Law of Design Protection With reference to Bharat Glass Tube Limited v Gopal Glass Works Limited (2008)

Legal Aspects of Management

TABLE OF CONTENTS INTRODUCTION ........................................................................................................ 2 STATUS OF THE PROBLEM .................................................................................... 2 EXISTING LAWS ....................................................................................................... 2 COMPLIANCE AND ENFORCEMENT MECHANISM................................................ 4 ROLE OF JUDICIARY.............................................................................................. 13 Examination of evidences: .................................................................................... 14 Definition of a Design: ........................................................................................... 14 M/s. Domestic Appliances and Others vs M/s. Globe Super Parts ....................... 16 The Wimco Ltd. Bombay vs. M/s. Meena Match Industries, Sivakasi & Ors. ........ 17 King Features Syndicate Incorporated & Frank Cecil Betts & M. Kleeman Ltd ..... 17 Gammeter v. Controller of Patents & Designs ...................................................... 17 CONCLUSION ......................................................................................................... 20 VIEWS ABOUT THE CASE ..................................................................................... 20 View about the facts.............................................................................................. 20 Supreme Court Decision ....................................................................................... 21 REFERENCES ......................................................................................................... 23

INTRODUCTION

Gopal Glass Works Ltd. claimed to be the creator of new and original industrial designs applied by a mechanical process to glass sheets. German-made rollers were used to give the glass sheets eye-catching shapes, configuration, ornamental patterns and shades of colour. The design was registered under the Act and was to remain valid for 10 years. Sometime later, Bharat Glass Tube Ltd. allegedly imitated the design. Gopal Glass then obtained an injunction against Bharat Glass from the district court. As a counterblast, Bharat Glass approached the Controller of Designs contending that the design was not new and it had already been published in this country and abroad. The Assistant Controller then cancelled the registration of Gopal Glass. The dispute moved to the Calcutta high court which set aside the Assistant Controller's order. The rivals moved to the Supreme Court, where the high court order was upheld.

STATUS OF THE PROBLEM

On May 1st, 2008, the Supreme court bench consisting of Honourable Justice A.K.Mathur & Altamas Kabir JJ., presented the judgment saying the petioners (Bharat Glass Tube) appeal was not found any merit and it was dismissed with costs of Rs.50000 and affirmed the judgment of Calcutta High Court. And also, it was mentioned that the respondent (Gopal Glass Works) can continue with their design to process glass sheets. It was also made clear by the bench that the cancellation order given by the Assistant Controller of Designs stands invalid.

EXISTING LAWS
This particular legal case was completely based on the Designs Act 2000. Every country has their own Industrial design Acts. In India, Patent and Design Act 1911was followed on the cases regarding design disputes. Then, Design Act, 2000 was enacted to consolidate and amend the law relating to protection of design and to comply with the articles 25 and 26 of TRIPS agreement.

The sole purpose of this Act is protection of the intellectual property right of the original design for a period of ten years or whatever further period extendable. The object behind this enactment is to benefit the person for his research and labour put in by him to evolve the new and original design. This is the sole aim of enacting this Act. It has also laid down that if design is not new or original or published previously then such design should not be registered. It further lays down that if it has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration then such design will not be registered or if it is found that it is not significantly distinguishable from known designs or combination of known designs, then such designs shall not be registered. It also provides that registration can be cancelled under section 19 of the Act if proper application is filed before the competent authority i.e. the Controller that the design has been previously registered in India or published in India or in any other country prior to the date of registration, or that the design is not a new or original design or that the design is not registerable under this Act or that it is not a design as defined in clause (d) of section 2. The Controller after hearing both the parties if satisfied that the design is not new or original or that it has already been registered or if it is not registerable, cancel such registration and aggrieved against that order, appeal shall lie to the High Court. These prohibitions have been engrafted so as to protect the original person who has designed a new one by virtue of his own efforts by researching for a long time. The new and original design when registered is for a period of ten years. Such original design that is new and has not been available in the country or has not been previously registered or has not been published in India or in any other country prior to the date of registration shall be protected for a period of ten years. Therefore, it is in the nature of protection of the intellectual property right. This was the purpose as is evident from the statement of objects and reasons and from various provisions of the Act. This new Act also repealed the earlier Patent and Design Act, 1911.

