1983 (5) TMI 261 - HC - Indian Laws

Design No. 146498 Cancelled under Designs Act: Lack of Novelty & Prior Publication

The court ordered the cancellation of Design No. 146498 dated January 5, 1978, under the Designs Act, 1911, due to prior publication and lack of novelty. ... Cancellation of registered design on grounds of prior publication - novelty and originality of a design - publication in India as displacing novelty - design judged solely by the eye - design does not include a mode or principle of construction - scope of registration confined to the pattern applied to the article - cancellation under Section 51-A of the Designs Act, 1911Cancellation of registered design on grounds of prior publication - novelty and originality of a design - publication in India as displacing novelty - design judged solely by the eye - design does not include a mode or principle of construction - scope of registration confined to the pattern applied to the article - Design No. 146498 dated January 5, 1978 is liable to be cancelled - HELD THAT: - The Court construed the registered right narrowly as confined to the ornamental pattern: a rectangular form with multiple diamond-shaped spots applied to the side panels of match boxes. The statutory definition requires that a design be judged solely by the eye and excludes modes or principles of construction; accordingly the Court treated grooves/projections and the friction surface as functional/mechanical features distinct from the ornamental pattern claimed. On the substantive question of prior publication and novelty, the Court found unimpeachable prior publication in Indian Patent Specification No. 29046 (dated 17-9-1942, published 19-5-1943) which discloses the striking/igniting surface on the side of a match box with an identical rectangular pattern of diamond-shaped spots, and therefore deprives the registered design of novelty. The Court further accepted evidence of prior use and publication abroad (Swedish match boxes collected and brought into India) and of publication in trade periodicals (e.g., Newsletter and Vesta) which had circulation in India, all of which supported prior publication. The Court applied the ocular test, comparing the registered sheets with the prior disclosures and concluded there is no substantial visual difference; hence the design is not new or original. For these reasons the registration was held liable to be cancelled under the statutory cancellation provision. [Paras 10, 11, 15, 16, 18]Design No. 146498 dated January 5, 1978 is cancelled on the grounds of prior publication in India and lack of novelty/originality.Design judged solely by the eye - infringement contingent on subsisting registration - Alleged infringement by the defendants would have amounted to infringement if the registered design had subsisted - HELD THAT: - The defendants had marketed match boxes bearing an identical rectangular pattern with multiple diamond-shaped spots. The Court observed that, had the registration remained valid, application of an identical ornamental pattern to competing match boxes would constitute infringement. However, because the registration was cancelled on the grounds stated, the question of injunctive relief on the basis of that registration no longer arises for adjudication. [Paras 19]Defendants' articles would have infringed the registered design if it had subsisted, but infringement issue is moot following cancellation of the registration.Final Conclusion: The petition for cancellation succeeds: Design No. 146498 (dated January 5, 1978) is cancelled for prior publication in India and lack of novelty; consequentially the infringement suit is dismissed and the Controller of Designs, Calcutta is to be informed; parties to bear their own costs. Issues Involved:1. Whether the Design No. 146498 dated January 5, 1978, is liable to be cancelled on the grounds mentioned in the application for cancellation under Section 51-A of the Designs Act, 1911.2. Whether the defendant is infringing the plaintiff's registered design.3. Relief.Issue-wise Detailed Analysis:Issue No. 1: Whether the Design No. 146498 dated January 5, 1978, is liable to be cancelled on the grounds mentioned in the application for cancellation under Section 51-A of the Designs Act, 1911.The court first examined the statutory provisions relevant to the case, particularly the definitions of 'design' and 'proprietor of a new or original design' under Sections 2(5) and 2(14) of the Designs Act, 1911, respectively. Section 43 allows the Controller to register a new or original design not previously published in India. Section 51-A provides for the cancellation of a registered design on grounds including prior publication and lack of novelty or originality.The court noted that Wimco did not specifically state the novelty claimed for their design before the Controller. The novelty claimed by Wimco's counsel was in the grooves and projections on both sides of the matchbox panels and the ornamental surface pattern. However, the court found that these features were merely functional and mechanical devices, not novel or original.The court then examined the evidence of prior publication, starting with Government of India Patent Office Specification No. 29046 dated September 17, 1942, which showed an identical pattern of striking and igniting surface dots on matchboxes. This constituted prior publication as it was available to the public and described with reasonable clarity.Further evidence of prior publication was found in a matchbox (SM-1) made in Sweden by J. John Master & Company Ltd., which contained the identical pattern. Shri S. Maheshwaran's testimony and supporting documents established that these matchboxes were available in 1976, before Wimco's registration.Additionally, publications in the magazines 'NEWSLETTER' and 'VESTA' before the registration date also showed the identical pattern. The court found that these magazines were subscribed to and circulated in India, constituting prior publication.The court concluded that Design No. 146498 was not new or original and had been published in India prior to its registration. Therefore, the design was liable to be cancelled on both grounds.Issue No. 2: Whether the defendant is infringing the plaintiff's registered design.The court noted that the defendants had introduced matchboxes with an identical pattern/design as Wimco's registered design. However, since the court had already found that the design was liable to be cancelled, this issue did not arise. The court stated that if the design had not been cancelled, the defendants' matchboxes would have constituted an infringement.Relief:The court ordered the cancellation of Design No. 146498 dated January 5, 1978, under the Designs Act, 1911, and directed the Controller of Designs, Calcutta, to be informed accordingly. Consequently, Wimco's suit was dismissed. Each party was ordered to bear its own costs.Conclusion:The court's judgment comprehensively addressed the issues of prior publication and lack of novelty or originality, leading to the cancellation of Wimco's registered design and the dismissal of their infringement suit.