D.P. Wadhwa, J.
(1) This is a petition under section 51-A of the Designs Act, 1911 (for short the 'Act') for cancellation of design No. 150873 in class 4by the Controller of Patents and Designs who is respondent No. 2 in THE petition. This design pertains to glass tiles in the name of R&M; Co., affirm of which Ravi Raj Gupta, respondent No. 1, is the proprietor. The date of design is 8/06/1981. It is mentioned in the certificate that the novelty of this design resided in the shape and configuration and in particular to the rounded corners and on the mottling design on the top and side walls of theglass tiles and registration of the design with rounded corners is shown in thecertificate. This certificate also recites as under :
'NO claim is made by virtue of this registration in respect of any mechanical or other action of the mechanism whatever or in respect of any mode or principle of construction of the article.'
(2) The petitioner is also a manufacturer of glass mosaic tiles And carriers on his business in the name of Kalpana Tiles. It is not disputedthat he is a person interested to file the present petition for cancellation of theregistration of the design. The petitioner claims that he is hampered in his trade because of registration of the design. In the petition he has given grounds on the basis of which he seeks cancellation of the design.
(3) Respondent No. 1 filed his written statement. He objected to the jurisdiction of this Court to try the present petition. He stated that prior to the design the glass tiles which were being manufactured and sold in India were of sharp edged corners and without mottles and that it was respondent No. 1 who conceived distinct and improved shape of the glass tiles and theregistration of the design was thus granted to him. He further stated that the originality and novelty in the design resided in the rounded corners of the glass tiles and mottling on its surface and the sides.
(4) The petitioner filed his replication.
(5) On the pleadings of the parties the following issues were framed :
'(1)Whether the design No. 150873 in class 4 obtained by the respondent No. 1 is liable to be cancelled for the reasons stated in the petition ?(2) Does this Court has jurisdiction to entertain the present application ?(3) Relief.'
(6) This petition was instituted on 4/07/1983. Respondent No. 1instituted a suit for injunction and rendition of accounts against the petitioner in the Court of the District Judge, Delhi. This was on the ground thatM/s. Kalpana Tiles of which Ravinder Kumar Gupta is the proprietor infringed the design of Ravi Raj Gupta proprietor of R&M; Co. This case was transferred to this Court subsequently and the pleadings in the case arecomplete. This is suit No. 1707 of 1983. It was stated by counsel for the parties that in case the design was cancelled this suit (No. 1707 of 193)would fail and if the design was not cancelled the suit would succeed.
(7) In the present petition evidence was allowed to be led by means of affidavits with liberty to the parties to apply for cross-examination of any of the deponents. Request for cross-examination of almost all the dependents was made by both the parties and the dependents were cross-examined.
(8) Section 3(5) of the Act gives the definition of the design and is asunder:
''...'DESIGN'means only the features of shape, configuration,pattern or ornament applied to any article by any industrial processor means, whether manual, mechanical or Chemical, separate or combined which in the finished article appeal to and arejudged 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 Trade & Merchandise Marks Act,1958 or property mark as defined in section 479 of the Indian PenalCodes.'
(9) The design, thereforee, takes into account the features of shape,configuration, pattern or ornament applied to an article (which appeal to and or judged solely by the eye). A new or original design which has not been published in India can be registered under the Act (Section 43). Section 5l-A(l) gives the grounds for cancellation of registration of the design. This section may be reproduced here :
'51-A.Cancellation of registration (1). Any person interested may present a petition for the cancellation of the registration design:(a) at any time after the registration of the design, to the High Court on any of the following groundsnamely:(i) that the design has been previously registered in India ; or(ii) that it has been published in India prior to the date of registration ; or(iii) that the design is not a new or original design ;(b) within one year from the date of the registration, to the controller on either of the grounds specified in sub-clauses (i) and (ii) of clause (a).'
(10) The attack of Mr. Anoop Singh, learned counsel for the petitioners two-fold ; one that the design had been published in India prior to the date of registration and the second that the design in question was not a new or original design. He submitted that the design, at best, was a mere tradevariant. In Gammeter v. Controller of Patents and others AIR 1919 Cal 887 it was held that :
'THE design should be protected provided it was not merely an analogous and that the test of novelty is the eye of the Judge who must place the two designs side by side and see whether the one for which novelty is claimed is new.'
