O.N. Vohra, J.
(1) The short point arising in this appeal against the judgment dated December 24, 1976 of M. S. Joshi, J. is : Whether the design of M/s. B. Chawla & Sons, hereinafter referred to as the appellants in respect of mirror registered at No. 139585 in class I under the Indian Patents & Design Act, 1911 (the Act), on February 28, 1972, is a 'new or original' design.
(2) M/S. Bright Auto Industries, hereinafter referred to as the respondents, engaged in manufacturing of various articles including rear view mirrors, prayed for cancellation of the aforesaid design of the appellants under section 51A of the Act contending that the design of the appellants was not a new 325 design and that it had no originality about it in that such designs were common in the market and the appellants had made a false claim to be the originators of the design before the controller of Patents & Designs to obtain the impugned registration. The grievance is that they were hindered in their trade by the registration.
(3) The appellants controverter these pleas, saying that they had invented the design after a good deal of hard labour.
(4) The novelty in the design in question, admittedly, is on account of the further curve in the sloping upper length side as it is not disputed that rear view mirrors, rectangular in shape with rounded edges, width side curved or sloping and the lower length side also sloping are commonly available in the market.
(5) It would be convenient at the outset to read the relevant provision of the Act. Section 5(2) reads :
''design' means only the features of shape, configuration, pattern or ornament applied to any article by any industrial process or means, whether manual, mechanical or Chemical, separate or combined, which in the furnished article appeal to and are judged solely by the eye; does not include any mode or ;
'PRINCIPLEof construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in section 2(1)(U) of the Trade and Merchandise Marks Act, 1958 (43 of 1958)'.
Section 43 reads :
'APPLICATIONfor registration of designs. The controller may, on the application of any person claiming to be the proprietor of any new or original design, not previously published in India, register the design under this Part......'
SECTION 47 reads: '(1) When a design is registered the registered proprietor of the design shall, subject to the Provisions of this Act, have a copyright in the design during five years from the date of registration.........' Section 51A reads : *'(l) Any person interested may present a petition for the cancellation of the registration of a design (a) at any time after the registration of the 'design to the High Court on any of the following grounds, namely............ (iii) that the design is not a new or original design.'
(6) It may also be mentioned that Rule 36 of the Indian Patents & Designs Rules, 1933, provides that the applicant may, and shall, if required by the Controller in any case so to do endorse on the application of each of the representations a brief of the novelty he claims for his design. In the instant case, however, no such statement of the novelty was appended. Accordingly, the newness of the design would be taken as to shape or configuration and to be more specific as to further curve in the sloping upper lengh side, one of the right and the other on the left.
(7) Akil Ahmed, partner of the respondent and his witnesses Jagjit Singh, Rajender Singh and Sultan Singh submitted affidavits before the learned Single Judge swearing that appellants' mirror was a common type rectangular mirror with a slight curve on the upper side and such like mirrors were available in the market. They also swore that there was no newness nor originality about the design. Mr. Anoop Singh, learned counsel for the respondents, has frankly conceded that no documentary or material evidence showing the availability of rectangular mirrors having a curve on either side in the sloping upper length side has been brought on the record and he would not press that mirrors of such like designs were actually available in the market at the time the appellants brought out their product in the market. Thus, we are left with the only consideration whether a further curve on either side in the sloping upper length side makes the design in respect of rear view mirror a new or original design which the appellant were entitled to get registered and which is not liable to cancellation under section 51A of the Act.
(8) In Le May v. Welch (1884) 28 Ch. D, 24-, Bowen L. J. expressed the opinion:
'IT is not every mere difference of cut'-he was speaking of collars-'Every change of outline, every change of length, or breadth, or configuration in a single and most familiar article of dress like this, which constitutes novelty of design. , hold that would be no paralyse industry 'and to make the Patents, Designs and Trade Marks Act a trap to catch honest traders. There must be, nor a mere novelty of outline, but a substantial novelty in the design having regard to the nature of the article.'
