S.S. Chadha, J.
(1) 'THE Wimco Limited' is public limited company incorporated under the provisions of the Companies Act, 1913 (for short called Wimco). They carry on the business of manufacturing and selling, inter alia, of match boxes'. They claim to be one of the famous manufacturers of matches and the total turnover for the years 1975 to 1980 is given in paragraph 3 of the plaint. Wimco claim to have developed, in order to distinguish their products from those of others and in order to improve the aesthetic appearance of their match boxes, a pattern/design and Chemically applied it to both sides of the panels of their match boxes by mechanical means. This pattern is in rectangular form with multiple diamond-shaped spots and Wimco gave it a name to this pattern as 'HOT SPOTS'. Wimco made an application foe registration of this design claiming to be new and original design under the provisions of the Designs Act, 1911 (hereinafter called the Act) in class 5 of the Schedule. The application was numbered as 146498 dated January 5, 1978. Subsequently, the said design was registered with effect from January 5, 1978 and a certificate to that effect was issued on October 19, 1978. A photostat copy of the said certificate together with the Design of the match box is filed in Court, The said design is valid and subsisting on the Register of Designs maintained in the office of the Controller of Patents and Designs, Calcutta. Wimco allege that from May 1978 onwards they started applying the said pattern/design to Ship Kapas, Tekka brands of their match boxes and started marketing the same. Within a short item after May 1978, the aesthetic appearance and utility value of match boxes bearing the said design/pattern on their match boxes was liked and recognised by the public at large. The sales of such match boxes bearing the said pattern design have tremendously gone high and have exceeded Rs. 10 crores in the year 1979 and Rs. 20 crores in the year 1980. Wimco believe that the sudden rise in the sale of the said matches is mainly due to the said pattern [design which has aesthetic appearance and utility value. By, virtue of its novelty, originality, high publicity and sale, Wimco aver to have acquired a unique reputation and goodwill in respect of the said registered design and the same is exclusively associated with the Wimco goods in the minds of the traders, consumers and members of the public and with no one else. 'It is alleged that the said registered design is to be applied exclusively by Wimco to match boxes manufactured, produced and marketed by them and no one else has any right to apply the said registered design/ pattern to any match box. With these allegations the relief claimed in Suit No. 415-of 1981 which was instituted on May 13, 1981 against M/s. Meena Match Industries, M/s. Thilgaraj Match Works and M/s. Sanjay and Co., is to restrain the defendants etc. from manufacturing, producing, selling and/or marketing or offering for sale match boxes bearing the impugned pattern/design on their match boxes like Annexure 'X' which is an infringement of Wimco's registered design No. 146498, i.e., the pattern in a rectangular form with multiple diamond-shaped spots or any other design which is identical to and/or fraudulent obvious imitation of Wimco's pattern/design. The further reliefs claimed are for a permanent injunction restraining the defendants etc. from pirating the registered design of Wimco, from passing off and the ancillary relief of destruction of the offending articles and rendition of accounts.
