D.K. Kapur, J.
(1) The America Lock Company is a partnership firm which carries on business as a manufacturer of locks of various types. Among other products, it manufactures cycle frame locks of horse-shoe shape for locking bicycles. Similarly, Western Engineering Company, is another partnership firm carrying on business as a manufacturer of locks, which also manufactures bicycle locks. The latter firm, i.e.. Western Engineering Company applied for the registration of a design of horse-shoe shape cycle lock used for locking bicycles, under the Indian Patents and Designs Act, 1911. This design was registered and allotted the number 125728 on 25th May, 1965. The former firm, i.e., America Lock Company also applied under the Indian Patents and Designs Act, 1911, for the registration of 'he design of a somewhat similar horse-shoe cycle lock for locking bicycles. Its design was also registered on 25th March, 1967, the application having been made on 29th October, 1966. The number allotted to this registered design was 129675. Thus, it came about that both the America Lock Company as well as the Western Engineering Company obtained registrations of their respective designs for horse-shoe shaped cycle lock.
(2) On 22nd November, 1966, the America Lock Company instituted a petition under Section 51-A of the Indian Patents and Designs Act, 1911, for the cancellation of the design registered in favor of the Western Engineering Company. That petition was C. O. No. 1 of 1966, in this Court; it was subsequently amended on 28th July, 1967. According to the petition, the registration of the design of M/s. Western Engineering Company was liable to be cancelled because of prior publication and also because the design in question was neither new nor original. The petition has been contested by the respondents, M/s. Western Engineering Company, on various grounds. It is pleaded that design No. 125728 in question, is new and original and had not previously been published in India, and was rightly registered under the Act; the respondent is claimed to be the owner and inventor of a new and original design as on the date of the application for registration. A rejoinder was filed by the petitioner which stated inter alias that there were previously in existence, horse-shoe shaped cycle locks bearing trade marks Chivalry and Wings even prior to 25th May, 1965, whose design had been exactly copied and got registered by M/s. Western Engineering Company.
(3) On 2nd June, 1967, M/s. Western Engineering Company instituted a suit on the original side of this Court, for an Injunction and damages by rendition of accounts, against M/s. America Lock Company and two of its partners, under Section 53 of the Indian Patents and Designs Act, 1911. That suit was numbered as Original Suit No. 3 of 1967, on the Original Side of this Court. According to the allegations in the plaint, the plaintiff was the owner of registered design No. 125728, the particular feature of which was that it had a protruding portion in front for the lock cylinder into which the key was inserted. Before this lock was introduced, it was said locks had the kev-hole in the side without any raised portion. The registration of this new design lor a cycle lock was issued on 20th January, 1966 against an application dated 25th May, 1965. The plaintiff claimed a copyright for the design registered, which prevented any other person from copying the same, or making a fraudulent or obvious imitation of the cycle lock covered by the registered design. The plaintiff was manufacturing locks, called the 'King Cycle Locks' in accordance with its registered design, which were being sold throughout India. A warning notice concerning this design had been published in various journals and newspapers specified in the plaint. It was claimed that the defendants had started manufacturing cycle locks which were approximately, of the same design as the plaintiffs registered design, without any written or other consent of the plaintiff and had thus committed piracy of the design, which was actionable. Thus, the plaintiff claimed that the defendants had copied or utilised the plaintiff's registered design No. 125728, dated 25th May, 1965. For restraining this, the plaintiff claimed an injunction as well as damages by taking accounts. It was claimed that at least Rs. 1.50 per cycle lock manufactured by the defendants was due to the plaintiff on account of damages, but as it was not possible to measure the damages, it was necessary to take accounts. The plaintiff thus claimed both damages and an injunction. An order was also prayed for against the defendants to deliver up the locks manufactured by the defendants, as well as the implements of manufacture, for destruction.
(4) The suit was resisted by the defendants, who filed a written statement denying that the plaintiff's design was novel or original; it was claimed that the cycle locks manufactured by the plaintiff were not different from those which were commonly available in the market prior to the plaintiff's design being registered. It was also stated that the registered design had no protruding or raised portion in the lock cylinder. The only difference between the registered design and the locks produced previously was that the key-hole was not on the side but on the front. In addition, the defendants claimed that they had already instituted a petition under Section 51-A of the Patents and Designs Act, 1911, for cancellation of the plaintiff's design which was pending in this Court. Another defense of the defendants was that the locks they were manufacturing were entirely in accordance with their own registered design No. 129675 and, hence the plaintiff could not claim any monopoly. Furthermore, the defendants stated that there was no cause of action against the defendants who were manufacturing and selling cycle locks of their own design, which were manufactured in accordance with their own registered design No. 129675, and not in accordance with the plaintiff's registered design. As regards the claim for accounts, it was stated that the plaintiff had not suffered any damages and it had no right to claim any accounts. The plaintiff filed a replication in which it contested the defendants' version that the registered design did not have a protruding or raised portion. For the purpose of showing that there was a protuberance, portions of the decision of S. A. Masoud J. of the Calcutta High Court in Matter No. 574 of 1966, and also from the decision of Andley J. (as his Lordship then was) in O. M. No. 483 in Suit No. 298 of 1967, were quoted. In those quotations, there were references to the protuberance in the design of the plaintiff. In reply to the objections taken by the defendants that they were not manufacturing locks in accordance with the plaintiff's registered design No. 125728, the plaintiff reiterated that its manufacturing design was the same as its registered design. It was pleaded that the defendants were manufacturing cycle locks which were a fraudulent imitation of the plaintiff's registered design and the defendants' registered design was itself a fraudulent imitation of the plaintiffs' design and had no existence in the eyes of law. The plaintiff reiterated its claim for a decree in the suit in accordance with its claim in the suit.
