This is an appeal filed from order dated 29th July 2008 passed by the Controller thereby dismissing the appellant?s application for cancellation. The case of the appellant is that an application was filed for cancellation of respondent?s registered design 176343 which was registered in Class-3 on 4th May, 1998. There was nothing new or original in the said design and variation, if any, was only a trade variation and functional. In fact, in 1997, similar designs had been registered. On the ground of prior publication the registered design of May, 1998 was also liable to be cancelled, as the design of the neck of the toothbrush registered in 1997 was the same as that registered in May, 1998. Similarly, for the same reason the handle of the registered design of May, 1998 could not have been registered. The bristles of the registered design of May, 1998 is identical to that of the registered design of 1996 and for the same reason such registration was not permitted. In fact, neither the handle, neck nor bristles which constitute a toothbrush has a distinctive eye appeal from the prior published design nor is there any distinct addition to such design. Addition, if any, is functional, therefore, there is no novelty. The bristles in the prior registered design is long and short which can be described as zigzag bristles and the registered design has also the same zigzag bristles. Therefore, there is no novelty in the registered design of May, 1998. In the order of the Controller dated 29th July, 2008 no reasons have been given by the Controller to support the finding that the toothbrush was identical. In fact, the said finding is incorrect as the articles were not before him. As there was no novelty which must be substantial in design the registered design is nothing but a trade variant and in view of being prior published could not have been registered. For the said proposition, reliance is placed on 22 PTC Supp-I 151 and AIR 1981 Delhi 95. For the proposition that if the features are functional no protection can be sought, reliance is placed on 2000 PTC 83 para 50, Flexible toothbrushes have been in the market for some time. Sections 4 and 5 of the Designs Act, is very clear. Section 4 prohibits registration of certain designs. Section 5 deals with application for registration of designs. Section 19 sets out the grounds for cancellation.
The toothbrush manufactured by Colgate-Palmolive (Respondent Company) is not a design under Section 2(d) of the Designs Act, 2000. Each part is functional, therefore, the same is mechanical and could not have been registered. The registered design of May 1998 on the ground of being prior published by the United States Patent Department in 1997 could not have been registered. This is also applicable to registered design No. 176345 as the US Patent was issued in November, 1997, and the said design is nothing but ornamental. Therefore, design Nos.176343 and 176345 on the ground of prior publication by the international design W 098/01055 so also registered design 174511 ought to have been cancelled.
Registered Design No.180362 is a mere trade variant and was registered in September 1999. There is nothing original or new about the said design and in view of registered design Nos. 176343 and 176345 being prior published, must be cancelled. Although the said points were argued before the Controller but the same has not been considered. The test applied that the design features were not identical, is not the correct test to be applied. For all the said reasons, therefore, the order dated 29th July, 2008 be set aside. Counsel for the respondent Company in opposing the said appeal submits that in view of Section 22(3) of the 2000 Act, the said points agitated by the appellant could have been taken as a defence in the Delhi suit filed on the ground of infringement on 1st March, 2004. The cancellation application has been filed on 23rd July, 2004 and an order was passed by the Delhi High Court on 29th August, 2005. Sections 6(3) and 6(4) of the Designs Act permits a registered proprietor of a design in an article to register the design in respect of other articles.