(2) The suit was registered and summons issued on May 14, 1981 to the defendants who put in appearance on the first dale of hearing. As an interim measure defendants 1 and 2 were directed to furnish statements of their figures of sales in respect of the period after the institution of the suit. Defendants 1 and 2 in. the suit then filed on May 20, 1981 a Civil Original Petition, being C.O. 8 of 1981 for cancellation of Design No. 146498 under section 51-A of the Act. M/s. Meena Match Industries, the first petitioner, (for short called Meena) allege in the petition to be manufacturing and selling high quality card board match boxes under its well-known trade mark 'ROLLOR'. The trade mark 'ROLLER' is registered and duly protected under the provisions of Trade and Merchandise Marks Act, 1958. The card board match boxes as are manufactured and sold by Meena are claimed to be distinctive and unique in appearance, layout, colour combination and arrangement apart from the use of the distinctive trademark 'ROLLER'. Due to acute scarcity of soft-wood timber for match boxes the Government of India thought it fit to encourage the use of card board boxes instead of veneers and announced concessions and incentives for the manufacturers using card board fii place of softwood. M/s. Thilagraj Match Works, the other petitioner, (for short called Thilagraj) is manufacturing and marketing card board matchboxes bearing the trade mark 'ROLLER' under license arrangement with Meena. It is then averred that Wimco had made a fraudulent claim before the Controller of Patents and Designs, Calcutta, while claiming itself to be the proprietor of a new or original design not previously published in India and it was on the basis of such false claim that Wimco obtained the registration of Design No. 146498 dated January 5, 1978. The striking and igniting surface dots on the side walls of cardboard match boxes were well-known and published prior to the fraudulent claim on the part of Wimco. It is specifically pleaded that the perusal of Indian Patents Specification No. 29046 dated September 17, 1942, which was accepted on. April 3, 1943 and published on May 19, 1943 clearly indicates the striking and igniting surface dots in the identical pattern/design on the side walls of card board matchboxes. It is also pleaded that the ignition dots on the side walls of card board safety match boxes were known, published and applied by a large number of manufacturers particularly those of United Kingdom, Sweden and Germany much prior to 5th January 1978. and the card board match boxes bearing ignition dots were published and made known to the public throughout the world including India much earlier to the date of registration. It is also averred that the prior publication in India can further be ascertained from well-known periodicals including 'NEWSLETTER' published by British Match-Box Label & Booklet Society, United Kingdom and 'Vesta' published by,J. H. Luker. United Kingdom which are widely read and distributed in India prior to the relevant date. The second ground for cancellation is that the Design No. 146498 is neither new nor original. It is not design but merely a functional pattern and, thereforee, liable to be cancelled. The relief claimed in C.O. 8 to 1981 is that Design No. 146498 dated January 5, 1978 in class 5 of the Schedule under the Act may be ordered to be cancelled and the Controller of Patents and Designs, Calcutta may be intimated accordingly. The notice was issued to the Controller of Patents and Designs, Calcutta who has stated that the patent office is riot interested in contesting the matter. The claim for cancellation is resisted by Wimco with the same allegations as are contained in the plaint of their suit The suit of Wimco is resisted by defendants 1 and 2 on similar pleas as are contained in the petition for cancellation by filing a separate written statement in the suit.
(3) The counsel for the parties agreed that Suit No. 415 of 1981 and C.0.8 of 1981 may be consolidated and be heard together and it was ordered accordingly. The following issues were framed on the pleadings in the suit and the civil original petition on November 18, 1981:
1. Whether the Design No. 146498 dated January 5, 1978 is liable to be cancelled on the grounds mentioned in the application for cancellation under Section c ?. O.P. Objectors. 2. Is the defendant infringing plaintiff's registered design? O.P. Plaintiff. 3. Relief.
(4) The parties agreed that evidence be taken on affidavits. Wimco filed the evidence in the affidavit and counter-affidavit by Shri J. M. Kaul and the other party filed affidavits in the affidavits of Shri S. Maheshwaran, partner of Thilagraj. At the stage of disposal of application for interim relief, Shri S. Maheshwaran offered himself for cross-examination. He was cross-examined on November 16, 1981 by the Counsel for Wimco. I also allowed the cross-examination of Shri J. M. Kaul and Shri S. Maheshwaran at the trial and they were subjected to cross-examination on April 29, 1983. I will deal with the evidence under the respective issues.
(5) Issue NO. 1 I may first notice some relevant statutory provisions. A design is defined in Section 2(5) of the Act in the following terms : 'Design' means only the features of shape configuration, pattern or ornament applied to any article by any industrial process or means whether manual, mechanical or Chemical, separate or combined, which in the finished article- appeal to arid 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.'
(6) A proprietor of a new or original design is defined in Section 2(14) of the Act in the following terms : '
'PROPRIEtor of a new or original design '
(A)where the author of the design, for good, consideration, executes the work for some other person, means the person for whom the design is so executed; and
(B)where any person acquires the design or the right to apply the design to any article, either exclusively of any other person or otherwise, means, in the respect and to the extent in and to which the design or right,has been so acquired, the person by whom the design or right is so acquired; and
(C)in any other case, means the author of the design; and where the property in or the right to apply, the design has devolved from the original proprietor upon any other person, includes that other person.'
