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Geminy Industrial Corporation Private Limited and Apr v/s Rita Mechanical Works and Others

    Case Nos. 9 & 10 of 1992

    Decided On, 05 March 1999

    At, Copyright Board

    By, S. RAMAIAH
    By, CHAIRMAN
    By, S. S. SARAF
    By, MEMBER
    By, D. R. MEENA & SUMIT BOSE

   



Judgment Text


The Order of the Court was as follows :

These two petitions have been filed under Section 50 of the (in short, the Act') by two different petitioners, one by Gemini Industrial Corporation Private Limited, Ludhiana (Case No. 9/1992 and is a private company incorporated under the Companies Act) and another by one Citizen Industrial Corporation, Ludhiana (Case No. 10/1992 and a partnership firm) against one Rita Mechanical Works, Ludhiana, for expunging the copyright registered in its name in the Register of Copyrights. There was yet another case (No. 7 of 1992) filed by one, M/s. C.R. Aul- luck & Sons Private Limited, which was also against the same respondent and for the expunction of the same mark registered in favour of the respondent. This Board, at the request of the counsel for the respondent in all the three cases that all the three cases should be heard together, passed an order accordingly on the 26th March 1996. Subsequently, on the 15th October 1998, case No. 7 of 1992 was dismissed as withdrawn at the request of the petitioner. The two remaining petitions were heard together and we pass a common order which would apply to both the petitions.

2. The petitioners and respondent in the two petitions are manufacturers of sewing machines and the facts and the questions raised in both the petitions are the same. It has been alleged in the petitions that the artistic mark registered as No. A.21799/78 in the Copyright Register in favour of the respondent is only a transfer label, which is transferred to the sewing machines manufactured by the respondent by means of an industrial process. By virtue of this transfer, the sewing machines get ornamentation and since the sewing machine is an article capable of being registered under class I of the Schedule to Designs Rules, the registration gets attracted by the provisions of section 15(2) of the Copyright Act.

2A. It is further alleged that as the respondent had been manufacturing, the sewing machines from 1973 onwards and as such more than 50 such sewing machines would have been manufactured by it, the protection should cease to exist under section 15(2) of the Act. Further, if the registration is allowed to remain on the register, it may lead to unnecessary litigation and more persons may be involved in criminal proceedings, as the petitioners. In view of the said criminal proceedings, the petitioners claim to be "persons aggrieved" and are entitled to file the petitions. The petitioners pray that the respondents' copyright registered, as mentioned above, be expunged from the Copyright Register in view of the reasons stated in the petition.

3. The respondent, in its written statement, has admitted that the work is a transfer label, and states that the artistic work refers to the device of a butterfly which is printed on the transfer label and .copyright in the said device as so printed is claimed. The transfer label is pasted on the sewing machine and is not a part of the sewing machine. The transfer label is neither a design nor is the same applied to the sewing machine by means of any industrial process so as to make it a part of the shape, con- figuration, pattern or ornamentation of the sewing machine to attract section 15(2) of the Act. It has also been alleged that the device of "butterfly" is a trademark under section 2(v) of the and is also a property mark as defined in section 479 of the Indian Penal Code and the definition of "design" as contained in the Designs Act, 1911 specifically excludes a trademark and a property mark being registered as a design under the Designs Act. The petitioners have filed these petitions only because they had not been successful in other for a to get the respondent's copyright taken away from the Register of Copyrights. It has also been stated that the partners of the petitioner in case No. 10 of 1992 had given an undertaking in January, 1992 accepting the title of the respondent to the trademark and as such, the petitioner in case No. 10 of 1992 is stopped from filing this petition. The Designs Act protects only the ornamentation appearing in the body of an article by way of engraving or etching and which is a part of the shape and con- figuration as apparent to the naked eye. It is emphatically denied that section 15(2) of the Act is attracted in this case. The petitions have been filed only on the ground of business rivalry between the petitioners and the respondent and since the only ground raised in the petitions is on the application of section 15(2) of the Act, the petitions should be dismissed with special costs. The petitioners have filed rejoinders reiterating their earlier claims in the petition and denying all the allegations made in the written statement of the respondent.