COMPLIANCE AND ENFORCEMENT MECHANISM

I. Controller and Other Officers (1) The Controller General of Patents, Designs and Trade Marks appointed under sub-section (1) of section 4 of the Trade and Merchandise Marks Act, 1958 shall be the Controller of Designs for the purposes of Designs Act 2000. (2) For the purposes of this Act, the Central Government may appoint as many examiners and other officers and with such designations, as it thinks fit. (3) Subject to the provisions of this Act, the officers appointed under subsection (2) shall discharge under the superintendence and directions of the Controller such functions of the Controller under this Act as he may, from time to time, by general or special order in writing, authorise them to discharge. (4) Without prejudice to the generality of the provisions of sub-section (3), the Controller may by order in writing and for reasons to be recorded therein, withdraw any matter pending before an officer appointed under sub-section (2) and deal with such matter himself either de novo or from the stage it was so withdrawn or transfer the same to another officer appointed under sub-section (2) who may, subject to special directions in the order of transfer, proceed with the matter either de novo or from the stage it was so transferred. II. Prohibition of Registration of Certain Designs A design which(a) is not new or original; or (b) has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration; or (c) is not significantly distinguishable from known designs or combination of known designs; or

(d) comprises or contains scandalous or obscene matter shall not be registered. III. Application for Registration of Designs (1) The Controller may, on the application of any person claiming to be the proprietor of any new or original design not previously published in any registration country and which is not contrary to public order or morality, register the design under this Act: Provided that the Controller shall before such registration refer the application for examination, by an examiner appointed under sub-section (2) of section 3, as to whether such design is capable of being registered under this Act and the rules made thereunder and consider the report of the examiner on such reference. (2) Every application under sub-section (1) shall be in the prescribed form and shall be filed in the patent office in the prescribed manner and shall be accompanied by the prescribed fee. (3) A design may be registered in not more than one class, and, in case of doubt as to the class in which a design ought to be registered, the Controller may decide the question. (4) The Controller may, if he thinks fit, refuse to register any design presented to him for registration; but any person, aggrieved by any such refusal may appeal to the High Court. (5) An application which, owing to any default or neglect on the part of the applicant, has not been completed so as to enable registration to be effected within the prescribed time shall be deemed to be abandoned. (6) A design when registered shall be registered as of the date of the application for registration.

IV. Registration to be in Respect of Particular Article (1) A design may be registered in respect of any or all of the articles comprised in a prescribed class of articles. (2) Any question arising as to the class within which any article falls shall be determined by the Controller whose decision in the matter shall be final. (3) Where a design has been registered in respect of any article comprised in a class of article, the application of the proprietor of the design to register it in respect of some one or more other articles comprised in that class of articles shall not be refused, nor shall the registration thereof invalidated(a) on the ground of the design not being a new or original design, by reason only that it was so previously registered; or (b) on the ground of the design having been previously published in India or in any other country, by reason only that it has been applied to article in respect of which it was previously registered; Provided that such subsequent registration shall not extend the period of copyright in the design beyond that arising from previous registration. (4) Where any person makes an application for the registration of a design in respect of any article and either(a) that design has been previously registered by another person in respect of some other article; or (b) the design to which the application relates consists of a design previously registered by another person in respect of the same or some other article with modifications or variations not sufficient to alter the character or substantially to affect the identity thereof, then, if at any time while the application is pending the applicant becomes the registered proprietor of the design previously registered, the foregoing provisions of this section shall apply as if at the time of making the application, the applicant, had been the registered proprietor of that design.