ANDPry L.J. observed : 'It has been suggested by Mr. Swingen Eady that unless a design precisely similar, and in fact identical, has been used or been in existence prior to the Act, the design will be novel or original. Such a conclusion would be a very serious and alarming one, when it is borne in mind that the Act may be applied to every possible thing which is the subject of human industry, and not only to articles made by manufacturers, but to those made by families for their own use. It appears to me that such a mode of interpreting the Act would be highly unreasonable, and that the meaning of the words' novel or original' is this, that the designs must either be substantially novel of substantially original, having regard to the nature and character of the subject matter to which it is to be applied.'
Similar view was expressed by Buckley L.J. on the question of quantum of novelty in Simmons v. Mathieson & Cold (1911) 28 R.P.C. 486 in these words :
'INorder to render valid the registration of a Design under the Patents and Designs Act, 1907, there must be novelty and originality, it must be a new or original design. To my mind, that means that there must be a mental conception expressed in a physical form which has not existed before, but has originated in the constructive brain of its proprietor and that must not be in a trivial or infinitesimal degree, but in some substantial degree.'
(9) In Phillips v. Barbro Rubber Company (1920) 37 R.P.C. 233, Lord Moulton observed that while question of the meaning of design and of the fact of its infringement are matters to be judged by the eye, it is necessary with regard to the question of infringement, and still more with regard to the question of novelty or originality, that the eye should be that of an instructed person, i.e. that he should know that was common trade knowledge and usage in the class of articles to which the design applies. The introduction of ordinary trade variants into an old design cannot make it new or original, He went on to give the example saying, if it is common practice to have) or not to have, spikes in the soles of running shows any man does not make a new and original designs out of an old type of running shoes by putting spikes into the sales. The working world, as well as the trade world, is entitled at its will to take, in all cases, its choice of ordinary trade variants for use in particular instance, and no patent and no registration of a design can prevent an ordinary workman from using or not using trade knowledge of this kind. It was emphasized that it is the duly of the court to take special care that no design is to be counted a 'new and original design' unless it distinguished from that previously existed by something essentially new or original which is different from ordinary trade variants which have long been common matters of taste workman who made a coat (of ordinary cut) for a customer should be left in tender whether putting braid on the edges of the coat in the ordinary way so common a few years ago, or increasing the number of buttons or the like, would expose him for the prescribed years to an action for having infringed a registered design. On final analysis, it was emphasized that the use of the words 'new or original' in the statute is intended to prevent this and that the introduction or substitution of ordinary trade variants in a design is not only insufficient to make the design 'new or original' but that it did not even contribute to give it a new or original character. If it is not new or original without them the presence of them cannot render it so.
(10) The quintessence of the placitums above is that distinction has to be drawn between usual trade variants on one hand and novelty or originality on the other. For drawing such distinction reliance has to be placed on occular impression for which the eye would be the ultimate arbiter. However, the eye should be an. instructed eye, capable of seeing through to discern whether it is common trade knowledge or a novelty so striking and substantial as to merit registration. A balance has to be struck so that novelty and originality may receive the statutory recognition and interest of trade and right of those engaged therein to share common knowledge be also protected.
(11) Coming to the facts of the instant case the design in question as a whole consists in almost rectangular shape with rounded edges width sides curved or sloping with a further curve on either side in the sloping upper length side. The respondent produced in evidence Japan's Bicycle Guide, 1972, Vol. 22. At page Nos. 218 to 221, there are standard models of backmirrors besides branded models numbering 36. Models bearing Nos. 59-6, 62-1, 61-3, 66-1 and 70-1 would show back view mirrors rectangular in shape with sloping widths or lengths. In some of these models there is curve in the upper length side. We have mentioned this fact simply to emphasise that back view mirrors resembling the one in question have been in the market for a long time. The appellants' case is that further a curve in the sloping upper length side makes their design new or original. We have already noted that the extent and nature af novelty was not endorsed by the appellants in the applicattion for seeking registration and, thereforee, it has to be taken only as regards the shape and configuration. In final analysis the matter would boil down to whether addition of further curve on either side makes the variation a striking one or a substantial so as to constitute a novelty mertiting for registration. The learned Single Judge after enunciating the legal position correctly used his eye for discerning if there was in fact a novelty and answered the question in the negative. We have once again gone through the same exercise and come to the same opinion. We fail to see the hard labour which the appellants claimed to have bestowed in creating the design they got registered. It is devoid of newness and equally devoid of originality. An addition of curve here or there in a shape which is well-recognised shape of an article of common use in the market cannot make it an article new or original in design. If it is made eligible for registration, it would certainly hinder the progress of trade without there being any justification, whatsoever.