Section 43 provides that 'the Controller may, on the application of any person claiming to be the proprietor of any new or original design not previously published in India. register the design under this part.' When a design is registered, the registered proprietor of the design has, subject to the provisions of the Act, copyright in the design (Section 47). The cancellation of the registration is provided in Section 51-A. Rule 36 of the Indian Patents and Designs Rules, 1933 provides that the applicant, may, and shall, if required by the Controller in any case so to do, endorse on the application and each of the representations a brief statement of the novelty he claims for his design. Paragraph 90 of the Instructions for the Guidance of Inventors or the Applicants for the grant of Patents and for the Registration of Design in India provides for the endorsement of novelty. A brief statement of the novelty claimed for the design should preferably be endorsed on the representations. The following are suitable forms of the statement of novelty : -
'THE novelty resides in the shape of the ash-tray, as illustrated. The novelty resides in the shape or configuration of the book self as illustrated. The novelty resides in the groove (A) and the projection (b) as illustrated. The novelty resides in the ornamental surface pattern of the foot-ball as illustrated. Novelty is claimed for the floral ornamentation of the tea-pot as illustrated.'
The certificate of registration of the Design No. 146498 dated January 5, 1978 certifies that the Design of which a copy is annexed thereto, has been registered as of the number and date given above in class 5 in respect of the application of such design to match boxes in the name of Wimco in pursuance of and subject to the provisions of the Act and the Designs Rules, 1933. The Copyright has been extended for the second period up to January 5, 1988 and also for the third period up to January 5, 1993. The sheets are annexed with the certificate: one sheet contains the 'prospective view' and the other sheet contains the 'side view'. It. does not indicate whether the novelty resides in the shape and configuration of the match box or whether in the pattern of the friction application on the panels of the match box. Wimco did not specifically state before the Controller as to on what ground the design sought to be registered was claimed to be original or novel. Wimco should have endorsed on the application and of each of the representations a brief statement of the novelty they claimed for their design though it was optional. There is an element of duty to clearly define the design sought to be registered. The Controller did not call up, though purely discretionary, Wimco to give the brief statement of the novelty claimed by them for their design. Thus, there is nothing on the record of the Controller about the statement of the novelty claimed turn the design. It, thereforee, became necessary during the course of hearing before me to pin-point the novelty Which is claimed by Wimco for their design. The novelty, according to Shri Anoop Singh, the learned counsel for Wimco, resides in the grooves and the projections on both sides of the panels of the match box as illustrated in the prospective view' and the 'side view' as also in the ornamental surface pattern of the side of the match box. In my view, it is traveling beyond the plea raised in the. plaint of the suit. No amount of evidence or argument can be considered on a plea not raised in the plaint. Moreover, the grooves and the projections are only for friction application which is a mode or principle of construction. Common examples are laminated' or 'corrugation'. The principle of construction embodied in the friction application is a recurrence of explosive material and blank patches in alternative fashion. This friction application or striking surface is on the panels of the match box. The match head and the striking application are both constructionally and functionally essential features of the safety box. The grooves and projections adopted is thus only a basic fundamental and a mere mechanical device. In the plaint of the suit Wimco claims to have developed a pattern/design and Chemically applied it to both sides of the panels of their match boxes by mechanical means. It is then stated 'this pattern is in rectangular form with multiple diamond-shaped spots'. Wimco of gives a name to this pattern as 'HOT SPOTS'. The copyright of the design dammed by Wimco in the suit is, thereforee, in the pattern/design in rectangular form with multiple diamond-shaped spots applied to both sides of the panels of their match boxes by mechanical means.
(7) The cancellation of registration is provided by section 51-A of the Act reading as follows :
'CANCELLATION of registration
(1)Any person interested may present a petition for the cancellation of the registration of a design
(A)at any time after the registration of the design, to the High Court on any of the following grounds, namely :
(I)that the design has been previously registered in India, or
(II)that it has been published in India prior to the date of registration; or
(III)that the design is not a new or original design; or
(B)within one year from the date of the registration, to the Controller on either of the grounds specified in sub-clauses (i) and (ii) of clause (a).
(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.'