I may also note that under section 2(4) 'Copyright means exclusive right to apply a design to any article in any class in which the design is registered.
(11) Before I deal with the evidence and the judgments referred to. I may note that Mr. K.R. Gupta, learned counsel for the respondent No. 1,did not press issue No. 2 relating to the jurisdiction of this court to entertain the present petition. Mr. Gupta also conceded that he did not claim any originality with regard to the mottling effect/design as he stated that mottling effect was already available in the market prior to the registration of THE design. The controversy has, thereforee, narrowed down to the question as to whether there is novelty in respect to the rounded corners of the tiles. To put it differently the challenge before me is to the following statement in the registration of the design :
'THE novelty of this design resides in the shape and configuration and in particular to the rounded corners as illustrated.'
(12) Then Mr. Anoop Singh submitted that respondent No. 1 did not claim any novelty in the rounded edges of the glass tiles and the registration certificate in question did not relate to the rounded edges and that no tile of the petitioner has been shown which may be considered to infringe the registered design of respondent no. 1. He stated that the design was confined to the rounded corners and that there was a difference between the 'edge' and the 'corner's. This submission was controverter by Mr. Gupta by saying that edge would also be a corner.
(13) I think there is a difference between a comer and edge. While the corner is where two line or even two edges meet, the edge is where two planesmeet. Edge would be a line. In common parlance also there is the difference in the word 'corner' and the word 'edge'. When the registration certificates refers to rounded corner it cannot mean rounded edge as well. respondent No. 1 .it appears, became conscious of this difference between a corner and an edge as in the affidavit filed by him he refers to the 'tiles of round edges corners at various places. If I accept this contention of Mr. Anoop Singh,it would be unnecessary for me to refer to any further evidence or the judgments referred to by the learned counsel for both the parties.
(14) Hari Dutt who is Public Witness 1 is a glass technologist and expert of glass and ceramic. He was formerly a Deputy Director of Small Industries Service Institute in the Central Government and fellow of the Ceramic Society ofIndia. He is also a member of the Indian Standards Institute pertaining To ISI specifications on glass. He described the process for the manufacture of rounded glass tiles. This evidence may not be strictly relevant for the purpose of section 51-A of the Act but this evidence would show that perhaps it is not possible to get rounded corners in glass tiles without their being rounded edges. Hari Dutt has stated that When sharp edges are heated slightly above the melting temperature of that article it becomesrounded. One of the examples that he gave was that a slab of butter when chilled and cut with sharp edges and which when slightly heated, the corners become rounded and also the sides. Hari Dutt stated that when glass articles with sharp edges are heated above its melting temperature,i.e. about 800C these become rounded on edges automatically due to molecular attraction or due to surface tension and that this rounding up of the edges is a time temperature effect on sharp edges.
(15) The question that then arises is: should respondent No. 1 be denied relief on the ground that registration certificates project him only with regard to rounded corners and would not the rounded edges be covered by the words 'shape and configuration' of the glass tiles. Mr. Gupta is right when he contends that this question would not be relevant for the purpose of decision of this petition. Though, he also said that there could not be tiles with rounded corners without there being rounded edges. It is, thereforee, not necessary to refer to the arguments which were addressed in considerable detail as to whether 'edge' would be included in the word 'corner' and I may for the purpose of decision of the present petition even assume that THE design in question includes rounded edges as well.
