http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 1 of 21

CASE NO.:

Appeal (civil) 3185 of 2008

PETITIONER:

Bharat Glass Tube Limited

RESPONDENT:

Gopal Glass Works Limited

DATE OF JUDGMENT: 01/05/2008

BENCH:

A.K.MATHUR & ALTAMAS KABIR

JUDGMENT:

J U D G M E N T

CIVIL APPEAL NO. 3185 OF 2008

[Arising out of S.L.P.(C) No.16321 of 2006]

A.K. MATHUR, J.

1. Leave granted.

2. This appeal is directed against the order dated

17.8.2005 passed by the Calcutta High Court whereby

learned Single Judge has set aside the order passed by the

Assistant Controller of Patents & Designs, Kolkata dated

20.9.2004 whereby the Assistant Controller has cancelled

the registration of the respondent herein and held that

there was no material on record to show that the design had

previously been applied to glass sheets. It was also held

by learned Single Judge that the order impugned considered

with the materials on record, including in particular the

computer print-outs clearly revealed that the respondent

has only compared the pattern and/or configuration

considered the visual appeal thereof, but not the visual

appeal of the pattern and/ or configuration on the article.

In other words, the Assistant Controller has not

considered the visual appeal of the finished product. The

visual effect and/or appeal of a pattern embossed into

glass sheets by use of embossing rollers could be different

from the visual effect of the same pattern etched into

glass sheets manually. This aspect was not considered.

Aggrieved against this order passed by learned Single

Judge, the present appeal has been filed by the appellant.

3. In order to appreciate the controversy involved

in the present appeal, a few facts may be dilated here. The

respondent herein claimed to carry on business inter alia

of manufacture and marketing of figured and wired glass

sheets since 1981. The respondent claimed to be the

originator of new and original industrial designs, applied

by mechanical process to glass sheets. According to the

respondent, the glass sheets have eye catching shape,

configuration, ornamental patters, get up and colour shades

and the same were registered and/or were awaiting

registration as industrial designs under the Designs Act,

2000 (hereinafter to be referred to as the Act of 2000) and

the Rules framed thereunder. For production of glass

sheets of the design registered as Design No.190336, two

rollers are required. The rollers are manufactured by M/s.

Dorn Bausch Gravuren GMBH of Germany (hereinafter to be

referred as the German Company). According to the

respondent the rollers are not only used for manufacture of

http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 2 of 21

glass sheets, but for various other articles including

plastic, rexin and leather. The respondent placed an order

on the German Company for supply of the rollers for

launching a design of figured glass with new and novel

features not produced before by anyone else. On or about

29.10.2002 the respondent applied to the Controller of

Patents and Designs under Section 51 of the Act of 2000 for

registration of the said design in Class 25-01. The said

design was duly registered on 5.11.2002 and was to remain

valid for a period of 10 years from the date of its

registration. The respondent claimed the exclusive

copyright in India on the said design applied to glass

sheets. It was claimed that no other person has any right

to apply the said design to glass sheets as the respondent

has exclusive right over the said design on the glass

sheets. The respondent marketed the glass sheets of the

said design under the name of Diamond Square and that

became popular amongst the customers soon after its launch

in the market. After registration of the said design the

respondent issued a notice on 21.5.2003 cautioning other

manufactures from infringing copyright of the respondent

in respect of the said registered design. But in the

meanwhile the appellant and its associate IAG Co.Ltd

started imitating the said registered design, as a result

thereof the respondent was constrained to file a suit

being Civil Suit No.1 of 2004 against the appellant in the

District Court of Mehsana. The respondent obtained a

restraint order restraining IAG Co. Ltd. from infringing

the copyright of the respondent against the said design.

In order to counter-blast the suit, the appellant herein

filed an application under Section 19 of the Act of 2000

before the Controller of Patents & Designs for

cancellation of registration of Design No.190336 in the

name of the respondent mainly on the ground that the design

has already been previously published in India and abroad

and on the ground that the design was not new or original.

The appellant primarily relied on a catalogue of the German

Company and letter dated 10.9.2003 of the German company

addressed to M/s. IAG Co. Ltd. the holding company of the

appellant stating that the said German Company had

developed design No.2960-9010 in the year 1992 and the

other evidence relied on by the appellant was a document

downloaded from the internet from the official website of

the Patent Office of the United Kingdom on 22.9.2004 which

indicated that the same design had been registered in

United Kingdom in the name of M/s.Vegla Vereinigte

Glaswerke Gmbh sometime in 1992. As against this the

respondent filed an affidavit stating that the German

Company has been engaged in the manufacture of engraving

rollers and no other goods and it was contended that the

company was not engaged in manufacture of the goods other

than engraving rollers. It was contended that the company

never manufactured engraved glass sheets by using engraved

rollers. The respondent also relied on the communication

dated 4.3.2004 of the German company confirming that the

embossing rollers covered by Design No.2950-910 had been

sold to the respondent on condition that all user rights

available in India under Indian laws would vest exclusively

in the respondent and that the respondent would be entitled

to exclusive user rights for at least five years. The

German company was aware of the registration of the Design

No.190331 and it had no objection to the design being

marketed by the respondent herein. An affidavit was also

filed by the Liaison Executive of the respondent company

that he visited Germany and upon enquiry ascertained that

http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 3 of 21

M/s. Vegla Vereinigte Glaswerke Gmbh had never manufactured

glass sheets of the design registered as Design No.2022468

in the United Kingdom. The respondent also objected to the

admissibility of the materials alleged to have been

downloaded from the United Kingdom Patent Office. It was

also contended that in absence of corroborative evidence,

such evidence cannot be tendered and it cannot be treated

as admissible evidence. It was also contended that the

German Company only manufactured rollers but did not

produce glass-sheets prepared out of these rollers.