(5) M/S. Western Engineering Company having instituted the aforementioned suit, also instituted a further proceeding under Section 51-A of the Indian Patents and Designs Act, 1911 on 10th July, 1967. In this latter petition, which was C. O. No. 7 of 1967 in this Court, it was claimed that the registered design of M/s. America Lock Company should be revoked and cancelled. It was stated in the petition, that the petitioner firm already had a registered design No. 125728, the new or original part of which was the protruding portion of lock cylinder in which the key was inserted. It was claimed that prior to the petitioner's design being introduced into the market, cycle locks commonly in use had a key-hole in the side and the locking device was not visible. After the petitioners had introduced their design, they had been commercially manufacturing their locks and selling the same to the public in all the important markets in India. The petitioners having obtained an earlier registration, the respondents' design was liable to be cancelled on the ground that it was a very similar or identical to the existing design of the petitioners. It was further claimed that the petitioners' design had been registered and published before the registration of the respondents' design. A warning notice had also been published in the newspapers. The petitioners, thereforee, claimed a monopoly in the use of the design. It was further claimed that the respondents' design was a mere fraudulent imitation of the petitioners' registered design and had been registered in contravention and infringement of the petitioners' rights as a registered proprietor of a design. The respondents were guilty of piracy of the petitioners' registered design and the design got registered by them was neither new nor original and had been got registered by false suggestions and representations that the respondents were the first inventors of a new and original design. It was further stated that the petitioners' suit was already pending in this Court on the Original Side, out, inspire of this, the respondents were continuing to manufacture their locks in infringement of the petitioners' registered design. It was also claimed that the petitioners' design had already been held to be new and original vide judgment of the Calcutta High Court in Matter No. 574 of 1966, and the judgment of this Court in O.M. No. 483 of 1967, in Suit No. 298 of 1967, Western Engineering Company V. Tiger Products Ltd., decided on 31st May, 1967.
(6) In reply to this petition, a written statement was filed by M/s. America Lock Company in which it was pleaded that the shape and configuration of the registered design was the main criterion to judge the novelty and originality of the same. It was also pleaded that the petitioner was not manufacturing locks in accordance with the shape and configuration in its registered design No. 125728. It was further stated that the registered design did not have a protruding portion in the lock cylinder and, thereforee, the lock actually produced by the petitioner cannot be stated to be in accordance with its design or in accordance with its registered design No. 125728; it was stated that although locks with the key insertable on the side were commonly available earlier, they did not exhaust all the varities of locks which were being manufactured and sold in the market at the relevant time. It was denied that the respondents' lock (a sample of which was produced) was in any way similar or identical with the petitioner's registered design; further, .it was pleaded that the respondents' lock was quite different from the registered design of the petitioner and, thereforee, the respondents' design was new and novel in the eyes of law. With reference to the warning notices published by the petitioner in various journals and newspapers, it was stated that the design published, did not show any protuberance on the front side. As far as the sale of their locks was concerned, the respondents stated that the ex-parte injunction granted in the suit, had already been vacated by the High Court on 16th June, 1967, and there was nothing to prevent the respondents from selling their locks in accordance with their own registered design. It was claimed by the respondents that the petition for cancellation of their design was only a counter-blast to the respondents' previous petition for cancellation of the petitioner's registration. A replication was filed by the petitioner which re-iterated the facts stated in the petition. It was further stated that the petitioners were manufacturing a lock with a protuberance and the respondents were misleading themselves and the Court in saying that the registered design does not have a protuberance. It was denied that there was no protuberance in the registered design No. 125728. It was stated that one had only to place the lock of the design of the petitioner and the lock of the registered design of the respondent together to see that the respondents had merely applied the petitioner's design to make their lock and thus committed an act of piracy and, hence the registration of the respondents' design was a nullity, for the circumstances showed that the respondents had only applied for registration on 29th October, 1966, yet in November, 1966, they had moved this Court to say that the petitioner's design was not new and original, as horseshoe shape cycle locks of that design were commonly found in the market. It was alleged that the application of the respondents for registration, together with their application to this court for revocation of the petitioners' registration, already revealed the inconsistency of the respondents' case. As regards the claim of the respondents that the petitioners' registration design did not show any protruding portion, it was stated that such a protruding portion could not be shown in the photographs of the front and back of the lock, but it was claimed that locks as per the registered design had been sold since the year 1965 with the registered number inscribed on each lock. Regarding the vacation of the ex-parte injunction, it was stated that the Court had only given an advantage to the respondents of continuing manufacture, because it had a registered design without reversing its view that the respondents' design was a piracy of the petitioners' design. The judgments of the Calcutta and Delhi High Courts holding the petitioners' design to be new and original were again referred to.
