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Designs Act, 2000: s. 2(d),2(g), 4, 11 r/w r.11 and Form-1 of Designs Rules, 2001 – `Design’ – Registration of – Purpose of – HELD: Is protection of intellectual property right of new and original design and to benefit the person for his research and labour put in by him to evolve the new and original design – The design which is sought to be registered is to be applied to finished article which may be judged solely by eye appeal – Name of article on which design is sought to be transcripted has to be mentioned at the time of registration – Both the things are required to be together, the design and article on which design is sought to be applied – Design Rules, 2001 – r.11 r/w Form 1 – Intellectual Property – Copy Right. s.2(j) – `Proprietor’ – Connotation of. s.4 – Expression “new or original” – HELD: Means that design which has been registered has been invented for the first time and it has not been published anywhere nor made known to the public. s. 19 r/w r.29 of Design Rules, 2001 – Cancellation of Registration – Design registered in India on glass sheet – HELD: Burden is on complainant to show that design which has been registered in India was not original or new – This burden was not discharged – No evidence was produced that design was reproduced on glass sheet or it was prior registered as such in India or any part of the World – Order of Assistant Controller canceling registration was rightly set aside by the High Court – Design Rules, 2001 – r.29. s. 37 – Affidavit evidence – Admissibility of – Evidence. Words and Phrases: Expressions `design’, `eye appeal’, `new and original’ and `proprietor’ – Connotation of in the context of Designs Act, 2000. The respondent was in the business of manufacturing and marketing of figured and wired glass sheets since 1981. It claimed to be the originator of new and original industrial designs applied by mechanical process to glass sheets. On an application by the respondent u/s 51 of the Designs Act, 2000, the design of the respondent was registered on 5.11.2002 as Design no. 190336, and it was to remain valid for a period of ten years from the date of its registration. The respondent marketed the glass sheets of the said design under the name of `Diamond Square’. The respondent issued a notice on 21.5.2003 cautioning other manufacturers from infringing its copyright of the said registered design. According to the respondent, as in the meanwhile the appellant and its associate started imitating the said registered design, it filed Civil Suit No. 1 of 2004 against the appellant, and obtained a restraint order. The appellant in turn filed an application u/s 19 of the Act before the Controller of Patents and Designs for cancellation of respondent’s registration of Design No. 190336 mainly on the ground that the design had already been previously published in India and abroad and thus it was not a new or original one. The appellant relied on a catalogue of the German Company which had developed Design No. 2960-9010 in the year 1992, and a document downloaded from the official website of the Patent Office of United Kingdom indicating registration of the design. The stand of the respondent was that the German Company was engaged in the manufacture of engraving rollers only and it never manufactured engraved glass sheets; that the said German Company had sold the embossing rollers covered by Design No. 2960-9010 to the respondents on a condition that all user rights in India under Indian laws would vest exclusively in the respondent for at least five years; and that the Company which had its design registered in United Kingdom never manufactured glass sheets. The Assistant Controller of the Patents and Designs, accepted the case of the appellant and set aside the registration of the respondent. The appeal of the respondent was allowed by the High Court giving rise to the instant appeal. Dismissing the appeal, the Court HELD: 1.1 The sole purpose of the Designs Act,2000 is protection of the intellectual property right of the original design. The object behind this enactment is to benefit the person for his research and labour put in by him to evolve the new and original design. Such original design which is new and which has not been available in the country or has not been previously registered or has not been published in India or in any other country prior to the date of registration shall be protected for a period of ten years. [para 6] [415-F, G; 416-E] 1.2 `Design’, as has been defined in section 2(d) of the Act, means that a feature of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms by any industrial process, and which is registered with the registering authority for being produced on a particular article by any industrial process whether manual, mechanical or chemical or by any other means which appears in a finished article and which can be judged solely by eye appeal. The definition of design read with application for registration and Rule 11 with form 1 makes it clear that the design which is registered is to be applied to any finished article which may be judged solely by eye appeal. [para 8] [419-D-E] 1.3 A conjoined reading of the provisions of s.2(d) and s.4 of the Act and Rule 11 of the Designs Rules, 2001 with Form 1 in which the application for registration is required to be given shows that a particular shape or configuration is to be registered which is sought to be produced on any article which will have visual appeal; and the name of the article on which the design is sought to be transcripted has to be mentioned at the time of registration. The respondent moved an application filling Form-I stating that the roller which has been manufactured by the German company with that design shall be reproduced on the glass. Therefore, when the application was filed by the respondent for registration, it was registered on the basis that the roller which will be used by mechanical process will bring the design on a glass which is registered. Therefore, what is sought to be protected is the design which will be reproduced on the glass by way of mechanical process and that design cannot be reproduced on glass by anybody else. There is no evidence to show that the design in question which is reproduced on the glass sheet was either registered in India or in Germany or for that matter in United Kingdom. [para 8] [419-E-F; 422-A-D] Industrial Designs (Seventh Edition) by Russel- Clarke and Howe, page 74 – referred to. 1.4 The concept of design is that a particular figure conceived by its designer in his mind and it is reproduced in some identifiable manner and it is sought to be applied to an article. Therefore, whenever registration is required then those configuration has to be chosen for registration to be reproduced in any article. The idea is that the design has to be registered which is sought to be reproduced on any article. Therefore, both the things are required to go together, i.e. the design and the design which is to be applied to an article. [para 8] [425-F-G] 2.1 The expression, “new or original” appearing in Section 4 means that the design which has been registered has not been published anywhere nor has it been made known to the public. The expression, “new or original” means that it had been invented for the first time or it has not been reproduced by anyone. [para 8] [419-B-C] 2.2 The burden was on the complainant to show that the design was not original or new. The burden was not discharged by the complainant. It only tried to prove on the basis of the letter of the German company that they produced the rollers and sold it in market but it was nowhere mentioned that these rollers have been reproduced on the glass sheets by the German company or by any other company. [para 8] [420-B-C] 2.3 The complainant relied on the correspondence of the German company which produced the rollers and sold it to the respondent and it gave the proprietary right to the respondent company. `Proprietor’ as defined in section 2 (j) of the Act means any person who acquires the design or right to apply the design to any article, either exclusively of any other person or otherwise, in respect and to the extent in and to which the design or right has been so acquired. Therefore, this right to reproduce the design on an article has been given by the German company to the respondent. [para 8] 2.4 The expression `new or original’ in this context has to be construed as to whether the design has ever been reproduced by any other company on the glass sheet or not. There is no evidence whatsoever produced by the complainant either before the Assistant Controller or before any other forum to show that this very design which has been reproduced on the glass sheet was manufactured anywhere in the market in India or in United Kingdom. There is no evidence to show that these rollers which were manufactured or originally designed by the German company were marketed by the said company to be reproduced on glass sheets in India or even in United Kingdom. The proprietorship of the design was acquired by the respondent from the German company and there is no evidence on record to show that these rollers were used for designing them on the glass sheets in Germany or in India or in United Kingdom. [para 8] [420-C-F] 2.5 What is required to be registered is a design which is sought to be reproduced on an article. It was the roller which was designed and if it is reproduced on an article it will give such visual feature to the design. The German company only manufactured the roller and this roller could have been used for bringing a particular design on glass, rexin or leather. But the instant case relates to the reproduction of the design from the roller on glass which has been registered for the first time in India and the proprietary right was acquired from the German company. The contents of the letter of the German Company are very clear. It shows that it was designed in 1992 and was marketed in 1993. It nowhere says that the design was reproduced on a glass sheet. No evidence was produced by the complainant that this design was reproduced on a glass sheet or it was registered in Germany or in India or in any part of the world. As in the instant case the design sought to be reproduced on a glass-sheet has been registered and there is no evidence to show that this design was registered earlier to be reproduced on glass in India or any other part of the country or in Germany or even for that matter in United Kingdom, therefore, it is for the first time registered in India which is new and original design which is to be reproduced on glass sheet. Similarly, the design which was registered in the name of the respondent was not published in India or in Germany. Therefore, it was a new and original design. [para 8-9] [420-F-H; 421-A-C; 425-H; 426-A-C; 427-G] M/s. Domestic Appliances and Others v. M/s. Globe Super Parts 1981 PTC 239; and The Wimco Ltd. Bombay v. M/s. Meena Match Industries, Sivakasi & Ors. 1983 PTC 373;and Gammeter v. Controller of Patents & Designs and others A.I.R.1919 Cal.887 – referred to. Dover Ltd. v. Nurnberger Celluloidaren Fabrik Gebruder Wolff [1910] 27 R.P.C. 498; and Elzie Chrisler Segar, Deceased. V. O. & M. Kleeman Ld. ([1941] 58 R.P.C. 207 – referred to. 3.1 As regards the eye appeal, one has to be very cautious unless two articles are simultaneously produced before the Court, then alone the Court will be able to appreciate. But in the instant case no design reproduced on the glass-sheets was produced before the Assistant Controller or the High Court or before this Court by the appellant to appreciate the eye appeal. The appellant could have produced the design reproduced on glass-sheet which it claimed to have been manufactured in United Kingdom or Germany. That could have been decisive. [para 10] [427-H; 428-H; 429-A] Interlego A.G. v. Tyco Industries Inc. [1988] 16 R.P.C. 343 – referred to. 3.2 The evidence which was led by the appellant was a document downloaded from official website of the United Kingdom Patent Office pertaining to a patent that may be applied to glass sheets. No evidence has been produced to show that the Company in United Kingdom had reproduced this design on glass sheet in U.K. The Assistant Controller has only observed that he has made a visual comparison of the U.K. registered design No.2022468 with the impugned design No.190336 which was prior published and he was satisfied that both the designs make same appeal to the eye and there was sufficient resemblance between the two designs. This was not accepted by Single Judge of the Calcutta High Court and for the good reason. [para 14] [431-E-H; 432-A] 3.3 From the judgment of the High Court it appears that in fact the pattern of the design which is reproduced by the respondent on the glass-sheet and the design and the pattern of the United Kingdom shown in the document by the complainant were not common. The affidavit sworn by the Liaison Executive of the respondent shows that he had ascertained from the proprietor of the design registered in United Kingdom and they have never manufactured glass-sheet of the design registered. This affidavit evidence of the respondent has remained un-rebutted. Secondly, the Assistant Controller has not properly compared the two designs and has not indicated as to how he found that the two configurations or patterns are identical. The finding recorded by the Assistant Controller is most inconclusive and it does not give any assurance that it was a proper comparison of the two patterns by the Assistant Controller. The original glass pattern of the respondent was produced. The complainant has not produced the pattern which was reproduced on the glass-sheet in the United Kingdom. If both the glass-sheet patterns were placed before the Single Judge or before this Court a finding could have been recorded. From the glass-sheets placed before this Court with all dimensions along with a copy of the print out of the deign published in United Kingdom, it is clear that there is no comparison between the two. From the visual appeal, the Single Judge has rightly concluded that there is no comparison of pattern or configuration of the two designs. Hence on this count also the view taken by the Assistant Controller does not appear to be correct and the view taken by the Single Judge of the High Court is correct. [para 14] [432-H; 433-A-H; 434-A] Dipankar P. Gupta, Jaideep Gupta, Saurav Banerjee, S. Majumdar and Pranab Kumar Mullick for the Appellant. Ashok Kumar Desai, Huzefa Ahmadi, Harin P. Raval, Raghavendra S. Srivatsa, Jasani and Abhijat P. Medh for the Respondent.

