AID No.4 of 2013 IN THE HIGH COURT AT CALCUTTA ORIGINAL SIDE ATUL NARSIBHAI PATEL VERSUS ASSISTANT CONTROLLER OF PATENTS AND DESIGNS & ANR. BEFORE: The Hon'ble JUSTICE SOUMEN SEN Date :

16. h February, 2017. Appearance: Mr. Suvasish Sengupta, Adv. Ms. Sanchalita Sarkar, Adv. Mr. Rabi Prosad Mookerjee, Adv. The Court: The instant appeal is arising out of an order dated 12th March, 2013 passed by the Learned Assistant Controller of Patent and Design whereby the registration of the Design being no.211639 in class 09-07 under the Designs allowed the Act, 2000 was application for cancelled. The Assistant Controller cancellation of all the impugned design on a finding being arrived at that the registered design no.211639 dated 7th August, 2007 is not significantly distinguishable from designs and thereby not new or original. combination of known In other words, the cancellation was allowed in view of Section 4 (C) of the Designs Act, 2000. The subject matter of dispute before the Assistant Controller was ‘seal for packaging’ under Class 09-07. The representation accompanying the registration of the petitioner consists of three sheets having front view and rear view in sheet no.1, side view and other side view in sheet no.2 and top and bottom view in sheet no.3. The novelty is claimed in the representation sheet no.1 in the shape and configuration of the seal for packaging. The statement reads: “The novelty resides in the shape and configuration of the Seal for packaging more particularly in the portion marked “A”. as illustrated”.. In the remaining representations, novelty is claimed to be residing in the shape and configuration of the seal for packaging. Both the parties before the Controller have claimed that they have invented this unique design and the novelty resides in the shape and configuration of various plastic seals. While the appellant would contend that the seals for packaging were entirely for a different purpose and having a different ocular impression, the respondent no.3 has contended that the said design has been copied from a prior published design in respect respondent no.3 is having prior registration. whereof the It was contended that the impugned design is nothing but a copy of a previous known design and, thus, not new or original. The two designs were compared by the Assistant Controller. It was observed that normally such seals are anchor type, temper evident with locking system. It generally consists of: a male part having certain protruded fangs or anchors, a female part which is enable to hold the male part in its internal locking arrangement corroborating the structure of the male part and a connector between the male and female part reinforced with galvanized twisted wire. polycarbonate material. which is normally It is normally made of Material of construction of the article is not relevant, but it indicates why certain registered designs of the petitioner were registered in Class 3 under the old Act of 1911. The Assistant Controller took into consideration all the designs disclosed by the parties in the proceeding and found that the prior design nos.179570 dated 27th May, 1999, 182372 dated 17th May, 2000, 205868 dated 1st September, 2006 and 205871 dated 1st September, 2006 are of relevance. These prior designs depict a plastic seal where novelty is claimed to be residing in shape and configuration of the seal in each of the designs. Novelty of the impugned design was claimed to be residing in the shape and configuration of the female or the body part marked as portion “A”. in the representation. The marked portion was found to be strikingly similar to the body part of the seal of prior design no.179570 even to the extent of provision of the circular inscription on the body. Size impugned article was slightly different. of the parts in the Male portion of the said article bearing the impugned design shows two sets of anchors and a V shaped cut on the top. The anchors are purely functional as it has to be made in a shape corroborating the internal locking structure of the female part. The V shaped cut on the male part of the impugned design was suggested by a prior design 205871. This prior design 205871 also shows female part similar to that of the impugned design. The novelty of a design can be claimed if it is established that the design features of the impugned design are not taught by the prior designs. If it is found that it is taught by a prior design it loses its claim of novelty. Unless it is established that there are significant features in the impugned design which were not capable of being taught or having other distinguishable features, a design would not be registered. It is no answer to an application for cancellation of the design that while considering the application for grant of design at the initial stage, the said designs were examined by the examiners and only on a satisfaction being recorded that it has unique and/or distinctive features, the said designs were registered. The legislatures were aware that at the time of registration it may not be possible for the registering authority to come across all the design not qualified to be registered if the conditions of Section 4 is attracted. In other words, a design shall not be registered if it is not new or original or has been disclosed to the public prior distinguishable designs. to from the filing known date designs or or is not significantly combination of known The right to challenge a registration of design is not lost merely because it was registered by the authority. 19 of the Design Act, 2000 permits any person Section interested may present a petition for the cancellation of the registration of a design at any time after the registration of the design, to the Controller on any of the following grounds, namely:(a) that the design has been previously registered in India; or (b) that it has been published in India or in any other country prior to the date of registration; or (c) that the design is not a new or original design; or (d) that the design is not registrable under this Act; or (e) that it is not a design as defined under clause(d) of section 2. A design does not become new or original if it is not significantly distinguishable from known designs or combination of known designs. of the In the instant case, it was found on a comparison features of the impugned design with the previously registered and published designs that the design features of the impugned design were taught by the prior designs particularly by registered design nos.179570 and 205871 in respect female/body as well as the male part respectively. of the Broad features are found to be same and the impugned design shows combination of those previous designs. Court the applications The parties have produced before this containing the impugned design and designs with which they are compared by the Controller. the On an ocular impression, this Court is unable to come to a different conclusion than that was arrived at by the Controller. said with certainty that the appellant’s It can be design is not significantly distinguishable from combination of known designs. The common feature in both the designs is of seal. The argument that as both the articles being different and registered under different class impugned design cannot be considered as previously registered and the scope of protection is different for both the types of designs is a desperate attempt to cover up the lack of novelty or newness and clear revelation that the design features of the impugned design were taught by the prior designs. The primary function of the article ‘seal’ is to use it as a lock for sealing. It is evident from the representation of the design that the appellant’s article is a seal. This aspect of the matter was also considered by the Assistant Controller in its order very lucidly which reads as follows: “The classification of goods is regulated by the Third Schedule framed under Rule 10 of the Designs Rules 2001 as amended by (Amendment) containers for Rules the 2008. transport Class or 09 relates handling relates to closing means and attachments. of to Packages goods and and 09-07 Down below the class 09-07, a note is given which reads thus: Notes:- (a) Including only closing means for packages (b) ‘Attachment’ means, for example, dispensing and dosing devices incorporated in containers and detachable atomizers. Class 08 relates to tools and hardware, also with a note that (a) including hand-operated tools, even if mechanical power takes the place of muscular force; for example, electric saws and drills and (b) Not including machines or machine tools (Cl.15 or 31). Class 08-07 particularly relates to locking or closing devices. It is thus obvious that class 09 relates to packages containers and 0907 relates to closing means for packages as well as attachments incorporated in containers etc. article of impugned design In this present proceeding, the and petitioner’s designs is of seal. also the article of the Another pleading of learned counsel of respondent was that the seal of impugned design 211639 is meant for sealing packages likewise bags of customers were sealed in shopping complexes and thus use is different. I would see that if that is so, article of petitioner’s design of seal could also be used for that purpose and vice versa. The primary function of the article ‘seal’ is to use as a lock for sealing. It is clearly evident from the representations of the designs that the respondent’s article is a seal.”