(7) These three proceedings, which I have referred to above, namely, the petition of America Lock Company for the revocation of the registered design of the Western Engineering Company (C.O. No. 1 of 1966) and the petition of M/s. Western Engineering Company for the revocation of the registered design of M/s. America Lock Company (C.O. No. 7 of 1967) as well as the suit of M/s. Western Engineering Company against the America Lock Company for an injunction to restrain the manufacture of horse-shoe shape cycle locks of the type involved in this case, i.e. with a protruding placed in the key-hole which opens from the front and not from the side; and for accounts in the nature of damages (S. No. 390 of 1967) have now been consolidated. Some of the evidence on record is in the form of affidavits, and some is in the form of oral statements, and all three cases have been heard by me at the arguments stage.
(8) Before turning to the questions arising in these three cases, it is necessary to refer to the issues framed in the proceedings and also to certain miscellaneous orders passed in the form of directions concerning the trial of the proceedings and the manner in which the cases have been consolidated. The earliest of the three cases was the petition for revocation instituted by America Lock Company, C.O. 1 of 1966. In that case, four issues were framed on 16th March, 1967. Later, an additional issue was added as Issue No. 4 by an order dated 16th May, 1967. The issues as finally framed run as under:-
'1.Does a petition under section 51-A of the Indian Patent and Design Act require verification? 2. Is the petition incomplete in the absence of disclosure whether the petitioner is a firm and association of persons or a business run by an individual? 3. Is the Design No. 125728 liable to cancellation on the ground alleged in the petition? 4. Is the petitioner a 'person interested' within meaning of section 51-A of the Act? 5. Relief'.
(9) The next case was Suit No. 390 of 1967 for an injunction and damages instituted by Western Engineering Company against America Lock Company. In that suit, five issues were framed on 14th November, 1967. Then an application was made to the Court by the plaintiffs, M/s. Western Engineering Company that the proceedings in the revocation application and the proceedings in the suit should be consolidated. This application was accepted on the ground that some of the issues arising in the revocation application instituted by America Lock Company were raised in this case. At the same time, another application was moved by America Lock Company for consolidating the revocation petition filed by Western Engineering Company against America Lock Company, i.e., C. O. No. 7 of 1967, with the already pending C.D. 1 of 1966, instituted by America Lock Company, which was rejected. These two petitions were decided together by an order dated 7th at that stage. The defendants in the suit i.e., M/s America Lock February, 1968. The Court ordered that the suit should be consolidated with C.O. No. 1 of 1966 but the other petition was dismissed. Consequently, the revocation petition instituted by Western Engineering Company remained separate from the other two proceedings, at that stage. The defendants in the suit, i.e., M/s America Lock Company applied for the framing of an additional issue, which resulted in a new issue No. 3-A being framed. The issues as finally settled were as follows:-
'1. Whether the lock (Object No. 1) of the plaintiff is in accordance with his registered design No. 125728? If not, with what effect? (O.P.P.) 2. If Issue No. 1 is found in favor of the plaintiff, whether the lock as per design (Object No. 1) is of previously published and known design? (O.P.D.) 3. Is the defendant entitled to manufacture locks as per his registered design? (O.P.D.) 3-A. Are the cycle locks manufactured by the defendants as per object No. 2 infringment and/or a piracy of the plaintiffs' registered design No. 125728 and/or of their cycle locks, object No. 1, and what is its effect? (O.P.P.) 4. What is the value of the suit for purposes of court fees and with what effect? 5. Relief.'
(10) After the suit and C.O. No. 1 of 1966 had been consolidated, there was a dispute between the parties, as to whether the evidence should be led first in C. O. No. 1 of 1966, or in Suit No. 390 to 1967. The Court ordered on 13th February, 1968, that the proper procedure would be that the petitioner in C.O. No. 1 of 1966 should lead its evidence first as that was the earlier case, and the evidence in Suit No. 390 of 1967 should be recorded later. Although, there are several orders concerning the examination of several witnesses, it does not appear that the parties examined more than one witness each, in this case.