V. Publication Particulars of Registered Designs The Controller shall, as soon as may be after the registration of a design, cause publication of the prescribed particulars of the design to be published in such manner as may be prescribed and thereafter the design shall be open to public inspection. VI. Power of Controller to Make Orders Regarding Substitution of Application, etc (1) If the Controller is satisfied on a claim made in the prescribed manner at any time before a design has been registered that by virtue of any assignment or agreement in writing made by the applicant or one of the applicants for registration of the design or by operation of law, the claimant would, if the design were then registered, be entitled thereto or to the interest of the applicant therein, or to an undivided share of the design or of that interest, the Controller may, subject to the provisions of this section, direct that the application shall proceed in the name of the claimant or in the names of the claimants and the applicant or the other joint applicant or applicants, accordingly, as the case may require. (2) No such direction as aforesaid shall be given by virtue of any assignment or agreement made by one of two or more joint applicants for registration of a design except with the consent of the other joint applicant or applicants. (3) No such direction as aforesaid shall be given by virtue of any assignment or agreement for the assignment of the benefit of a design unless(a) the design is identified therein by reference to the number of the application for the registration; or (b) there is produced to the Controller an acknowledgement by the person by whom the assignment or agreement was made that the assignment or agreement relates to the design in respect of which that application is made; or (c) the rights of the claimant in respect of the design have been finally established by the decision of a court; or
7

(d) the Controller gives directions for enabling the application to proceed or for regulating the manner in which it should be proceeded with under sub-section (5). (4) Where one of two or more joint applicants for registration of a design dies at any time before the design has been registered, the Controller may, upon a request in that behalf made by the survivor or survivors, and with the consent of the legal representative of the deceased, direct that the application shall proceed in the name of the survivor or survivors alone. (5) If any dispute arises between joint applicants for registration of a design whether or in what manner the application should be proceeded with, the Controller may, upon application made to him in the prescribed manner by any of the parties, and after giving to all parties concerned an opportunity to be heard, give such directions as he thinks fit for enabling the application to proceed in the name of one or more of the parties alone or for regulating the manner in which it should be proceeded with, or for both those purposes, as the case may require. VII. Certificate of Registration (1) The Controller shall grant a certificate of registration to the proprietor of the design when registered. (2) The Controller may, in case of loss of the original certificate, or in any other case in which he deems it expedient, furnish one or more copies of the certificate. VIII. Register of Designs (1) There shall be kept at the patent office a book called the register of designs, wherein shall be entered the names and addresses of proprietors of registered designs, notifications of assignments and of transmissions of registered designs, and such other matter as may be prescribed and such register may be maintained wholly or partly on computer floppies or diskettes, subject to such safeguards as may be prescribed. (2) Where the register is maintained wholly or partly on computer floppies or diskettes under sub-section (1), any reference in this Act to any entry in the register
8

shall be construed as the reference to the entry so maintained on computer floppies or diskettes. (3) The register of designs existing at the commencement of this Act shall be incorporated with and form part of the register of designs under this Act. (4) The register of designs shall be prima facie evidence of any matter by this Act directed or authorized to be entered therein. IX. Copyright on Registration (1) When a design is registered, the registered proprietor of the design shall, subject to the provisions of this Act, have copyright in the design during ten years from the date of registration. (2) If, before the expiration of the said ten years, application for the extension of the period of copyright is made to the Controller in the prescribed manner, the Controller shall, on payment of the prescribed fee, extend the period of copyright for a second period of five years from the expiration of the original period of ten years. X. Restoration of Lapsed Designs (1) Where a design has ceased to have effect by reason of failure to pay the fee for the extension of copyright under sub-section (2) of section 11, the proprietor of such design or his legal representative and where the design was held by two or more persons jointly, then, with the leave of the Controller one or more of them without joining the others, may, within one year from the date on which the design ceased to have effect, make an application for the restoration of the design in the prescribed manner on payment of such fee as may be prescribed. (2) An application under this section shall contain a statement, verified in the prescribed manner, fully setting out the circumstances which led to the failure to pay the prescribed fee, and the Controller may require from the applicant such further evidence as he may think necessary. XI. Procedure for Disposal of Applications for Restoration of Lapsed Designs

