1. These set of suits are by the Pilot Pen Co. (India) Private Ltd., against the several defendants for a permanent injunction restraining them from using the type of clip of fountain pens imitating the plaintiff's design registered under the Indian Patents and Designs Act on 28-9-1959 and for accounts of the profits they have made by the sale of their pens with infringing type of clips. The original petitions by the defendants in each of these suits is for the cancellation of the registration by a direction to the Controlled General of Patents, Designs and Trade Marks, Calcutta to remove the entry of the said registration from the register.
(2) The suits and petitions were tried together and since the points arising in the suits and petitions are common, I propose to dispose them of by a common judgment.
(3) The plaintiff, Pilot Pen Co., claims to have absolute copy right in a new and original design in respect of fountain pen clips, having registered their design under No. 101410 dated 28-9-1959 under the Indian Patents and Designs Act 1911. It is the plaintiff's allegation that the several defendants have been manufacturing and marketing fountain pens in the name and style of Champion Registered 81 'President' and 'Mahtre Writer' respectively with clips exactly similar to or at any rate of colourable imitation of the plaintiff's registered design and have thus committed unlawful infringement and piracy of the plaintiff's design and that the several defendants have refused to comply with the plaintiffs demand to stop committing the infringement and submit accounts with regard to sale of these pens fitted with clips having the infringing design. It is claimed by the plaintiff that as the holder of the copy right they are entitled to prevent the defendant from manufacturing and marketing fountain pens fitted with clips of the infringing design and also to get a true and faithful account of the profits earned by them from the sale of the offending design. Hence these suits, each of which is valued for the relief of injunction at Rs. 1000 and for purposes of account at Rs. 500.
(4) In the written statement filed by Gujarat Industries Pte Ltd., the defendant in C.S. 70 of 1963, they contend that the suit is liable to be rejected in limine in the absence of necessary leave to sue under Cl. 12 of the Letters Patent. They further contend that the pen clips and the feeder point are not designs' capable of being protected or registered within the meaning of the Indian Patents and Design Act, II of 1911. There is neither novelty originally or specially in the said design and there is no question of any special distinction for the same. It is common and universal design. Even so, there is no similarly or resemblance between the clip and the neck portion used by this defendant the Gujarat Industries Pte Ltd., The user of the Fountain Pen who is literate knows that he is buying and is not likely to be deceived by any stray similarly. There can thus be no question of deception nor could there be any piracy when there is no special advantage or utility in the so-called design. The defendant in C.S. 70 of 1963, would be therefore, characterise the suit as wholly devoid of merits, thoroughly lacking in bona fides and not otherwise maintainable in fact or any law.
(5) Almost similar contentions are raised in the written statement filed by Dhiraj Pen Manufacturing Co., the defendant in C.S. 73 of 1963. They would add that a comparison of the fountain pen of theirs and plaintiff would reveal many distinguishing features and there cannot be any confusion in the minds of the public between the plaintiffs pen and the defendants pen. They assert that even if the design is similar, since the design infringed has become public jurist and become common to the trade, the plaintiff cannot lay exclusive claim over it. They also contend that the plaintiffs design is not capable of registration that it is wrongly remaining on the Registration and that they are advised to take proceeding for cancellation of the registered design. They further submit that this court has no jurisdiction to entertain the suit as the defendant resides outside the jurisdiction of this court and leave to sue has not been obtained.
