IN THE HIGH COURT AT CALCUTTA SPECIAL JURISDICTION ORIGINAL SIDE BEFORE: THE HON’BLE JUSTICE SOUMEN SEN G.A.No.1492 of 2017 With AID No.3 of 2016 T.K.SHAWAL INDUSTRIES PVT.LTD.versus CONTROLLER OF PATENTS AND DESIGNS & ORS.For the Petitioner : Mr.Mr.Mr.Mr.Rudraman Bhattacharya, Adv., Soumen Mohanty, Adv., Sourajit Dasgupta, Adv., Yash Vardhan Deora, Adv.For the Respondents : Mr.Kamal Kishore Arora, Adv., Mr.Gaurav Arora, Adv., Mr.Himanshu Arora, Adv.Hearing Concluded On : 29.06.2017 Judgment On : 10th July, 2017 Soumen Sen, J.:- The appeal is arising out of an order passed by the Deputy Controller of Patents and Designs on 20th January, 2016 in connection with a petition for cancellation of registered Design No.252082 filed on 12th February, 2014 under Section 19 of the Designs Act, 2000 by T.K.Shawal Industries PVT.Ltd., the appellant herein.
The Deputy Controller has rejected the said application for cancellation of the aforesaid design.
The grounds for cancellation taken before the Deputy Controller are:1.
That the design has been published in India and/or in any other country prior to the date of registration.”
2. That the design is not a new or original design.”
3. That the design is not registrable under the Designs Act, 2000.”
4. That the design is not significantly distinguishable from designs or combination of known design.
The appellant before the Deputy Controller has urged that the scarf of the impugned design is anticipated by prior known designs.
It was submitted that the appellant was manufacturing and exporting handicrafts and textile products especially shawls, scarves, basrawis and square shawls of different styles, sizes and blends and exporter of its products to many countries including Italy, Spain, Saudi Arabia, Kuwait, Qatar, Bahrain and Yemen.
The petitioners are manufacturing products similar to that of the private respondent.
The impugned registered design is an old traditional work of Middle East particularly of Palestine.
In support of prior publication in India and abroad prior to the date of registration, a set of sale invoices along with shipment details were submitted and it was stated that all these documents were prior to the date of filing of the application for impugned registration and thus anticipates the registration.
In addition to the aforesaid, it was contended that there is no novelty or originality attached to the said design.
The elements of the impugned designs were analysed as : two sets of horizontal lines running parallel to each other wherein the distance between said parallel lines are same and the lines are present at the top and bottom ends of the scarf, further having two sets of vertical lines running parallel to each other wherein distance between those lines are same and present in both sides of the scarf.
The horizontal and vertical lines cross each other at intersections formed in each of four corners of the scarf wherein the pattern is visible in the back view.
The surface pattern of scarf was prior known and prior published in India on the relevant dates as disclosed by the appellant in the cancellation petition.
Further scarf with similar shape and surface bearing registered Design No.252082 dated 5th March, 2013 were disclosed to the public in India by publication in tangible form used prior to date of filing of the impugned design and as such confers no right on the respondents to seek registration.
The surface pattern applied to the impugned design is nothing but combination of already known designs.
There is no novelty in the surface pattern of the ‘scarf’ which is the subject matter of impugned design registration.
The private respondent in its counter-statement and evidence contended that the respondent No.3 in the month of February, 2013 with his own intellect and innovative skill, honestly and bonafide conceived, developed and adopted a new or original design scarf, commonly known as Basrawi Arabic Square Rumaals consist of novel surface pattern.
With a view to protect the aforesaid design, on 19th February, 2013, the respondent No.3 made an application which appears to have been received by the respondent Nos.1 and 2 on 5th March, 2013 and numbered as application No.252082 for registration under the provisions of the Designs Act, 2000.
The respondent after verification and satisfaction has issued a certificate of registration of the aforesaid design, the said respondents did not find any identical and/or similar design in the record of the designs branch of the Patent Office and was fully satisfied with the novelty and/or originality and/or registrability of the design in favour of the respondent No.3.
The private respondent has thus prayed for dismissal of the cancellation petition.
The registered Design No.252082 dated 5th March, 2013 was registered under Class 02-05 in respect of application of such design to Scarf.
The representation consists of two pages comprising front perspective view in fiRs.sheet and back perspective view of the article in the second sheet.
The novelty is claimed to be residing in the surface pattern of the scarf.
Disclaimers were provided in the representation sheets regarding mechanical action, mode or principle of construction and in respect of words, letteRs.numerals and trademarks.
It was also stated specifically that no claim is made by virtue of the registration in respect of any colour and colour combination, if any, appearing in the design.