(1) If, after hearing the applicant in cases where the applicant so desires or the Controller thinks fit, the Controller is satisfied that the failure to pay the fee for extension of the period of copyright was unintentional and that there has been no undue delay in the making of the application, the Controller shall upon payment of any unpaid fee for extension of the period of copyright together with prescribed additional fee restore the registration of design. (2) The Controller may, if he thinks fit as a condition of restoring the design, require that any entry shall be made in the register of any document or matter which under the provisions of this Act, has to be entered in the register but which has not been so entered. XII. Rights of Proprietor of Lapsed Design which have been Restored (1) Where the registration of a design is restored, the rights of the registered proprietor shall be subject to such provisions as may be prescribed and to such other provisions as the Controller thinks fit to impose for the protection or compensation of persons who may have begun to avail themselves of, or have taken definite steps by contract or otherwise to avail themselves of, the benefit of applying the design between the date when the registration of the design ceased to have effect and the date of restoration of the registration of the design. (2) No suit or other proceeding shall be commenced in respect of piracy of a registered design or infringement of the copyright in such design committed between the date on which the registration of the design ceased to have effect and the date of the restoration of the design. XIII. Requirements Before Delivery on Sales (1) Before delivery on sale of any articles to which a registered design has been applied, the proprietor shall(a) (if exact representations or specimens were not furnished on the application for registration) furnish to the Controller the prescribed number of exact representations or specimens of the design; and, if he fails to do so, the Controller

10

may, after giving notice thereof to the proprietor, erase his name from the register and thereupon the copyright in the design shall cease; and (b) cause each such article to be marked with the prescribed mark, or with the prescribed words or figures denoting that the design is registered; and, if he fails to do so, the proprietor shall not be entitled to recover any penalty or damages in respect of any infringement of his copyright in the design unless he shows that he took all proper steps to ensure the marking of the article, or unless he shows that the infringement took place after the person guilty thereof knew or had received notice of the existence of the copyright in the design. (2) Where a representation is made to the Central Government by or on behalf of any trade or industry that in the interest of the trade or industry it is expedient to dispense with or modify as regards any class or description of articles any of the requirements of this section as to marking, the Central Government may, if it thinks fit, by rule under this Act, dispense with or modify such requirements as regards any such class or description of articles to such extent and subject to such conditions as it thinks fit. XIV. Effect of Disclosure on Copyright The disclosure of a design by the proprietor to any other person, in such circumstances as would make it contrary to good faith for that other person to use or publish the design, and the disclosure of a design in breach of good faith by any person, other than the proprietor of the design, and the acceptance of a first and confidential order for articles bearing a new or original textile design intended for registration, shall not be deemed to be a publication of the design sufficient to invalidate the copyright thereof if registration thereof is obtained subsequently to the disclosure or acceptance. XV. Inspection of Registered Designs (1) During the existence of copyright in a design, any person on furnishing such information as may enable the Controller to identify the design and on payment of the prescribed fee may inspect the design in the prescribed manner.

11

(2) Any person may, on an application to the Controller and on payment of such fee as may be prescribed, obtain a certified copy of any registered design. XVI. Information as to Existence of Copyright On the request of any person furnishing such information as may enable the Controller to identify the design, and on payment of the prescribed fee, the Controller shall inform such person whether the registration still exists in respect of the design, and, if so, in respect of what classes of articles, and shall state the date of registration, and the name and address of the registered proprietor. XVII. Cancellation of Registration (1) 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. (2) An appeal shall lie from any order of the Controller under this section to the High Court, and the Controller may at any time refer any such petition to the High Court, and the High Court shall decide any petition so referred. XVIII. Designs to Bind Government A registered design shall have to all intents the like effect as against the Government as it has against any person and the provisions of Chapter XVII of the Patents Act, 1970 shall apply to registered designs as they apply to patents.