(16) I am not quite impressed with the evidence that the design in question bad been published in India prior to the date of its registration.The evidence led by the petitioner is mainly on the point of pre-publication of the design. Anil Singhania (PW 4) has said that be bad gone abroad inMay/June, 1980 from where he had brought one book on glass tiles which showed tiles with sharp and round corners According to Anil Singhania he showed this book to many of his friends and also gave that book to the petitioner during that period. Hari Dutt. Public Witness 1 stated that he had known that glass tiles with sharp corners as well as round corners were being manufactured in India for the last many years. Then evidence has been brought on record by the petitioner to show that be was in fact manufacturing tiles withround corners as well in 1980. Satwant Singh, Public Witness 6 is one of his customers.He stated that he did purchase round corner glass tiles from the petitioner during the year 1980-81. Shyam Mittal, Public Witness 5 stated that he purchased some tiles with round corners from the petitioner in the year 1980 and got these fixed at his residence. No documentary evidence has been brought on record to show pre-publication of the design. I cannot rely on the oral statement of these witnesses. Shyam Mittal is the maternal uncle of the petitioner. Anil Singhania is his wife's brother. Public Witness 6 stated that though he had got bill As well as challan for having taken delivery of the round corner tiles from the petitioner, he has not filed the same in the Court. It has been brought on record that while the tiles of the design manufactured by respondent No. 1have been affixed on various public places, tiles manufactured by the petitioner have not been so affixed and the only evidence that the petitioner could produce was that of his maternal uncle for having affixed round corner tile sat his residence. I would, thereforee, hold on the evidence in the case that THE design had not been published in. India prior to the date of its registration.
(17) Then the question that arises is as to whether the design is merely a trade variant or a new and original design. Of course I am not concerned with the process involved, though Mr. Anoop Singh wanted to show that the tiles with round corners could be produced by merely subjecting the sharp corner tiles to a particular heat. The test is solely of the eye.
(18) Reference was made to a case reported as Hajl Sayed S ikandarShah Sayed Habib Shah v. Mian Rahim Bakhsh Mian Fakir Mohd. AIR1940 Pes 38 In this case a registered design was granted for a certain kind of cap. Formerly these caps were made in the following manner :
'EMBROIDERY was sewn on a piece of cloth. Under that cloth was sewn a lining in which ribs were made and in these ribs were inserted pieces of wick which were called 'bates' or 'paltas.'Subsequently it became the habit to make the background for the embroidery stiffer. The embroidery was sewn on to a piece of canvas and between the actual embroidery and the canvas was placed a piece of leather or later of brown paper on which the pattern was stencilled. Owing to the thickness of this background it was at first found impossible to insert ribs so that the outside embroidery was left of more or less smooth surface whereas formerly it bad ribs. Further stability was also given to the caps by covering the foundation with glue. The respondent claimed that he discovered the manner of being able to make ribs on this type of caps by using a strong sewing machine. The question was whether this is a 'new'or 'original' design within the meaning of the Act.'
It was held that this was not a new or original design within the meaning of the Act. The Court observed as under :
'THE shape and configuration of the cap which has been registered by the respondent is admitted by him to be the same as was inexistence before a stronger foundation was given to the embroidery and it appears to me that what the respondent has done is to invent a new principle of construction. To the eye, which is to be the sole judge in these cases, there is no difference in shape,configuration pattern or ornament, although there is a different mode and principle of construction.'
Though, Mr. Anoop Singh stated that this judgment was on all fours in the present case, I do not think so as the observation quoted by me above wouldshow.
(19) In Western Engineering C. v. Paul Engineering Co. : AIR1968Cal109 the petitioner was the proprietor of a design in respect of lacks for cycle and the novelty and the originality was in respect of the shape and configuration of the design of the lock as was illustrated in the annexure to the certificate of registration. The respondent claimed to have a monopoly in the right to manufacture and sale of cycle lock of a design closely similar or identical to that of the petitioner and got the design registered. the petitioner challenged the validity of this design. After setting out provisions of Section 2(5) and Section 51-A(1) of the Act the Court observed that by reading the two sections together, it appeared that a subsequent design should be the self-same or identical design registered earlier and that the design registration of which is sought to be cancelled under Section 51-A must not have different features of shape, configuration pattern etc. from those of the earlier design. The Court then held that the words 'the design' in Section 51-A should be judicially construed as 'the substantially same design' and,therefore, applying these principles it was further held that :
'...THEpoints 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.'
