The fact that a special method or principle of construction might have to be used in order to create an article with a particular shape or configuration does not mean that there was no design right in the shape or configuration. The law of design right did not prevent competitors using that method or principle of constructing to create competing designs (of course other areas of the law, like patents, might prevent competitors doing that), as long as the competing designs did not have the same shape or configuration as the design right owner's has (See. A. Fulton Co. Ltd. vs. Grant Bannett & Co. Ltd. reported at [2000] RPC 257 at 278, Park J. approved by the court of appeal in London & Hawa Intnl. Ltd. vs. Azure Designs Ltd. reported at [2007] FSR 9.
If the similarities between the plaintiffs products and those of the defendants were such as to give rise to an inference of copying then the burden shifts to the defendant to prove independent design. (Ibcos Computers Ltd. v. Barclays Finance Ltd.i reported at (1994) FSR 275).
The controller in distinguishing the cited design with the impugned design has applied the ocular comparison in order to ascertain whether the impugned design has novelty and originality. The controller has also found that the defendant cannot corroborate that all the features are dictated solely by the function or functions. It cannot be said that the impugned design is solely dictated by function and accordingly the test applied by the controller cannot be faulted. The chair itself was produced. The design reproduced on the chair of the private respondent has unique features. Even the chair produced before this court clearly shows that the Sunday Chair has a different visual appeal and has an aesthetic look and is quite different from the cited designs. On such consideration the order of the Deputy Controller of Patents & Designs is upheld.
The appeal is dismissed.
However, there shall be no order as to costs.
It is however, made clear that the allegations of the appellant that the private respondent is marketing its chair with a design not registered by using the same registration number is not gone into as it is not relevant to the issue and hence decided in this proceeding.
The original record is returned to Mr. Sunil Singhania, learned Advocate representing the respondent no.1.
Urgent Photostat certified copy of this judgment, if applied for, be given to the parties on usual undertaking.
(Soumen Sen, J.)