The cancellation is sought in the petition on the grounds that the design has been published in India prior to the date of its registration and that the design is not a new or original design. The registration of the design is on the application of any person merely claiming to be the proprietor of any new or original design not previously published in India. Under the scheme of the Act there is no provision for notice to the public regarding the registration of a design or for opposition by the public to the registration of the design. Even an inspection of the Register of Designs is not open for a period of two years from the date of registration thereof. It is manifestly impossible for the Controller when registering a design to know of every possible publication which may anticipate a design. It is for this reason that protection is afforded under Section 51-A to the other manufacturers or persons aggrieved against the abuse of the Act, and acquisition of mischievous monopolies for designs. Any person interested may avail himself of this section and apply for the cancellation of the registered design.
(8) The word 'published' used in Sections 43 and 51-A of the Act has not been defined in the Act. Publication within the meaning of the Act means the opposite of being kept secret. It is published if. a design is no longer a secret. There is publication if the design has been disclosed to the public or the public has been put in possession of the design. Russell-Clarke in Copyright in Industrial Designs, Fourth Edn. (Pages 41-42) says :-
'.....IT is sufficient, and there will be publication if the knowledge was either
(1)Available to members of the public; or
(2)Actually in fact shown and disclosed to some individual member of the public who was under no obligation to keep it secret. It is not necessary that the design should have been actually used. There will just as much be publication if it is shown that it was known to the public, without ever having been actually put into use. Thus, publication may be of two types :
(A)Publication in prior documents.
(B)Publication by prior user. '
(9) The first material unimpeachable evidenced the publication of the design in India prior to the 'date of registration is contained in the Government of India publication of the Patent Office,Calcutta;SpecificatiopNo. 29046, dated 17-9-1942 (accepted 3-4-1943) relating to improvements in or relating to container for match boxes. It is Annexure SM-2 with the affidavit dated May 25, 1981 of Shri S. Maheshwaran. He deposes that in figures No. 1 and 2 of the drawing attached to the said specification the igniting surface is shown and marked as 17 which amounts to prior publication and knowledge. The said specification particularly describes and ascertains the nature of the invention and the manner in which the same is to be performed. The invention relates to improvements in the containers for match boxes the design of which is also published. It says this. The object of the invention is to provide a casing for a match box which will protect the match box whilst it is carried in the pocket. The casing itself will be made of leather or leather substitute which will be stiff enough to act as a protection and would be a sufficiently wear-resisting nature to give prolonged life to the match box and indeed to a succession of match boxes. The container casing will also preferably have an aperture or apertures at the side or sides to expose the match striking and igniting surface carried by the match box. Improvements in the container are then specified. It then states that in placing the match box into position in this container the slide is removed from the matchbox with. the contained matches and the outer sheath of. the match box is slipped into the space between the front and the back of the casing,with the elastic spring inside the match box sheath. The match box outer sheath is pushed down until its lower edge is against the inner side of the bottom of the contraire casing. The match box slide containing the matches is then pushed in and its lower edge engages the loop of the elastic. The elastic is stretched as the slide is pressed home. It then mentions that the match box may be struck against the striking and igniting surface which shows at each side of the match box.
(10) The Striking and igniting surface of the/match box container is given in figures No. I and 2 and is shown as figure No. 17 which shows the each side of the match box. It contains an identical pattern, namely, a rectangular form with multiple diamond-shaped spots. In the matter of novelty the eye has to be the ultimate arbiter and the determination has to rest on the general ocular impression. The Court has to consider and lock at the two designs in question with an instructed eye and say whether there is or there is not such a substantial difference between them that which has been published previously and the registered design to say that at the date of registration that was not published in India previously. I do. not find even a slight variation in the ornamental surface pattern of the two. The anticipatory claim is dated September 17, 1942, and the Government of India publication is made on May 19, 1943. The law presumes that it is true and correct copy- of the publication. It is not, however, necessary to prove that large number of the copies of the specification have been actually sold or circulated. It is sufficient to show that the design was so described in the specification and some persons may fairly be supposed to have known of it. The purpose of specification is an anticipation. It was open to inspection in the Patent Office. The presence of the specification or copies thereof constitute publication. There is reasonable probability that a large number of persons obtained the knowledge of the specification including the design on the sides of the match box. It constitutes a prior publication.