(20) In B. Chawla & Sons v. Bright Auto Industries 1981 Rlr 373 a Division Bench of this Court held that 'the basic question however, that remains in proceedings under section 51-A of the Act is whether the Registered design is new or not or original or not. If the answer is in the negative, much would not turn on the design having been imitated with or without modification by others in the like trade.' In this case B. Chawla & Sons had got registered a design in respect of mirror being the new or original design.Bright Auto Industries prayed for cancellation of the design contending that it was not a new design and it bad no originality about it and that such designs were common in the market. The novelty in the design was stated to be on account of the further curve in the slopping upper length side as it was not disputed that rear view mirrors, rectangular in shape with rounded edges,width sides curved or sloping and the lower length side also sloping were commonly available in the market. The only consideration before the Court was whether a further curve on either side in the sloping upper length sides makes the design in respect of rear view mirror a new or original design which B. Chawla & Sons were entitled to get registered and which was not liable to cancellation under section 51-A of the Act. The Court repelled the arguments of B. Chawla & Sons that the addition of the further curve on either side was an appeal to the eye and that it was their design and thus entitled to protection. The Court observed that '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 registrable.' The Court further observed as under :
'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 anyjustification, whatsoever.'
It will also be advantageous to refer to the decision of the single Judge in this case which was affirmed in appeal. This decision is of M.S. Joshi, J. and is reported in : 1977RLR158 , The learned Judge observed as under :
'IT goes without saying that in the matter of novelty the eye has To be the ultimate arbiter and the determination has to rest on the general ocular impression. To secure recognition for its newness or originality it is imperative that a design identical with or even materially similar to the relevant design should not have been published or registered previously. A slight trivial or infintesinal variation from a pre-existing design, will not qualify it for registration. Taking into account the nature of the article involved the change introduced should be substantial. It is not necessary to justify registration that the whole of the design should be new, he newness may be confined to only a part of it but that part must bea significant one and it should be patent enough to impart to the whole design a distinct identity, unless registration is sought for the said part alone.'
And with reference to the controversy involved in the suit before him, it was observed as under:
'THE rear view mirrors previously selling in the market did not carry this type of curvity in their upper side, it cannot be denied,but this innovation would appear by itself on a fair assessment To be too petty to earn for them the credit due to a new originaldesign. The addition of the said small feature could not possibly have involved any appreciable intellectual endeavor and it shall have to be termed as a routine type of trade variation. I am constrained to find that the respondents' design being neither New nor original it does not deserve protection to the detriment of the trade in general and by granting the petition I order cancellation of the registration of the said design under Section 51-A the DesignsAct, 1911.'
(21) The decision of the Calcutta High Court in Western EngineeringCo. v. Paul Engineering Co. (supra) was referred to in the decision of this Court in Mis. Western Engineering Co. v. M/s. America Lock Co. . It was held in this case that generally the test for novelty and originality was dependent on determining the type of mental activity involved in conceiving the design in question. If the design was original, then THE designer must have conceived something new ; if the design was 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 that. It was further held that in order to determine whether a design was new or original there must be substantial difference from the designs which were known or had been published prior to the date of registration and that what such a substantial difference was, was a question upon which no general principle could be laid down at all and it must depend upon the particular facts in each case and further that in one case a quite small variation in the details of a design might be enough to make the design something quite different from an existing design. On the other hand, it was observed, there were cases even where quite large alterations in detail leave two designs for all practical purposes of the same and that the Court has to consider and look at THE designs in question with an instructed eye and say whether there was or was not such a difference between that which has been published previously and the registered design as to entitle the proprietor of the registered design to say that at the date of registration there was a new or original design and thereforee properly registered. The Court held that the design of cycle lock of Western Engineering Company was not new and original. In the Calcutta case Western Engineering Co. v. Paul Engineering Co. (supra) the design of respondent Paul Engineering Co. was cancelled on the ground that it was similar to the design already registered that of Western Engineering Co. An argument was though raised by Paul Engineering Co. in the Calcutta case that design of Western Engineering Co. was also not original. But this argument was not allowed to be raised on the ground that a substantive petition under section 51-A of the Act ought to have been filed praying for cancellation of the registration of the design of Western Engineering Co. if that was not new or original.