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CASE NO.:
Appeal (civil) 3185 of 2008

PETITIONER:
Bharat Glass Tube Limited

RESPONDENT:
Gopal Glass Works Limited

DATE OF JUDGMENT: 01/05/2008

BENCH:
A.K.MATHUR & ALTAMAS KABIR

JUDGMENT:
J U D G M E N T 
 CIVIL APPEAL NO. 3185 OF 2008
[Arising out of S.L.P.(C) No.16321 of 2006]

A.K. MATHUR, J.

1. Leave granted.

2. This appeal is directed against the order dated 
17.8.2005 passed by the Calcutta High Court whereby 
learned Single Judge has set aside the order passed by the 
Assistant Controller of Patents & Designs, Kolkata dated 
20.9.2004 whereby the Assistant Controller has cancelled 
the registration of the respondent herein and held that 
there was no material on record to show that the design had 
previously been applied to glass sheets. It was also held 
by learned Single Judge that the order impugned considered 
with the materials on record, including in particular the 
computer print-outs clearly revealed that the respondent 
has only compared the pattern and/or configuration 
considered the visual appeal thereof, but not the visual 
appeal of the pattern and/ or configuration on the article. 
In other words, the Assistant Controller has not 
considered the visual appeal of the finished product. The 
visual effect and/or appeal of a pattern embossed into 
glass sheets by use of embossing rollers could be different 
from the visual effect of the same pattern etched into 
glass sheets manually. This aspect was not considered. 
Aggrieved against this order passed by learned Single 
Judge, the present appeal has been filed by the appellant.