(6) In the written statement filed in C.S. 74 of 1963 by the defendant Mahtre Pen and Plastic Industries Pte Ltd. they contend that the plaintiff's design is neither new nor original, that the plaintiff and their associates in Japan had themselves sold fountain pens with slips in the same or similar forms design, shape or configuration prior to the date of the registration of the design and that the said design does not contain any characteristics over and above the fundamental form of a clip used for fountain pens which is in substance a mere mechanical device. Even so, there is no colourable or fraudulent imitation and the defendant fit their fountain pens with clips bearing the names 'Mahtre writer' 'Plato' and many others. They had sought for a specimen of the alleged registered design of the plaintiff which the plaintiff failed to furnish and, therefore, the plaintiff has no cause of action against the defendant industries. This defendant has never sold any clips separately and they from part of the fountain pens and the plaintiff is not entitled to prevent this defendant from manufacturing or marketing fountain pens with the clips of the alleged infringing design; much less are they entitled to the accounts of profits and no cause of action having arisen in Madras, the plaintiff's suit has to be dismissed with costs to this defendant.
(7) Issue No. 1 in C.S. 70 and 73 of 1963 relate to the maintainability of the suit in this court for want of leave to sue and the same question is raised by issue 5 in C.S. 74 of 1963. Issue 3 in C.S. 70 and 73 of 1963 and issue 2 in C.S. 74 of 1963 are identical and they relate to the question whether the registration of the plaintiff's design under the Indian Patents and Designs Act is invalid Issue 2 in C.S. 70 of 1963 reads: 'Does any right subsist in the plaintiff in design No. 1011410?' and the same question is raised by issue 1 in C.S. 74 of 1963. Issue 4 in C.S. 70 of 1963 and issue 3 in C.S. 74 of 1963 are to the effect whether the clips manufactured and sold by the defendants are of the design similar to or colourable or a fraudulent imitation of the plaintiffs' fountain pen clips. The same question is raised in C.S. 73 of 1963 by issue 3 which reads:
'Was the registration of the design in question not valid for the reasons stated in paragraph 3 of the written statement'.
Issue 5 in C.S. 70 of 1963 and issue 4 in C.S. 74 of 1963 read: 'Is the plaintiffs' design entitled to protection' and issue 6 in C.S. 70 of 1963 and issue 4 in C.S. 73 of 1963 raise the question whether the plaintiff is entitled to injunction prayed for. Issue 5 in C.S. 73 of 1963 relates to accounting by the defendant therein and issue 7 in C.S. 70 of 1963 and issue 6 in C.S. 73 and 74 of 1963 raise the common question as to what reliefs are the parties entitled.
(8) 'Design' as defined in S. 2(5) of the Patents and Design Act, II of 1911 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 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 S. 478, or property mark as defined in S. 479 I.P.C.
(9) What is claimed by the plaintiff is that he has an absolute copy right in the design of the clip having registered the design under Act II of 1911. The certificate of Registration contains a picture of the top of the pen manufactured by the plaintiff with the clip thereon and the novelty claimed for the design is said to reside in the shape and configuration of the clip as illustrated. The copy right in the design thus registered subsists only for a period of five years from the date of registration, namely, 28-9-1959; and after 28-9-1964, the copy right and the protection available to the plaintiff company under such registration cannot be claimed by it. The case of the plaintiffs that the registration was in force when the company instituted these suits, and, therefore, the plaintiff is still entitled to the relief. Prima facie, there appears to be force in this contention, but since the main prayer in these cases is for an injunction and the right to which, on the ground urged by the plaintiff, is lost before the relief is granted, I do not think that the relief in terms prayed for is still available.
(10) That apart, the defendants in each of these cases contend that the expression 'design' as defined in S. 2(5), beyond referring to the appeal as judged solely by the eye of the finished article, completely excludes the mode or principle of construction of such article. The finished article in the present case being the clip portion in the top fixed with by a mechanical process, it resembles, to the clips used by the several defendants. Does this amount to piracy of the plaintiff's design?
(11) Section 53 of the Act deals with piracy of the registered design and prohibits any person during the existence of copy right in any design for the purpose of sale, to apply or cause to be applied to any article in any class of goods in which the design in registered the design or any fraudulent or obvious imitation thereof, except with the licence or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied. If any person acts in contravention of the aforesaid provision, he shall be liable for every contravention to the penalty provided under sub-section (2) of Section 53. A proprietor of a new or original design has been defined in S. 2(14) as:
'(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 acquired 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 is 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'.