. It is argued on behalf of the appellant that eye alone is to be the Judge of identity for the purpose of deciding whether a particular design has been accepted or not by another. This aspect of the matter has long been settled. In Gammeter v. The Controller of Patents and Designs, it was held by the Court: The design should be protected provided it was not merely an analogous and that the test of novelty is the eye of the Judge who must place the two designs side by side and see whether the one for which novelty is claimed is new. The question of eye appeal came up for consideration Interlego A.G. v. Tyco Industries Inc., in relation to toys. in The Court observed: In relation, however, to an assessment of whether a particular shape or configuration satisfies the former and positive part of the definition, the fact that an important part of the very purpose of the finished article is to appeal to the eye cannot be ignored. …One starts with the expectation of eye-appeal, for part of the very purpose of the article is to have eye-appeal. You have to design so that the article in question will make an immediate visual appeal to a child or to the parent or other person buying for a child. The word ‘new’ in relation to a design means a design which is completely new in the sense that it is invented or created for the first time and was hitherto unknown. The word ‘original’ in relation to a design may mean a new application of an existing or known design to a subject matter. A design may not be new in the sense that it is completely new. It may be an existing or known design but has been applied to a particular article for the first time. A design between new and original has been discussed in Gammeter v. The Controller of Patents Cal.887. In this context, it was observed: and Designs, AIR1919“A design in order to be new or original within the meaning of the Act, need not be new or original in the sense of never having been seen before as applied to any article whatever, there might be a novelty in applying an old thing to a new use, provided it is not merely analogous.”