(11) It is now necessary to turn to C.O. No. 7 of 1967, which is the application of Western Engineering Company for the revocation of the design registered in favor of the America Lock Company. In this case, only one issue was framed on 4th March, 1968. Later on, certain amendments were allowed in the application for revocation, and a second issue was framed on 20th April, 1970. The two issues as finally framed were as follows:-
'1. Whether the registration of the respondents' design No. 129675 is liable to be cancelled on the grounds mentioned in the application? 2. Are the applicants entitled to the relief sought by them on the grounds introduced through amendments in the amended petition?'
(12) At the time the first issue was framed, the counsel for the petitioners stated that he wanted to give evidence on three matters, which were:-
'1.that the registration of the cycle lock effected in favor of the petitioners was prior in time to the registration of the cycle lock manufactured by the respondent; 2. to prove the certificate of registration; and 3. to prove that design No. 129675 being the respondent's registered design has been published in India prior to its registation.'
(13) The petitioners prayed that they might be permitted to file. affidavits in proof of the allegations set out in para No. 10(b) of the petition. In accordance with these directions, affidavits and counter-affidavits were filed by the parties. At that stage, the respondent i.e., the America Lock Company asked for permission to cross-examine the deponents. Although, this was contested by the petitioners, permission was granted to cross-examine all the deponents. In consequence of this order, a number of witnesses, whose affidavits had been filed. were subjected to cross-examination. After the second issue was framed, as reproduced above, further affidavits were filed by the parties and a further permission to cross-examine the deponents was allowed. While this procedure was adopted by the Court, the records of C.O. No. 1 of 1966 and the Suit No. 390 of 1967 which had been consolidated were ordered to be attached to the file of C.O. No. 7 of 1967. Hence, even though there was no actual order consolidating C.O. No. 7 of 1967, all the files were amalgamated and the cases were thus proceeding side by side.
(14) At the stage when the case came before me for the first time, on 8th August, 1972, all the parties agreed that the three proceedings should be consolidated and the evidence already recorded should be treated as recorded in all the three cases and should be read as evidence in all the cases. I recorded the statements of counsel in this respect, and ordered the consolidation of all the three cases. In consequence of the agreement of the parties, I have treated the evidence recorded in all the three cases as being common evidence for all the three cases,
(15) On 29th August, 1972, after the arguments had commenced, counsel for the petitioners in C.O. No. 7 of 1967 wanted to bring more material on record, to establish the lack of novelty and originality in the respondents' design. This was contested by the respondents on the ground that orders had previously been passed restricting the nature of the evidence to be led. I considered this matter and passed an order on 14th September, 1972. in which I stated:-
'Ithink such a view would lead to an almost endless controversy as to what was novel or original in a design. Parties were perfectly well aware of their cases and on 4th March, 1968, learned counsel for the petitioner made a statement concerning the nature of the evidence he intended to lead.'
(16) I theproceeded to say that the order dated 4th March, 1968, limited the nature of the evidence the petitioners sought to lead, and new material now would re-open the entire case, and I was reluctant ro allow a re-trial in a case which was already five years old. I, thereforee, rejected the plea for further evidence, but stated that I would consider whatever evidence had already been led on the points pleaded.
(17) I have mentioned all these orders in order to give the background in which these three cases came before me. I now proceed to analyze the three cases, before proceeding to deal with the points that arise for decision.
(18) The first of the cases is the application of M/s. America Lock Company to have the registered design of M/s. Western Engineering Company cancelled or revoked, that is C.O. No. 1 of 1966. The converse case of M/s, Western Engineering Company to get the registered design of M/s. America Lock Company cancelled or revoked is C.O. No. 7 of 1967. The decision on both these cases turns on the novelty and originality of the registered designs in question. As the registered designs of both the parties arc more or less similar, the effect of these two eases is to call in question the registered designs of both parties. The grounds of challenge arc, however, different. According to M/s. Western Engineering Company the design of M/s. America Lock Company is a copy or imitation of their previously registered design and is, thereforee, clearly not novel or original. On the other hand, the case of M/s. America Lock Company is that the design of M/s. Westorn Engineering Company is not novel original As will be seen later, the two cases have a considerable bearing on each other. The law applicable to a registered design which is a mere variation of a previously registered design is quite different from the law applicable to a registered design which has no similarity with a previously registered design. The question whether a design is new or original is very largely dependent on the nature of the manufactured article to which it is to apply; the nature of the design of articles manufactured before the introduction of the design in question; and also the state of knowledge of the industry producing such articles. Thus. in different situations a design may be novel and original even though it is slightly different from the previous design, or it may be only a trading variation which is not novel or original in the sense required by the Patents and Designs Act, 1911. At the same time. if a still further variation in the design is produced. it may still not infringe the registered design, even though it is not itself new or original. I shall, thereforee, have to examine the state of knowledge which existed prior to the introduction of the designs in question in respect of cycle locks in general and the horse-shoe shape in particular. As regards the third case, namely, the suit for injunction and damages brought by M/s. Western Engineering Company against M/s. America Lock Company, which is based on infringement of the registered design of the former, it is necessary to say that the result of that suit is largely dependent on the conclusions I reach on the two revocation applications before me. At present both parties have registered designs and the question of infringement does not arise. If both designs are revoked, then the suit will fail, but if the design of M/s. America Lock Company is revoked and that M/s. Western Engineering Company is maintained, then the suit will be maintainable. Hence, the decision in the suit depends largely on the result of the two applications for revocation.