4. The petitioners and the respondent have filed written arguments, a number of documents, including the pleadings and orders filed in other courts in which the petitioners and respondent had been parties. The petitioners had also demonstrated before us as to how the transfer label is affixed in the sewing machine so as to be an industrial process within the meaning of section 15(2) of the Act.

5. Before we take up consideration of the main attack on the respondents' work being on the Register under section 15(2) of the Act, it would be useful to dispose of two minor issues raised by the respondent. The first objection which was not vehemently pursued was as to whether the petitioners are "persons aggrieved" so as to enable them to file a petition under section 50 of the Act. This could be disposed of straightaway in view of the criminal complaint filed by the respondent against the petitioners in a Maharashtra Court and as such, the petitioners could be taken to be "persons aggrieved". The second objection taken by the respondent is that all the partners of the petitioner firm in case No. 10 of 1992, namely, Citizen Industries, had executed an undertaking that the respondent is the owner of the trademark "Mercedes" and the owner of copyright in the artistic mark "butterfly" and that they will not infringe the trademark of the respondent, the petitioner in that petition is estopped from filing this petition. We are unable to agree to this objection as the said undertaking would not estop or prevent the said petitioner from questioning the registration of the artistic work on a different ground, i.e., under section 15(2) of the Act. The two grounds raised by the respondent are, therefore, decided against it.

6.. We may now examine the main ground of attack in these petitions that the artistic work registered in the Copyright Register in favour of the respondent is capable of being registered as a design under the Designs Act, 1911 and as such, the registration shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright or with his licence by any other person. To understand this objection in its proper perspective, it would be necessary to examine the provisions of the said sub- section. Section 15(2) of the Act reads as follows:

"Copyright in any design, which is capable of being registered under the Designs Act, 1911, but which has not been so registered, shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright, or, with his licence, by any other person."

7. It is alleged by the petitioners that the artistic work registered in favour of the respondent is a design capable of being registered under the Designs Act and as the same is applied to the sewing machines manufactured by the respondent and reproduced for more than fifty times, the copyright in favour of the respondent should cease and, therefore, the work should be expunged from the Register. To accept this arguments, the exact meaning of the crucial expressions 'design capable of being registered under the Designs Act' and 'any article to which the design has been applied' occurring in this sub-section have to be understood to find out whether this sub-section applies to the artistic work registered in favour of the respondent. To ascertain this, the relevant definitions in the Designs Act and the rules made there- under have to be referred to. Section 2 of that Act defines certain expressions and those definitions which are relevant for our purpose are reproduced below:-

"(5). "Design" means only the features of shape, configuration, pattern or ornament applied to any article by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which, in the finished article, ap- peal to, and are judged solely by, the eye, but does not include any made or principle of construction of 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 or property mark as defined in section 479 of the Indian Penal Code." (Emphasis supplied)'

(2) "article" means any article of manufacture and any substance, artificial or natural or partly artificial or partly natural;'

'(4) "copyright' means the exclusive right to apply a design to any article in any class in which the design is registered;'

8. The Designs Rules framed in this regard indicates in Class I of the First Schedule to the said Rules (which specifies the classification of goods for the purposes of the Act), as follows:-

"Articles composed wholly and in part of metal or in which metal predominates, and jewellery;"

Sewing machines will come under this class to which designs can be applied for purposes of registration under that Act.

9. It may, at this stage, be useful to look into the interpretation given to some of the important expressions used in the above definitions by some leading cases. The recent Delhi case cited by t he Respondent (Sanisonite v. Vijay Sales) 1998 PTC 618) also would permit us to refer to the meaning of these expressions assigned to them in other Acts inpari materia, if the expressions so used are not defined in the Act. It may be mentioned that the provisions of section 15(2) of the Copyright Act and the definition of "designs" in the Designs Act are similar to the provisions as contained in the English law; except minor changes which are not material to this case. The interpretations, therefore, given by the U.K. decisions on the main principles could be taken advantage of in interpreting the expressions used in the above definitions.

