IN THE HIGH COURT AT CALCUTTA SPECIAL JURISDICTION ORIGINAL SIDE PRESENT : THE HON’BLE JUSTICE PATHERYA AID No.2 of 2008 YASH PLASTOMET PVT.LTD.VERSUS THE ASSISTANT CONTROLLER OF PATENTS & DESIGNS & ANR.
For the Appellant : Mr.Ranjan Bachwat, Adv., Mr.Debnath Ghosh, Adv.For the Respondent : Mr.Anjan Sen, Adv., Mr.Sayantan Bose, Adv., Mr.Sourav Moitra, Adv., Mr.Avirup Chatterjee, Adv.Heard on : 10.02.2011, 15.02.2011,22.02.2011, 01.03.2011, 10.03.2011, 15.03.2011, 17.03.2011 & 24.03.2011.
Judgement on : 2nd September, 2016.
: This appeal has been filed by the appellant from order dated 16th January, 2008 whereby the application of the appellant for cancellation of the respondent no.2’s design no.187706 dated 2nd January, “Container” registered under Class 09-03 was dismissed.
2002 for Counsel for the appellant submits that the respondent no.2 has obtained registration of design contained in “Container”.
In October 1997 a publication was made in the Andhra Pradesh Times.
There can be no registration of a design prior published.
The design was also registered earlier.
U.S.Patent was granted to the design in May 1998.
The registered design is functional and has no independent utility nor can it be sold separately.
The registration granted on 2nd January, 2002 is the second registration of a design which is not a design under Section 2(d) of the Designs Act, 2000.
The fiRs.registration was granted in design 177764 and 180657.
Section 4 of the Designs Act, 2000 (2000 Act) prohibits registration of – “A design which – a) is not new or original; or b) has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration; or c) is not significantly distinguishable from known designs or combination of known designs; or d) xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx, shall not be registered.” “Design” has been defined in Section 2(d) and must be in an “article” which has been defined in Section 2(a).For it to be entitled to registration it must be new, original, not in use, not published earlier to the filing of application for registration and must be distinguishable from known designs.
None of these conditions have been satisfied in the instant case as the design was in use prior to the date of application, was neither new nor original had been published in Andhra Pradesh Times, had been disclosed to the public and had no distinct or distinguishing feature, and the application filed by the appellant ought to have been allowed and design 187706 cancelled.
Reliance is placed on AIR (1981) Delhi 95, for the proposition that addition of a further curve will not make the variation a striking one to constitute novelty.
AIR (1968) Cal 109 for the proposition that unless there is substantial difference from the earlier registered design will not make the design new or original.
Prior registration is prior publication as held in MIPR20093202.
For the design being functional reliance is placed on AIR (1983) Delhi 255.
Opposing the said appeal Counsel for the respondent no.2 submits that Paragraph 21 of the statement for cancellation be looked into.
Sections 2(a) and 2(d) be also considered.
Reliance is placed on (2008) PTC109to highlight the objectives of the Designs Act, 2000 vis-à-vis the 1911 Act, namely, to create the required incentive for design activity and remove impediments to free use of available designs and it is only for this reason that the definition of “article” and “design” was enlarged and “original” defined.
“Lid” and “Container” are articles per se and can be registered.
In 2002 design no.187706 in “Container” was registered.
There has been no prior registration in respect of the present design.
Paragraph 3.71 of Russell-Clarke and Howe on Industrial Designs 7th edition has clearly stated that a design may be new and original by virtue of an omission so also addition.
According to Narayanan on Law of Copyright and Industrial Designs the design as a whole must be looked into and it must appeal to the eye of the customer not Court as held in (1988) 16 RPC343 Reliance is also placed on (2001) 21 PTC23 Design 187706 exhibits a different design and in a complaint filed the burden is on the complainant to discharge as held in (2006) 43 PTC44 AIR (2008) SC2520 Paragraph 3.149 of Russell-Clarke, (2000) PTC177and (2005) 31 PTC129be also looked into.