(19) Before dealing with the merits of the controversy, it is necessary to describe, as far as possible, the two locks in question. For sake of convenience, I shall refer to the lock of M/s. Western Engineering Company (KING LOCK) as Lock 'A' and the lock of M/s. America Company (GOLD MOHAR) as lock 'B'. Both locks arc locking devices shaped like a horse-shoe with a projection at the top, the locks are fixed to the bicycle in such a manner that the projection is at the top of the wheel of the bicycle, which passes through the circular part of the lock. For locking the bicycle, a semi-circular metal bolt which is within the rest of the horse-shoe, is pushed out to close the circle. The bolt passes through the spokes of the bicycle-wheel in the locking position. There is a kind of handle or knob which moves along with the bolt. By pressing this knob, the bolt is taken through the wheel of the bicycle and locked by the locking mechanism which is in the projection at the top of the horse-shoe shape and the key-hole projection from the face of the horse-shoe in a cylinder. In the case of lock 'A', the upper part of the horse-shoe shape is parabolic, but in the case of the lock 'B' the upper portion is rectangular. The protuberance in the parabolic portion in lock 'A' is circular in shape and the key is inserted therein. In the case of lock 'B' the protuberance is not circular, but is a kind of elliptical cylinder. The horse-shoe shape portion in both locks is black in colour, and the bolt which emerges from the horse-shoe portion to lock the bicycle is made of some shiny white metal. The cylinders are also white in colour. There are minor difference in the number of bolts provided. The general appearance of the two locking devices is similar, but there are some dis-similarities. There are on record, a number of other locks of this type, manufactured earlier. They are exactly similar to both locks 'A' and 'B' except for the protuberance at the top of the horse-shoe shape where the locking mechanism is situated. In the case of the previously manufactured locks, the key-hole is not to be found in a protruding cylinder on the face of the horse-shoe shape, but the projection is inside to the horse-shoe, with the opening for the key on the side. The major difference between these previous locks and the locks of the two parties before me, is that those locks were locked from the side and did not have a key-hole or protuberance at the top of the horse-shoe. Both the present locks have their key-holes in the front, and the key-hole is itself in the protruding portion already referred to. If one was to cover up the top of the horse-shoe with the hand in the case of both the present locks 'A' and 'B' as well as in the case of the previously manufactured locks, there would be no identifiable difference between the various locks. Thus, the novelty, if any, in the two locks before me, lies only in the position of the key-hole and the shape of the little cylinder into which the key fixes. All the rest of the lock is exactly similar to the locks previously manufactured.
(20) Thus, to compare the two locks before me, it is not necessary to compare the horse-shoe shape at the bottom of the lock i.e. the actual locking device, but it is only necessary to compare the little cylinders at the top. Even according to the case of M/s. Western Engineering Company the only novelty lies in the shape of the protuberance at the top of the lock and in nothing else. The case of M/s. America Lock Company is that their protuberance is quite different from the one in the Western Engineering Company's lock. I have tried to give as accurate a description as is possible without a photograph of the locks in question.
(21) Before proceeding further with the case, I may refer to some decisions which have been relied upon by M/s. Western Engineering Company to affirm the novelty and originality of their design. The first case is Matter No. 574 of 1966, decided by S. A. Masud J. in the Calcutta High Court. That was a petition under Section 51-A of the Patents and Designs Act, 1911, instituted by M/s. Western Engineering Company against Paul Engineering Company. The judgment is reported as : AIR1968Cal109 . In that case, design No. 127199 registered in favor of M/s. Paul Engineering Company was revoked on the ground that it was not new or original, but was a mere copy of the registered design of M/s. Western Engineering Company. The Court compared the two designs by comparing the two locks and found certain similarities in the two designs and certain differences. It is useful to mention the similarities. As stated by the Court, the following similarities existed :-
'(A)Both the designs are of equally circular or semi-circular shape. (b) In both cases the lock portion is raised from the flat surfnce of the design. (c) Bodies in both the farmes arc painted black. (d) The pin, the lock and the two lafes (sic.) at the end of two sides of the design are of silvery colour. (e) A protruded round-shaped lock was fitted on the top of both the frames. (f) The device and method of locking a cycle and opening by the key is the same in both cases.'