4. On the basis of the pleadings , learned Assistant

Controller of Patents and Designs framed following three

issues for determination:

(i) Whether the design was not new or

original in view of the fact that the

roller bearing the design is published

before the date of registration and the

registered proprietor is not owner of

design.

(ii) Whether the design was published

outside India as well as in India prior

to the date of application.

(iii) Whether the registered design was

in public domain due to sale/use of the

design prior to the date of application

of the registered proprietor.

The first two issues were decided against the respondent

and the third issue was not adjudicated since the evidence

by way of affidavit was not taken on record on technical

reasons. Hence, the Assistant Controller of the Patents and

Designs set aside the registration of the respondent.

Aggrieved against this order the respondent filed a regular

appeal under Section 36 of the Act of 2000 before the High

Court. Learned Single Judge after considering the matter

reversed the finding of the Assistant Controller and

dismissed the application filed by the appellant for

cancellation of registration of the respondent herein.

Aggrieved against this impugned order passed by learned

Single Judge of the Calcutta High Court the present appeal

was filed by the appellant-complaint.

5. We have heard learned senior counsel for the

parties at length and perused the record. Before we

proceed to decide on the merit of the matter, it would be

profitable to refer to the relevant provisions of the Act.

It may be mentioned here that in 1911 the Designs Act was

passed by the then British Government in India. But with

the advancement of science and technology and the number of

registration of the design having increased in India, the

Act of 1911 was amended wholesale by the Parliament and

this new Act known as Designs Act, 2000 came to be

introduced in the Parliament and the same was passed as

such. The statement of objects and reasons read as under:

" STATEMENT OF OBJECTS AND REASONS

Since the enactment of the Designs

Act, 1911 considerable progress has been

made in the field of science and

technology. The legal system of the

protection of industrial designs requires

to be made more efficient in order to

http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 4 of 21

ensure effective protection to registered

designs. It is also required to promote

design activity in order to promote the

design element in an article of

production. The proposed Design Bill is

essentially aimed to balance these

interests. It is also intended to ensure

that the law does not unnecessarily

extent protection beyond what is

necessary to create the required

incentive for design activity while

removing impediments to the free use of

available designs."

Section 2 of the Act of 2000 deals with the definitions and

the Controller has been defined in Section 2 (b) as

follows:

" (b) "Controller" means the

Controller-General of Patents, Designs

and Trade Marks referred to in section

3."

"Copyright" means the exclusive right to apply a design to

any article in any class in which the design is registered.

Section 2 (d) defines design which reads as under :

" (d) "design" means only the

features of shape, configuration,

pattern, ornament or composition of lines

of colours applied to any article whether

in two dimensional or three dimensional

or in both forms, by any industrial

process or means, whether manual,

mechanical or chemical, separate or

combined, which in the finished article

appeal to and are judged solely by the

eye; but does not include any mode or

principle of construction or anything

which is in substance a mere mechanical

device, and does not include any trade

mark as defined in clause (v) of sub-

section (1) of section 2 of the Trade and

Merchandise Marks Act, 1958 (43 of 1958)

or property mark as defined in section

479 of the Indian Penal Code (45 of 1860)

or any artistic work as defined in clause

) of section 2 of the Copyright Act, 1957

(14 of 1957);"

Section 2 (g) defines original which reads as follows:

" (g) " original", in relation to

a design, means originating from the

author of such design and includes the

cases which though old in themselves yet

are new in their application;"

Section 2 (i) defines 'prescribed' which means prescribed

by rules made under this Act. Section 2(j) defines '

proprietor of a new or original design' which reads as

under:

" (j) "proprietor of a new or original design".-

(i) where the author of the design, for

good consideration, executes the work

for some other person, means the

http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 5 of 21

person for whom the design is so

executed;

(ii) 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

(iii) 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 3 deals with the Controller and other officers.

Section 4 deals with the prohibition of registration of

certain designs which has relevant bearing on our case. It

reads as follows:

" 4. Prohibition of registration of

certain designs.- A design 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 registration;

or

(c) is not significantly

distinguishable from known designs or

combination of known designs; or

(d) comprises or contains scandalous or

obscene matter,

shall not be registered."

Section 5 deals with the application for registration of

designs. Section 6 deals with the registration to be in

respect of particular article. Section 7 deals with

publication of particulars of registered designs. Section 9

deals with the certificate of registration which reads as

under :

" 9. Certificate of registration.-

(1) The Controller shall grant a

certificate of registration to the

proprietor of the design when registered.

(2) The Controller may, in case of

loss of the original certificate, or in

any other case in which he deems it

expedient, furnish one or more copies of

the certificate."

Section 10 deals with register of designs which reads as

follows:

" 10. Register of designs.-

(1)There shall be kept at the patent

office a book called the register of

designs, wherein shall be entered the

names and addresses of proprietors of

registered designs, notifications of

http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 6 of 21

assignments and of transmissions of

registered designs, and such other matter

as may be prescribed and such register

may be maintained wholly or partly on

computer floppies or diskettes, subject

to such safeguards as may be prescribed.

(2) Where the register is maintained

wholly or partly on computer floppies or

diskettes under sub-section (1), any

reference in this Act to any entry in the

register shall be construed as the

reference to the entry so maintained on

computer floppies or diskettes.

(3) The register of designs existing

at the commencement of this Act shall be

incorporated with and form part of the

register of designs under this Act.