(11) Two objections have been raised by the counsel for Wimco that the said specification does not amount to publication. Firstly, it is urged that the article has not been got produced from the Patent Office, Calcutta. This argument is stated to be rejected. Wimco claims the development of a design/ pattern comprising of rectangular form with multiple diamond-shaped spots Chemically applied to both sides of the panels of their match boxes by mechanical means. The registered design of Wirncoshows in the two sheets attached with the certificate of registration the 'perspective view' and the 'front view'. It is a view of the striking panels of the match box. It is to be judged by the ocular test with the anticipated design. The production of the original article is not necessarily required. If the anticipation of the design in suit can fairly be found within the four corners of the specification as applied to the earlier article it will follow that the design has been previously published. The side pannel of the match box marked 17 as the igniting surface is shown in figure-1 and figure-2 of the specification no. 29046 of 1942. The pattern is identical with the registered design of Wimco as shown both in the 'perspective view' and in the 'front view' with the two sheets attached with the certificate of registration of the design. The second objection is that the specification No. 29046 relates to container of leather which is in class 6 whereas Wimco's design is registered in Class 5 and thus there is no pre-publication in the class in which the registration has been obtained by Wimco. Reference is made to paragraph 85 of the Instructions for the Guidance of Inventors and Applicants for the grant of Patents and for the Registration of Design in India which provides that for the purpose of registration of designs, goods to which the designs are to be applied are divided into fourteen classes and if an article is composed of more than one material, it is classified according to the predominant material. Para 92 provides that registration in any one class enables the proprietor of the design to prevent others from applying the design to articles within that class only. Reference is also made to Section 53 of the Act which says that for the purpose of sale to apply or cause to be applied to any article in any class of goods in which the design is registered, it shall not be lawful for any person to apply that the design or any fraudulent or obvious imitation thereof to his articles. The anticipation, thereforee, according to the counsel could not be in respect of the goods in class 5. This is taking a very narrow and restrictive view of the publication in the anticipation Specification No. 29046. No doubt the invention related to improvement in the containers for match boxes, yet the process of the insertion of the match box and the utilisation of the striking arid igniting surface is disclosed therein. Before a design is capable of being registered it has to be new or original not previously published in India with reference to the kind of article for which it is' proposed to be registered. The kind of article should be understood to its general character and use. The kind of article is not the class of article mentioned in the Schedule. The kind of article inserted in the leather container is clearly shown. It is a match box whose side panels are disclosed. The specification contains several figures. Figure No. 1 shows the closed leather case containing the match box and it shows the side pannel of the matchbox containing the striking and -igniting surface Figure No. 2 shows the container opened with the match box which contains matches coming out with the elastic, spring process. It shows the striking and- igniting surface of the match box. It is the striking and igniting surface of the match box which contains the same pattern as is in the registered design. The patter/ design has already been applied to the match box even though it is included in the leather case in a different class. It is the publication of the design on the side pannel of the match box which is made known to the public at large and this constitutes pre-publication.