The grounds on which the application for cancellation was filed is mentioned in the order of the Controller. In respect of Issue No.1 for lack of documentary evidence the issue has been decided in favour of the appellant. The second Issue of prior publication has not been accepted. In respect of Issue No.3 the case of mere trade variant has not been accepted. As no evidence was produced in respect of Issue No.4 to counter the contention that the registered design was not new or original the same went in favour of the respondent. The fifth Issue being converse to the case of prior publication was held against the appellant and the sixth Issue was also held in favour of the respondent. Each of the issues has been dealt with separately and it has been found that registered design Nos.176343 and 174511 are different from each other. Although the appellant has craved leave to refer to the statutory provisions of the US Law and Rules with regard to registration of design, no such rule has been produced. Therefore, it is not from the date of application that the design comes in the public domain in the U.S. but will take effect from the date of registration, i.e., in 1999 and 1995 in respect of design Nos.417960 and 360981, respectively. Registered design No.174511 defers from the designs of which cancellation is sought. Admittedly, design No.174511 has no rib, the sidelines are missing and the bristle pattern is also different. In the US registered design No.360981 the handle pattern is different so also the ribs and bristles pattern. Design No.417960 was registered in December, 1999. Therefore, none of the US designs were prior published except 360981 which in any event cannot be construed as prior published and will have no application to the registered design in respect of which cancellation is sought as each of them was prior published to the US designs. In design No.386313 the bristles are different and, admittedly, there are no ribs and there are only etchings. Therefore, the appellant as complainant has not discharged its onus in view of its pleadings in paragraph 13 of the affidavit affirmed by Mr. Mayur S. Gala in January, 2009. In respect of the registered Trisa design novelty was claimed in the shape, configuration and pattern of the toothbrush. The Controller has considered all materials and this will be evident from his order which is not perverse and calls for no interference. Reliance is placed on 1959 RPC 347; 1959 RPC 240; and 42 RPC 443. 2000 PTC 82, is distinguishable as it was a case of passing off action and the Design Act was not being considered so also AIR 1981 Delhi 95 is distinguishable as the only finding therein is that no skill was involved.
The cancellation application is a counter-blast to the Delhi suit. These points could have been taken as a defence. The Controller has considered all materials and the case of puffing and functional has not been accepted nor the case of trade variant. In reply, Counsel for the appellant submits that the Controller has not considered Section 22(3) of the Design Act, 2000. High Court cannot cancel registration of a design. Section 6 of the 2000 Act is not applicable. The last registered design 180362 of 1999 in any event stands cancelled in view of the designs 176343 and 176345 being prior published. Registered design No.176343 was prior published in view of W.O. 1998/001055, which was registered in January 1998. Section 2(d) of the 2000 Act has defined design as follows:- S.2
(d) " design" means only the features 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 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 (c) of section 2 of the Copyright Act, 1957 o (14 of 1957 )?
Rule 11 (3) of the 2001 Rules as also Form-I mentioned thereunder and Rule 35 of the 1911 Rules and Form-15 mentioned thereunder is same and has not undergone any change. 42 RPC 443 is not applicable as there is nothing new or original in the toothbrush in question. 1959 RPC 347 was not a case of principles of construction. Having considered the submissions of the parties novelty in design 176345 resides in the following:
?The novelty resides in the shape and configuration of the Toothbrush particularly in the head, neck, handle and in the combination jointly and severally?.
This will appear from the registration certificate of the registered design 176345. The illustration is of a Toothbrush with bristles, ribs in the neck and etchings in the handle. A combination of all these arranged in a way not prior published will make it novel and forms the design registered. Such design is not prior published by any of the earlier registered design. A look at all the registered designs of the respondent Company the design which is closest to the subject design is design No. 417960. This was registered in the United States of America in December, 1999. This is after the registration of the subject design. The term original does not mean ?new? but is an old shape or pattern which is new in its application. The earlier designs therefore by exercise of one?s intellectual activity has been given an original design. On an ocul
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ar examination design 176345 is original and new and is not prior published. More so in view of the decision reported in 42 RPC 443, wherein it has been held that a combination of old materials arranged in a new and original combination will render the said design as new, original and novel. The decisions cited by the appellant do not come to its aid as in the decision reported in 22 PTC Supp-I 851 counsel for the respondent conceded that there was a mere trade variation in its design and on the basis of such concession the registered design was cancelled. AIR (1981) Delhi 95 is also inapplicable as the registered design is not a mere trade variant but the creation of a constructive brain expressed in a physical form. 2000 PTC 83 is not applicable as the design was being considered for purposes of passing off action and grant of injunction in respect thereof. Design per se as understood under the 2000 Act was not being considered, far less for cancellation purpose. Therefore the Order of the Controller in AID 8 of 2008 does not warrant interference and the appeal is accordingly dismissed.