Multiple containers was cited for prior publication, but it has not been stated which container has been prior published.
Therefore, the appeal fails and the order of the Controller be upheld.
Cancellation of design 187706 has been sought vis-a-vis design 177764 and 180657 but except for the registration certificate of 2002, no other certificate has been annexed to the pleadings in appeal.
In reply Counsel for the appellant submits that the judgments relied on by the respondent will not aid it after the 2000 Act.
Section 2(d) and the 1911 Act is not extended to lines as under the 2000 Act.
There is no novelty in lines.
Cancellation under the 2000 Act is wider than under Section 51A of the 1911 Act.
The counter-statement at Page 53 be looked into.
The container in respect of the conical pail was pre-published.
Container is a trade variant and its skirting is functional.
2000 PTC177is distinguishable so also (2005) 31 PTC129 (2001) 21 PTC23is a case of injunction as both filed cancellation applications and no order was passed.
AIR (2008) SC2520was a case of surface pattern.
Having considered the submissions of the parties, in October 1997 a design in “container” was published in Andhra Pradesh Times.
A design in “container” was also registered in design Nos.177764 and 180657.
An application for second registration was filed and registration allowed on 2nd January, 2002.
The appellants sought cancellation of the said registered design of 2002 which by order dated 16th January, 2008 was dismissed by the Assistant Controller of Patents and Designs.
According to the appellant the impugned design in the “container” of the respondent no.2 was registered for a second time in January 2002 which is not permissible as the design was not only previously registered but had been prior published too in October 1997 in Andhra Pradesh Times.
The design was also patented in the U.S.in March 1998.
Therefore, registered design No.187706 was liable to be set-aside as the same was neither new nor original and, therefore, was not a design as defined under Section 2(d) of the 2000 Act.
Its purpose was functional and did not have any independent use.
On the other hand, the respondent no.2 has tried to highlight the difference in registered design no.187706 of 2002 and registered design Nos.177764 and 180657, so also the U.S.patented design.
Each of the issues raised by the appellants was considered by the adjudicating authority, namely, the respondent no.1 in detail.
A visual comparison of each of the registered design was also undertaken and dealt with.
Admittedly the design of which complaint is made is in the “Container”.
The publication of 27th October, 1997 relied on shows on display a number of containers with lids, but the picture is not clear.
The appellant has also not marked anyone container in particular to show prior publication of design 187706 of 2002.
Design 177764 and 180657 was neither produced before the adjudicating authority nor was it annexed to the complaint.
Even in appeal design 177764 and 180657 were not produced, and there is no reason to differ with the findings of the adjudicating authority with regard to prior publication and the finding of the adjudicating authority cannot be faulted.
Before the adjudicating authority the design registered by Poranunt Thailand was not pursued and need not be addressed.
Design 187706 has been registered in respect of novelty in shape and configuration alone and it has been specifically stated that no claim is made in respect of mechanical or other action mechanism.
Therefore, the submission with regard to the design having a mere mechanical function and thus not registrable is unfounded.
The “container” is an article and has been registered under Class 0903 of the 2000 Act.
The adjudicating authority has considered Class 09-03 of the 2000 Act and thereafter held that “container” is an “article” in itself and not a part of the “article”.
The adjudicating authority also considered the decision of the Controller in respect of registered design no.191652 on the same issue which has not been reversed.
At hearing in appeal too it has not been brought to the notice of this Court that the order of the Controller on the same issue has been set-aside.
The adjudicating authority had the opportunity to look at design no.177764 and 180657 and it is only after looking at the said designs vis-a-vis the 2002 design the adjudicating authority came to a conclusion.
In appeal, design no.177764 and 180657 were not produced and there exists no reason to differ with the reasonings of the adjudicating authority.
No allegation of bias or not giving a hearing by the adjudicating authority has been canvassed by the appellant, therefore, this appeal for the above reasons merits no order and is dismissed.