(22) In Wingate's Registered Design case (1935)52 Rpc 126 it was observed that:
'...WHATa substantial difference is, is a question upon which no general principle can be laid down at all ; it must depend on the particular facts in each case. In one case a quite small variation in the details of a design may be enough to make THE design something quite different from an existing design.On the other hand, there are cases even where quite large alterations in detail leave two designs for all practical purposes thesame. The Court has to consider and look at the design in question with an instructed eye and say whether there is or is not such a substantial difference between that which had been published previously and the registered design as to entitle the proprietor of .the registered design to say that at the date of registration that was a new or original design and thereforee properly registered.'
(23) In Kestos Ld. v. Kempat Ld. & Vivian Fitch Kemp (1936)53 RPC139 Luxmoore J. was of the opinion that the question as to whether a design was new or original was a matter of fact to be decided by the eye. If the same shape or pattern, or one substantially similar, had previously been thought of in connection with the type of article in question and the ideapublished, (that is, made available to the public) then the design was neither new nor original. It was also observed 'that the eye alone is to be the judge of identity for the purpose of deciding whether a particular design has been anticipated or not by another has long been settled law.'
(24) In Allen West & Co, Ld. v. British Westinghouse Electric and Manufacturing Co. Ld. (1916)33 Rpc 137 it was observed that there must be.not a mere novelty of outline, but a substantial novelty in the design having regard to the nature of the article.
(25) A reference was also made to Copyright in Industrial Designs(Fourth Edition) by A.D. Russell Clarke on the submission that mere trade variants were not registerable. At page 38 learned author states 'A tradevariant is, thereforee, some embellishment (useful or otherwise) which isknown, and sometimes, though not always, used in connection with a particular class of article or class of work. That a feature is shown in a single trade catalogue is not sufficient to make it a trade variant.' He further observed that in an infringement action the fact that the defendant hardcopies the plaintiff's design might be good evidence tending to show that THE design was novel.
(26) Thus, Mr. Anoop Singh submitted that change from sharp Corner to a round corner is at best a trade variant and registration of the design should not have been permitted. He submitted that it was not disputed that sharp corner glass tiles with mottling effect were in existence much prior to the date of registration of the design.
(27) Mr. Gupta however, submitted that the design was new and original and was registerable. He stated that the idea was conceived by respondent No. 1 and that the question if examined from the angle of the eye,he should succeed inasmuch as the perspective purchaser would certainly make a distinction between the tiles with round corners and those with sharp corners. He stated that even though the process by which round corner tiles were made might not be unknown, this was not relevant factor for the purpose of cancellation of the design under Section 51-A of the Act. He submitted that it was a design with new shape and feature and was not a trade variant.He distinguished the decision of this Court in B.R- Chawla & Sons v. BrightAuto Industries (supra) on the ground in that case there was only a very small variation while the change made by him in the present case was substantial.He stated that it was a new and novel idea conceived by him and on that basis the design was devised.
(28) Tiles with sharp edges and corners were already in vogue prior to the registration of the impugned design. Even these had mottling design on the top and side walls. The respondent has brought out tiles with rounded edges and corners. Process by which this has been achieved is not relevant. I have examined both types of tiles with sharp corners and round corners. Though,the tile with round corners may look a little different but I would not say that it is altogether a new or a different design. Merely because tile with round corner was conceived by the respondent he could not get it registered as a new design as envisaged under Section 2(5) of the Act. Some thinking or mental process has to be gone into while effecting even a small change/variation in the existing design. When it is said that the design should be original or new it does does not mean that it should be a copy or an immitation or a variation of the existing design. It should be something likeinventive. By making the corners from sharp to round, it cannot be said that some new design has been created from ane's own mind and thought. 'New'would be something you develop and which was not earlier in existence. It should be striking new design. Round corner tiles may look fresh, but I would not say that there is any novel idea involved in bringing out a tile with roundcorner.
(29) If I apply the law and the principles as enunciated in the judgments referred to above, the design in question would merely be a trade variant of the existing design of tiles with sharp corners and mottling effect. Both THE designs are for all practical purposes the same. It cannot be said that THE design which has been got registered by the respondent is something new or original.
(30) I would, thereforee, allow the petition and would cancel the designNo. 150873 in clause 4 in respect of tiles. There will, however, be no order asto costs.