12

ROLE OF JUDICIARY
On the basis of the pleadings, learned Assistant Controller of Patents and Designs framed following three issues for determination: (i) Whether the design was not new or original in view of the fact that the roller bearing the design is published before the date of registration and the registered proprietor is not owner of design. (ii) Whether the design was published outside India as well as in India prior to the date of application. (iii) Whether the registered design was in public domain due to sale/use of the design prior to the date of application of the registered proprietor. The first two issues were decided against the respondent and the third issue was not adjudicated since the evidence by way of affidavit was not taken on record on technical reasons. Hence, the Assistant Controller of the Patents and Designs cancelled the registration of the respondent. Aggrieved against this order the respondent filed a regular appeal under Section 36 of the Act of 2000 before the High Court. Learned Single Judge after considering the matter reversed the finding of the Assistant Controller and dismissed the application filed by the appellant for cancellation of registration of the respondent herein. Aggrieved against this impugned order passed by learned Single Judge of the Calcutta High Court the present appeal was filed by the appellant-complaint. The Assistant Controller primarily has taken into consideration the two evidences. (i) that the design was registered way back 1992 by the German company on the roller to be used either on glass, or rexin or on leather, therefore it is not new and original (ii) that the same design has been obtained in United Kingdom as is evident from the downloading of Patent website of the United Kingdom.

13

On the basis of these two evidences, the Assistant Controller has held that the design which was registered on the application filed by the respondent herein was not a new and original. Therefore, on the application filed by the appellant, the Assistant Controller of Patents and Designs cancelled that design of the respondent.

Examination of evidences:
The first issue which was the Assistant Controller found that M/s.Dornbusch Gravuren Gmbh, a German Company published a brochure bearing distinctive number 2960-910 for the first time on 10.9.1993 and the registered proprietor took the user's right and got it registered. Therefore, he came to the conclusion that the design is not a new and original one registered prior to the date of registration. Therefore, the question is whether the design is new and original. Section (4) which is couched in the negative terms, says that the design which is not a new or original then such design cannot be registered. Therefore, the question is the design which has been prepared by the German Company and which has been sold to the respondent which became the proprietor of it, is a new or original or not. In this connection, the burden was on the complainant to show that the design was not original or new. The bench had no hesitation in recording a finding that the burden was not discharged by the complainant. It was only tried to prove on the basis of the letter of the German company that they produced the rollers and sold in market but it was nowhere mentioned that these rollers have been reproduced on the glass sheets by the German company or by any other company. The expression, "new or original" appearing in Section (4) means that the design which has been registered has not been published anywhere or it has been made known to the public. The expression, "new or original" means that it had been invented for the first time or it has not been reproduced by anyone. The respondent company purchased the rollers from the German company and got it registered with the registering authority that by these rollers they are going to produce the design on the glass sheets.

Definition of a Design:
Design as a conception or idea "Design means 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

14

to an article by some manual, mechanical or chemical means mentioned in the definition clause. It is a suggestion of form or ornament to be applied to a physical body". It is a conception, suggestion or idea, and not an article, which is the thing capable of being registered. It may be according to the definition clause, be applicable to any article whether for the pattern or for the shape or configuration or for the ornament thereof (that is to say of the article) or for any two or more of such purposes. The design, therefore, is not the article, but is the conception, suggestion, or idea of a shape, picture, device or arrangement which is to be applied to the article, by some one of the means to be applied to a physical body." A design capable of registration cannot consist of a mere conception of the features mentioned in the definition, or in the case of an article in three dimensions, of a representation of such features in two dimensions It must, in such a case, in order to comply with the definition, consist of the features as they appear in the article to which they have been applied by some industrial process or means. An applicant for registration of a design has to produce a pictorial illustration of the idea or suggestion which he has to establish as new or original. Therefore, the concept of design is that a particular figure conceived by its designer in his mind and it is reproduced in some identifiable manner and it is sought to be applied to an article. Therefore, whenever registration is required then those configurations have to be chosen for registration to be reproduced in any article. The idea is that the design has to be registered which is sought to be reproduced on any article. Therefore, both the things are required to go together, i.e. the design and the design which is to be applied to an article. In the present case, the design has been reproduced in the article like glass which is registered. This could have been registered with rexin or leather. Therefore, for registration of a particular configuration or particular shape of thing which is sought to be reproduced on a particular article has to be applied. As in the present case the design sought to be reproduced on a glass-sheet has been registered and there is no evidence to show that this design was registered earlier to be reproduced on glass in India or any other part of the country or in Germany or even for that matter in United Kingdom, therefore, it is for the first time registered in India which is new and original design which is to be reproduced on glass sheet. Therefore, the submission of learned senior counsel for the appellant cannot be accepted that this design was not new and original.
15