(4) The register of designs shall be

prima facie evidence of any matter by

this Act directed or authorized to be

entered therein."

Section 11 deals with copyright on registration which reads

as under :

" 11. Copyright on registration. \026

(1) When a design is registered, the

registered proprietor of the design

shall, subject to the provisions of this

Act, have copyright in the design during

ten years from the date of registration.

(2) If, before the expiration of the

said ten years, application for extension

of the period of copyright is made to the

Controller in the prescribed manner, the

Controller shall, on payment of the

prescribed fee, extend the period of

copyright for a second period of five

years from the expiration of the original

period of ten years."

Section 12 deals with restoration of lapsed designs which

reads as under :

" 12. Restoration of lapsed

designs.- (1) Where a design has ceased

to have effect by reason of failure to

pay the fee for the extension of

copyright under sub- section (2) of

section 11, the proprietor of such

design or his legal representative and

where the design was held by two or more

persons jointly, then, with the leave of

the Controller one or more of them

without joining the others, may, within

one year from the date on which the

design ceased to have effect, make an

application for the restoration of the

design in the prescribed manner on

payment of such fee as may be prescribed.

(2) An application under this

section shall contain a statement,

verified in the prescribed manner, fully

setting out the circumstances which led

http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 7 of 21

to the failure to pay the prescribed fee,

and the Controller may require from the

applicant such further evidence as he may

think necessary."

Section 17 deals with inspection of registered designs

which reads as under:

" 17. Inspection of registered

designs.- (1) During the existence of

copyright in a design, any person on

furnishing such information as may enable

the Controller to identify the design and

on payment of the prescribed fee may

inspect the design in the prescribed

manner.

(2) Any person may, on an

application to the Controller and on

payment of such fee as may be prescribed,

obtain a certified copy of any registered

design."

Section 18 deals with information as to existence of

copyright which reads as under:

" 18. Information as to existence

of copyright.- On the request of any

person furnishing such information as may

enable the Controller to identify the

design, and on payment of the prescribed

fee, the Controller shall inform such

person whether the registration still

exists in respect of the design, and, if

so, in respect of what classes of

articles, and shall state the date of

registration, and the name and address of

the registered proprietor.

Section 19 deals with cancellation of registration which

reads as under:

" 19. Cancellation of registration.- (1) Any

person interested may present a petition for the

cancellation of the registration of a design at any time

after the registration of the design, to the Controller on

any of the following grounds, namely:-

(a) that the design has been previously

registered in India; or

(b) that it has been published in India or in

any other country prior to the date of

registration; or

(c) that the design is not a new or original

design; or

(d) that the design is not registerable under

this Act; or

(e) that it is not a design as defined under

clause (d) of section 2.

(2) An appeal shall lie from any order of the

Controller under this section to the High Court,

and the Controller may at any time refer any such

petition to the High Court, and the High Court

shall decide any petition so referred."

Section 22 deals with piracy of registered design. Chapter

VI deals with fees, notice of trust not to be entered in

http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 8 of 21

registers etc. with which we are not concerned. Section 32

in Chapter VII deals with the powers and duties of the

Controller which reads as follows:

" 32. Powers of Controller in

proceedings under Act.- Subject to any

rules in this behalf, the Controller in

any proceedings before him under this Act

shall have the powers of a civil court

for the purpose of receiving evidence,

administering oaths, enforcing the

attendance of witnesses, compelling the

discovery and production of documents,

issuing commissions for the examining of

witnesses and awarding costs and such

award shall be executable in any court

having jurisdiction as if it were a

decree of that court."

Section 36 deals with the appeals to the High Court.

Section 37 in Chapter VIII says that evidence can be

tendered by affidavit or it can be by way of viva- voice in

lieu of or in addition to evidence by affidavit and the

party may be allowed to cross-examine on the contents of

the affidavit. Section 44 deals with reciprocal arrangement

with the United Kingdom and other convention countries or

group of countries or inter-governmental organizations.

The Central Government in exercise of power conferred under

sub-section (3) of section 1 of the Act of 2000 framed the

rules known as The Designs Rules, 2001 (hereinafter to be

referred to as the Rules of 2001). It has framed necessary

rules to implement the provisions of the Act. Rule 11 says

how the application is to be made for registration and says

the mode of submission of application for registration.

Rule 29 deals with the procedure how the cancellation of

the registration can be made and a detailed provision has

been made for implementation of Rule 29 of the Rules of

2001. Form of application for applying for registration is

also provided as Form 1. Form 8 deals with the petition for

cancellation for the registration of a design. This is the

whole background of the Act.

6. In fact, the sole purpose of this Act is

protection of the intellectual property right of the

original design for a period of ten years or whatever

further period extendable. The object behind this enactment

is to benefit the person for his research and labour put in

by him to evolve the new and original design. This is the

sole aim of enacting this Act. It has also laid down that

if design is not new or original or published previously

then such design should not be registered. It further lays

down that if it 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 registration then such design will not be

registered or if it is found that it is not significantly

distinguishable from known designs or combination of known

designs, then such designs shall not be registered. It

also provides that registration can be cancelled under

section 19 of the Act if proper application is filed

before the competent authority i.e. the Controller that

the design has been previously registered in India or

published in India or in any other country prior to the

http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 9 of 21

date of registration, or that the design is not a new or

original design or that the design is not registerable

under this Act or that it is not a design as defined in

clause (d) of section 2. The Controller after hearing both

the parties if satisfied that the design is not new or

original or that it has already been registered or if it

is not registerable, cancel such registration and aggrieved

against that order, appeal shall lie to the High Court.