(12) The second publication is by SM-1 attached with the affidavit of Shri S.Maheshwaran dated May 25, 1981. SM-1 is a matchbox made in Sweden by J.John Master & Company Ltd., London, with the trade-mark 'Ship' as used by Wimco. The side panels of this match box contains the identical pattern in rectangular form with multiple diamond-shaped spots with the registered Design of Wimco. Shri S. Maheshwaran deposes that during the period 15th June, 1976 to 28th July, 1976 he had visited various countries including United Kingdom, Germany, France, Amsterdam, Greece, Finland, Japan, Bangkok and Singapore for purposes of export promotion and to acquire knowledge with regard to modern methods of production. He says that the intermittent type friction application was found to be existing on card board match boxes during his visit abroad, that he had also collected card board matchboxes incorporating such features, and at least one such match box out of the many such match boxes which he had Collected and brought to India is still with him and he produced it as SM-1. Mr. Maheshwaran was subjected to cross-examination at the interim stage on November 16, 1981. He. did not remember if he had got the remaining If match boxes of the type of SM-.1, and said that he might have given them away but he would checkup. He filed an additional affidavit on November 23,1981. He produced half a dozen more in original packing the match boxes as SM-1. He also produced his pass-port. The photo-stat copy of the pass-port was retained on the; file and the original pass-port returned. It shows the endorsements made by various countries showing the visits of Shri Maheshwaran between June 15, 1976 and July 28, 1976. During this period he visited Netherland (Holland), London, Finland, Germany, Franco, Greece, Japan, Korea. Hong Kong, Bangkok, Singapore and Malasia. It is dearly: established on record that Shri Maheshwaran was abroad between June 15, 1976 and July 28, 1976 and visited the said countries. The question is Only whether the matchboxes SM-1, and others like it were collected by him on this visit in 1976 and given to hli friend relatives. and business associates.Shri Maheshwaran deposes that Wimco's parent company is in Sweden and the parent company of Wimco in Sweden is an international company engaged in the manufacture of matches like SM-1 but he could not say whether it is a leading company or not. Shri J. M. Kaul was cross-examined and was asked whether the same design (as the registered design of Wimco) was applied,by the Swedish Company on the match boxes for about eight years prior to their application and the answer was that he does not know. It is not controverter that SM-1 is the match box of the parent company of Wimco in Sweden. He denies the knowledge of any correspondence by Wimco with the Swedish Company or the transactions between the two. He cannot say whether the design is being used by Wimco under a license from Swedish Company. The best evidence was available with Wimco and not produced to establish as to when the same design was applied by the Swedish Company on their match boxes. It is, thereforee, established on the record that in 1976 the same design was being applied by the Swedish Company on their match boxes.
(13) In the cross-examination dated November 16, 1981 Shri Maheshwaran said that he brought SM-1 with him in 1976 when he went abroad and denied the suggestion that SM-1 was obtained by him after the case was started. He says that he was impressed with the way of the printing of the strip and thereforee he bought them since it was a new item and it interested him as a manufacturer. He was called upon to produce the 11 match boxes of the type of SM-1 and he asked for time to check up. It is then that six more match boxes, of the type of SM-I were filed along with the affidavit dated November 23, 1981. Match boxes as SM-1 are deposed as having been brought in India in 1976 and distributed .to various other manufacturers. The other skillets containing the identical design as mentioned in the written statement and annexed thereto were received by the witness after the registration of the design and during the pendency of the suit and have been so deposed by Shri Maheshwaran. He says that the skillets Exts. Pi and P2at pages 15 and 16 of the file were sent by the German Company called Goebel in' 1979 and the skillets Exts. P4 and P5 at pages 18 and 19 were also sent by Goebel in 1979. Skillets annexed to the written statement were received from England during the pendency of the suit and they are collectively marked as Ext. P-9 The identical design was being applied by the Swedish Company on their matchboxes in the year 1976, as found above. Shri Maheshwaran visited various countries for purposes of export promotion and to acquire knowledge with regard to modern methods of production. The probabilities are in favor of the witness collecting the card board match boxes incorporating the intermittent type friction application which was not then applied in India. The oral testimony of collection and distribution in India is not opposed by any strong improbability of the transaction to which the witness has deposed. His oral testimony is partisan and for this reason I have scrutinised it with great caution. Simply because Shri Maheshwaran is an interested party, his deposition cannot be discarded that he did not bring the match boxes of the type of SM-1 in 1976 or did not distribute them to his friends, manufacturers and business associates. There is publication if the design is disclosed to any individual member of the public. It is nobody's case that those members of public were under any obligation to keep it a secret. The information as to design was communicated by Shri S. Maheshwaran to other manufacturers and business associates who were free in law or equity to use it in the manner they desired. This disclosure even to one person is sufficient to constitute publication. The registered design of Wimco has been actually applied to match boxes before the date of registration of the design and those articles have been. used and brought into India. The distribution of the match boxes in India, with the identical design thus amounts to a prior publication.