M/s. Domestic Appliances and Others vs M/s. Globe Super Parts

In the case filed in Delhi High Court in 1981 PTC 239, M/s. Globe Super Parts from Faridabad manufactured gas tandoors and they got the design registered in respect of gas tandoor. The petitioners- M/s. Domestic Appliances & Ors. also manufactured gas tandoors under the trade mark 'Sizzler'. They were selling the same in Delhi market. The respondent filed a suit against the petitioners alleging inter alia infringement of the design and obtained temporary injunction restraining the petitioners from selling the seasonal goods. The petitioners filed an application under Section 51A of the Designs Act, 1911 for cancellation of the design No.145258 before the Controller of Designs, Calcutta. The cancellation was sought on the allegations that the design No.145258 was pre-published in India on the date of registration in as much as the respondents themselves were manufacturing and selling the gas tandoors earlier to the date of application for registration of design No.145258 and sold the same to various parties in Delhi, Punjab, Haryana, Jammu & Kashmir & Uttar Pradesh and also advertised the said supercook gas tandoor in several newspapers. It was also alleged that the respondents were not the originators or the owners of the design. Therefore, it should be cancelled. This was resisted by the respondents. Similarly in this case here also it was alleged that this application has been filed as a counterblast to the suit filed by the respondent and it was also pleaded that the petitioners were not interested in cancellation of the design. In the suit certain issues were framed and the High Court held that there was no definite evidence produced by the parties that the design had been previously registered in India. It was also held that the respondents were manufacturing the gas tandoors of the impugned design prior to 1977 and ultimately the Court held that the gas tandoors of the impugned design had been sold prior to the date of its publication. In other words the design had been published for the first time in India in 1977. Therefore, this case was decided purely on the question of fact and no ratio has been laid down.

16

The Wimco Ltd. Bombay vs. M/s. Meena Match Industries, Sivakasi & Ors.
in 1983 PTC 373, this was a case by the Wimco Limited, a public limited company which carried on business of manufacturing and selling match boxes. It was claiming that they were one of the famous manufacturers of matches and they developed a design and gave it a name as 'HOTSPOT' and made an application for registration under the provisions of the Designs Act,1911 and the same was registered. Thereafter a suit was instituted against M/s. Meena Match Industries, M/s. Thilgaraj Match Works and Ms. Sanjay & Co to restrain the defendants from manufacturing, producing, selling and/or marketing or offering for same match boxes bearing the impugned pattern/ design on the match boxes. After review of the evidence on record the Court held that the design given to M/s. Wimco was liable to be cancelled on the ground that it has been published in India prior to the date of registration and the design was not a new or original one. Therefore, this was also decided basically on the question of fact.

King Features Syndicate Incorporated & Frank Cecil Betts & M. Kleeman Ltd
In this case also, action was brought for alleged infringement of certain copyright in certain drawings. It was contended by the defendants that they had not manufactured or imported and sold as alleged by the plaintiffs and there was no infringement. Leave was granted. The Court of Appeal allowed the appeal. The plaintiffs appealed to the House of Lords and the appeal was allowed. There also much turned on the question of evidence.

