* IN THE HIGH COURT OF DELHI AT NEW DELHI Judgment reserved on :
9. h September, 2014 Judgment pronounced on:
22. d September, 2014 % + I.A. No.14725/2014 & I.A. No.16523/2014 in CS(OS) No.2357/2014 V2 CORP & ANR. Through …Plaintiffs Mr.Sudhir Chandra Sr. Adv. with Mr. Chetan Chadha & Mr. Sharabh Srivastava, Advs. versus INNOVATIVE TECHPACK LIMITED Through …Defendant Mr. C.M.Lall, Adv. with Ms. Nancy Roy, Adv. CORAM: HON'BLE MR.JUSTICE MANMOHAN SINGH MANMOHAN SINGH, J.
1. The present suit for permanent injunction, infringement of designs, damages and delivery etc. has been filed by the plaintiff against the defendant in respect of design No.221746 registered as of 17th March, 2009 and design No.253936 registered as of 17th May, 2013. Alongwith the suit, plaintiffs also filed an application under Order 39 Rule 1 and 2 read with Section 151 CPC being I.A. 14725/2014.
2. The suit alongwith said interim application was listed before Court on 8th August, 2014. After hearing, detailed ex-parte order was passed against the defendant restraining it from manufacturing, selling, offering for sale, stocking, advertising directly or indirectly dealing in products JAR having a design identical to or a design being an obvious imitation of the designs registered under Design No.221746 and 253936 of the plaintiff No.1 which may amount to infringement of the plaintiff No.1’s said designs.
3. Upon service of interim order, defendant filed an application under Order 39 Rule 4 for vacation of an ex-parte interim order being I.A. No.16523/2014. By this order, I propose to decide both these pending applications.
4. Brief facts of the case as stated by the plaintiff in the plaint are that plaintiff No.1 holds all intellectual property rights including design rights in respect of design of “JAR” registered in their favour who claimed that the said designs are original and novel. The plaintiff No.2 is engaged in the business of designing, manufacturing, marketing and selling plastic products for the past many years and is stated to be a reputed manufacturer of bottles, caps, jars and containers etc. The said designs are owned by the plaintiff No.1 licensed to plaintiff No.2 who is stated to have expanded the business internationally and exports the products to Dubai, Nepal, Bangladesh and Egypt. It has clients such as Dabur, Perfetti, Reckitt Benckiser, Colgate- Palmolive etc. The plaintiffs own a website www.varahi.in where all its products are extensively advertised. It is alleged that the plaintiffs have acquired an enviable goodwill and reputation in the market. The details of the sales figures for the financial years 2006-2007 to 2013-2014 have been given in para 11 of the plaint with that for the year 2013-14 being Rs.21,636.57 lacs. The details of amount spent in advertisements are given in para 12 of the plaint.
5. It is alleged that the products have acquired an eye-catching appeal and can be easily identified amongst other products. The novelty in both the designs of “JAR” reside in the shape, configuration and surface ornamentation of the “JAR” which adds a distinct visual appeal to the products which are different from other available jars in the market. The plaintiff No.1 has the exclusive rights and statutory right to restrain any entity from misusing any of the said designs and from adopting an obvious imitation of the said designs.
6. It is the case of the plaintiffs that in the month of May, 2014 it came to the knowledge of the plaintiffs that the defendant has committed piracy of the designs owned by plaintiff No.1. Defendant blatantly copied both the designs of the plaintiffs and by copying both the designs owned by plaintiff No.1, the defendant is guilty of violating the statutory rights of the plaintiffs and thereby causing design infringement of the “JAR” of the plaintiffs. From the comparison that it is evident that the defendant has pirated the registered designs of the plaintiff No.1 in entirety including the shape, configuration and surface ornamentation in which the novelty is claimed by plaintiff No.1who sent a legal notice dated 26th May, 2014 and an updated legal notice dated 6th June, 2014 to the defendant informing about its statutory rights in both the designs and calling upon the defendant to not indulge in activities constituting design infringement. However, the defendant in its reply dated 6th June, 2014 refused to comply to the request of the plaintiff.