(22) The same similarities exist in the present designs. It may be pointed cut that all these similarities, (a), (c), (d) and (f) are also to be found in the previously existing designs, models of which have been produced in this Court. thereforee, the only two similarities which have to be considered as vital in the present cases are : (i) the fact that the lock portion is raised and (ii) there is reprotruded round-shape lock at the top of the frame. Some dis-similarities are also pointed out in the judgment which I need not refer to. In the proceedings before the Calcutta High Court, it was urged on behalf of M/s. Paul Engineering Company that the design of M/s. Western Engineering Company was not new and original. The Court in fact stated that the design was new and original, but also stated as follows :-
'WITHrespect to Mr. Tibriwala's contention that the petitioner's design is not a new or original one, it seems to me that he is indirectly raising a question of validity of the petitioner's registration. In my view, the invalidity of an earlier registration could have been challenged by him in a substantive application. In an application under Section 51-A of the Act, the question cannot be gone into.'
(23) The Court then proceeded to consider whether similar locks as the one produced by M/s. Western Engineering Company had been inported from China, but did not accept the respondent's contention in that behalf. Although, I have referred to the decision, I may point out that the case before me is quite different. In the case before me, M/s. America Lock Company has relied on the design of the previously manufactured locks, as well as the designs of Chinese Locks called 'Wings' and 'Chivalry', and further had relied on the patent of a British lock similar to the ones commonly manufactured in India. It has also been urged that the lock of M/s. Western Engineering Company is a mere trade variant of the previously manufactured locks and is, thereforee, not new and original in itself. In addition to this point, it has also been urged that the registered design of M/s. Western Engineering Company does not contain the protruded portion on the basis of which novelty and originality is claimed and, hence this case should be decided on the basis of the registered design and not on the basis of the manufactured design. I will later have opportunity to refer to the registered design for the purposes of considering this question.
(24) The next judgment referred to is the judgment delivered by Andley J. (as his Lordship then was) in O.M. No. 483 of 1967 in Suit No. 298 of 1967, M/s. Western Engineering Company V. M/s. Tiger Products (Private) Ltd., and Others, dated 31st May, 1967. That was a case in which an interlocutory injuction was granted to M/s. Western Engineering Company against M/s. Tiger Products (Private) Ltd., on the ground that they were manufacturing locks in accordance with the registered design of M/s. Western Engineering Company. In that case it was observed :-
'THEdesign which was registered by the plaintiffs also has the general shape of a horse-shoe but the protuberance at the top is not rectangular but elliptical in shape. Further, in the centre of this elliptical protuberance at the top is affixed a cylinder which contains the key hole of the lock in the centre.'
(25) Later on, in the judgment the registered design of M/s. Western Engineering Company was stated to be prima facie separate, and it was also observed that the same could not be challenged in those proceedings.
(26) During arguments, another decision of this Court in O.M. No. 743 of 1967 in Suit No. 389 of 1967, M/s. Western Engineering Co. V. M/s. Pal Engineering Co. and Nirman Industries, etc., dated 14th May, 1969, and delivered by Prakash Narain J. was referred to. In that case, it was stated that the registered design of the plaintiffs was prima facie valid; the former judgment of M. A. Masud J. was referred to and it was stated that the:-
'REGISTEREDdesign cannot be looked at in isolation from the finished product.'
(27) In my view, the two decisions of this Court referred to above are judgments delivered at an interlocutory stage, and cannot be decisive of the novelty or originality of the design of M/s. Western Engineering Company, because they are based on the view that a person holding a registered design has a right to get the same protected. The judgment of M. A. Masud J., although it holds the design of M/s. Western Engineering Company to be new and original was based on the evidence and material produced in that case. As I have said, the evidence before me is quite different and a number of additional points have been urged which have to be considered for the purpose of deciding the validity of the registration of the two registered designs before me. Furthermore, and this is the most important difference in the cases before me, the validity of the registered design in favor of M/s. Western Engineering Company has itself been challenged on the ground of lack of novelty and originality. In case, I hold the registered design hold by M/s. Western Engineering Company is itself not novel and original, I must necessarily hold that the registered design of M/s. America Lock Company is also not new and original. thereforee, the 1st petition that has to be dealt with by me is the one brought by M/s. America Lock Company against Western Engineering Company.
(28) I have already set out the issues framed in C.O. No. 1 of 1966. An amended petition was filed by the petitioners on 28th July, 1967. There appears to be no order of the Court permitting this amended petition to be filed. In this amended petition, it is disclosed that M/S. America Lock Company is a partnership firm and the petition is also verified. The first two issues framed in this case, relate to the absence of verification and the absence of averment in the application concerning the status of M/s. America Lock Company. Both these objections have been met in the amended petition, but I am unable to find any application praying for the amendment of the petition on record. As three cases have been consolidated in the manner stated above, it is possible that an application for amendment was made, but is not now traceable. For the purpose of convenience, I am going to treat the original petition as the only petition before me. No arguments have been addressed on the first two issues, and thereforee, inspire of there being no order regarding amendment on record, I decide those issues in favor of the petitioners, M/S. America Lock Company.