These prohibitions have been engrafted so as to protect the

original person who has designed a new one by virtue of his

own efforts by researching for a long time. The new and

original design when registered is for a period of ten

years. Such original design which is new and which has not

been available in the country or has not been previously

registered or has not been published in India or in any

other country prior to the date of registration shall be

protected for a period of ten years. Therefore, it is in

the nature of protection of the intellectual property

right. This was the purpose as is evident from the

statement of objects and reasons and from various

provisions of the Act. In this background, we have to

examine whether the design which was registered on the

application filed by the respondent herein can be cancelled

or not on the basis of the application filed by the

appellant. In this connection, the law of Copyright and

Industrial Designs by P.Narayanan (Fourth Edition), Para

27.01 needs to be quoted.

" 27.01. Object of registration of

designs. The protection given by the law

relating to designs to those who produce new and

original designs, is primarily to advance

industries, and keep them at a high level of

competitive progress.

" Those who wish to purchase an article for

use are often influenced in their choice not only

by practical efficiency but the appearance. Common

experience shows that not all are influenced in

the same way. Some look for artistic merit. Some

are attracted by a design which is a stranger or

bizarre. Many simply choose the article which

catches their eye. Whatever the reason may be one

article with a particular design may sell better

than one without it: then it is profitable to use

the design. And much thought, time and expense may

have been incurred in finding a design which will

increase sales". The object of design registration

is to see that the originator of a profitable

design is not deprived of his reward by others

applying it to their goods.

The purpose of the Designs Act is to protect

novel designs devised to be applied to ( or in

other words, to govern the shape and configuration

of) particular articles to be manufactured and

marketed commercially. It is not to protect

principles of operation or invention which, if

profitable at all, ought to be made the subject-

matter of a patent. Nor is it to prevent the

copying of the direct product of original artistic

effort in producing a drawing. Indeed the whole

purpose of a design is that it shall not stand on

its own as an artistic work but shall be copied by

embodiment in a commercially produced artefact.

http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 10 of 21

Thus the primary concern, is what the finished

article is to look like and not with what it does

and the monopoly provided for the proprietor is

effected by according not, as in the case of

ordinary copyright, a right to prevent direct

reproduction of the image registered as the design

but the right, over a much more limited period, to

prevent the manufacture and sale of article of a

design not substantially different from the

registered design. The emphasis therefore is upon

the visual image conveyed by the manufactured

article. "

7. As mentioned above, the Assistant Controller

primarily has taken into consideration the two evidence,

(i) that the design was registered way back 1992 by the

German company on the roller to be used either on glass,

or rexin or on leather, therefore it is not new and

original and (ii) that the same design has been obtained

in United Kingdom as is evident from the downloading of

Patent website of the United Kingdom. On the basis of this

two evidence, the Assistant Controller has held that the

design which was registered on the application filed by the

respondent herein was not a new and original. Therefore, on

the application filed by the appellant, the Assistant

Controller of Patents and Designs cancelled that design of

the respondent.

8. Now, we shall examine to what extent the view

taken by the Assistant Controller can be sustained and

whether the view taken by learned Single Judge was correct

or not. Now, coming to the first issue which has been

framed by the Assistant Controller, the Assistant

Controller found that M/s.Dornbusch Gravuren Gmbh, a German

Company published a brochure bearing distinctive number

2960-910 for the first time on 10.9.1993 and the registered

proprietor took the user's right and got it registered.

The Assistant Controller found that it is not the inventive

ingenuity of the respondent and found that in order to

register the design it should be new or original and the

Assistant Controller found that there is insufficient

evidence of originality and therefore, he came to the

conclusion that the design is not a new and original one

registered prior to the date of registration. Therefore,

the question is whether the design is new and original.

Section 4 which is couched in the negative terms, says that

the design which is not a new or original then such design

cannot be registered. Therefore, the question is the

design which has been prepared by the German Company and

which has been sold to the respondent which became the

proprietor of it, is a new or original or not. In this

connection, the burden was on the complainant to show that

the design was not original or new. We have no hesitation

in recording a finding that the burden was not discharged

by the complainant. It only tried to prove on the basis of

the letter of the German company that they produced the

rollers and sold in market but it was nowhere mentioned

that these rollers have been reproduced on the glass sheets

by the German company or by any other company. 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

http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 11 of 21

by anyone. The respondent company purchased the rollers

from the German company and got it registered with the

registering authority that by these rollers they are going

to produce the design on the glass sheets. Design has been

defined in section 2(d) which means that a feature of

shape, configuration, pattern, ornament or composition of

lines or colours applied to any article whether in two

dimensional or three dimensional or in both forms, by any

industrial process. That means that a feature or a pattern

which is registered with the registering authority for

being produced on a particular article by any industrial

process whether manual, mechanical or chemical or by any

other means which appears in a finished article and which

can be judged solely by eye appeal. The definition of

design as defined in section 2(d) read with application for

registration and rule 11 with form 1 makes it clear that

the design which is registered is to be applied to any

finished article which may be judged solely by eye appeal.

A conjoined reading of these three provisions makes it

clear that a particular shape or a particular configuration

is to be registered which is sought to be produced on any

article which will have visual appeal. Such design once it

is registered then it cannot be pirated by any other

person. But the question is whether it is new or original.

In the present case, the complainant relied on the

correspondence of the German company which produced the

rollers and sold it to the respondent herein and it gave

the proprietary right to the present respondent company.