7. The plaintiffs state that the JAR used by the defendant amounts to obvious imitation and piracy of the registered designs by the defendant is nothing but an attempt to trade upon the reputation acquired by the plaintiffs. The defendant is guilty for piracy of the registered designs of the plaintiffs under the provisions of Section 22 of the Designs Act, 2000 who has infringed the design rights of the Plaintiffs with full knowledge with mala-fide intentions and ill motives.
8. The defendant who has filed an application under Order 39 Rule 4 for vacation of an ex-parte interim order has stated that both the plaintiffs and the defendant supply the JARS in issue to one of the common customer, including M/s Perfetti Van Melle (hereinafter referred to as Perfetti). The impact of the injunction would be that the supply from the defendant would be ceased resulting in short supply to Perfetti and result in blacklisting of the defendant by a client to whom it has made supplies at least since 2002. This would damage the defendant’s market reputation and the plaintiffs would be the direct beneficiary of the same in order to get the defendant blacklisted. Defendant has been manufacturing and supplying Jars to Perfetti since 2004 and has been manufacturing similar jars at least since 2006 and the identical Jars at least since 2013 in huge quantities.
9. In order to stress his submission Mr. C.M. Lall, learned counsel argues that the Jars supplied to Perfetti are based on the specifications laid down by Perfetti in terms of their functional and performance requirements which definitely require making of deep ribbing patterns on the Jar in order to lower the weight and achieve targeted results as set out by Perfetti as per their specification sheet. Defendant is a listed company having a turnover in excess of INR75Crores and supplies products to reputed companies such as Perfetti, Dabur, Mother Dairy, Heinz, Godrej, Wipro, S C Johnson, etc. Perfetti approved a similar Jar of the defendant as far back as in the year 2006 and sale of these Jars to Perfetti value in excess of INR1400,000/- in a single month. Copy of the drawings alleged to be approved by Perfetti is filed alongwith the application. It is argued that these Jars were supplied till around the year 2008 which are visually similar to the Jars used by defendant at present. The earlier Jars cannot be used by the defendants today on account of the fact that the same are heavier and costlier to the buyer which are also not acceptable to its customers. It has been stated that Jars of this type and of virtually identical shape and configuration have been in the market place for many years and even prior to March 2009, when the plaintiffs obtained their design registration. There is few minor modification of earlier design which amount to trade variants. Jars which are currently in the market also being supplied by third parties like Pearl Polymers Limited, Vimoni India Private Limited, Livia Polymer Bottles Pvt. Ltd., Vinayak Polycon.
10. The designs of subject matter of JAR has in fact been developed by a company by the name of ASB International Private Limited which is a 100% subsidiary of Nissei ASB Machine Company Ltd. of Japan in the year 2007 who has also developed similar designs for other clients making slight variations including the defendant. The defendant has filed letter dated 28th August 2014 from ASB along with relevant drawings developed by them in the years 2006-2007 alongwith the application. The designs in question are utilitarian in nature and are required to give strength to the Jar enabling the weight of the Jar to be reduced. It is argued that the design registration No.253936 dated 7th May, 2013 obtained by plaintiff No.1 is itself liable to be cancelled on account of the fact that the design registration No.221746 has already been registered in the year 2009. As the said registration obtained in 2013 is almost similar with the design registration obtained in 2009 which has been extensively published by plaintiffs themselves. Therefore, the same is neither new design nor original. The registration of 2013 design has very minor alterations. Therefore, the said design of 2013 is liable to be cancelled.