. The sameness of features is to be decided by the eye, that is to say, by seeing the two and getting a total synoptic view of the same. The sameness of features does not necessarily mean that the two designs must be identical on all points and differ on no point. If the same shape or pattern, or one substantially similar, has previously been thought of in connection with any article of manufacture and the idea published, or registered, then the design will be deprived of its novelty. (Western Engineering Vs. Paul Engineering, AIR1968Cal

109) A design showing merely a combination of known features and without any real mental activity being required for its production is not registrable. (Sebel & Coy. Ld.,1959 RPC12 Where the design is original, the designer conceives something new; but where the design is a mere trade variation of a previous design, then the designer could have merely existing design in view and made some changes in that. kept an In order to determine whether a design is new or original, there must be substantial difference from the design which was known or had been published prior to the date or registration of the earlier design. What is “substantial difference”.?. This is a question upon which no general principle could be laid down at all and it must depend upon the particular facts in each case. Sometimes, a small variation in the details of a design may be enough to make the design different from an existing design, whereas in some cases even large alterations in detail may not make the two designs different. The court has to consider and look at the designs in question with an instructed eye and observe whether there is or is not such a substantial difference between the two. There must be a substantial novelty in the design having regard to the nature of the article and not a mere novelty of outline. (Ravinder Kumar Gupta v. Ravi Raj Gupta and Others, 1986 (6) PTC50 The Hon’ble Supreme Court in Bharat Glass Tube Limited v. Gopal Glass Works Limited, 2008 (10) SCC657 held that the expression “new or original”. appearing in section 4 means that the design which has been registered has not been published anywhere or it has been made known to the public. The expression, “new or original”. means that it had been invented for the first time or it has not been reproduced by anyone. The appellant contended that the learned Assistant Controller erred in law by comparing different parts of eight prior published designs of the respondent no.2 registered in different classes while deciding the novelty of the impugned design. Counsel referring to a decision in The learned Rosedale Associated Manufacturers Ltd. V. Airfix Ltd. reported at (1857) RPC239at page 245, 250 submits that for the purpose of attacking or deciding the novelty of a design, it is not permissible to make a mosaic of a number of prior art documents. It is argued that in the instant case, the features of the impugned design were never disclosed in one single pre disclosed article and, therefore, the said judgement suffers from total non application of mind. The learned Assistant Controller has committed an error by comparing the impugned design with parts/portions of several other pre published designs and by accepting the contention of the private respondent that distinguishable registered the from designs of impugned known the design designs respondent or is not significantly combination no.2 as the of same prior is not permissible in law. Further reference has been made to Hills Vs. Evans 1862 31 L.J Ch. 457 at 463 Russel Clerk-Sixth edition - page 49, wherein it has been stated that 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 to at least 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. Furthermore, the Assistant Controller has failed to appreciate that the impugned design has certain embellishments over the fundamental form which makes it distinguishable and the jaw portion of the male part of the impugned design is also different from the design no.179570 cited by the respondent no.2 herein. of the subject registered design respondent no.2. design is nos.182371, Further the female portion significantly 182372 and distinct 193033 from cited by the the The Assistant Controller failed to appreciate that the producing the impugned design the appellant has added some features which makes the article eye appealing. In order to decide the novelty, a design has to be looked as a whole and ocular impression or eye appeal is the foremost criterion for deciding the novelty of a design. In this context it was held in the matter of Amp. V Utilax 1971 RPC103at 113 (Russel ClerkSixth edition, page 49, that “…where a design sets out to produce an article that would perform a particular function, but where in producing it he has added or applied some features of shape that are additional to or supplementary to what is functionally needed, with the result that in the finished article there are features that appeal to eye there may be a design which is registerable within the statutory definition...”