10. A design "capable of being registered' has been interpreted to mean "a design possessing, when they were made, those essential characteristics which qualify them as designs. If such designs are, at that time, used or intended to be used for the purpose of industrial reproduction they are not to qualify for copyright under the Copyright Act. (Interlego v. Tyco) 1988 RFC 343 at page No. 353 (P.C.).

11. From the definition, as contained in the Designs Act, 1911, it would appear that the object of the 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. 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 (quoted in Chapter 27 of Copyright in Industrial Designs by P. Narayanan).

12. What is to be registered under the Designs Act is a shape, configuration or pattern to be applied to a particular specified article and it is the shape or the configuration of the whole article in respect of the design, there has to be a commercial monopoly. That necessarily involves taking the design in the article as a whole, (vide Interlego v. Tyco).

13. There had been a number of decisions where the features of shape, etc. mentioned in the definition and applied to a finished article appeal to or judged solely by the eye. It has been held that "shape" and "configuration" are to be considered as synonymous for all practical purposes. (Buyer's Designs, 1907 (24) RPC 65 at Page 80). Each signifies something in three dimensions, the form in which the article itself is 'fashioned'. It is something which is placed on an article for its decoration. It is substantially in two, as opposed to, three dimensions. An article can exist without any pattern or the ornament upon it, whereas it can have no existence at all apart from the shape or configuration.

14. Lord Lindley in Clarke's Registered Design, 1896 (13) RPC 351 at Page 358 observed, "a design applicable to a thing/or its shape can only be applied to a thing by making it in that shape. The application was, according to the statutory definition, be by any industrial process and it must be such that in the finished article, it will appeal to the eye and solely judged by the eye."

15. Referring to the definition of a design in the U.K. Registered Designs Act, 1946, Lord Mooris said in Amp v. Unlux, (1972) RPC 103 at page 112 as follows: "the words of description or inclusion proceed as follows. There must be certain features either of a shape or of configuration or pattern or ornament. These features must be applied to an article. They must be applied to it by some industrial process of means. There will then be a finished article. The features must be such that in the finished article they appeal to and judged solely by the eye. It follows that in the finished article they must at least be noticeable." The question as to what is to appeal or to be solely judged by the eye was answered by the Judge as, "considerations other than that of merely being visible." The phrases "appeal to" and "judged solely by the eye" denote features which will or may influence choice or selection. The eye concerned will be the eye, not of the court, but of the person who may be deciding whether or not to ac- quire the finished article possessing the features in question.

16. Regarding the meaning of "industrial process or means", the design must be applied to the articles by an industrial process. This shows that the method of application of the design must be such as to reproduce the design upon the articles on a mass scale.

17. It has also been held in King Features v. Kleemen, 1941 AC 417, and followed in Warner Brothers v. Road Runner, (1988) FSR 292 that where copyright had come into existence in respect of the artistic drawings and that those drawings were subsequently used or intended to be used as models or patterns to be multiplied by any industrial process, and so subsequently became capable of registration as a design would not result in copyright being forfeited. Thus, copyright in an artistic work is not forfeited under section 15(2) of the Copyright Act unless the intended industrial use of the work was contemporaneous with its coming into existence. This may be because of the English definition that the design should be used and intended to be used for making an article for commercial use, which is not in the Indian Act.