11. It is also argued by Mr. C.M. Lall, learned counsel that design registration No.221746 dated 17th March 2009 is also liable to be cancelled inter alia on the ground that it has been extensively published in India and elsewhere prior to the date of registration. The design is neither new nor novel nor original. The Plaintiffs are not the originators of the design as it is a very small variation of pre-existing designs with a virtually identical shape and configuration which have been in common use by several third parties since at least 2007. Therefore, the ad-interim order dated 8th August, 2014 passed by this Court is to be vacated as the balance of convenience lies in favour of the defendant.
12. The interim order dated 8th August, 2014 was modified on 3rd September, 2014 with the consent of the parties as plaintiffs made the statement before the Court that one of the common customer i.e. Perfetti has asked the plaintiffs not to press the interim order against them as their business is being suffered on account of interim orders.
13. The plaintiffs have filed a short reply as well as the detailed affidavit of Mr. R.K.Chawla, Executive Director of the plaintiff No.2 as reply to application under Order XXXIX Rule 4 CPC filed by the defendant wherein it has been stated that the designs registered under No.253936 dated 17th May, 2013 is different than design No.221746 dated 17th March, 2009 as there were “significant design improvements” made by the plaintiffs. The “super short neck” in the subsequent registration is the improved feature which also has deeper and longer ribbings thereby providing distinct visual appeal to the products of the plaintiffs. The novelty and originality of these designs have resulted in tremendous commercial gain to the plaintiffs which the defendant seeks to encash upon by adopting identical design in respect of its jar.
14. It was denied in the affidavit that the defendant has been allegedly manufacturing and supplying jars to Perfetti since 2004 and manufacturing similar jars which are the subject matter of the present suit. It is not denied by the plaintiffs that there are few common customers who are purchasing JARS from both the parties, however, the impugned design was never used by the defendant prior to 2014. The defendant was earlier using different design of the JAR. It is denied by the plaintiffs that Perfetti has ever approved a similar jar of the defendant in the year 2006. It is stated that Perfetti does not approve drawings of designs but only approves specifications, diameters, height, size, body circumference etc. Perfetti has no concern with the Intellectual Property Rights of the Jar, the contention of the defendant of having an approval of design by Perfetti is not correct. The said JARS supplied by the defendant to Perfetti did not have super short neck and deeper and longer ribbings. Even otherwise the drawings alleged to be approved by Perfetti as annexed by the defendant is not part of the letter of approval. The alleged approval of a similar jar of the defendant by Perfetti, at one page of the document bears the date 11th February, 2010 whereas the date mentioned in the drawing at the next page reads as 22nd November, 2011. Therefore, in view of the contradiction in the two pages of the same document it becomes evident that the said document is doubtful and has no legal sanctity. The ribbings or also known as flutings as shown in the impugned document by the defendant did not exist in the year 2006 until the plaintiff introduced the first of its kind wave like flutings and were granted registration for the same under design number 207245 dated 30th November, 2006.
15. As regards the letter dated 28th August, 2014 from ASB International Pvt. Ltd. along with impugned drawings alleged to be developed by them is concerned, it is denied by the plaintiffs that under the impugned design, the said party has manufactured the mould prior to 2009 on behalf of any party to the suit or any third party. It is stated that ASB International Pvt. ltd. use to prepare moulds on the basis of the drawings provided to it, therefore there is no question of having any intellectual property rights in the designs by them.