(29) The remaining three issues relate to the merits of the case. Issue No. 3 is concerned with whether the registered design in question is liable to be cancelled under Section 51-A, and Issue No. 4 relates, to whether M/S. America Lock Company is 'a person interested' in the cancellation. It is plain from the facts on the record that M/S. America Lock Company is a person interested in the cancellation of the respondent's design lor the simple reason that it itself holds a registered design of a similar lock and is also a manufacturer of a similar lock. I, thereforee, propose to deal principally with the question whether the registered design No. 125728 of M/S. Western Engineering Company is liable to be cancelled. It is clear that the only ground on which it can be cancelled is because of lack of novelty and originality in the design.
(30) The first basic conflict between the parties before me is, as to what is the shape of the design which was got registered by M/S. Western Engineering Company. The photographs annexed to the design show only the front and back view of the lock. No protuberance of a lock or cylinder is visible from the front view of the lock and unfortunately there is no side photograph which would show whether there is a protuberance at the place where the key is inserted. On the other hand, the model of the lock 'A' which has been placed on record clearly shows the protuberance which stands out about 3/4 inches from the horse-shoe shape of the lock. If any photograph of the lock had been produced before the Registrar giving a three dimensional view, then the protuberance omits absence would have been immediately visible. Unfortunately, M/s. Western Engineering Company placed on record before the Registrar only a flat view of their lock from back and front. It is, however, urged by learned counsel for M/s. Western Engineering Company that the shading in the photograph of the front view clearly shows that there is a protuberance. I am afraid that the protuberance is not at all visible in that picture. There is an affidavit of Maulana Masoud-ul-Hasan in C.O. No. 7 of 1967, which has been marked Exhibit P-1, in which it is stated that the deponent prepared the drawing of the front and back portions of the cycle lock in question and got prepared five photograph copies of the design of each side, and handed over the same to Shri Om Prakash Sharma of Calcutta Trade Mark Co. It is also stated that the design of the cycle lock was identical to the cycle locks being marketed in Delhi as 'Western King' and 'Royal Ambassador'. Further, it is stated that the protuberance on the front side was the novel feature of the cycle Jock, This witness in cross-examination staled that he had been shown a cycle lock before he prepared the drawing. He also stated that the design was prepared by pencil and then photographed. He admitted that the design prepared by him did not prominently show the protruding portion of the lock because when a design is prepared of the front view, the protruding portion does not appear in the design. He stated that the shading was done by him to indicate the protruding nature of the portion where the keyhole existed. Shri Om Prakash Sharma, a partner of Calcutta Trade Mark Co. also gave his affidavit in which he stated that the design in question was prepared from a cycle lock relating to 'western king.' In cross-examination he stated that the novel feature of the lock was the protruding cylinder in the front, where there was a hole for the key. He, however, admitted that this novelty was not mentioned in the application for registration, but according to him the photograph did not show the protruding portion of the lock. In the affidavit of Shri Anant Ram Manocha, a partner of M/s. Western Engineering Company, it was stated that the firm had introduced a cycle lock covered by the registered design towards the end of 1965 and the novelty of the design consisted in the protuberance. When he was cross-examined on this point, he stated that the illustration of the design did not show the protruding portion, but it was not claimed as a novelty.
(31) Looking at the design itself, which is Exhibit D-1 in C.O. No. 1 of 1966, though it is differently marked in the other proceedings, I am satisfied that no protruding portion is shown in the photograph. The photograph in question is not a photograph of the lock, but a photograph of a drawing made by Maulana Masoud-ul-Hasan. If there was a protruding portion it could have been shown by appropriate shading. I have to judge the shape of the design from the conception of the article which I derive from the photograph. I cannot see any protruding portion in this design. It is possible that Maulana Masouod-ul-Hasan, due to lack of experience as an artist or otherwise, was unable to show the protruding portion in the design. That is not for the Court to decide. For this purpose, it is now necessary to turn to the Rules framed under the Indian Patents and Designs Act, 1911; these Rules, are the Indian Patents and Designs Rules, 1933. Rule 36 of these Rules requires a statement of novelty. That rule runs as follows:-
'36.Statement of novelty:-The applicant may, and shall, if required by the Controller in any case to do so, endorse on the application and each of the representations a brief statement of the novelty he claims for his design.'
(32) Now, before me it is contended that the novelty of the design was the protruding portion of the cylinder into which the key fits. No such statement can be found in the registered design. On the other hand, it is stated in the certified copy of the Certificate of Registration :
'THEnovelty resides in the shape and configuration of the article as illustrated. No claim is made by virtue of this registration in respect of any mechanical or other action of the mechanism whatsoever or in respect of any mode or principle of construction of the article.'