18. On a combined reading of the above definitions and the interpretations given to them by judicial decisions, it would follow that a design capable of being registered under the Designs Act would mean only the features of shape, configuration, pattern or ornament which when applied to any article as included in any class specified in the Designs Rules, appeal to, and are solely judged by, the eye. If such a design is registered under the Designs Act in favour of a person, he becomes the owner of the design and the right conferred by this Act is also known as copyright. It is therefore clear that a design as applied to an article falling in any of the classes specified in the rules will be registrable as a design under that Act;/ the features of the design as applied to the article appeal to, and judged solely by the eye. The appeal to the eye or solely judged by the eye as specified in the definition is with reference to the shape, etc., in the article to which the design is applied. This means that although the design is said to be registered under the Designs Act, it is registered always with respect to an article embedded in it in such a manner that it has a different shape appealing to the eye and it has no separate existence apart from the article to which it is applied, while the Copyright Act recognises the work as such without its application to any article. This is the difference between copyright in the Copyright Act and Copyright in the Design Act and this is brought out clearly in the definition of the copyright in clause (4) as extracted above. The above position is also supported by the two design certificates registered under the Designs Act and filed by the parties wherein the articles in which the design is applied are also included as part of the certificate. It is seen from the certificates that the shape, etc., of the sewing machines are made on the application of the design and have been shown to be a novelty in the designing of the machine. In other words, if an article is made or constructed on the basis of a design and the features of such a design as so applied to the article appeal to the eye, the said design is capable of being registered under the Designs Act. This is what is meant by the features of the design being "applied to an article" referred to both in section 15(2) of the Copyright Act and in the definition of "design" in the Designs Act. In the light of the above discussion, we may consider the plea of the petitioners that the pasting of the impugned artistic work, instead of embossing, in the sewing machines manufactured by the respondent, even by an industrial process (not proved), will amount to 'application of the artistic work to the sewing machine' so as to come within the purview of the above two provisions. While we may concede for arguments sake that the pasting of a design in an article may also be taken to be a mode of application to the article in the literal and in an ordinary sense, (though strictly speaking, application of the design to the article means the application of the shape, pattern, etc., of the design in the making of the article, as deduced from the above two designs registered under the Act), it has to stand the test as specified in the latter part of the definition that the design as so applied, that is to say, any of the features of the design as applied to the article will appeal to, or solely judged by the eye so as to come within the definition. It is an admitted fact that the design embodied in the artistic work has not been utilised in the construction of the sewing machine which will appeal to the eye. In other words, the sewing machine is not modeled on the basis of the design in the artistic work. In addition, the pasting of the artistic work as registered in the copyright register in favour of the respondent in the sewing machine has not made any change in the shape etc. of the sewing machine so as to appeal to the eye. It has not also made any change in the shape or contours of the sewing machine as in the registration of the design of the sewing machines registered in the name of Jai Engineering Works or in the name of one of the petitioners, Gemini Industries, and filed by the petitioners. The registered artistic work, even after its pasting in the sewing machines, retains its identity and has not made any change or difference in the sewing machines neither in its shape constituting pattern or ornamentation or in any other manner so as to appeal to the eye or to be judged solely by the eye for coming within the definition. It is claimed that pasting of the design helps in the identification of the respondent's article. We feel this is not sufficient. It should be more than that of "merely being visible" as observed by Lord Moons in (1972) RPC 103 at page 112. Further, as discussed earlier, unless there is a change in the shape, configuration or pattern of the article so as to appeal to, or judged solely by the eye, this identification alone will not entitle the design to be registered. But, it has been claimed by the petitioners that other manufacturers of sewing machines are also using the "Butterfly" design as in the respondents' artistic work. In such a case, the design will not help even in the identification of the respondent's sewing machine.