16. These alleged dates are only the dates written on the drawings and this does not prove that the drawings were made, received, communicated, disclosed, published or that jars or moulds were manufactured on a particular date. Moreover, the impugned letter fails to disclose the exact date as to when were the impugned drawings received by ASB International Pvt. Ltd or when were the jars or moulds made, if any. Further, the impugned drawings attached with the letter dated August 28, 2014 have not been authenticated by ASB International Pvt. Ltd on affidavit and are mere computer print outs wherein the information or contents including the date can be easily edited or modified at any time as per ones requirements. It is denied by the plaintiffs that the designs in question are utilitarian in nature and are required to give strength to the jar enabling the weight of the jar to be reduced. It is stated that the jars of the plaintiffs have novel shape, configuration and surface ornamentation and the design have the aesthetic qualities which are appealing to the eyes. The registrations obtained by the plaintiff No.1 are in respect of the shape, configuration and surface ornamentation of the jars and not on any functional/utilitarian element. The shape, configuration and surface ornamentation are governed by aesthetic considerations since this purely appeals to the eye. Thus, there is a strong prima facie case in favour of the plaintiffs and against the defendant. The balance of convenience also lies in favour of the plaintiffs and against the defendant. In case the injunction order is not confirmed, the defendant would continue to supply its jars having the impugned design and the plaintiffs shall suffer irreparable loss and injury given the identical designs adopted by the defendant in violation of the statutory and legal rights of the plaintiffs. Therefore, the defendant is not entitled to the relief claimed in the application for vacation of interim orders.
17. Before considering the rival submissions of the parties, it is necessary to refer the relevant provisions of The Design Act, 1999. The same are reproduced herein after : Section 2(d) “design” means only the features of shape, configuration, pattern, ornament or composition of lines or colors applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of Section 2 of the Trade and Merchandise Marks Act, 1958 or property mark as defined in Section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957. Section 9. 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. Section 10. 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 and diskettes under sub-section (1), any reference in this Act to any entry in the register shall be construed as the reference to 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. Section 11. 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 copy-right for a second period of five years from the expiration of the original period of ten years. Section 22. Piracy of registered design - (I) During the existence of copyright in any design it shall not be lawful for any person(a) for the purpose of sale to apply or cause to be applied to any article in any class of articles in which the design is registered, the design or any fraudulent or obvious imitation thereof, except with the license or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied; or (b) to import for the purposes of sale, without the consent of the registered proprietor, any article belonging to the class in which the design has been registered, and having applied to it the design or any fraudulent or obvious imitation thereof, or (c) knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article in any class of articles in which the design is registered without the consent of the registered proprietor, to publish or expose or cause to be published or exposed for sale that article.
2. (1) If any person acts in contravention of this section, he shall be liable for every contravention(a) to pay to the registered proprietor of the design a sum not exceeding twenty-five thousand rupees recoverable as a contract debt, or (b) if the proprietor elects to bring a suit for the recovery of damages for any such contravention, and for an injunction against the repetition thereof, to pay such damages as may be awarded and to be restrained by injunction accordingly : Provided that the total sum recoverable in respect of any one design under clause (a) shall not exceed fifty thousand rupees: Provided further that no suit or any other proceeding for relief under this subsection shall be instituted in any court below the court of District Judge. (3) In any suit or any other proceeding for relief under subsection (2), ever ground on which the registration of a design may be cancelled under section 19 shall be available as a ground of defence. (4) Notwithstanding anything contained in the second proviso to sub-Section (2), where any ground or which the registration of a design may be cancelled under section 19 has been availed of as a ground of defence and sub-section (3) in any suit or other proceeding for relief under sub-section (2), the suit or such other proceedings shall be transferred by the Court in which the suit or such other proceeding is pending, to the High Court for decision. (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."
Section 19 - 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 registerable 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. A mere reading of the aforementioned provisions would reveal that the Act is a complete code itself which provides that there is a condition for certificate of registration of the said design under Section 9 and the said design upon registration confers the copyright in the said design for a period of 10 years as envisaged under Section 11 and for further renewable of five years under the said provision.
18. Section 22 provides remedy for piracy of a registered design wherein the said piracy will only happen during the existence of copyright in the said design. Sub-section (3) of Section 22 mandates that in any suit or any other proceedings for relief under sub-section (2) every ground on which the registration of a design may be cancelled under Section 19 shall be available as ground of defence. In case, section 22(3) of the Act is read in a meaningful manner, it is clear that in any suit every ground of cancellation of design in question is available to the defendant as ground of defence.
