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I. Factual background

2. The plaintiff and the defendant both manufacture steel bars. The plaintiff claims to have created and developed a unique design in the period 2012-2013. The plaintiff's design, claiming new and original features in the form of surface pattern of double ribs, was registered under No.250968 in Class-25-01 with effect from 14.01.2013. The Controller General of Patents, Designs & Trade Marks ("the Controller") issued a certificate dated 29.08.2014 to this effect in favour of the plaintiff. Two 'representation sheets' were annexed with the certificate, which included pictorial representations of the front and back view of the goods in question, as follows:

3. Each of the sheets also contained an 'endorsement of novelty' in the following terms:

"The novelty resides in the surface pattern particularly in the portions marked A & B of the 'rod for construction' as illustrated."

(5) When the court makes a decree in a suit under sub-

section (2), it shall send a copy of the decree to the Controller, who shall cause an entry thereof to be made in the register of designs."

III. Submissions on behalf of the applicant/defendant

13. The principal argument of Mr. Rajshekhar Rao, learned counsel for the defendant/applicant, was that the plaintiff's assertion of novelty and originality in paragraph 7 of the plaint, which is also a necessary element of a registered design, is belied by reference to various international standards for steel bars which are substantially similar to the design of the plaintiff's product. Mr. Rao referred to Sections 2(d) and 4 of the Act to submit that a design has to be original to entitle it to registration, and that its prior disclosure would render it non- registrable. He further submitted that a prior published design is vulnerable to cancellation by virtue of Section 19 of the Act, which point can also be taken in defence to an infringement suit as provided under Section 22(3) of the Act. According to Mr. Rao, the plaintiff's website (printouts of the relevant portion having been placed on record) itself claims that the plaintiff's design is equivalent to the British Standard B500C. Mr. Rao referred to the British Standard publication to show that the surface features, which form the basis of the plaintiff's claim of novelty, are based entirely upon the aforesaid Standards. In addition to the British Standard, which was published in 2005, Mr. Rao also relied upon the German Standard of 1984, Polish Standard of 2006, International Standard 6935-2 of 2007, the Turkish Standard of 2010 and the Colombian Standard of 2012. His submission, based on these materials, was that the double ribbed surface pattern of the plaintiff's product did not demonstrate novelty or originality, and the plaintiff was, in fact, not entitled to registration of the design at all.

49. Beneath both these images, there is an 'endorsement of novelty' in the following terms:

"The novelty resides in the surface pattern particularly in the portions marked A & B of the 'rod for construction' as illustrated."

(It appears from copies placed on record that the endorsement of novelty, as originally printed/typed, referred to the "shape, configuration and surface pattern" of the "steel beams", but was amended in hand to read as quoted above.)