'Proprietor' as defined in section 2 (j) of the Act means

that any person who acquires the design or 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. Therefore, this right to reproduce this design on

an article has been given by the German company to the

respondent. But again the question is whether the

complainant had discharged their burden to show that this

design is not new or original. For this purpose, they only

banked upon the letter of the German company which prepared

these rollers and there is no evidence to show that the

design which was reproduced on glass sheets was either

produced by any other agency. Therefore, the expression

that ' new or original' in this context has to be construed

that whether this design has ever been reproduced by any

other company on the glass sheet or not. There is no

evidence whatsoever produced by the complainant either

before the Assistant Controller or before any other forum

to show that this very design which has been reproduced on

the glass sheet was manufactured anywhere in the market in

India or in United Kingdom. There is no evidence to show

that these rollers which were manufactured or originally

designed by the company was marketed by this company to be

reproduced on glass sheets in India or even in United

Kingdom. This proprietorship of this design was acquired by

this respondent from the German company and there is no

evidence on record to show that these rollers were used for

designing them on the glass sheets in Germany or in India

or in United Kingdom. What is required to be registered is

a design which is sought to be reproduced on an article.

This was the roller which was designed and if it is

reproduced on an article it will give such visual feature

to the design. No evidence was produced by the complainant

before the Assistant Controller that anywhere in any part

of the world or in India this design was reproduced on

glass or it was registered anywhere in India or in any part

http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 12 of 21

of the world. The German company only manufactured the

roller and this roller could have been used for bringing a

particular design on the glass, rexin or leather but we are

concerned here with the reproduction of the design from the

roller on glass which has been registered before the

registering authority. Therefore, this design which is to

be reproduced on the article i.e. glass has been registered

for the first time in India and the proprietary right was

acquired from the German company. We have gone through the

letter of the German company and it nowhere says that this

was reproduced on a glass sheet. No evidence was produced

by the complainant that this design was reproduced on a

glass sheet in Germany or in India. The contents of the

letter are very clear. It shows that it was designed in

1992 and was marketed in 1993. But there is no evidence to

show that this design was reproduced on glass sheet any

where in Germany. Section 4 clearly says that the

Controller will only register a design on application made

under Section 5 by the proprietor of any new or original

design not previously published in any country and which is

not contrary to public order or morality and it further

says that this application shall be in a prescribed form

and the prescribed form has been given in form 1. Form 1

clearly says that the design is to be applied. Relevant

column of the form reads as under :

Insert number of class You are requested to

register the accompanying

in Class No\005.. in the name of

\005\005\005\005\005\005\005.

Insert ( in full) the name

Address and nationality . . . . . . . . . . . . . . .

.... . who claim(s) to be the

proprietor thereof.

State whether drawings, Four exactly similar\005 of

Photographs, tracings or the design accompany this

specimens. request.

Insert name of article or The design is to be applied

articles to which the to\005\005\005\005\005\005\005\005

design is to be applied

or state trade description

of each of the articles

contained in the set.

That shows that for name of the article on which the design

is sought to be transcripted has to be mentioned at the

time of registration. The respondent moved an application

filling this form that this roller which has been

manufactured by the German company with that design shall

be reproduced on the glass. Therefore, when the application

was filed by the respondent for registration, it was

registered on the basis that the roller which will be used

by mechanical process will bring design on a glass which is

registered. Therefore, what is sought to be protected is

that the design which will be reproduced on the roller by

way of mechanical process and that design cannot be

reproduced on glass by anybody else. Now, the question is

whether it is new or original design. For that it is clear

that there is no evidence to show that this design which is

reproduced on the glass sheet was either registered in

India or in Germany or for that matter in United Kingdom.

http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 13 of 21

The expression,' design' has come up for interpretation in

English courts. The expression, design is almost pari

materia with the definition of design in the Indian

context. The expression, 'design' in the English Act which

is known as the Registered Designs Act, 1949 reads as under

:

" In this Act the expression,'

design' means features of shape,

configuration, pattern or ornament

applied to an article by any industrial

process, being features which in the

finished article appeal to and are judged

solely by the eye, but does not include

(a) a method or principle of construction or

(b) features of shape or configuration which

(i) are dictated solely by the function

which the article has to perform, or

(ii) are dependent upon the appearance

of another article of which the article

is intended by the author of the design

to form an integral part."

The history of this definition has been detailed by Russel-

Clarke and Howe on Industrial Designs (Seventh Edition) at

para 3.11 at page 74 which reads as under :

" 3-11. This definition contains a

cumulative series of requirements, many

of which have been the subject of

judicial decision and analysis. The

historical process by which this

definition has evolved is of importance

to its present day interpretation and

application. Some of the more important

embellishments to the definition, such as

those dealing with eye appeal and methods

or principles of construction, have found

their way into the pre-2001 statutory

definition as a result of the explicit

adoption such requirements were held to

be implicit in the earlier and less

elaborate statutory definitions of

"design". This manifests an intention by

the legislature to adopt and make

explicit the principles developed in

those cases.

Xx xx xx

3.13. The words of the section are:"\005 design

means features of shape configuration,

pattern or ornament applied to an

article\005\005 . ."(emphasis supplied). Thus a

registrable design, as defined by the RDA

(A), must have reference to some specific

article to which it is to be applied. The

design to be registered " is a shape,

configuration or pattern to be applied a

particular specified article". It can be

readily seen that a particular pattern of

surface ornamentation could be applied to

wide range of different articles. An

application for registration was not in

http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 14 of 21

respect of the pattern as such, but in

respect of its application to the

specific article named. If it was desired

to register the same design, e.g. a

surface pattern or decoration, in respect

of a series of different articles (apart

from the special case of articles which

together form a set), then a separate

application had to be made in respect of

each article, and each application to

register was numbered separately and

treated as a separate and distinct

application.