19. The design registration No.207245 as of 30th November, 2006 is not a subject matter of suit. Copy of the registration certificate is filed alongwith reply/affidavit to the application under Order 39 Rule 4 read with Section 151 CPC still in order to understand the dispute in the present case, the registration is also necessary to be considered. For the purpose of convenience, reproduced herein are the scanned copies of JARs for which three registrations in total have been obtained by plaintiff No.1 from time to time. The design of “Jar” for which registration under number 207245 dated 30th November, 2006 in class 07.01 in relation to JAR was granted, the claim was made by the plaintiff No.1 at the time of registration that the novelty of the design registered under number 207245 resides in the shape, configuration and ornamental surface pattern of the”JAR” particularly marked as “A” and “B” below: Design of “Jar” of the plaintiffs registered under No.207245 dated November 30, 2006 It is argued that it is the plaintiffs who are the first in the market to introduce the novel and unique wave like flutings in respect of “JAR” having fluting feature mentioned at point A and a neck of the JAR shown at the point A of the said design registration. The plaintiffs after some period, made “significant design improvements” and introduced completely unique, original and novel designs in respect of “JAR” and in order to distinguish the unique designs of their products, plaintiff No.1 has got the original designs of its products of “JAR” registered under the Designs Act, 2000 bearing registration No.221746 dated March 17, 2009.
20. The second design was registered under number 221746 dated 17th March, 2009 in class 09-01 in respect of JAR. In the registration, plaintiff No.1 has made the claim inter alia that the novelty resides in the shape, configuration and ornamental surface pattern of the “JAR” particularly in the portions marked at “A”, “B”, and “C” below: Design registered under number 221746 dated March 17, 2009 21. Representations of the design registered under number 221746 of the plaintiff No.1. BACK VIEW CS(OS) No.2357/2014 LEFT SIDE VIEW22 The said registration has three main features as per the case of the plaintiffs which are shown and pointed out at A i.e. neck, B i.e. ribbings, and C i.e. flutings. It appears to the Court that apparently the features shown in the above-mentioned design are substantially dis-similar to earlier design obtained by plaintiff No.1 on 30th November, 2006 bearing No.207245. There is no evidence that the said design No.207245 is being used.
23. The third registration bearing No.253936 dated May 17, 2013 was obtained in class-09-01 in respect of JAR. The claim was made by the plaintiff No.1 at the time of registration that the novelty resides in the shape, configuration and ornamental surface pattern of the “JAR”. The registration also obtained with regard to left right bottom and top view of the JAR in question. The said registration shows that above-mentioned is also similar except it has a short neck and long ribbings. In fact common features of the above-mentioned design are prior known, prior used and prior registered by the plaintiffs themselves. Front View Design registered under number 253936 dated May 17, 2013 24. The said design of Jar used by the defendant which is subject matter of the suit is as under: IMPUGNED DESIGN OF THE DEFENDANT25 On mere comparison of the plaintiffs’ jars bearing the registered designs and the defendant’s jars having the impugned design, both are similar designs as the Jar used have a super-short neck, similar ribbings and design of flutings.
26. As far as first argument of the defendant that Perfetti has approved the specifications of the design in question prior to the period of 17th March, 2009. There is no evidence even prima facie either from the side of the defendant or from Perfetti in this regard that there was impugned design JAR line used in the market or otherwise by the defendant prior to 17th March, 2009 i.e. date of registration. The proof of evidence is of subsequent date, the argument has no force. The reliance of evidence of approval, if any, by Perfetti does not help the case of the defendant in view of failure on the part of defendant even prima facie evidence about the prior user by Perfetti. Thus, the defendant cannot take any benefit of it.