3. In order to appreciate the controversy involved 
in the present appeal, a few facts may be dilated here. The 
respondent herein claimed to carry on business inter alia 
of manufacture and marketing of figured and wired glass 
sheets since 1981. The respondent claimed to be the 
originator of new and original industrial designs, applied 
by mechanical process to glass sheets. According to the 
respondent, the glass sheets have eye catching shape, 
configuration, ornamental patters, get up and colour shades 
and the same were registered and/or were awaiting 
registration as industrial designs under the Designs Act, 
2000 (hereinafter to be referred to as the Act of 2000) and 
the Rules framed thereunder. For production of glass 
sheets of the design registered as Design No.190336, two 
rollers are required. The rollers are manufactured by M/s. 
Dorn Bausch Gravuren GMBH of Germany (hereinafter to be 
referred as the German Company). According to the 
respondent the rollers are not only used for manufacture of 
glass sheets, but for various other articles including 
plastic, rexin and leather. The respondent placed an order 
on the German Company for supply of the rollers for 
launching a design of figured glass with new and novel 
features not produced before by anyone else. On or about 
29.10.2002 the respondent applied to the Controller of 
Patents and Designs under Section 51 of the Act of 2000 for 
registration of the said design in Class 25-01. The said 
design was duly registered on 5.11.2002 and was to remain 
valid for a period of 10 years from the date of its 
registration. The respondent claimed the exclusive 
copyright in India on the said design applied to glass 
sheets. It was claimed that no other person has any right 
to apply the said design to glass sheets as the respondent 
has exclusive right over the said design on the glass 
sheets. The respondent marketed the glass sheets of the 
said design under the name of Diamond Square and that 
became popular amongst the customers soon after its launch 
in the market. After registration of the said design the 
respondent issued a notice on 21.5.2003 cautioning other 
manufactures from infringing copyright of the respondent 
in respect of the said registered design. But in the 
meanwhile the appellant and its associate IAG Co.Ltd 
started imitating the said registered design, as a result 
thereof the respondent was constrained to file a suit 
being Civil Suit No.1 of 2004 against the appellant in the 
District Court of Mehsana. The respondent obtained a 
restraint order restraining IAG Co. Ltd. from infringing 
the copyright of the respondent against the said design. 
In order to counter-blast the suit, the appellant herein 
filed an application under Section 19 of the Act of 2000 
before the Controller of Patents & Designs for 
cancellation of registration of Design No.190336 in the 
name of the respondent mainly on the ground that the design 
has already been previously published in India and abroad 
and on the ground that the design was not new or original. 
The appellant primarily relied on a catalogue of the German 
Company and letter dated 10.9.2003 of the German company 
addressed to M/s. IAG Co. Ltd. the holding company of the 
appellant stating that the said German Company had 
developed design No.2960-9010 in the year 1992 and the 
other evidence relied on by the appellant was a document 
downloaded from the internet from the official website of 
the Patent Office of the United Kingdom on 22.9.2004 which 
indicated that the same design had been registered in 
United Kingdom in the name of M/s.Vegla Vereinigte 
Glaswerke Gmbh sometime in 1992. As against this the 
respondent filed an affidavit stating that the German 
Company has been engaged in the manufacture of engraving 
rollers and no other goods and it was contended that the 
company was not engaged in manufacture of the goods other 
than engraving rollers. It was contended that the company 
never manufactured engraved glass sheets by using engraved 
rollers. The respondent also relied on the communication 
dated 4.3.2004 of the German company confirming that the 
embossing rollers covered by Design No.2950-910 had been 
sold to the respondent on condition that all user rights 
available in India under Indian laws would vest exclusively 
in the respondent and that the respondent would be entitled 
to exclusive user rights for at least five years. The 
German company was aware of the registration of the Design 
No.190331 and it had no objection to the design being 
marketed by the respondent herein. An affidavit was also 
filed by the Liaison Executive of the respondent company 
that he visited Germany and upon enquiry ascertained that 
M/s. Vegla Vereinigte Glaswerke Gmbh had never manufactured 
glass sheets of the design registered as Design No.2022468 
in the United Kingdom. The respondent also objected to the 
admissibility of the materials alleged to have been 
downloaded from the United Kingdom Patent Office. It was 
also contended that in absence of corroborative evidence, 
such evidence cannot be tendered and it cannot be treated 
as admissible evidence. It was also contended that the 
German Company only manufactured rollers but did not 
produce glass-sheets prepared out of these rollers. 

4. On the basis of the pleadings , learned Assistant 
Controller of Patents and Designs framed following three 
issues for determination:

(i) Whether the design was not new or 
original in view of the fact that the 
roller bearing the design is published 
before the date of registration and the 
registered proprietor is not owner of 
design.
(ii) Whether the design was published 
outside India as well as in India prior 
to the date of application.
(iii) Whether the registered design was 
in public domain due to sale/use of the 
design prior to the date of application 
of the registered proprietor.

The first two issues were decided against the respondent 
and the third issue was not adjudicated since the evidence 
by way of affidavit was not taken on record on technical 
reasons. Hence, the Assistant Controller of the Patents and 
Designs set aside the registration of the respondent. 
Aggrieved against this order the respondent filed a regular 
appeal under Section 36 of the Act of 2000 before the High 
Court. Learned Single Judge after considering the matter 
reversed the finding of the Assistant Controller and 
dismissed the application filed by the appellant for 
cancellation of registration of the respondent herein. 
Aggrieved against this impugned order passed by learned 
Single Judge of the Calcutta High Court the present appeal 
was filed by the appellant-complaint.

5. We have heard learned senior counsel for the 
parties at length and perused the record. Before we 
proceed to decide on the merit of the matter, it would be 
profitable to refer to the relevant provisions of the Act. 
It may be mentioned here that in 1911 the Designs Act was 
passed by the then British Government in India. But with 
the advancement of science and technology and the number of 
registration of the design having increased in India, the 
Act of 1911 was amended wholesale by the Parliament and 
this new Act known as Designs Act, 2000 came to be 
introduced in the Parliament and the same was passed as 
such. The statement of objects and reasons read as under:

 " STATEMENT OF OBJECTS AND REASONS
 Since the enactment of the Designs 
Act, 1911 considerable progress has been 
made in the field of science and 
technology. The legal system of the 
protection of industrial designs requires 
to be made more efficient in order to 
ensure effective protection to registered 
designs. It is also required to promote 
design activity in order to promote the 
design element in an article of 
production. The proposed Design Bill is 
essentially aimed to balance these 
interests. It is also intended to ensure 
that the law does not unnecessarily 
extent protection beyond what is 
necessary to create the required 
incentive for design activity while 
removing impediments to the free use of 
available designs."

Section 2 of the Act of 2000 deals with the definitions and 
the Controller has been defined in Section 2 (b) as 
follows:

 " (b) "Controller" means the 
Controller-General of Patents, Designs 
and Trade Marks referred to in section 
3."

"Copyright" means the exclusive right to apply a design to 
any article in any class in which the design is registered. 
Section 2 (d) defines design which reads as under :

 " (d) "design" means only the 
features of shape, configuration, 
pattern, ornament or composition of lines 
of colours applied to any article whether 
in two dimensional or three dimensional 
or in both forms, by any industrial 
process or means, whether manual, 
mechanical or chemical, separate or 
combined, which in the finished article 
appeal to and are judged 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 the Trade and 
Merchandise Marks Act, 1958 (43 of 1958) 
or property mark as defined in section 
479 of the Indian Penal Code (45 of 1860) 
or any artistic work as defined in clause 
) of section 2 of the Copyright Act, 1957 
(14 of 1957);"

Section 2 (g) defines original which reads as follows:
 " (g) " original", in relation to 
a design, means originating from the 
author of such design and includes the 
cases which though old in themselves yet 
are new in their application;"

Section 2 (i) defines 'prescribed' which means prescribed 
by rules made under this Act. Section 2(j) defines ' 
proprietor of a new or original design' which reads as 
under:
 " (j) "proprietor of a new or original design".-
(i) where the author of the design, for 
good consideration, executes the work 
for some other person, means the 
person for whom the design is so 
executed;
(ii) where any person acquires the design 
or the right to apply the design to 
any article, either exclusively of 
any other person or otherwise, means, 
in the respect and to the extent in 
and to which the design or right has 
been so acquired, the person by whom 
the design or right is so acquired; 
and
(iii) in any other case, means the author 
of the design; and where the property 
in or the right to apply, the design 
has devolved from the original 
proprietor upon any other person, 
includes that other person."

Section 3 deals with the Controller and other officers. 
Section 4 deals with the prohibition of registration of 
certain designs which has relevant bearing on our case. It 
reads as follows:

 " 4. Prohibition of registration of 
certain designs.- 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) comprises or contains scandalous or 
obscene matter,
shall not be registered."
Section 5 deals with the application for registration of 
designs. Section 6 deals with the registration to be in 
respect of particular article. Section 7 deals with 
publication of particulars of registered designs. Section 9 
deals with the certificate of registration which reads as 
under :

 " 9. Certificate of registration.- 
(1) The Controller shall grant a 
certificate of registration to the 
proprietor of the design when registered.
 (2) The Controller may, in case of 
loss of the original certificate, or in 
any other case in which he deems it 
expedient, furnish one or more copies of 
the certificate."