(33) An examination of the registered design and the drawing show some other differences also. For instance, in the manufactured design, there is a protruding cylinder inside of which there is a smaller cyclinder with a depression into which the key fits. On the other hand, the registered design does not show the larger cylinder to be protruding nor does it show any smaller cylinder similarly protruding inside the larger cylinder. Thus, the registered design does not depict the manufactured design. This docs not, however, make much difference to the decision of this application, but has a greater bearing on the novelty and originality of the registered design of M/s. America Lock Company which is the subject-matter of C.O. No. 7 of 1967. For the purposes of this case I will deal with the registered design of M/s. Western Engineering Company, both on the footing that there is a protuberance as claimed and also on the footing that there is none.
(34) The main ground on which the registered design is challenged is that the whole lock or design of the same, is not new or original. This challenge is based on several factors. The first claim is that Chinese locks, named 'Wings' and Chivalry' of this type, were of the type manufactured by M/s. Western Engineering Company, introduced the design. No lock of this type has been produced, but there is a photograph of a 'Wing' lock of Chinese origin. There is insufficient material on record, to show that these Chinese locks were introduced into the Indian market before M/s. Western Engineering Company introduced its locks. Shri N. S. Kapur, P. W. 1. partner of America Lock Company, admitted in cross-examination that he was not able to say whether Chinese locks were being sold in India. The next point raised is that the registered design in question does not differ much from the previously manufactured locks which were available in the market. On this point, it is necessary to mention that those locks are exactly of the type made by M/s. Western Engineering Company, except that the place for inserting the key is on the side and there is no cylinderical protruding portion. It is urged on behalf of the petitioners that the lock 'A' is a mere trade variant of all the locks previously manufactured. The point that requires examination regarding this question is whether the change in the position of the key in a well-known design was sufficient in itself to make a new design capable of being registered. The next point of challenge is that there is a patented British cycle-lock of the type manufactured by M/s. Western Engineering Company, the abridgement of whose patent was available for inspection in the office of the Registrar of Patents and Designs. It is urged that the design got registered by M/s. Western Engineering Company is also almost identical with the article patended by the British firm. I shall examine this question also.
(35) On these two points, it is necessary to examine the concept of novelty and originality which is the pre-requisite for a design to be registered under the Indian Patents and Designs Act, 1911.
(36) A large body of case law has been built up during the years, to explain what is meant by 'novelty and originality'. As the English law on the subject is almost the same as in India, the English cases are also a great help in determining the principles to be applied. In fact there are very few Indian decisions on the subject. Generally, the test for novelty and originality is dependent on determining the type of mental activity involved in conceiving the design in question. If the design is original, then the designer must have conceived something new; if the design is a mere trade variation of a previous design, then the designer could be said to have merely kept an existing design in view and made some changes in it. Taking the instant case, it is clear that the previously existing design was almost exactly the same as the design of M/s. Western Engineering Company as well as that of M/s. America Lock Company in some respects. The only modification made in the existing design was to change the position of the lock. Instead of the lock being fixed sideways into the projecting portion of the horse-shoe, the lock was affixed in the centre of the projection so that the lock could be operated with a key inserted from the front instead of the side. The lock itself being in the form of a protruding cylinder. There is, thereforee, some original mental application involved in conceiving the new design. The designer must have thought that the-lock could be operated, perhaps more conveniently, by having the key-hole in the front instead of the side. To that extent there is some novelty and originally in the design of M/s. Western Engineering Company. It is true, however, that this novelty can also be treated as being merely a variation in the existing design.
(37) Thus, the new design can be treated as a new or original design, or it can be treated as being merely a trade variant of an already existing design. In order to illustrate this point^ it is only necessary to first compare the design of M/s. Western Engineering Company with the previously existing design and then to compare the design of M/s. America Lock Company with the manufactured product of M/s. Western Engineering Company. In the former case, the comparison shows that there has been a change in the product. No person could be deceived into believing that the design of M/s. Western Engineering Company, either registered or manufactured, was the same design as that of the previously existing locks. On the other hand, the design of M/s. America Lock Company is so similar to the design of M/s. Western Engineering Company, that one can say that the designer merely looked at the lock manufactured by M/s. Western Engineering Company and made some variation in the same. It would, thereforee, be difficult to say that the design of M/s. America Lock Company was itself new or original. The only change made by M/s. America Lock Company was to alter the shape of the cylinder and make a few other changes. This would lead to one of the two results, either the lock of M/s. America Lock Company could be said to be a copy or imitation of M/s. Western Engineering Company, or it could be said to be sufficiently different as not to be a mere imitation. It would not in my view be itself new or original. Thus, there is a difference in the mental process or application involved, in changing an existing design to such an extent, that a new design which is itself new or original is produced, or in merely producing a trade variant of the previous design.
(38) Referring again to the design of M/s. Western Engineering Company, I have already observed that the design is almost the same as the existing design except for the position of the key. Thus, it could be said that the designer merely looked at the previous design and made a variation in the same by changing the position of the key. The provision of a protruding cylinder at the point where the key is inserted does not make much difference. Thus, the design of M/s. Western Engineering Company, whether the registered design, or the manufactured design, both, can be said to be mere trade varia