. An unreported judgment of this Court in the matter of AID No.1 of 2013 (M/s. Devans Modern Breweries Ltd. Vs. Controller of Patents & Designs & Ors.) decided on 29th April, 2015 has been relied upon to show that if an article has an eye appeal, it cannot lose appeal. such appeal only because another article has eye The entire concept of “eye appeal”. is, however, quite subjective. The respondent has taken a preliminary point as to the maintainability of the appeal at the instance of the petitioner on the ground that the purported deed of assignment dated 24th January, 2013 and the purported application for entry of the name of the appellant in the Register of Designs. Section 30 read with Rule 33 and 35 of the Design Rules, 2001 says the mandatory procedures for entry of assignment and transmission in register. In absence of the same, the appeal under Section 19(2) filed by the appellant/petitioner is not maintainable. The registration of certain designs are prohibited under Section 4 of the Designs Act, 2000 which (a) is not new or original; or (b) has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for distinguishable designs; or registration; from (d) known comprises or (c) designs or is or contains not significantly combination scandalous of or known obscene matter. Section 19 of the Designs Act, 2000 says that any person interested may present a petition for cancellation of the registration of a design at any time after the registration of the design to therein. the Controller on any of the grounds as mentioned In the said grounds, four grounds are relevant for the adjudication of the said appeal. (i) That the design has been previously registered in India, or (ii) That it has been published in India or in any other country prior to the date of registration, or (iii) That the design is not a new or original design, or (iv) is not registrable under the Act of 2000. The registered Design bearing No.179570 dated 27-5-1999 (Page 21-25 of AO) and 205871 dated 1-9-2006 (Page 62-68 of AO) in the name of the respondent no.2 are identical and/or imitation and, therefore, prior registered and prior published and not novel and registered and is liable to be cancelled. On the ground of maintainability the learned Counsel has referred to the decision in Amit Jain vs. Ayurveda Herbal & Ors. reported at 2015 (63) PTC121(Del.) and submits that the Hon’be Delhi High Court held that the plaintiff did not have any valid right to file the said suit unless the assignment is duly registered under Section 30 of the Designs Act, 2000. On prior publication it is submitted in The Wimco Ltd., Bombay Vs. M/s. Meena Match Industries, Sivakasi & Ors. reported at AIR1983DEL537that the word ‘Published’ used in Section 43 and 51(a) of the Designs Act, 1911 has not been defined in the Act. Publication within the meaning of the Act means the opposite party of being kept secret. longer a secret. It is published if a design is no There is publication if the design has been disclosed to the public or the public has been put in possession of the design. Venus Industries vs. Magppie Exports reported at 2003 (26) PTC312(PO) has been relied upon in support of the argument that a public document must be considered as a prior public document with respect to the registered design and if on comparing to the instant registered design it appears that it is nothing but a mere trade variant than the impugned design cannot be considered as new or original. If on a comparison of the articles it is found to be practically identical, the registration is required to be cancelled. On the aspect of novelty, learned Counsel has relied upon the decision in Brighto Auto Industries vs. B. Chawla & Sons reported at PTC (Suppl) (1) 851 (Del) that in the matter of novelty, the eye has to be the ultimate arbitrator and the determination has to rest on the general ocular impression. its newness or originality, it is To secure recognition for imperative that the design identical with or even materially similar to the relevant design should not slight, have trivial been or published or infinitesimal registered variation previously. from a A pre-existing design will not qualify it for registration. The same including principle Western can Engineering be Co. found in vs. various Paul decisions Engineering Co. reported at AIR1968Cal 109, Gopal Glass Works Ltd. vs. Assistant Controller of Patents & Designs reported at 2006 (33) PTC434(Cal.) and Reckitt Benkiser India Ltd. vs. Wyeth Ltd. reported at 2013 (54) PTC90(Del. FB) A design is not registrable, inter alia, if it is found that it has been disclosed to the public in India or abroad by publication in tangible form or by use or in any other way prior to the filing of the application for registration. Design is a conception, suggestion or idea of a shape and not an article. original”.. It if has been already anticipated it is not “new or Publication before registration defeats the proprietor’s right to protection under the Act. (Niki Tasha Pvt. Ltd. Vs. Faridabad Gas Gadgets P. Ltd., AIR1985Delhi