27. With regard to argument of Mr.Lall in order to support his second submission that the subject matter of designs are not new or original he referred the drawings attached with the letter dated 28th August, 2014 i.e. certificate issued by ASB International Pvt. Ltd. The said certificated dated 28th August, 2014 is reproduced below:
“August 28, 2014 To whomsoever it may concern This is to certify that we, ASB International Pvt. Ltd., E-9, MIDC, Additional Ambernath Industrial Area, Anand Nagar, Ambernath East, Distt. Thane – 421 506 made/manufacture the basic designs of 83 mm Neck Wide Mouth PET Containers as per the details given below for our customers : Alpha PET – Drawing No.29-M258-02D – 2170ML dated 08.03.2007. Vimoni India Pvt. Ltd. – Drawing No.28-M262-01D – 2656ML Dated 17.03.2006. Vimoni India Pvt. Ltd. – Drawing No.28-M423-03D2742 dated 23.06.2006. All above drawings are intellectual property of ASB International Pvt. Ltd. For ASB International Pvt. Ltd.”
28. The position as per the letter dated 28th August, 2014 is that ASB International Pvt. Ltd. made/manufactured the basic designs of 83mm Neck wide mouth PET containers for its customers Vimoni India Pvt. Ltd and Alpha PET. The said letter discloses that ASB International Pvt. Ltd. made/manufactured the basic designs of 83mm Neck wide mouth PET containers for its customers Alpha Pet dated 8th March, 2007 and Vimoni India Pvt. Ltd. dated 17th March, 2006 and 17th June, 2006.
29. From the drawings, it appears that the said drawings have their numbers being 29-M258-22D-2170KL dated 8th March, 2007, 28M262-01D-2656KL dated 17th March, 2006 and 28-M423-03D2742KL dated 23rd June, 2006. It is clear from the said drawings that the picture of deeper and longer ribbings which is a part of design registration bearing No.221746 as of 17th March, 2009 of point ‘B’ is not mentioned. There is no evidence that the said feature claimed as ‘B’ at the time of registration is already available or prior published to the date of registration, i.e. 17th March, 2009. No evidence whatsoever has been produced by the defendant. The said portion used by the defendant is similar to the portion of the plaintiff’s designs which are the subject matter of the present suit. Thus, in the absence of any evidence, the defendant is not entitled to use the same.
30. It is also evident from the said drawings that the registration No.221746 as of 17th March, 2009, the substantial shape and configuration of the design is similar to the design appearing from the drawings filed along with the certificate dated 28th August, 2004 issued by ASB International Private Limited. The drawings are for the period March, 2006 and March, 2007 except super-short neck and long ribbing which are the features claimed by the plaintiff under the design registration No.253936 as of 17th May, 2013. It definitely prima facie speaks for itself that these are prior known and published to the registration granted on 17th March, 2009 bearing No.221746. The fact of the matter is that as per drawings produced, the mould manufacturer, i.e. ASB International Private Limited of both the parties is the same and why the mould manufacturer would give the false certificate along with the drawings of the design which are used by the third parties. The factum of common mould manufacture is also not disclosed by the plaintiff in the plaint. The features mentioned in drawings are similar to the feature/pointed ‘A’ and ‘C’ of the design registration No.221746. Where the newly claimed are prima facie not novel and new on the date of registration. Thus, not protected within the meaning of Section 22(3) read with Section 19 of the Design Act. This Court is inclined to allow the defendant to use the same in respect of the Jar.
31. As far as the registration bearing No.253936 as of 17th May, 2013 is concerned, the substantial design of the Jar is similar to the design registration bearing No.221746 as of 17th March, 2009. Therefore, the substantial feature of the said design is covered by the registration obtained by the plaintiff itself on 17th March, 2009 in view of the prior registration obtained in the year 2009, except in the registration bearing No.253936 as a short neck, deeper and longer ribbings. Prima-facie, it appears to me that the same are merely trade variant in view of the settled law on the issue.