(12) No evidence has been let in this case by the plaintiff company to show that, apart from novelty claimed for the design which is said to reside in the shape and configuration of the clip as illustrated in the picture attached to the certificate of registration the plaintiff has any proprietary right in this design. But the plaintiff had undoubtedly the copy right by virtue of the registration of the design and if any person acts in contravention of the copy right he is liable for such contravention. The defendants, however, are entitled to obtain the revocation of a patent if inter alia the true and first inventor or his legal representative or assign was not the applicant or one of the applicants for the patent, or the invention was not, at the date of the patent, a manner of new manufacture or improvement or the invention does not involve any inventive step etc. In such circumstances, where a patentee institutes a suit during the continuance of a patent acquired by him in respect of an invention against a person making, selling to using the invention without his licence, it is open to such person to apply for revocation of the patent and every ground on which a patent may be revoked shall be available by way of defence to a suit for infringement.
(13) Each of the defendants, as I have stated has filed a petition for cancellation of the registration of the defendant's design and for a direction to the Controller General of Patents and Designs to remove the entry of the registration from the register. There is, however, no evidence as to whether any such application has or had been made Controller General himself by any of the defendants. The question nevertheless is of little consequence as the copy right in the design, as I have already indicated has expired as and from 29-9-1964.
(14) Section 43 of the Act contemplates registration of a design on the application of any person claiming to be the proprietor of any new or original design not previously published in India. The term 'proprietor' has not been defined in the Act, but according to lexicographers, it means an owner of the person who had the legal who had the legal right or the exclusive title to anything, whether in possession or not. There is no averment in any of the plaints in these cases by the plaintiff-company that it is the proprietor of the design in this sense; and its claim as regards the clip is founded only on the copy right. All the same, when a design is registered, it is assumed that the applicant for registration is the proprietor and that as a suit of registration, has copyright in the design during five years from the date of registration. Under S. 48 of the Act, before delivery or sale of any article to which a registered design has been applied, the proprietor shall cause each article to be marked with 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 that the infringement took place after the person guilty thereof knew or had received notice of the existence of the copyright in the design.
(15) In the present case, the article registered being the clip, there is little scope to mark is as registered. But the plaintiff-company should have made out that it had taken all proper steps to make known the registration and the several defendants had notice of the existence of the copy right in the design. This is yet another draw back in these cases to sustain the plaintiff's action or to grant the plaintiff the relief prayed for.
(16) Where a registration has been made in respect of a design which by reason of want of novelty or originality on the ground that the design was a mode or principle of construction or a mechanical device or on other grounds there cannot be any infringement of the copy right. This principle has been upheld in Kestors Ltd. v. Kempat Ltd.. (1936) 53 RPC 139.
(17) In Phillips v. Harbro Rubber Co. (1920) 37 RPC 233 registration of a design of India rubber pads or plates for heels of boots and shoes, consisting of a pad in the shape of the heel of a boot or shoe, having a plain central depression that might be files in with leather or other substance or ornamented on the surrounding portion with cross lines and being thicker at the back than at the front, had been obtained by the plaintiff and he brought an action as proprietor and licencees of the design against the defendants who had sold rubber heels of the same form as the registered Design, except that the ornamentation of the portion surrounding the depression was different from that in the Design and that the variation in thickness was absent. It was proved that from a date prior to that of the registration, the defendants had sold two forms of rubber heels similar in form to the registered Design but having the surrounding portion plain, and, in other case, a central portion, in the other case a central portion with a pattern at a slightly lower level than that of the surrounding portion. The defendants contended that, if the parts of the Design were important elements of novelty, defendants' rubber had not those details and there was no infringement or, if the parts were not important, the Design differed so little from the prior forms of heels that it was not new or original. At the trial it was held that the importance of the parts of a design is dependent on the character of the design; and that there was no substantial novelty or originality in the plaintiffs' combination of old parts. The action was, therefore, dismissed with costs, and a certificate as to certain of the particulars of objections was given.