In the case of designs consisting of

features of shape or configuration, there

may of course be cases where the design

is intrinsically applicable only to a

specific kind of article. The article

itself does not, however, constitute the

design. In Dover v. Nurnberger Celluloid

Waren Fabrik Gebruder Wolff, Buckley L.J.

said:

"Design means, therefore, a conception

or suggestion or idea of a shape or of a

picture or of a device or of some

arrangement which can be applied to an

article by some manual, mechanical or

chemical means. It is a conception,

suggestion, or idea, and not an article,

which is the thing capable of being

registered\005. It is a suggestion of form

or ornament to be applied to a physical

body."

[ Pugh v. Riely Cycle Co Ltd. (1912) 29

R.P.C. 196]

Accordingly, it is submitted that a

design is an idea or conception as to

features of shape, configuration, pattern

or ornament applied to an article.

Although that idea, while still in the

author's head, may be potentially capable

of registration, in fact it must be

reduced to visible form to be

identifiable, and until it is so reduced

there is nothing capable of registration,

It may be so rendered either by its being

embodied in the actual article, or by its

being placed upon a piece of paper in

such a way that the shape or other

features of the article to be made are

clear to the eye. Whenever the means of

identification ( under some of the old

Acts, provision was made whereby a mere

verbal description could in some cases be

accepted as sufficient), as soon as the

idea is reduced to a form which is

identifiable, there is something which is

a "design", and which, if new or

original, may be registrable."

Similarly our attention was also invited to para 27.07 of

the law of Copyright and Industrial Designs by P.Narayanan

(Fourth Edition) which reads as under :

http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 15 of 21

" 27.07. Design as a conception or idea

"Design means a conception or suggestion or idea

of a shape or of a picture or of a device or of

some arrangement which can be applied to an

article by some manual, mechanical or chemical

means mentioned in the definition clause. It is a

suggestion of form or ornament to be applied to a

physical body". It is a conception, suggestion or

idea, and not an article, which is the thing

capable of being registered. It may according to

the definition clause, be applicable to any

article whether for the pattern or for the shape

or configuration or for the ornament thereof (that

is to say of the article) or for any two or more

of such purposes. The design, therefore, is not

the article, but is the conception, suggestion, or

idea of a shape, picture, device or arrangement

which is to be applied to the article, by some one

of the means to be applied to a physical body."

A design capable of registration cannot

consist of a mere conception of the features

mentioned in the definition, or in the case of an

article in three dimensions, of a representation

of such features in two dimensions It must, in

such a case, in order to comply with the

definition, consist of the features as they appear

in the article to which they have been applied by

some industrial process or means. An applicant for

registration of a design has to produce a

pictorial illustration of the idea or suggestion

which he has to establish as new or original;"

Therefore, the concept of design is that a particular

figure conceived by its designer in his mind and it is

reproduced in some identifiable manner and it is sought to

be applied to an article. Therefore, whenever registration

is required then those configuration has to be chosen for

registration to be reproduced in any article. The idea is

that the design has to be registered which is sought to be

reproduced on any article. Therefore, both the things are

required to go together, i.e. the design and the design

which is to be applied to an article. In the present case,

the design has been reproduced in the article like glass

which is registered. This could have been registered with

rexin or leather. Therefore, for registration of a

particular configuration or particular shape of thing which

is sought to be reproduced on a particular article has to

be applied. As in the present case the design sought to be

reproduced on a glass-sheet has been registered and there

is no evidence to show that this design was registered

earlier to be reproduced on glass in India or any other

part of the country or in Germany or even for that matter

in United Kingdom, therefore, it is for the first time

registered in India which is new and original design which

is to be reproduced on glass sheet. Therefore, the

submission of learned senior counsel for the appellant,

Mr.Gupta cannot be accepted that this design was not new

and original.

9. In this connection, our attention was invited to

the decisions of the Delhi High Court in 1981 PTC 239

[M/s. Domestic Appliances and Others v. M/s. Globe Super

Parts] and 1983 PTC 373[ The Wimco Ltd. Bombay v. M/s.