Section 10 deals with register of designs which reads as 
follows:
 " 10. Register of designs.- 
(1)There shall be kept at the patent 
office a book called the register of 
designs, wherein shall be entered the 
names and addresses of proprietors of 
registered designs, notifications of 
assignments and of transmissions of 
registered designs, and such other matter 
as may be prescribed and such register 
may be maintained wholly or partly on 
computer floppies or diskettes, subject 
to such safeguards as may be prescribed. 
(2) Where the register is maintained 
wholly or partly on computer floppies or 
diskettes under sub-section (1), any 
reference in this Act to any entry in the 
register shall be construed as the 
reference to the entry so maintained on 
computer floppies or diskettes.
(3) The register of designs existing 
at the commencement of this Act shall be 
incorporated with and form part of the 
register of designs under this Act.
(4) The register of designs shall be 
prima facie evidence of any matter by 
this Act directed or authorized to be 
entered therein."

Section 11 deals with copyright on registration which reads 
as under :
 " 11. Copyright on registration. 
(1) When a design is registered, the 
registered proprietor of the design 
shall, subject to the provisions of this 
Act, have copyright in the design during 
ten years from the date of registration. 
(2) If, before the expiration of the 
said ten years, application for extension 
of the period of copyright is made to the 
Controller in the prescribed manner, the 
Controller shall, on payment of the 
prescribed fee, extend the period of 
copyright for a second period of five 
years from the expiration of the original 
period of ten years."

Section 12 deals with restoration of lapsed designs which 
reads as under :

 " 12. Restoration of lapsed 
designs.- (1) Where a design has ceased 
to have effect by reason of failure to 
pay the fee for the extension of 
copyright under sub- section (2) of 
section 11, the proprietor of such 
design or his legal representative and 
where the design was held by two or more 
persons jointly, then, with the leave of 
the Controller one or more of them 
without joining the others, may, within 
one year from the date on which the 
design ceased to have effect, make an 
application for the restoration of the 
design in the prescribed manner on 
payment of such fee as may be prescribed.

 (2) An application under this 
section shall contain a statement, 
verified in the prescribed manner, fully 
setting out the circumstances which led 
to the failure to pay the prescribed fee, 
and the Controller may require from the 
applicant such further evidence as he may 
think necessary."

Section 17 deals with inspection of registered designs 
which reads as under:

 " 17. Inspection of registered 
designs.- (1) During the existence of 
copyright in a design, any person on 
furnishing such information as may enable 
the Controller to identify the design and 
on payment of the prescribed fee may 
inspect the design in the prescribed 
manner.
 (2) Any person may, on an 
application to the Controller and on 
payment of such fee as may be prescribed, 
obtain a certified copy of any registered 
design."

Section 18 deals with information as to existence of 
copyright which reads as under:

 " 18. Information as to existence 
of copyright.- On the request of any 
person furnishing such information as may 
enable the Controller to identify the 
design, and on payment of the prescribed 
fee, the Controller shall inform such 
person whether the registration still 
exists in respect of the design, and, if 
so, in respect of what classes of 
articles, and shall state the date of 
registration, and the name and address of 
the registered proprietor.

Section 19 deals with cancellation of registration which 
reads as under:

 " 19. Cancellation of registration.- (1) Any 
person interested may present a petition for the 
cancellation of the registration of a design at any time 
after the registration of the design, to the Controller on 
any of the following grounds, namely:-
(a) that the design has been previously 
registered in India; or
(b) that it has been published in India or in 
any other country prior to the date of 
registration; or
(c) that the design is not a new or original 
design; or
(d) that the design is not registerable under 
this Act; or
(e) that it is not a design as defined under 
clause (d) of section 2.
(2) An appeal shall lie from any order of the 
Controller under this section to the High Court, 
and the Controller may at any time refer any such 
petition to the High Court, and the High Court 
shall decide any petition so referred."

Section 22 deals with piracy of registered design. Chapter 
VI deals with fees, notice of trust not to be entered in 
registers etc. with which we are not concerned. Section 32 
in Chapter VII deals with the powers and duties of the 
Controller which reads as follows:

 " 32. Powers of Controller in 
proceedings under Act.- Subject to any 
rules in this behalf, the Controller in 
any proceedings before him under this Act 
shall have the powers of a civil court 
for the purpose of receiving evidence, 
administering oaths, enforcing the 
attendance of witnesses, compelling the 
discovery and production of documents, 
issuing commissions for the examining of 
witnesses and awarding costs and such 
award shall be executable in any court 
having jurisdiction as if it were a 
decree of that court."

Section 36 deals with the appeals to the High Court. 
Section 37 in Chapter VIII says that evidence can be 
tendered by affidavit or it can be by way of viva- voice in 
lieu of or in addition to evidence by affidavit and the 
party may be allowed to cross-examine on the contents of 
the affidavit. Section 44 deals with reciprocal arrangement 
with the United Kingdom and other convention countries or 
group of countries or inter-governmental organizations. 
The Central Government in exercise of power conferred under 
sub-section (3) of section 1 of the Act of 2000 framed the 
rules known as The Designs Rules, 2001 (hereinafter to be 
referred to as the Rules of 2001). It has framed necessary 
rules to implement the provisions of the Act. Rule 11 says 
how the application is to be made for registration and says 
the mode of submission of application for registration. 
Rule 29 deals with the procedure how the cancellation of 
the registration can be made and a detailed provision has 
been made for implementation of Rule 29 of the Rules of 
2001. Form of application for applying for registration is 
also provided as Form 1. Form 8 deals with the petition for 
cancellation for the registration of a design. This is the 
whole background of the Act.

6. In fact, the sole purpose of this Act is 
protection of the intellectual property right of the 
original design for a period of ten years or whatever 
further period extendable. The object behind this enactment 
is to benefit the person for his research and labour put in 
by him to evolve the new and original design. This is the 
sole aim of enacting this Act. It has also laid down that 
if design is not new or original or published previously 
then such design should not be registered. It further lays 
down that if it 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 then such design will not be 
registered or if it is found that it is not significantly 
distinguishable from known designs or combination of known 
designs, then such designs shall not be registered. It 
also provides that registration can be cancelled under 
section 19 of the Act if proper application is filed 
before the competent authority i.e. the Controller that 
the design has been previously registered in India or 
published in India or in any other country prior to the 
date of registration, or that the design is not a new or 
original design or that the design is not registerable 
under this Act or that it is not a design as defined in 
clause (d) of section 2. The Controller after hearing both 
the parties if satisfied that the design is not new or 
original or that it has already been registered or if it 
is not registerable, cancel such registration and aggrieved 
against that order, appeal shall lie to the High Court. 
These prohibitions have been engrafted so as to protect the 
original person who has designed a new one by virtue of his 
own efforts by researching for a long time. The new and 
original design when registered is for a period of ten 
years. Such original design which is new and which has not 
been available in the country or has not been previously 
registered or has not been published in India or in any 
other country prior to the date of registration shall be 
protected for a period of ten years. Therefore, it is in 
the nature of protection of the intellectual property 
right. This was the purpose as is evident from the 
statement of objects and reasons and from various 
provisions of the Act. In this background, we have to 
examine whether the design which was registered on the 
application filed by the respondent herein can be cancelled 
or not on the basis of the application filed by the 
appellant. In this connection, the law of Copyright and 
Industrial Designs by P.Narayanan (Fourth Edition), Para 
27.01 needs to be quoted.