Gammeter v. Controller of Patents & Designs

The Lordships discussed the concept of new and original. In that context, it was observed as follows: " 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
17

article whatever, there might be a novelty in applying an old thing to a new use, provided it is not merely analogous. Where the design of a metal band called the "Novelty band," intended to attach a watch to the wrist, was similar in shape and configuration to a bracelet previously manufactured for ornamental purpose." Their Lordships further held as follows: "Though the shape of the "Novelty" band by itself could not be said to be new and original, the application of it to a watch to be worn on the wrist was for a purpose so different from and for a use so similar to the purpose and use of the bracelet that the design in question might be said to be original. Worn on the wrist was for a purpose so different from and for a use so similar to the purpose and use of the bracelet that the design in question might be said to be original." Therefore, this case also depended on the appreciation of the material placed before the Court.

Coming back to the case of Bharat Glass Tube Limited vs Gopal Glass Works Limited, the next evidence which was lead by the appellant was a website had been downloaded from the United Kingdom Patent Office effecting patent that may be applied to glass sheets. No evidence has been produced to show that M/s.Vegla Vereinigte Glaswerke Gmbh had manufactured this design in glass sheet or not. It is only a design downloaded from the website of the Patent office in U.K. and it is not known whether it was reproduced on glass-sheet in U.K. or not. In this connection, the Assistant Controller has only observed that he has made a visual comparison of the U.K. registered design No.2022468 with the impugned design No.190336 and he was satisfied that both the designs make same appeal to the eye and there was sufficient resemblance between the two designs. Therefore, the Assistant Controller held that the impugned design was prior published and it could not be said to be new or original. The Assistant Controller further observed that the proprietor of this design had not been able to make a difference between the U.K. design and the present design. This was not accepted by learned Single Judge of the Calcutta High Court and for the good reason. It was observed by learned Single Judge as under: "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 clean unmistakable instructions or directions for production of glass sheets of the
18

pattern illustrated. 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 has not considered these factors. The order impugned considered with the materials on record, including in particular the computer print outs clearly reveals that the respondent has only compared the pattern and/or configuration considered the visual appeal thereof, but not the visual appeal of the pattern and/or configuration on the article. In other words, the respondent has not considered the visual appeal of the finished product. There are no materials on record to show that the design had previously been applied to glass sheets. On the other hand, an affidavit was sworn on behalf of the appellant by a Liaison Executive affirming that he had ascertained that the proprietor of the design registered in the United Kingdom had never manufactured glass sheets of the design registered." From this it appears that in fact the pattern of the design which is reproduced on the glass-sheet and the design and the pattern which was reproduced on the glass-sheet of the United Kingdom were not common. The affidavit sworn on behalf of the respondent herein, the liaison Executive that he had ascertained from the proprietor of the design registered in United Kingdom and they have never manufactured glass-sheet of the design registered. This affidavit evidence of the Liaison Executive of the respondent company has remained un-rebutted. Secondly, the learned Assistant Controller has not properly compared the two designs that on what comparison he found that the same configuration or patterns are identical with that of the impugned design. Simply by saying visually one can liable to commit the mistake but if the comparison is to be judged whether the pattern of the United Kingdom and that of the present pattern is three dimension or not. Both the designs were placed before us as was done before the High Court also. Learned Single Judge recorded its finding after seeing both the designs that there is distinguishable difference between the two. Similar attempt was made before the bench to show that both the designs i.e. one that is published in United Kingdom and the impugned design are identical. The learned Bench of Judges had seen the original glass pattern produced before them and the photograph of the pattern produced on record. If the complainant was serious about the same, it could have produced the pattern which was reproduced on the glass-sheet in the United Kingdom and the pattern which is reproduced on the
19

glass-sheet by the rollers of the design produced before them. If these two glasssheets were placed before learned Single Judge or before them they would have been able to record the finding.