The Deputy Controller has relied upon the decision of the Hon’ble High Court in Gopal Glass Works LTD.versus Asstt Controller of Patents & Designs reported at 2006 (33) PTC434(Cal) and applied the tests therein in order to ascertain if the design is new and original as also what would constitute prior publication.
The Controller has also relied upon Hello Mineral Water PVT.LTD.versus Thermoking California Pure reported at 2000 (20) PTC177for determining as to whether novelty could be claimed of the surface pattern.
The Deputy Controller has considered the invoices and documents annexed to the cancellation application in order to ascertain whether the present design was taught by a prior publication and on examination of the evidence on record has arrived at a finding that none of the documents and/or invoices referred to the impugned design shows any prior publication of the design.
This Court is in agreement with the findings of the Deputy Controller that the said invoices and/or documents would only show that sale of certain types of shawls but does not show any particular design of the article except stating that the articles may be in various colouRs.In absence of any cogent evidence to show that the pattern disclosed in the application for registration is taught by a prior published document, the findings of the Controller who is an expert in the field do not call for any interference.
The Deputy Controller did not stop there.
The Deputy Controller applied its mind to find out whether the impugned registration could be considered to be devoid of newness in view of certain documents claimed to have been downloaded from Wikipedia.
Each of the said documents were scrutinized and the finding of the Deputy Controller was that the pictures show variety of dresses including scarves in a different colour and pattern but none of these documents ascertain the details of the publication and the source of said documents.
The search results are all subsequent to the date of registration and there is no evidence before the Deputy Controller to show that the scarves with different pattern and colour were published prior to the date of registration.
Mr.Rudraman Bhattacharya, the learned Counsel appearing on behalf of the appellant has referred to the decision of the learned Single Judge in The Wimco Limited versus Meena Match Industries reported at 1983 (3) PTC373(Del) Paragraphs 11, 12, and 13 in support of the submission that the registered impugned design was well-known and published prior to the date of application of the design of the private respondent.
In view of the aforesaid discussion, I am unable to apply the ratio of the said decision as on appreciation of evidence, the Deputy Controller has arrived at a definite finding which cannot be said to be perverse.
In ITC Limited versus 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.
The surface features, particularly if they are pronounced, may be treated as features of shape or configuration, as in Co.& Co.LTD.versus Cannon Rubber Manufacturers LTD.reported at (1959) RPC240at 347 where it was held that a series of ribs on the surface of a hot water bottle were features within the scope of the statement of novelty which claimed such features.
The novelty in the instant case is also claimed on surface pattern and the Deputy Controller has applied its mind to such features before concurring with the earlier finding that novelty resides in the surface pattern of scarf as illustrated.
In Anuradha Doval versus The Controller of Patents and Designs & ORS.being AID No.1 of 2015 on 13th April, 2017, 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 bills and invoices disclosed by the appellant before the Deputy Controller does not disclose anything about the design and even it appears that the articles covered under the said invoices only relate to ‘shawls’ and not to ‘scarfs’ especially when they fall under different class of goods.
The appellant at the appellate stage has made an application being G.A.No.1492 of 2017 for giving leave to the appellant to rely upon the trade mark applications filed by the appellant on 27th February, 2013.
Apart from the fact that the appellant has failed to demonstrate that in spite of due diligence, the appellant was unable to produce the said documents before the Deputy Controller where an assertion is made in the representation that they were using the said mark since April, 1992 the said document does not assist the appellant in any manner.
The tests to be applied for registration of trade mark are entirely different from registration of design.
The considerations are also different.
The application for the registration by the private respondent was made on 19th February, 2013.
The documents disclosed before the Deputy Controller as well as before this Court clearly shows that the said application was made on 19th February, 2013 but was received by the office of the Controller of Patents on 5th March, 2013.
Once the said application is allowed under Section 5(6) of the Design Act, 2000, it must relate back to the date of registration of the application.
It was argued before the Deputy Controller that the application was made after 19th February, 2013 or after 27th February, 2013.
The appellant wanted to take advantage of the apparent mistake in the certificate of registration issued by the respondent No.1 which mistakenly has granted the registration from 5th March, 2013.
It is an obvious mistake.
appears to have overlooked it also.
The private respondent No.3 Since the mistake is apparent, the respondent No.1 is directed to make necessary correction in the certificate of registration.
G.A.No.1492 of 2017 stands dismissed.
AID No.3 of 2016 also stands dismissed.
However, there shall be no order as to costs.
Urgent Photostat certified copy of this judgment, if applied for, be given to the parties on usual undertaking.
(Soumen Sen, J.)