The plaintiffs appealed to the court of Appeal. The appeal was dismissed with costs. The plaintiff's appealed to the House of Lords. The House of Lords held that a design cannot be rendered new or original merely by a change of mode of construction of an article; that the fact that registered design are kept secret makes to necessary for the court to take special care that no design shall be considered new or original unless it is distinguished from what has previously existed by something different from ordinary trade variants; that there was no evidence as to the novelty or originality of the greater thickness of the plaintiff's heels at the back than at the front(a feature that was not present in the alleged infringement) although it was evidently regarded by the plaintiffs as an essential feature of their design; that the central recess in that design was old and always intended to be filled with leather or a like substance, and that the object of the registration of the design had been to get control of the manufacture of heels with a central recess, however it was files up. Their Lordships, therefore, dismissed the appeal with costs; but observed that no registration of design, it is necessary to have a statement of the matters in respect of which novelty is claimed.
(18) The evidence of Sri Noronha recorded by the Commissioner at Bombay would show that clips similar to the one found in Ex P. 5 had been used by him for the fountain pens produced by him from January 1958 and that he had represented Eversharp concern in India since about 1933 and many of their models were produced by him under trade mark 'Doric' with their knowledge and consent. He has been in the pen trade for over 25 years and claims to have knowledge and experience of fountain pens.
(19) In Infields Ltd. v. Rosen, (1939) 56 R.P.C. 163, where the statement of novelty directed attention of the shape and configuration of the end of the spring clip in which the predominating material in celluloid or other solid substances not included in other clauses for use on furs, capes, caps, costs and the like and stationery and had a groove into which the thumb could fit, the court of appeal held that the registered design was invalid by reason of prior user and that the thumb groove was a mere mechanical device placed in the obvious way and was a mere trade variant. The court of Appeal therefore dismissed the action and ordered the design to be expunged from the register.
(20) In Starford Auto Components Ltd., v. Britax London Ltd, 1964 R.P.C. 183, the plaintiffs had obtained design registrations in respect two different embodiments of a novel windscreen for motor cycles and scooters. The defendants produces a screed which was similar to the plaintiffs second design an in an action for infringement, the defendants did not press their contention of non-infringement but relied on Section 1(3) of the Registered Design Act, arguing that the channel was a feature of the windscreen dictated solely by the function that the registered design possessed no other feature of novelty, and that the registration were consequently invalid. Justice Lloyd Jacob held in this case that the provisions of a channel in the centre of the screen was the most convenient way of strengthening a windscreen made of thin materials, that the channel was the only novel feature of the designs, and that if the registrations were to shut out other manufacturers from adopting the channel feature this mechanical construction would be monopolised and accordingly, when looking at the design registrations the channel feature had to be disregarded. He also pointed out without the channel feature the registrations possessed no novelty over the prior art and were therefore invalid. The learned Judge observed at page 189:
'The exclusion from consideration of feature of shape and configuration which are dictated solely by the function which the article to be made in that shape or configuration has to perform was so expressed in the Design Act 1949, but the language used appears to have been derived from the judgment of Lurnmoore J (as he then was) in (1939) 53 R.P.C. 139, when he used substantially same expression to define 'a mere mechanical device' that being the form in which the exclusion had been expressed since the Patents and Designs Act of 1919. It is obvious that the functional use of a designed article may well limit the type of suitable shape and configuration features for inclusion within the design. For example, a containing bowl of some character must be present in a design for a teapot or some lens holder present in a pair of spectacles. If this functional use not only restricts the type of feature suitable but additionally prescribes a particular shape and configuration to which that feature must conform, such feature is dictated solely by function and must in consequence the excluded from consideration. There would appear to be two types of cases possible, one where the design feature being considered is shown to be the only shape etc, which when applied will secure performance of the function, and the other where the design features ascertainable from the representation attached to the certificate are susceptible of so general an interpretation that they monopolise as a matter of substance all performances of the function...... The test to be applied is an objective one, namely whether or not the function to be subserved by the article to which the design is applied imposes such control upon the freedom of the manufacturer as in substance to leave him no option but to adopt a feature or features appearing in the representation of the registered design, and I do not read the cited passage in Lord Evershed's judgment as inconsistent with this interpretation'.