 " 27.01. Object of registration of 
designs. The protection given by the law 
relating to designs to those who produce new and 
original designs, is primarily to advance 
industries, and keep them at a high level of 
competitive progress.

 " Those who wish to purchase an article for 
use are often influenced in their choice not only 
by practical efficiency but the appearance. Common 
experience shows that not all are influenced in 
the same way. Some look for artistic merit. Some 
are attracted by a design which is a stranger or 
bizarre. Many simply choose the article which 
catches their eye. Whatever the reason may be one 
article with a particular design may sell better 
than one without it: then it is profitable to use 
the design. And much thought, time and expense may 
have been incurred in finding a design which will 
increase sales". The object of design registration 
is to see that the originator of a profitable 
design is not deprived of his reward by others 
applying it to their goods.

 The purpose of the Designs Act is to protect 
novel designs devised to be applied to ( or in 
other words, to govern the shape and configuration 
of) particular articles to be manufactured and 
marketed commercially. It is not to protect 
principles of operation or invention which, if 
profitable at all, ought to be made the subject-
matter of a patent. Nor is it to prevent the 
copying of the direct product of original artistic 
effort in producing a drawing. Indeed the whole 
purpose of a design is that it shall not stand on 
its own as an artistic work but shall be copied by 
embodiment in a commercially produced artefact. 
Thus the primary concern, is what the finished 
article is to look like and not with what it does 
and the monopoly provided for the proprietor is 
effected by according not, as in the case of 
ordinary copyright, a right to prevent direct 
reproduction of the image registered as the design 
but the right, over a much more limited period, to 
prevent the manufacture and sale of article of a 
design not substantially different from the 
registered design. The emphasis therefore is upon 
the visual image conveyed by the manufactured 
article. "

7. As mentioned above, the Assistant Controller 
primarily has taken into consideration the two evidence, 
(i) that the design was registered way back 1992 by the 
German company on the roller to be used either on glass, 
or rexin or on leather, therefore it is not new and 
original and (ii) that the same design has been obtained 
in United Kingdom as is evident from the downloading of 
Patent website of the United Kingdom. On the basis of this 
two evidence, the Assistant Controller has held that the 
design which was registered on the application filed by the 
respondent herein was not a new and original. Therefore, on 
the application filed by the appellant, the Assistant 
Controller of Patents and Designs cancelled that design of 
the respondent.

8. Now, we shall examine to what extent the view 
taken by the Assistant Controller can be sustained and 
whether the view taken by learned Single Judge was correct 
or not. Now, coming to the first issue which has been 
framed by the Assistant Controller, the Assistant 
Controller found that M/s.Dornbusch Gravuren Gmbh, a German 
Company published a brochure bearing distinctive number 
2960-910 for the first time on 10.9.1993 and the registered 
proprietor took the user's right and got it registered. 
The Assistant Controller found that it is not the inventive 
ingenuity of the respondent and found that in order to 
register the design it should be new or original and the 
Assistant Controller found that there is insufficient 
evidence of originality and therefore, he came to the 
conclusion that the design is not a new and original one 
registered prior to the date of registration. Therefore, 
the question is whether the design is new and original. 
Section 4 which is couched in the negative terms, says that 
the design which is not a new or original then such design 
cannot be registered. Therefore, the question is the 
design which has been prepared by the German Company and 
which has been sold to the respondent which became the 
proprietor of it, is a new or original or not. In this 
connection, the burden was on the complainant to show that 
the design was not original or new. We have no hesitation 
in recording a finding that the burden was not discharged 
by the complainant. It only tried to prove on the basis of 
the letter of the German company that they produced the 
rollers and sold in market but it was nowhere mentioned 
that these rollers have been reproduced on the glass sheets 
by the German company or by any other company. The 
expression, "new or original" appearing in Section 4 means 
that the design which has been registered has not been 
published anywhere or it has been made known to the public. 
The expression, "new or original" means that it had been 
invented for the first time or it has not been reproduced 
by anyone. The respondent company purchased the rollers 
from the German company and got it registered with the 
registering authority that by these rollers they are going 
to produce the design on the glass sheets. Design has been 
defined in section 2(d) which means that a feature of 
shape, configuration, pattern, ornament or composition of 
lines or colours applied to any article whether in two 
dimensional or three dimensional or in both forms, by any 
industrial process. That means that a feature or a pattern 
which is registered with the registering authority for 
being produced on a particular article by any industrial 
process whether manual, mechanical or chemical or by any 
other means which appears in a finished article and which 
can be judged solely by eye appeal. The definition of 
design as defined in section 2(d) read with application for 
registration and rule 11 with form 1 makes it clear that 
the design which is registered is to be applied to any 
finished article which may be judged solely by eye appeal. 
A conjoined reading of these three provisions makes it 
clear that a particular shape or a particular configuration 
is to be registered which is sought to be produced on any 
article which will have visual appeal. Such design once it 
is registered then it cannot be pirated by any other 
person. But the question is whether it is new or original. 
In the present case, the complainant relied on the 
correspondence of the German company which produced the 
rollers and sold it to the respondent herein and it gave 
the proprietary right to the present respondent company. 
'Proprietor' as defined in section 2 (j) of the Act means 
that any person who acquires the design or right to apply 
the design to any article, either exclusively of any other 
person or otherwise, means, in the respect and to the 
extent in and to which the design or right has been so 
acquired. Therefore, this right to reproduce this design on 
an article has been given by the German company to the 
respondent. But again the question is whether the 
complainant had discharged their burden to show that this 
design is not new or original. For this purpose, they only 
banked upon the letter of the German company which prepared 
these rollers and there is no evidence to show that the 
design which was reproduced on glass sheets was either 
produced by any other agency. Therefore, the expression 
that ' new or original' in this context has to be construed 
that whether this design has ever been reproduced by any 
other company on the glass sheet or not. There is no 
evidence whatsoever produced by the complainant either 
before the Assistant Controller or before any other forum 
to show that this very design which has been reproduced on 
the glass sheet was manufactured anywhere in the market in 
India or in United Kingdom. There is no evidence to show 
that these rollers which were manufactured or originally 
designed by the company was marketed by this company to be 
reproduced on glass sheets in India or even in United 
Kingdom. This proprietorship of this design was acquired by 
this respondent from the German company and there is no 
evidence on record to show that these rollers were used for 
designing them on the glass sheets in Germany or in India 
or in United Kingdom. What is required to be registered is 
a design which is sought to be reproduced on an article. 
This was the roller which was designed and if it is 
reproduced on an article it will give such visual feature 
to the design. No evidence was produced by the complainant 
before the Assistant Controller that anywhere in any part 
of the world or in India this design was reproduced on 
glass or it was registered anywhere in India or in any part 
of the world. The German company only manufactured the 
roller and this roller could have been used for bringing a 
particular design on the glass, rexin or leather but we are 
concerned here with the reproduction of the design from the 
roller on glass which has been registered before the 
registering authority. Therefore, this design which is to 
be reproduced on the article i.e. glass has been registered 
for the first time in India and the proprietary right was 
acquired from the German company. We have gone through the 
letter of the German company and it nowhere says that this 
was reproduced on a glass sheet. No evidence was produced 
by the complainant that this design was reproduced on a 
glass sheet in Germany or in India. The contents of the 
letter are very clear. It shows that it was designed in 
1992 and was marketed in 1993. But there is no evidence to 
show that this design was reproduced on glass sheet any 
where in Germany. Section 4 clearly says that the 
Controller will only register a design on application made 
under Section 5 by the proprietor of any new or original 
design not previously published in any country and which is 
not contrary to public order or morality and it further 
says that this application shall be in a prescribed form 
and the prescribed form has been given in form 1. Form 1 
clearly says that the design is to be applied. Relevant 
column of the form reads as under :
 Insert number of class You are requested to 
 register the accompanying
 in Class No.. in the name of
 .