(14) The third publication prior to the registration of the design is by the magazines 'NEWSLETTER' and 'VESTA'. Shri S. Maheshwaran with his affidavit dated May 25, 1981 filed the photo copies of the relevant pages of the said magazine, SM-3, SM-4 and SM-5, in order to establish prior publication and prior knowledge. He deposes that the documents including SM-3, SM-4 and SM-5 were shown by him to various persons in the trade including the various managers, and employees of his firm as also conspicuously displayed in his business premises. He was cross-examined in Court at the interim stage on November 16, 1981. He deposes that he was a subscriber of the 'NEWSLETTER' as well as 'VESTA', that 'he started subscribing to these magazines in 1977 immediately after his visit abroad, that he had got most of the copies of those magazines with him and that he tenders in evidence one original issue of each of 'Newsletter' and 'Vesta', Exts. P1O and P11 respectively. He further deposes that the subscription of each of the magazines is 3 per year apart from shipping charges, that he can-get evidence from the publisher or from the bank showing that he subscribed to those magazines in the. year 1977 and that he will write to the bank and get information if they have kept the records. With/the supplementary affidavit dated November 23, 1981, Shri S. Maheshwaran filed a certificate dated November 20, 1981 from the State Bank of India, Sivakasi that a demand draft No. 041823 for 2/50 was issued by them on March 23, 1977 to M/s. Pioneer Match Works, Sivakasi in, favor of the British Match Box and Booklet Society towards subscription for their magazine 'NEWSLETTER' payable at their London Office. The original letter dated May 3, 1977 from the British Matchbox Label and Booklet Society acknowledging the receipt of . 2-50 along with the original receipt is also placed on the record along with this affidavit. Shri Maheshwaran deposes that he is one of the directors of M/s Pioneer Match Works, Sivakasi. The original receipt for the subscription of 3 for the year 1978-79 is also filed on the record along with the affidavit. The inference from this is possible that Shri Maheshwaran was a subscriber of the magazine 'NEWLETTER' in 1977 prior to the date of registration of the design by Wimco.
(15) The 'Newsletter', Ext. P1O, for the month of August 1977 contains the evidence of publication of the design prior to the date of registration. The photo-copy of the pattern/design of the side view of the match boxes are printed; the striking and igniting surface dots on the side walls of cardboard match boxes with varying patterns are given. One match box under the trade name 'CAMP' contains the striking and igniting surface in an identical pattern which is in rectangular form with multiple diamond-shaped spots. 'NEWSLETTER' apart from being subscribed by M/s Pioneer Match Works was also having circulation in India. Annexure 'D' to the affidavit of Shri Maheshwaran dated November 23, 1981 is the original publication of December 1976 of the British Matchbox Label and Booklet Society. It gives the names of subscribers and members of the Society. In India it gives the name of Nahide Fatime, Sagar Rustom and 'Thiagraj Sri M. The same names appear in the membership fist of 1978 Which is Annexure 'E-4' with the same affidavit. No doubt is cast to the genuineness of Annexure 'D' and 'E-4' by the counsel for Wimco. These three persons in India were members and subscribers 'of the British Matchbox Label and Booklet Society in the years 1976, 1977 and 1978. The copies of the 'Newsletter'' in the normal course would have been sent to these three subscribers and It is reasonable to infer that they would have been received by them. 'Though there is no direct evidence of the three subscribers yet the printing and publishing and circulation of the ''News Letter' to the members is a strong prima facie evidence of the fact that the contents had become known and are a part of public knowledge. The publication of the identical pattern in 'NEWSLETTER' would be a publication in India on the receipt of the 'NEWSLETTER' by those three persons.
(16) The counsel for Wimco has placed great reliance on Rosedale Associated . v. Airfix Products Ltd. 1957 R. P. C. 239 to .urge that the said Specification No. 29046 and the publication in the 'NEWSLETTER' does not constitute anticipation. Lord Evershed, M. R. said :
'......THUSapproahing the,matter, I have for my part come to the clear conclusion that the design was not published by Clarice Jones' specification. To conclude otherwise would, in my judgment, at least require that somewhere in the specification the design or something substantially the same as the design was described with reasonable clarity on a fair reading of the document. In this respect the test of prior publication of an alleged invention should, in my judgment, be no less applicable in the case of a registered design, and as regards the 'former, I venture to cite once more the oft-quoted language of Lord Westbury in Hills v. Evans (1862) 31 L. J. (Ch.) 457: 'the antecedent statement must, in order to invalidate the subsequent patent, be such that a person of ordinary knowledge of the subject would at once perceive and understand and be able practically to apply the discovery without the necessity of making further experiments'. By a like reasoning, to my mind, if a document is to constitute prior publication then a reader of it, possessed of 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 upon his own originality to construct the design from the ideas which the document may put into his head....'