32. (i) It was expressed by Buckley L.J.
on the question of quantum of novelty in Simmons v. Mathieson & Cold,(1911) 28 R.P.C. 486 in these words: (ii) “In order to render valid the registration of a Design under the Patents and Designs Act, 1907, there must be novelty and originality, it must be a new or original design. To my mind, that means that 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 in a trivial or infinitesimal degree, but in some substantial degree.”
It was laid down by Lord Moulton in Phillips v. Harbro Rubber Company (37 R.P.C.
233) that it is the duty of the Court to take special cast that no design shall be counted new or original unless it is distinct from what previously existed by something essentially new or original which is different from ordinary trade variants which may have long been common matters of taste or choice in the trade. It is well established that a registration cannot be deemed effective unless the design or configuration sought to be protected is new or original and not of a pre-existing common type. (iii) The design must be held to be valid if the statement of novelty is correctly construed in the narrow sense. However, in other type of cases like the case reported in Neggretti and Zambra v. W.F. Stanley & Co., Ltd. (42 R.P.C. 358), the case was concerned with the design of a thermometer. The Court deciding the action noticed the plaintiffs had produced a useful article of commerce for a particular purpose, which, from its smallness and neatness, was readily distinguishable from the larger thermometers which had gone before; but that was found to be wholly immaterial. "The fact that the plaintiffs have hit upon a useful shaped and useful sized thermometer for the particular purpose in hand", it was found that there is no reason in law why the defendants should not even copy such features of that Design which were common in the trade, nor is it any reason why they should not add to such Design any ordinary trade improvement or trade variant which is obvious as soon as the particular use to which the article is intended to be put is appreciated."
(iv) Drawing a distinction between 'new' and ‘original’ Buckley L.J.
said in Dover Ltd. vs. Nurnberger Celluloidwaren Fabric Gebruder Wolff, (27 R.P.C.
498) that ‘new’ is referred to a case where the shape or pattern was wholly new in itself and on the other hand ‘original’ to the case where it was old but new in its application to the particular subject matter. The word ‘original’, according to the learned Judge “contemplates that the person has originated something, that by the exercise of intellectual activity he has started an idea which had not occurred to anyone before, that a particular pattern or shape or ornament may be rendered applicable to the particular article to which he suggests that it shall be applied”. It is rightly held in the cases decided that in the matter of novelty the eye is to be the ultimate test and the determination has to be on the normal ocular impression. In order to know 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. 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.
33. In Ram Sahai v. Angnoo, AIR1922All 496, Bahkhshi v. Ghulam Mohammad, AIR1934Lahore 709 and The Pilot Pen Co. (India) Private Ltd., Madras v. The Gujarat Industries Private Ltd., AIR1967Madras 215, Wingate's Registered Design No.768.611 (52 R.P.C.
126) it was observed that what a substantial difference is, is a question upon which no general principle can be laid down at all; it must depend on the particular facts in each case. In one case a quite small variation in the details of a design may be enough to make the design something quite different from an existing design. On the other hand, there are cases even where quite large alterations in detail leave two designs for all practical purposes the same. The Court has to consider and look at the design in question with an instructed eye and say whether there is or is not such a substantial difference between that which had been published previously and the registered design as to entitle the proprietor of the registered design to say that at the date of registration that was a new or original design and therefore properly registered.
34. In view of aforesaid reasons and from pleadings and material placed on record by the parties, this Court if of the considered opinion that the interim order already passed on 8th August, 2014 and which was modified vide order dated 3rd September, 2014 is further modified to the limited extent that the defendant would be entitled to use the feature claimed under design 221746 and marked as A and C as depicted in Para 20 of my order. The remaining part of the order dated 8th August, 2014 and modified order dated 3rd September, 2014 shall be continued during the pendency of the suit.
35. Both the applications i.e. I.A. 14725/2014 and I.A. No.16523/2014 are disposed of accordingly. CS(OS) No.2357/2014 List before Joint Registrar for admission/denial on 27th October, 2014. MANMOHAN SINGH, J.
SEPTEMBER22 2014