 Insert ( in full) the name 
 Address and nationality . . . . . . . . . . . . . . . 
 .... . who claim(s) to be the 
 proprietor thereof.

 State whether drawings, Four exactly similar of 
 Photographs, tracings or the design accompany this 
 specimens. request.

 Insert name of article or The design is to be applied 
 articles to which the to
 design is to be applied
 or state trade description
 of each of the articles
 contained in the set.

That shows that for name of the article on which the design 
is sought to be transcripted has to be mentioned at the 
time of registration. The respondent moved an application 
filling this form that this roller which has been 
manufactured by the German company with that design shall 
be reproduced on the glass. Therefore, when the application 
was filed by the respondent for registration, it was 
registered on the basis that the roller which will be used 
by mechanical process will bring design on a glass which is 
registered. Therefore, what is sought to be protected is 
that the design which will be reproduced on the roller by 
way of mechanical process and that design cannot be 
reproduced on glass by anybody else. Now, the question is 
whether it is new or original design. For that it is clear 
that there is no evidence to show that this design which is 
reproduced on the glass sheet was either registered in 
India or in Germany or for that matter in United Kingdom. 
The expression,' design' has come up for interpretation in 
English courts. The expression, design is almost pari 
materia with the definition of design in the Indian 
context. The expression, 'design' in the English Act which 
is known as the Registered Designs Act, 1949 reads as under 
:

 " In this Act the expression,' 
design' means features of shape, 
configuration, pattern or ornament 
applied to an article by any industrial 
process, being features which in the 
finished article appeal to and are judged 
solely by the eye, but does not include 
(a) a method or principle of construction or 
(b) features of shape or configuration which 
(i) are dictated solely by the function 
which the article has to perform, or
(ii) are dependent upon the appearance 
of another article of which the article 
is intended by the author of the design 
to form an integral part."

The history of this definition has been detailed by Russel- 
Clarke and Howe on Industrial Designs (Seventh Edition) at 
para 3.11 at page 74 which reads as under :

 " 3-11. This definition contains a 
cumulative series of requirements, many 
of which have been the subject of 
judicial decision and analysis. The 
historical process by which this 
definition has evolved is of importance 
to its present day interpretation and 
application. Some of the more important 
embellishments to the definition, such as 
those dealing with eye appeal and methods 
or principles of construction, have found 
their way into the pre-2001 statutory 
definition as a result of the explicit 
adoption such requirements were held to 
be implicit in the earlier and less 
elaborate statutory definitions of 
"design". This manifests an intention by 
the legislature to adopt and make 
explicit the principles developed in 
those cases. 

 Xx xx xx

3.13. The words of the section are:" design 
means features of shape configuration, 
pattern or ornament applied to an 
article . ."(emphasis supplied). Thus a 
registrable design, as defined by the RDA 
(A), must have reference to some specific 
article to which it is to be applied. The 
design to be registered " is a shape, 
configuration or pattern to be applied a 
particular specified article". It can be 
readily seen that a particular pattern of 
surface ornamentation could be applied to 
wide range of different articles. An 
application for registration was not in 
respect of the pattern as such, but in 
respect of its application to the 
specific article named. If it was desired 
to register the same design, e.g. a 
surface pattern or decoration, in respect 
of a series of different articles (apart 
from the special case of articles which 
together form a set), then a separate 
application had to be made in respect of 
each article, and each application to 
register was numbered separately and 
treated as a separate and distinct 
application. 
In the case of designs consisting of 
features of shape or configuration, there 
may of course be cases where the design 
is intrinsically applicable only to a 
specific kind of article. The article 
itself does not, however, constitute the 
design. In Dover v. Nurnberger Celluloid 
Waren Fabrik Gebruder Wolff, Buckley L.J. 
said:
 "Design means, therefore, a conception 
or suggestion or idea of a shape or of a 
picture or of a device or of some 
arrangement which can be applied to an 
article by some manual, mechanical or 
chemical means. It is a conception, 
suggestion, or idea, and not an article, 
which is the thing capable of being 
registered. It is a suggestion of form 
or ornament to be applied to a physical 
body."
[ Pugh v. Riely Cycle Co Ltd. (1912) 29 
R.P.C. 196]
Accordingly, it is submitted that a 
design is an idea or conception as to 
features of shape, configuration, pattern 
or ornament applied to an article. 
Although that idea, while still in the 
author's head, may be potentially capable 
of registration, in fact it must be 
reduced to visible form to be 
identifiable, and until it is so reduced 
there is nothing capable of registration, 
It may be so rendered either by its being 
embodied in the actual article, or by its 
being placed upon a piece of paper in 
such a way that the shape or other 
features of the article to be made are 
clear to the eye. Whenever the means of 
identification ( under some of the old 
Acts, provision was made whereby a mere 
verbal description could in some cases be 
accepted as sufficient), as soon as the 
idea is reduced to a form which is 
identifiable, there is something which is 
a "design", and which, if new or 
original, may be registrable."

Similarly our attention was also invited to para 27.07 of 
the law of Copyright and Industrial Designs by P.Narayanan 
(Fourth Edition) which reads as under :

 " 27.07. Design as a conception or idea 
"Design means a conception or suggestion or idea 
of a shape or of a picture or of a device or of 
some arrangement which can be applied to an 
article by some manual, mechanical or chemical 
means mentioned in the definition clause. It is a 
suggestion of form or ornament to be applied to a 
physical body". It is a conception, suggestion or 
idea, and not an article, which is the thing 
capable of being registered. It may according to 
the definition clause, be applicable to any 
article whether for the pattern or for the shape 
or configuration or for the ornament thereof (that 
is to say of the article) or for any two or more 
of such purposes. The design, therefore, is not 
the article, but is the conception, suggestion, or 
idea of a shape, picture, device or arrangement 
which is to be applied to the article, by some one 
of the means to be applied to a physical body."
 A design capable of registration cannot 
consist of a mere conception of the features 
mentioned in the definition, or in the case of an 
article in three dimensions, of a representation 
of such features in two dimensions It must, in 
such a case, in order to comply with the 
definition, consist of the features as they appear 
in the article to which they have been applied by 
some industrial process or means. An applicant for 
registration of a design has to produce a 
pictorial illustration of the idea or suggestion 
which he has to establish as new or original;"

Therefore, the concept of design is that a particular 
figure conceived by its designer in his mind and it is 
reproduced in some identifiable manner and it is sought to 
be applied to an article. Therefore, whenever registration 
is required then those configuration has to be chosen for 
registration to be reproduced in any article. The idea is 
that the design has to be registered which is sought to be 
reproduced on any article. Therefore, both the things are 
required to go together, i.e. the design and the design 
which is to be applied to an article. In the present case, 
the design has been reproduced in the article like glass 
which is registered. This could have been registered with 
rexin or leather. Therefore, for registration of a 
particular configuration or particular shape of thing which 
is sought to be reproduced on a particular article has to 
be applied. As in the present case the design sought to be 
reproduced on a glass-sheet has been registered and there 
is no evidence to show that this design was registered 
earlier to be reproduced on glass in India or any other 
part of the country or in Germany or even for that matter 
in United Kingdom, therefore, it is for the first time 
registered in India which is new and original design which 
is to be reproduced on glass sheet. Therefore, the 
submission of learned senior counsel for the appellant, 
Mr.Gupta cannot be accepted that this design was not new 
and original. 