CONCLUSION
After considering the materials, Supreme Court upheld the Calcutta High Courts decision for the following reasons; 1. There is no evidence whatsoever produced by the complainant either before the Assistant Controller or before any other forum to show that the design which has been reproduced on the glass sheet was manufactured anywhere in the market in India or in United Kingdom. 2. This proprietorship of this design was acquired by this respondent from the German company. Therefore, he has the right to register the same in India. 3. No evidence was produced by the complainant before the Assistant Controller that anywhere in any part of the world or in India this design was reproduced on glass or it was registered anywhere in India or in any part of the world. Therefore, this design is new for glass and the same is new and original one. 4. Finally Supreme Court also declined to consider the documents which have been downloaded from the UK Patent Office website.

Hence the finding recorded by the Assistant Controller is most inconclusive and it does not give us any assurance that it was a proper comparison of the two patterns by the Assistant Controller. The bench fully agreed with the view taken by learned Single Judge. Hence on this count also the view taken by the Assistant Controller did not appear to be correct and the view taken by learned Single Judge of the Calcutta High Court was correct.

VIEWS ABOUT THE CASE

View about the facts
The facts of the case are quite straight-forward. The respondents - Gopal Glass Works - had registered their designs for diamond shaped glass sheets (pictured above left) under the Designs Act, 2000 and were granted a certificate of registration
20

for the same in the year 2002 in a record 6 days! The respondents therefore acquired the sole right to manufacture and market the glass sheets in the design that was registered in their names. The appellant however started marketing his glass sheets with the same design. The designs that were formed on the glass sheets were formed by engraved rollers which were developed by a German Company which had licensed all Indian rights to the respondent.

On learning that the appellants were manufacturing glass sheets in the same protected design the respondents moved Court for an interim injunction which they were granted following which the appellants moved the Asst. Controller of Patents for cancellation of the respondents design on the ground that it already been published by the German Company in the year 1992 as was evidenced by a letter produced from the German Company and also that the design had been published on the website of the U.K Patent Office by another company which had sought for design protection. The respondents countered by pointing out that the German Company manufactured only the engraved rollers and not the glass sheets. They contended that the engraved rollers could then be applied to a wide variety of material from glass sheets to plastic and that their registration for design protection under Class 25-01 was for the application of that design to glass sheets. The Asst. Controller of Patents found merit in the appellant's contentions that the respondents design was not new or original since the German company had been manufacturing the engraving rollers with the same design since 1992 and also because the design had already been published in the U.K. Patent Office Website by another German Company and thus the registration of the respondent's design was cancelled since it did not meet the requirements of originality laid down by Section 4. When the matter went on appeal to the High Court the single judge over-ruled the Asst. Controller of Patents and restored the design to the respondents. The Appellants then appealed against this decision to the Supreme Court.

Supreme Court Decision

In its decision the Supreme Court accepted the respondent's distinction between the design on the engraved rollers and the glass sheets. The Court noted that under Section 2(d) design means the application of shape, configuration etc. to any article
21

and since in this case the respondent had specifically mentioned in the application form that he was applying the designs only to glass sheets, he would have exclusive rights to do so despite the fact that the design already existed on the engraved rollers. On the question of whether the design was new and original the Supreme Court held that the appellant had failed to establish that the design had already been published. The publication of the design on the U.K. Patent Office Website was dismissed since it did not clearly establish that the designs in question had been applied to glass sheets and also because on a visual comparison the designs did not match each other. The appeal was therefore dismissed and the registration of the design was restored to the respondent. It is however strange that the Supreme Court did not simply dismiss the appeal on the basis of the statutory definition of original which is as follows: 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. The Court could have simply held that the German designs were on rollers and any novel application of this design to new articles was eligible for protection. Ultimately the Court's decision was on similar lines but it unnecessarily got itself tangled up in the statutory definition of 'design' without a single mention of the statutory definition of 'original'.

22

REFERENCES
http://www.indiankanoon.org/doc/444914/ http://ipindia.nic.in/ipr/design/design_act.PDF http://spicyipindia.blogspot.in/2008/08/supreme-court-delivers-judgment-in-case.html http://en.wikipedia.org/wiki/Registered_Designs http://www.lawyersclubindia.com/articles/print_this_page.asp?article_id=1375 http://www.rediff.com/money/2008/jun/25guest.htm http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1767917

23