It is true that in case of paper publications such as design specifications or in the magazines the anticipation consists of the drawings. There are, however, clear and unmistakable directions in the anticipation in this case of the striking and igniting surface and how to use it. The features of the friction application incorporated in the match box are dictated solely by the function. The pattern/design possesses no additional feature, It is a mere mechanical device to achieve the same object of igniting the match head. The pattern claimed by Wimco is in rectangular form with multiple diamond-shaped spots. It is contained in the 'perspective view' and 'side view' also in the drawings. The same shape or pattern has previously been thought of in connection with the match box in the leather container in the said specification No. 29046 and the idea published. The previous idea will act as an anticipation of the later design. The eye and the eye alone, as Section 2(5) of the Act says, is to be the judge of the identity, and to decide whether one design is or is not an anticipation. I have looked into the general features of both the designs to find out if the one design is as good as the other and my conclusion arrived at by visual examination of the two is that they are identical. The registered design of Wimco is, of course, an exact copy or replica of the design of the Swedish Company in SM-1. It is settled that the underlying principle behind the law of infringement of design is that, while the commercial exigencies require that a specific design should be protected, the monopoly of a trade in respect of a common design previously published should not be encouraged.
(17) The second ground of challenge is that the design is not a new or original design. I have already held that the copyright of the Design claimed by Wimco is restricted in the pattern/ design in rectangular form with multiple diamond-shaped spots applied to both sides of the panels of their match boxes by mechanical means. I will assume in favor of Wimco that the registration of such a design/pattern is, permissible as reliance is placed by counsel on 'Cook & Hurst's Design Application' 1979 Rpc 197 (2); G. Gottsohalck &Co. v. H. Velez & Co. 1936 (53) Rpc 403 (3); Charles Henry Nevill and others v. John Bennett and Sons 15 Rpc 412 (4) and Walker, Hunter and Co. v. Falkirk fron Company 4 Rpc 390 (5). Because of the definition in Section 2(5) of the Act, the features of shape, configuration, pattern and ornament when applied to an article are design. What actually constitutes the design is, thereforee, that peculiar combination and arrangement of lines which give such features. This is what has been laid in those cases that a design for a pattern may consist of a mere arrangement of straight lines or stripes or a pattern on the border of the shawl. It may be a printed or woven or embroidered design on textile goods or it may be in checks or designs, but these must be new or original. The design may be applied to any kind of article but some novelty or originality must exist in a substantial degree otherwise it would paralyse the industry to make the design a trap for honest traders. There is no novelty or originality as the identical design has already been applied to the match boxes. I have already discussed at length the evidence of pre-publication of the design which shows prior application to the same class of goods, namely, match boxes. The same reasoning would apply.
(18) For the above reasons, I hold that Design No. 146498 dated January 5, 1978 is liable to be cancelled on both the grounds, namely, that it has been published in India prior to the date of registration and that the design is not new or original design. Issue No. I is held in favor of the petitioner and against Wimco. .
(19) Issue No. 2 For a complete determination of the issue, I am obliged to express though with my finding on issue No. 1, this issue does not arise. The defendants in 'the suit have admittedly introduced in the market the match boxes like Annexure 'X' to the plaint. Those are match boxes of similar size with identical pattern/ design in a rectangular/form with multiple diamond-shaped-spots. It would be an infringement if the design of Wimco had not been cancelled. I hold issue No. 2 accordingly.
(20) Relief C.O. 8/81 succeeds. The Design No. 146498 dated January 5, 1978 in class 5 of the Schedule under the Design Act, 1911 is hereby ordered to be cancelled. The Controller of Designs, Calcutta be intimated accordingly. Suit No. 415 of 1981 of Wimco is hereby dismissed. On the peculiar facts of these cases, the parties shall bear their own costs.
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