(12) Mr. K.L. Aggarwal has been at pains to impress that the addition of the further curve on either side as an appeal to the eye and thereforee, it is the design of the appellants and on that basis has urged that the appellants are entitled to protection. We have no dispute with the contention subject to certain reservations. It is a design indeed within the meaning of the term as given in the Act, the matter, however does not end there. What the appellants were required to satisfy was that their design has a substantial novelty or a striking newness for the instructed eye. It is here they fail as every design is not registerable.
(13) Mr. Aggarwal has next urged and rather vehemently that the design of the respondents bears a close similarity to their design and has relied upon the observations of Day J, in Heinrichs v. Bastendorff (1893) 10 Rpc 160, that if a man has taken the trouble to put into his catalogue and to manufacture it, he must have been of the opinion that it is a novel, original and substantially new design. All that we may say about this approach is that it is certainly a circumstance worthy of serious consideration. The basic question however, that remains in proceedings under section 51A of the Act is whether the registered design is new or original or not. If the answer is in the negative, much would not turn on the design having been immitated with or without modification by others in like trade.
(14) Mr. K.L. Aggarwal has relied upon Gartwight v. Coventry Radiator Company (1925) R.P.C. 351. It was a case where registration in Class I was obtained, for a design in respect of radiator for motor vehicles. In an action for infringement it was proved that the radiator was infact fitted and was extensively sold to be fitted to Ford motor cars and that the defendants had originally sold for Ford motor cars a form of radiator without ribs at the top, such as existed in the plaintiff's radiator, and that the defendants said radiator had not seriously competed with the plaintiffs' radiator. Subsequently, the defendants began to sell a form of radiator for Ford motor cars having ribs at the top, and the plaintiff's sales fell off. It was held that the form of defendants' radiator was identical in substance with the plaintiffs' design and that the plaintiffs' design was new and original and had been infringed. We do not find any similarity so far as the facts go and the learned counsel has not been able to point out that the question was based on an approach different from the one already noted above.
(15) Another authority relied upon is Britvic LD's Application for the Registration of a Desiyn ( 1960) R.P.G. 201. In that case Britvic Ld applied for registration of a drinking glass, the stem of which was constituted entirely by five knops mounted one-on the other. A glass with asimilar bowl and base but different connecting stem, was shown in an illustration in a catelogue. Illustrations in further catalogues showed glasses, with bowls of other shapes having knops in the stems, the stems illustrated in one manufacturer's catalogus being composed entirely of knops. The registrar of Designs, the the comptroller General held that the use of knops to build up the stem of a drinking glass being common trade knowledge, the applicant's design differed from a previously published design only in features which are variants commonly used in the trade and was, thereforee, not new or original. Lloyd- Jacob J, allowed registration in appeal, observing that the disclosure in the catalogue relied upon was not substantially assisted by the other representations to which he referred. This means the decision rested on the facts of that case on the material which was brought out for the appreciation of the court. For similar reasons it can be of no assistance.
(16) Reliance has lastly been placed on F.W. Mc Millan's Design Application (1972) R.P.G. 294. It was a case for registration of design of a pendent for jewellery, a disclike article which the applicant proposed to make by punching out from obsolate half-pennies portions thereof lying between the Queen's head and the rim. The application was refused by the Registrar. But the appeal was allowed on the view that cut-out produced a very striking different effect overall in the appearance of the article. Obviously it cannot be of any assistance.
(17) For the foregoing reasons, no case for interference can be said to have been made out. The appeal accordingly fails and is hereby dismissed. The parties shall bear their own costs.