Meena Match Industries, Sivakasi & Ors.]. In M/s. Domestic

http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 16 of 21

Appliances & Ors., M/s. Globe Super Parts, Faridabad

manufactured gas tandoors and they got the design

registered in respect of gas tandoor. The petitioners-

M/s. Domestic Appliances & Ors. also manufacture gas

tandoors under the trade mark 'Sizzler'. They were selling

the same in Delhi market. The respondent filed a suit

against the petitioners alleging inter alia infringement of

the design and obtained temporary injunction restraining

the petitioners from selling the seasonal goods. The

petitioners filed an application under Section 51A of the

Designs Act, 1911 for cancellation of the design No.145258

before the Controller of Designs, Calcutta. The

cancellation was sought on the allegations that the design

No.145258 was pre-published in India on the date of

registration in as much as the respondents themselves were

manufacturing and selling the gas tandoors earlier to the

date of application for registration of design No.145258

and sold the same to various parties in Delhi, Punjab,

Haryana, Jammu & Kashmir & Uttar Pradesh and also

advertised the said supercook gas tandoor in several

newspapers. It was also alleged that the respondents were

not the originators or the owners of the design. Therefore,

it should be cancelled. This was resisted by the

respondents. Similarly in this case here also it was

alleged that this application has been filed as a

counterblast to the suit filed by the respondent and it

was also pleaded that the petitioners were not interested

in cancellation of the design. In the suit certain issues

were framed and the High Court held that there was no

definite evidence produced by the parties that the design

had been previously registered in India. It was also held

that the respondents were manufacturing the gas tandoors of

the impugned design prior to 1977 and ultimately the Court

held that the gas tandoors of the impugned design had been

sold prior to the date of its publication. In other words

the design had been published for the first time in India

in 1977. Therefore, this case was decided purely on the

question of fact and no ratio has been laid down. Similarly

in 1983 PTC 373, this was a case by the Wimco Limited, a

public limited company which carried on business of

manufacturing and selling match boxes. It was claiming

that they were one of the famous manufacturers of matches

and they developed a design and gave it a name as

'HOTSPOT' and made an application for registration under

the provisions of the Designs Act,1911 and the same was

registered. Thereafter a suit was instituted against M/s.

Meena Match Industries, M/s. Thilgaraj Match Works and Ms.

Sanjay & Co to restrain the defendants from manufacturing,

producing, selling and/or marketing or offering for same

match boxes bearing the impugned pattern/ design on the

match boxes. After review of the evidence on record the

Court held that the design given to M/s. Wimco was liable

to be cancelled on the ground that it has been published in

India prior to the date of registration and the design was

not a new or original one. Therefore, this was also decided

basically on the question of fact. Similarly in the present

case, as we have discussed above, that this design which

was registered in the name of M/s. Gopal Glass Works was

not published in India or in Germany. Therefore, it was a

new and original design.

10. The question of eye appeal came up for

consideration in Interlego A.G. v. Tyco Industries Inc.

([1988] 16 R.P.C. 343). In that their Lordships have laid

down important test in the matter of visual appeal of the

http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 17 of 21

eye. It was observed as follows:

" 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. That

factor was one which was conspicuously

absent from the articles upon which the

courts were required to adjudicate in the

cases of Tecalemit Ltd. v. Ewarts

Ltd.(1927) 44 R.P.C. 503, Stenor and Amp

and in the more recent Irish case of

Allibert S.A. v. O'Connor [1981] F.S.R.

613, in all of which the claim to

registration failed. It was one which was

present in the case of Kestos where the

claim to the validity of the design

succeeded. It is present in the instant

case. One starts with the expectation of

eye-appeal, for part of the very purpose

of the article is to have eye-appeal.

That was aptly expressed by Whitford J.

in relation to the same subject-matter as

in this appeal in the case of Interlego

A.G. v. Alex Folley (Vic) Pty.Ltd.

[1987]F.S.R. 283 at page 298:-

" I would have expected a

designer designing toys to have the

question of the appeal of the toy to

the eye, even in the case of a

functional toy, in mind. Mr.Rylands who

have evidence for the defendants said

that when designing a functional toy it

is necessary to have regard not only to

suitability for purpose but to overall

appearance. 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.""

One has to be very cautious unless two articles are

simultaneously produced the Court then alone the Court will

be able to appreciate. But in the present case no design

reproduced on the glass-sheets was either produced before

the Assistant Controller or before the High Court or before

us by the appellant to appreciate the eye appeal. The

appellant could have produced the design reproduced on

glass-sheet it manufactured in United Kingdom or Germany.

That could have been decisive.

11. Our attention was invited to Dover Ltd. v.

Nurnberger Celluloidaren Fabrik Gebruder Wolff ([1910] 27

R.P.C. 498). This was a case in which the question was of

the pattern or ornament of hand grip for cycle handles

brought an action for infringement against a German firm of

manufacturers, and against their London agents. The

defendants admitted that they were selling cycle handles

with the design resembling the plaintiffs' registered

design but pleaded that the plaintiffs' registered design

was not a new or original design not previously published

in the United Kingdom and alleged that it was commonly

http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 18 of 21

known for many years prior to the date of the registration.

Though the Single Judge held that the design was new and

original having regard to the kind of article for which it

was registered and that it had been applied by the

defendants to the cycle handles sold by them but the Court

of Appeal held that the design was not new or original

within the definition of the Patents and Designs Act,

1907, and that the defendants had not infringed. Therefore,

this case was decided on the question of fact and

evidence lead by the parties. In this case, Buckley,J.

observed as follows:

" In my opinion, there is in this

no originality. If, however, the

Respondents' Counsel are right in saying

that the Design is the whole thing as

shown in the picture, then, it seems to

me, that the Defendants have not

infringed. Their handle is not divided

into six panels but into nine panels.

Their grooves are so much more shallow

than the Plaintiffs' grooves as to be

easily distinguishable from them.

Fraudulent imitation there was certainly

none; neither was there obvious imitation

either.

In my judgment, this Act was

intended to protect Designs which really

have some merit by way of novelty or

originality and not to give colour to

such paltry and trivial claims as have

been set up in this case. The appeal

must, I think, succeed and the action be

dismissed with costs."

Kennedy L.J. also took the similar view and observed as

follows:

" In the present case, as I have already

said, if I rightly appreciate the

evidence, a paneled hand grip with

grooved divisions was not new, nor was

the engine-turning of surfaces as an

ornamentation of those surfaces new, for

it had been applied to what I may, I

think, fairly call the kindred surfaces

of knife handles and penholders, where

the hand grips them. I cannot find either

novelty or originality in the Plaintiffs'

Design by reason of such a combination."

Therefore, both the case was distinguishable on question of

facts only.