9. In this connection, our attention was invited to 
the decisions of the Delhi High Court in 1981 PTC 239 
[M/s. Domestic Appliances and Others v. M/s. Globe Super 
Parts] and 1983 PTC 373[ The Wimco Ltd. Bombay v. M/s. 
Meena Match Industries, Sivakasi & Ors.]. In M/s. Domestic 
Appliances & Ors., M/s. Globe Super Parts, Faridabad 
manufactured gas tandoors and they got the design 
registered in respect of gas tandoor. The petitioners- 
M/s. Domestic Appliances & Ors. also manufacture gas 
tandoors under the trade mark 'Sizzler'. They were selling 
the same in Delhi market. The respondent filed a suit 
against the petitioners alleging inter alia infringement of 
the design and obtained temporary injunction restraining 
the petitioners from selling the seasonal goods. The 
petitioners filed an application under Section 51A of the 
Designs Act, 1911 for cancellation of the design No.145258 
before the Controller of Designs, Calcutta. The 
cancellation was sought on the allegations that the design 
No.145258 was pre-published in India on the date of 
registration in as much as the respondents themselves were 
manufacturing and selling the gas tandoors earlier to the 
date of application for registration of design No.145258 
and sold the same to various parties in Delhi, Punjab, 
Haryana, Jammu & Kashmir & Uttar Pradesh and also 
advertised the said supercook gas tandoor in several 
newspapers. It was also alleged that the respondents were 
not the originators or the owners of the design. Therefore, 
it should be cancelled. This was resisted by the 
respondents. Similarly in this case here also it was 
alleged that this application has been filed as a 
counterblast to the suit filed by the respondent and it 
was also pleaded that the petitioners were not interested 
in cancellation of the design. In the suit certain issues 
were framed and the High Court held that there was no 
definite evidence produced by the parties that the design 
had been previously registered in India. It was also held 
that the respondents were manufacturing the gas tandoors of 
the impugned design prior to 1977 and ultimately the Court 
held that the gas tandoors of the impugned design had been 
sold prior to the date of its publication. In other words 
the design had been published for the first time in India 
in 1977. Therefore, this case was decided purely on the 
question of fact and no ratio has been laid down. Similarly 
in 1983 PTC 373, this was a case by the Wimco Limited, a 
public limited company which carried on business of 
manufacturing and selling match boxes. It was claiming 
that they were one of the famous manufacturers of matches 
and they developed a design and gave it a name as 
'HOTSPOT' and made an application for registration under 
the provisions of the Designs Act,1911 and the same was 
registered. Thereafter a suit was instituted against M/s. 
Meena Match Industries, M/s. Thilgaraj Match Works and Ms. 
Sanjay & Co to restrain the defendants from manufacturing, 
producing, selling and/or marketing or offering for same 
match boxes bearing the impugned pattern/ design on the 
match boxes. After review of the evidence on record the 
Court held that the design given to M/s. Wimco was liable 
to be cancelled on the ground that it has been published in 
India prior to the date of registration and the design was 
not a new or original one. Therefore, this was also decided 
basically on the question of fact. Similarly in the present 
case, as we have discussed above, that this design which 
was registered in the name of M/s. Gopal Glass Works was 
not published in India or in Germany. Therefore, it was a 
new and original design. 

10. The question of eye appeal came up for 
consideration in Interlego A.G. v. Tyco Industries Inc. 
([1988] 16 R.P.C. 343). In that their Lordships have laid 
down important test in the matter of visual appeal of the 
eye. It was observed as follows:

 " In relation, however, to an 
assessment of whether a particular shape 
or configuration satisfies the former and 
positive part of the definition, the fact 
that an important part of the very 
purpose of the finished article is to 
appeal to the eye cannot be ignored. That 
factor was one which was conspicuously 
absent from the articles upon which the 
courts were required to adjudicate in the 
cases of Tecalemit Ltd. v. Ewarts 
Ltd.(1927) 44 R.P.C. 503, Stenor and Amp 
and in the more recent Irish case of 
Allibert S.A. v. O'Connor [1981] F.S.R. 
613, in all of which the claim to 
registration failed. It was one which was 
present in the case of Kestos where the 
claim to the validity of the design 
succeeded. It is present in the instant 
case. One starts with the expectation of 
eye-appeal, for part of the very purpose 
of the article is to have eye-appeal. 
That was aptly expressed by Whitford J. 
in relation to the same subject-matter as 
in this appeal in the case of Interlego 
A.G. v. Alex Folley (Vic) Pty.Ltd. 
[1987]F.S.R. 283 at page 298:-

 " I would have expected a 
designer designing toys to have the 
question of the appeal of the toy to 
the eye, even in the case of a 
functional toy, in mind. Mr.Rylands who 
have evidence for the defendants said 
that when designing a functional toy it 
is necessary to have regard not only to 
suitability for purpose but to overall 
appearance. You have to design so that 
the article in question will make an 
immediate visual appeal to a child or 
to the parent or other person buying 
for a child.""

One has to be very cautious unless two articles are 
simultaneously produced the Court then alone the Court will 
be able to appreciate. But in the present case no design 
reproduced on the glass-sheets was either produced before 
the Assistant Controller or before the High Court or before 
us by the appellant to appreciate the eye appeal. The 
appellant could have produced the design reproduced on 
glass-sheet it manufactured in United Kingdom or Germany. 
That could have been decisive.
11. Our attention was invited to Dover Ltd. v. 
Nurnberger Celluloidaren Fabrik Gebruder Wolff ([1910] 27 
R.P.C. 498). This was a case in which the question was of 
the pattern or ornament of hand grip for cycle handles 
brought an action for infringement against a German firm of 
manufacturers, and against their London agents. The 
defendants admitted that they were selling cycle handles 
with the design resembling the plaintiffs' registered 
design but pleaded that the plaintiffs' registered design 
was not a new or original design not previously published 
in the United Kingdom and alleged that it was commonly 
known for many years prior to the date of the registration. 
Though the Single Judge held that the design was new and 
original having regard to the kind of article for which it 
was registered and that it had been applied by the 
defendants to the cycle handles sold by them but the Court 
of Appeal held that the design was not new or original 
within the definition of the Patents and Designs Act, 
1907, and that the defendants had not infringed. Therefore, 
this case was decided on the question of fact and 
evidence lead by the parties. In this case, Buckley,J. 
observed as follows:
 " In my opinion, there is in this 
no originality. If, however, the 
Respondents' Counsel are right in saying 
that the Design is the whole thing as 
shown in the picture, then, it seems to 
me, that the Defendants have not 
infringed. Their handle is not divided 
into six panels but into nine panels. 
Their grooves are so much more shallow 
than the Plaintiffs' grooves as to be 
easily distinguishable from them. 
Fraudulent imitation there was certainly 
none; neither was there obvious imitation 
either. 
 In my judgment, this Act was 
intended to protect Designs which really 
have some merit by way of novelty or 
originality and not to give colour to 
such paltry and trivial claims as have 
been set up in this case. The appeal 
must, I think, succeed and the action be 
dismissed with costs."

