S.U. Kamdar, J.
1. The present petition has been filed by the petitioners inter alia seeking cancellation of the registration of design No. 164949 granted in favour of the Respondent No. 1 by respondent No. 3 herein. Some of the facts of the present case are briefly stated as under:
2. Petitioners are claiming to be the manufacturers of Pressure Cookers and Marketers of other kitchen appliances such as Fry Pan, Deep Fry Pan, Tava etc. It is the case of the petitioners that the original name of 'Pressure Cookers & Appliances Ltd., has been changed to 'Hawkins Cookers Ltd.' since September 1986 and, therefore, fresh Certificate of Incorporation has been issued to the petitioner company. The Respondent No. 2 is a firm also carrying on business of marketing kitchen appliances such as Tava. Respondent No. 1 is a manufacturer and also is selling Tava through Respondent No. 2. It is the case of the petitioners that the petitioners have a full fledged Research and Development Department and in the said department they undertake innovations of different kinds in designing and carry out modification and improvements in the shape and configuration of the various products such as pressure cookers and other utensils.
3. Is the case of the petitioners that sometime in or about 1989-90 petitioners Research and Development Department conceived in idea of improving the design of existing Tava by providing novel shape and design and accordingly they innovated the said registered design. It is the claim of the petitioners that the said shape is novel and unique and was innovated after lot of efforts and spending of considerable time on research and money. On 30.10.90, petitioners as a proprietor of such new innovated design filed an application for registration of the design of the said Tava with Respondent No. 3. The said design was registered and Registration Certificate bearing No. 162612 was issued to the petitioners. It is the case of the petitioners that the said registration is renewed from time to time and the same is still valid. It is further the case of the petitioners that the said design is registered is in Class 1.
4. Petitioners have applied for registration of the said design of Tava and thereafter the said Tava manufactured with the new design is sold in the market on extensive scale under the trade mark 'HAWKINS'. It is the case of the petitioners that the design innovated by them is unique in shape, exclusive and with special configuration. It is further the case of the petitioners that sometime in or about February 1993, petitioners learnt that Respondent No. 2 was also manufacturing and marketing Tava which is also of similar shape and configuration to that of the petitioners registered design. It is the case of the petitioners that Respondent No. 2 has copied the registered design of the petitioners and thus, committed infringement of the registered design by fraudulent imitation of the petitioners' design. By letter dt. 12.2.93 the petitioners' advocate called upon Respondent No. 2 to desist from infringing the petitioners design. However, Respondent No. 2 by advocates letter dt. 3.3.93 denied the contention that the design of the petitioners is identical with or similar to the petitioners' registered design. The petitioners thereafter filed a suit being Suit No. 4226 of 1994 against Respondent No. 2 for perpetual order and injunction restraining them from infringing the petitioners design and also claim for damages. Motion was taken out being Notice of Motion No. 3031 of 1994 and the said motion has been dismissed.
5. In the aforesaid premises, the petitioners have filed the present petition under Section 51A of the Indian Patent and Designs Act, 1911 inter alia seeking cancellation of the Registered Design of the Respondent No. 1. The ground on which the said cancellation is sought is that the petitioners being prior registered holder of the said design an identical design is not permissible to be registered by Respondent No. 3 and, therefore, the same should be cancelled. The learned counsel for the petitioners have pointed out the certificate of Registration which is annexed at Exh. (A) to the present petition. Looking at the Certificate of Registration, it is very clear that what is registered is not any special design or any innovated design but the entire Tava alongwith handle thereof. The registration certificate inter alia states as under:
'Certificate that the Design of which a copy is annexed thereto has been registered as of the number and date given above in Class 1 in respect of the application of such design of Tava in the name of Hawkins Cookers Ltd.'
6. The said registration has to be read alongwith the photographs which are annexed as part and partial of the registration. The photographs annexed are not of specially designed handle but is of the entire Tava. The learned counsel for the petitioners have however, contended that the Tava is in entirety alongwith handle is registered because of special curve and special and unique shape of the Tava alongwith handle which is the innovation of the petitioners herein. It is not in dispute that the registration certificate is not only of the special innovated design handle but it is of Tava. It is not the case of the petitioners that Tava is innovation of the petitioners herein. I have held in my judgment in the case of Harish Chhabra v. Bajaj Electricals Ltd. and Anr. decided on 24th June, 2005 that it is not permissible for a party to register the whole of the item but only that part can be registered as a design which is one's own innovation. Tava is not the innovation of the petitioners herein and thus, ought not to be registered by the registering authority. The relevant portion of the said judgment reads as under:
'However, the learned Advocate General appearing on behalf of the respondent No. 1 has fairly drawn my attention to the judgment of the House of Lords in the case of William J. Holdsworth and Ors. v. Henry C. M'crea, 198 Vol. II English and Irish Appeal page 380 wherein it has been held as under:
'The only thing which it is here necessary to point out, as well for warning to inventors as for the protection of the public, is this, that if a design, as exhibited in a pattern is filed and registered by an inventor, without any further limitation or description than that which is given by the design itself, it protects the entire thing and the entire thing only, and the protection cannot, at pleasure, be made applicable one day to the entirety and another day to the separate integral parts or elements of the entire design. It must be considered that the protection of the statue is invoked for the entire thing that appears upon the register and is applicable to nothing but the exact copy of the thing so registered'
In the light of the aforesaid judgment, the learned counsel has fairly conceded that the fan as a whole could not have been registered by Respondent No. 2 and the certificate of registration issued is not in respect of any part or a separate innovated design but is in respect of the whole of the ceiling fan since the ceiling fan is not the invention or a new design by the first respondent, the same could not have been registered by the second respondent.