12. Our attention was also invited to King Features

Syndicate Incorporated and Frank Cecil Betts, the Personal

Representative of Elzie Chrisler Segar, Deceased. V. O. &

M. Kleeman Ld. ([1941] 58 R.P.C. 207). In this case also,

action was brought for alleged infringement of certain

copyright in certain drawings. It was contended by the

defendants that they had not manufactured or imported and

sold as alleged by the plaintiffs and there was no

infringement. Leave was granted. The Court of Appeal

allowed the appeal. The plaintiffs appealed to the House of

Lords and the appeal was allowed. There also much turned

on the question of evidence.

http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 19 of 21

13. Our attention was invited to Gammeter v.

Controller of Patents & Designs and others A.I.R.1919

Cal.887. Their Lordships discussed the concept of new and

original. In that context, it was observed as follows:

" 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. Where the design of a

metal band called the "Novelty band,"

intended to attach a watch to the wrist,

was similar in shape and configuration to

a bracelet previously manufactured for

ornamental purpose."

Their Lordships further held as follows:

" Though the shape of the

"Novelty" band by itself could not be

said to be new and original, the

application of it to a watch to be worn

on the wrist was for a purpose so

different from and for a use so similar

to the purpose and use of the bracelet

that the design in question might be

said to be original. worn on the wrist

was for a purpose so different from and

for a use so similar to the purpose and

use of the bracelet that the design in

question might be said to be original."

Therefore, this case also depended on the appreciation of

the material placed before the Court.

14. The next evidence which was lead by the

appellant was a website had been downloaded from the

United Kingdom Patent Office effecting patent that may be

applied to glass sheets. No evidence has been produced to

show that M/s.Vegla Vereinigte Glaswerke Gmbh had

manufactured this design in glass sheet or not. It is only

a design downloaded from the website of the Patent office

in U.K. and it is not known whether it was reproduced on

glass-sheet in U.K. or not. In this connection, the

Assistant Controller has only observed that he has made a

visual comparison of the U.K. registered design No.2022468

with the impugned design No.190336 and he was satisfied

that both the designs make same appeal to the eye and there

was sufficient resemblance between the two designs.

Therefore, the Assistant Controller held that the impugned

design was prior published and it could not be said to be

new or original. The Assistant Controller further observed

that the proprietor of this design had not been able to

make a difference between the U.K. design and the present

design. This was not accepted by learned Single Judge of

the Calcutta High Court and for the good reason. It was

observed by learned Single Judge as under :

" 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

http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 20 of 21

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 clean

unmistakable instructions or directions

for production of glass sheets of the

pattern illustrated.

The visual effect and/or appeal of

a pattern embossed into glass sheets by

use of embossing rollers could be

different from the visual effect of the

same pattern etched into glass sheets

manually. The respondent no.1 has not

considered these factors.

The order impugned considered with

the materials on record, including in

particular the computer print outs

clearly reveals that the respondent no.1

has only compared the pattern and/or

configuration considered the visual

appeal thereof, but not the visual appeal

of the pattern and/or configuration on

the article. In other words, the

Respondent No.1 has not considered the

visual appeal of the finished product.

There are no materials on record to

show that the design had previously been

applied to glass sheets. On the other

hand, an affidavit was sworn on behalf of

the appellant by a Liaison Executive

affirming that he had ascertained that

the proprietor of the design registered

in the United Kingdom had never

manufactured glass sheets of the design

registered."

From this it appears that in fact the pattern of the design

which is reproduced on the glass-sheet and the design and

the pattern which was reproduced on the glass-sheet of the

United Kingdom was not common. The affidavit sworn on

behalf of the respondent herein, the liaison Executive that

he had ascertained from the proprietor of the design

registered in United Kingdom and they have never

manufactured glass-sheet of the design registered. This

affidavit evidence of the Liaison Executive of the

respondent company has remained un-rebutted. Secondly, the

learned Assistant Controller has not properly compared the

two designs that on what comparison he found that the same

configuration or pattern are identical with that of the

impugned design. Simply by saying visually one can liable

to commit the mistake but if the comparison is to be judged

whether the pattern of the United Kingdom and that of the

present pattern is three dimension or not. Both the designs

were placed before us as was done before the High Court

also. Learned Single Judge recorded its finding after

seeing both the designs that there is distinguishable

difference between the two. Similar attempt was made

before us to show that both the designs i.e. one that is

published in United Kingdom and the impugned design are

identical. We have seen the original glass pattern produced

before us and the photograph of the pattern produced on

record. If the complainant was serious about the same, it

could have produced the pattern which was reproduced on the

glass-sheet in the United Kingdom and the pattern which is

http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 21 of 21

reproduced on the glass-sheet by the rollers of the design

produced before us. If these two glass-sheets were placed

before learned Single Judge or before us we would have been

able to record the finding. The finding recorded by the

Assistant Controller is most inconclusive and it does not

give us any assurance that it was a proper comparison of

the two patters by the Assistant Controller. Learned

Single Judge of the Calcutta High Court had occasion to go

through both the patterns and found that there is no

comparison. Likewise, the glass-sheets were placed before

us with all dimensions along with a copy of the print out

of the United Kingdom and we are of opinion that there is

no comparison between the two. From the visual appeal

placed before us, learned Single Judge has rightly

concluded that there is no comparison of pattern or

configuration of two designs. We fully agree with the view

taken by learned Single Judge. Hence on this count also

the view taken by the Assistant Controller does not appear

to be correct and the view taken by learned Single Judge of

the Calcutta High Court is correct.

15. As a result of our above discussion, we do not

find any merit in this appeal and the same is dismissed

with costs of Rs.50,000/-(Rupees fifty thousand only).