In Simmons v. Mathison and Co. Ltd., (1911) 28 R.P.C. 486, the plaintiff as owner of a registered Design for the shape and pattern of the body of a children's carriage, brought an action against the defendants for alleged infringement. The defendants, while denying infringement alleged that the plaintiff's registered design was invalid by reason of anticipation and they established at the trial that they had produced the style of perambulators. of which the plaintiff complained independently and without any knowledge of the plaintiff's design though bearing a resemblance in general outline to those made by the plaintiff in accordance with his design. The trial Judge held that inasmuch as the defendants had produced independently something bearing some resemblance to the plaintiffs' registered design, but differing as much therefrom as the plaintiff's differed from any of its predecessors, there was not sufficient novelty in the plaintiff's design to sustain his registration as a new and original design without at the same time deciding that the defendants article was so different as not infringe and that there was no infringement. The court of appeal upheld this view holding that the design was not new and original and that the registration was invalid. The court of appeal however held that even on the assumption that the registration was valid there had been no infringement.
(21) It would thus appear that unless there is something new or original in a design, a person claiming right in such a design by reason of its registration may not claim to obtain any protection. In the present case, as I have shown, it is difficult to attribute any originality in the design of the clip; nor having regard to the evidence of D.W. 2, which has not been attempted to be controverted by the plaintiffs, could it be said that the clip attached to the top in Ex.P. 5 is either new or original.
(22) A registration cannot be deemed effective unless the design or configuration, sought to be protected, is new and original and not of a pre-existing common type. Where the evidence indicated that the design in question were in use from long before the date, when the registration of the patent was applied for by the plaintiff, it is not possible to say that the designs were new or original and that the plaintiff was entitled to protection which he sought : Vide Ram Sahai v. Angnoo, AIR 1922 All 496.
(23) I have carefully scrutinised the tops with the clips of 'Champion' and 'President' pens and compared them with the clip attached to the top of the 'Pilot' pen. The clips on the tops of 'Champion' and 'President' pens look alike. But tops with such clips are not sold separately and when fixed to the barrel, there are other distinguishing features both in 'Champion' and 'President' pens. The former has in the upper portion of the barrel a somewhat transparent device which is not in the Pilot pen and the neck of both the Champion and President pens differ from that of the Pilot in that the former two do not contain the gold ring which is found in the next of the latter. 'Mahtre writer' pen though it contains a clip slightly broader but similar in appearance to the one in the Pilot pen has other distinguishing features. The base of the top has a much wider ring inscribed with initials in circles and the clip fixed to such a top can hardly be confused or mistaken for the one attached to the Pilot pens. The barrel of this pen also is different from others as it does not contain any goldring at the base and the feeder and pen arrangement are also different from those of the Pilot pen.
(24) In the circumstances, I am not satisfied that, even on merits, either of the defendants in these cases can be said to have committed any lawful infringement. Even so, the clip, in respect of which protection is claimed being a common type, the plaintiff is not entitled to any protection. For this reason, the plaintiff's suits as against each of the defendants are liable to be dismissed. Further, the period of registration having expired, he is also entitled to the relief prayed for gradients any of the defendants.
(25) Each of these suits is accordingly dismissed with costs. The original petitions Nos. 7 of 1965, 233 and 238 of 1964 filed by the respective defendants are also dismissed since the period of registration of the plaintiffs clip has expired and is no longer effective but without costs.
(26) Suits and petitions dismissed.