7. Be as that may be, registration of the design by the Respondent No. 2 which is annexed to the affidavit by Respondent No. 1 is produced before me. The curve of the handles which has been registered by Respondent No. 1 is absolutely distinct and different to that of the petitioners' herein. However, the learned counsel for the petitioners have relied upon the judgment of the Calcutta High Court in the case of Western Engineering Co. v. Paul Engineering Co. : AIR1968Cal109 and has contended that it is not necessary that the slight modification or alteration is sufficient by itself to change the design of the items. The learned counsel has relied upon the following paras of the judgment:
'Whether a design is novel is a matter of fact to be decided by the eye. As already indicated, if the same shape or pattern, or one substantially similar, has previously been though of in connection with any article of manufacture and the idea published, or registered, then the design will be deprived of its novelty. The previous idea or design, will Act as an anticipation of the later design, and will be a bar to its protection. That the eye, and the eye alone, is to be the Judge of identity, and is to decide whether one design is or is not an anticipation of any, has been laid down time and time again in number less cases. Whether a design is more useful than other designs which have gone before is not to be considered. It is simply the general impression gathered by the eye that counts, and it is, therefore, impossible to lay down any hard and fast rule which can be followed. It has in the past been decided that mere slight variations from articles already manufactured are not registrable that the variation from what has gone before must not be trivial or infinitesimal, and that small variations which any skilled workman might make between the articles which he makes for different customers are not enough. These principles still apply, and are accorded statutory recognition by Section 1(2) of the present Act which lays it down that no design shall be accounted new or original if it differs from a previous design 'only in immaterial details'. The novelty or originality should in other words be substantial and it must be substantial having regard to the nature of the article. Especially with references to such matters, as collars and other articles of dress, there must be some clearly marked and defined differences though the actual standard of ingenuity required on the part of the author is extremely small. The question which has to be decided is whether the two appearances are substantially the same or not. The design must be looked at as a whole, the question being whether an article made according to the design under consideration is substantially similar in appearance to an article made according to the alleged anticipation. The test is not only to look at the two designs side by side, but also apart, and a little distance away,' Mr. Blanco while has also reiterated similar propositions of law in his work 'Patents for propositions of law in his work 'Patents for Inventions' (3rd Edition) at Page 265 where the learned author has said:
'The existence or not of substantial novelty or originality is a question of fact, to be decided by the eye,'
Accordingly, I hold that the words 'the design' in Section 51A should be judicially construed as 'the substantially same Design.' Applying the above principles to the instant case in my view, the points of similarity and the points of difference which have been mentioned above and the examination of the two designs clearly indicate that the features in the shape and configuration of the respondent's articles are substantially same as those of the petitioner.
8. Looking at the aforesaid judgment, it is obvious that it is ultimately the court to ascertain whether design is different or similar by having a look at the same. Looking at the two handles which are supposed to be innovated by either parties, I am of the opinion that the said handles are not identical. The look and shape of the handles is different. The visual look of the two handles indicates that if the handle is the only matter where the petitioners are claiming to be the innovators then the handle of Respondent No. 1 is different and independent. The learned single Judge while hearing the motion in Suit No. 4226 of 1994 has also considered the aforesaid aspect and has set out a detailed distinction between the said two designs. The said suit was preferred by the plaintiffs against Respondent No. 2 herein. Respondent No. 2 is a marketing and distributing product manufactured by Petitioner No. 1. While considering the case of petitioners in the aforesaid suit prima facie the learned single Judge of this Court has held in para 6 as under:
'6. Visual look of these two products will show that the case made out by the defendants will have to be accepted. Defendants product cannot be said to be in infringement of the registered design of plaintiffs. The design of defendants of Tava is altogether separate having independent handle and there is curve in the handle, while there is no curve in the handle of plaintiffs' produce. There is difference in the size of the handle. There is also difference in the thickness of Tavas. Length of handle also differs in both these products. Defendants' Tavas are very light in weight, whereas plaintiffs' Tavas are heavy. Defendants are manufacturing Tavas in three different sizes and in three different diameters, while plaintiffs are manufacturing Tavas of one size and one diameter. Defendants' own registered trade mark is 'Armour-Finish', which has been embossed on their product. Defendants are marketing their product under the trade name 'Meera', while plaintiffs' are marketing their product under the trade name 'Hawkins'. Respective design numbers are also embossed on the products. The visual look of both these products shows that defendants' case will have to be accepted and it cannot be held that defendants are infringing plaintiffs' product. Defendants' are manufacturing said product and using the registered design from 11.11.1992. Plaintiffs have given notice on 12.2.1993 to which reply was given on 3.3.1993. Inspite of this, first time suit came to be filed on 11.10.1994. Thus, plaintiffs have slept over their rights. Delay in approaching the Court after the notice is not explained. In my judgment, this also disentitles plaintiffs from claiming any relief in this motion.
9. Though undoubtedly the said observation of the learned single Judge are at the interim stage but in my opinion considering the case even finally between the parties, I do not see any reason from deviating the views of the learned single Judge in the said Notice of Motion even on examination of the matter afresh independently and in depth. I am of the similar view which has been expressed by the learned single Judge. In my opinion, no case has been made out by the petitioners in the present case.
10. I have considered both the registration in the present case an I have also examined the items in the design as indicated in the registration certificate. In my opinion, the said items does not contain the identical design. It is now well settled that even a slight innovation or improvement in the design is a design by itself and can be registered as independently innovated design. In view thereof, I do not find any merits or substance in the present petition. Petition is accordingly dismissed. However, there shall be no order as to costs.