Kennedy L.J. also took the similar view and observed as 
follows:
" In the present case, as I have already 
said, if I rightly appreciate the 
evidence, a paneled hand grip with 
grooved divisions was not new, nor was 
the engine-turning of surfaces as an 
ornamentation of those surfaces new, for 
it had been applied to what I may, I 
think, fairly call the kindred surfaces 
of knife handles and penholders, where 
the hand grips them. I cannot find either 
novelty or originality in the Plaintiffs' 
Design by reason of such a combination."

Therefore, both the case was distinguishable on question of 
facts only.

12. Our attention was also invited to King Features 
Syndicate Incorporated and Frank Cecil Betts, the Personal 
Representative of Elzie Chrisler Segar, Deceased. V. O. & 
M. Kleeman Ld. ([1941] 58 R.P.C. 207). In this case also, 
action was brought for alleged infringement of certain 
copyright in certain drawings. It was contended by the 
defendants that they had not manufactured or imported and 
sold as alleged by the plaintiffs and there was no 
infringement. Leave was granted. The Court of Appeal 
allowed the appeal. The plaintiffs appealed to the House of 
Lords and the appeal was allowed. There also much turned 
on the question of evidence. 

13. Our attention was invited to Gammeter v. 
Controller of Patents & Designs and others A.I.R.1919 
Cal.887. Their Lordships discussed the concept of new and 
original. In that context, it was observed as follows:

 " A design in order to be new or 
original within the meaning of the Act, 
need not be new or original in the sense 
of never having been seen before as 
applied to any article whatever, there 
might be a novelty in applying an old 
thing to a new use, provided it is not 
merely analogous. Where the design of a 
metal band called the "Novelty band," 
intended to attach a watch to the wrist, 
was similar in shape and configuration to 
a bracelet previously manufactured for 
ornamental purpose."

Their Lordships further held as follows:
 " Though the shape of the 
"Novelty" band by itself could not be 
said to be new and original, the 
application of it to a watch to be worn 
on the wrist was for a purpose so 
different from and for a use so similar 
to the purpose and use of the bracelet 
that the design in question might be 
said to be original. worn on the wrist 
was for a purpose so different from and 
for a use so similar to the purpose and 
use of the bracelet that the design in 
question might be said to be original."

Therefore, this case also depended on the appreciation of 
the material placed before the Court.

14. The next evidence which was lead by the 
appellant was a website had been downloaded from the 
United Kingdom Patent Office effecting patent that may be 
applied to glass sheets. No evidence has been produced to 
show that M/s.Vegla Vereinigte Glaswerke Gmbh had 
manufactured this design in glass sheet or not. It is only 
a design downloaded from the website of the Patent office 
in U.K. and it is not known whether it was reproduced on 
glass-sheet in U.K. or not. In this connection, the 
Assistant Controller has only observed that he has made a 
visual comparison of the U.K. registered design No.2022468 
with the impugned design No.190336 and he was satisfied 
that both the designs make same appeal to the eye and there 
was sufficient resemblance between the two designs. 
Therefore, the Assistant Controller held that the impugned 
design was prior published and it could not be said to be 
new or original. The Assistant Controller further observed 
that the proprietor of this design had not been able to 
make a difference between the U.K. design and the present 
design. This was not accepted by learned Single Judge of 
the Calcutta High Court and for the good reason. It was 
observed by learned Single Judge as under :

 " The illustrations in the form of 
drawings downloaded from the website of 
the United Kingdom Patent Office depict 
the patterns that may be applied to 
glass sheets. The patterns may be same 
but the illustrations do not give the 
same visual effect as the samples of the 
glass sheets produced by the appellant in 
Court. There are also no clean 
unmistakable instructions or directions 
for production of glass sheets of the 
pattern illustrated.
 The visual effect and/or appeal of 
a pattern embossed into glass sheets by 
use of embossing rollers could be 
different from the visual effect of the 
same pattern etched into glass sheets 
manually. The respondent no.1 has not 
considered these factors.

 The order impugned considered with 
the materials on record, including in 
particular the computer print outs 
clearly reveals that the respondent no.1 
has only compared the pattern and/or 
configuration considered the visual 
appeal thereof, but not the visual appeal 
of the pattern and/or configuration on 
the article. In other words, the 
Respondent No.1 has not considered the 
visual appeal of the finished product. 
 There are no materials on record to 
show that the design had previously been 
applied to glass sheets. On the other 
hand, an affidavit was sworn on behalf of 
the appellant by a Liaison Executive 
affirming that he had ascertained that 
the proprietor of the design registered 
in the United Kingdom had never 
manufactured glass sheets of the design 
registered."

From this it appears that in fact the pattern of the design 
which is reproduced on the glass-sheet and the design and 
the pattern which was reproduced on the glass-sheet of the 
United Kingdom was not common. The affidavit sworn on 
behalf of the respondent herein, the liaison Executive that 
he had ascertained from the proprietor of the design 
registered in United Kingdom and they have never 
manufactured glass-sheet of the design registered. This 
affidavit evidence of the Liaison Executive of the 
respondent company has remained un-rebutted. Secondly, the 
learned Assistant Controller has not properly compared the 
two designs that on what comparison he found that the same 
configuration or pattern are identical with that of the 
impugned design. Simply by saying visually one can liable 
to commit the mistake but if the comparison is to be judged 
whether the pattern of the United Kingdom and that of the 
present pattern is three dimension or not. Both the designs 
were placed before us as was done before the High Court 
also. Learned Single Judge recorded its finding after 
seeing both the designs that there is distinguishable 
difference between the two. Similar attempt was made 
before us to show that both the designs i.e. one that is 
published in United Kingdom and the impugned design are 
identical. We have seen the original glass pattern produced 
before us and the photograph of the pattern produced on 
record. If the complainant was serious about the same, it 
could have produced the pattern which was reproduced on the 
glass-sheet in the United Kingdom and the pattern which is 
reproduced on the glass-sheet by the rollers of the design 

produced before us. If these two glass-sheets were placed 
before learned Single Judge or before us we would have been 
able to record the finding. The finding recorded by the 
Assistant Controller is most inconclusive and it does not 
give us any assurance that it was a proper comparison of 
the two patters by the Assistant Controller. Learned 
Single Judge of the Calcutta High Court had occasion to go 
through both the patterns and found that there is no 
comparison. Likewise, the glass-sheets were placed before 
us with all dimensions along with a copy of the print out 
of the United Kingdom and we are of opinion that there is 
no comparison between the two. From the visual appeal 
placed before us, learned Single Judge has rightly 
concluded that there is no comparison of pattern or 
configuration of two designs. We fully agree with the view 
taken by learned Single Judge. Hence on this count also 
the view taken by the Assistant Controller does not appear 
to be correct and the view taken by learned Single Judge of 
the Calcutta High Court is correct.

15. As a result of our above discussion, we do not find any merit in this appeal and the same is dismissed 
with costs of Rs.50,000/-(Rupees fifty thousand only).

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