136) The features of shape, configuration, pattern and ornament, when applied to an article are design. the design arrangement is, of therefore, lines which that give What actually constitutes peculiar such combination features. A and design is necessarily part and parcel of the article manufactured. The learned Counsel appearing on behalf of the petitioner referred to Bharat Glass Tube Limited Vs. Gopal Glass Works Limited reported at (2008) 10 SCC657to submit that when a design is sought to be applied to an article unless two articles are simultaneously produced for examination, the controller could not have held that there was no novelty or originality in the design of the petitioner. In Gopal Glass Works Limited v. Assistant Controller of Patents & Designs & Ors. reported at 2006 (3) CHN188originates from this court. observed that In Paragraph 30 of the said judgment, it was under the law presently in force in India, specifications, drawings and/ or demonstrations in connection with registration of a design do not per se constitute publications which prohibit future registration of that design. Had publication of design specifications by a registering authority, particularly a registering authority in a foreign country, in connection with registration of a design, in itself, amounted to prior publication, that would hit all future applications in India for registration of designs, prior registration in India would not separately registered have been design. made a Moreover, it ground is for cancellation significant that of a Parliament consciously, made publication in a country other than India a ground of cancellation, in addition to publication in India, but expressly restricted the embargo of prior registration to registration in India. Registration in a country other than India has not been made a ground for the cancellation of a registered design. Moreover, in order to destroy the novelty of a design registration, prior disclosure whether by publication or use or any other way, must be of the pattern, shape and/or configuration applied to the same article. The relevant observations can be found in Paragraphs 39 to 46 of the report which are:“39. The next question, in issue before this Court, is whether the finding of the respondent No.1 that the document downloaded from the internet from the website of the Patent Office of the United Kingdom, might be taken as prior publication of the impugned design, is legally sustainable.

40. It is true that publication has not been defined in the 2000 Act. Yet, for reasons discussed above, mere publication of design specifications, drawings and/or demonstrations by the Patent Office of the United Kingdom, or for that matter, any other foreign country, in connection with an application for registration, would not, in itself, amount to publication that would render a design registered in India liable to cancellation.

41. To constitute prior disclosure by publication to destroy the novelty of a registered design, the publication would have to be, in tangible form, of the design applied to the same article. brochure, Prior book, publication journal, magazine of a trade catalogue, or newspaper containing photographs or explicit picture illustrations that clearly depict the application of the design on the same article, with the same visual effect would be sufficient.

42. When the novelty of an article is tested against a prior published document, the main factor required to be adjudged is the visual effect and the appeal of the picture illustration.

43. If the visual effect of the pattern, the shape or the combination of the pattern, shape, dimension, colour scheme, if any, are not clear from the picture illustrations, the novelty cannot publication, be said unless to have there are been clear destroyed and by prior unmistakable directions to make an article which is the same or similar enough to the impugned design.

44. In the case of Rosedale Associated Manufacturers Ltd. v. Airfix Ltd., reported in 1957 RPC239 Lord Evershed M.R. held as follows: “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 oftquoted language of Lord Westbury in Hills v. Evans : 'The antecedent statement must, in order to invalidate the subsequent patent, be such that a person of ordinary knowledge of understand discovery the subject and be without would able the at once practically necessity of perceive to apply making and the further experiments.' By a like reasoning, to my mind, if a document reader is of to it, constitute possessed prior publication, ordinary knowledge then of a 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.”

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45. The illustrations in the form of drawings downloaded from the website of the United Kingdom Patent Office depict the patterns that may be applied to glass sheets. The patterns may be same but the illustrations do not give the same visual effect as the samples of the glass sheets produced by the appellant in Court. There are also no cle