19. One other requisite included in the definition of design is that the design should be applied to the article "by any industrial process or means" and goes on to indicate the various methods. It is very wide to include a mechanical process also. In view of this, we need not go into the question as to whether the petitioner's counsel had convinced us about the process of application by his demonstration before us. In any case, in view of our finding that the application of the design on the respondent's sewing machines had not contributed to any change in the sewing machine, the application by any means should not worry us. However, it would be pertinent to refer to the observations made by Robert M. Merkin and Jack Black in paragraph 20.4 of their text book "Copyright and Designs Law" in respect of the expression "application by any industrial process." The learned authors while observing that there is on definition of this expression in the U.K.R.B.A. Act, 1949, the phrase probably means little more than the design is capable of commercial exploitation". Further, the definition of design as contained in the Designs Act specifically excludes a trademark being registered as a design under that Act. The fact that the respondents mark is a trade mark has been admitted by the petitioners by virtue of their undertaking referred to earlier. While being so, the petitioners cannot claim that the artistic work of the respondent is capable of being registered as a design under the Designs Act and ask for an expunction of the work from the Register on the grounds mentioned in section 15(2) of the Act. As this is the only ground of attack, the petitions should fail.

20. We may now examine the decided cases submitted by the parties and consider whether the claim of the petitioners can be sustained. Unfortunately, most of the cases cited by the petitioners, though include a detailed discussion between an artistic work and a design, are cases where the artistic work had been held to be a design on the basis of the latter portion of section 22 of the U.K. Copyright Act, 1911 which excluded sketches or designs used or intended to be used as marks or patterns to be multiplied by an industrial process from Copyright protection. We may examine the cases one after the other.

21. in Con Planck Ltd. v. Kolynos, Inc, (1924 c 2113 K.B.) the plaintiff claimed damages for the infringement of their copyright in two sketches or cut out advertisement cards. This case dealt with the interpretation of section 22 of the English Copyright Act, 1911. The judgment had posed the question as to whether the sketch is a design which is capable of registration under the U.K. Designs Act or is it an artistic work. The judgment after quoting the definition of designs in section 10 of the U.K. Patents Act of 1919 which is identical to the definition of "design" in our Act stated "What then is the fundamental distinction between a design and an artistic work. This is a point which the writers of the various text books have found to be one of great difficulty and upon which they differ. It would be impossible and I think un- desirable to lay down any definition. As each case comes up for determination, an endeavour must be made to say upon which side the particular case lies and no doubt in course of time a multiplication of examples may lead to an attempted definition. It may be right to say, as is said in the Fifth edition of Copinger's Law of Copyright, at Page 97 - "that the fundamental distinction between a design and a simple artistic work lies in the applicability of the former to some other article. The plaintiff contended that a design is something produced as a pattern to assist one in making some other article which shall appeal to the eye; a thing which has no mark in itself but is meant to be applied to some othe article." (emphasis supplied). It has also been observed at page 810 of the judgment, "The meaning of section 22 of the U.K. Copyright Act, 1911 however is that those designs which are capable of being registered for commercial purposes are not to have any protection under the Copyright Act."

22. The case was decided on the basis of the expert evidence in that case and it was held that the designs were capable of being registered under the 1907 Act and so far as it is a question of fact, these were designs which were used and intended to be used as models or patterns to be multiplied by an industrial process. No such provisions exist in section 15(2) of our Act and as such, this case will not be of any assistance to the petitioners.

23. The next case is Phyram Ltd. v. Models (Leicester) Ltd., 1929, p. 1637 (Ch.D.). In this case also it was held on the basis of the facts of the case that this particular design was in fact used and intended to be used as a model to be multiplied by an industrial process. Hence, the right which the plaintiff claims can be acquired by registering it as a design and as registered under the Design Act.

24. In the next case cited by the petitioner, Bayliner Marine Corpn. v. Doral Boats Ltd., FSR 1987-497 (Federal Court of Appeals) Case, the court went by the definition as contained in section 46(1) of the Canadian Copyright Act, 1970 which is on the lines of section 22 of the U.K. Copyright Act which excludes designs which are used and intended to be used as models or patterns for an industrial process from its application and held that Rule 11(1) of the Industrial Designs Rules does not exclude the operation of the above section 46 of the Copyright Act.

25. The next case cited by the petitioner is Interlegc A.G. v. Tyco Inds. Inc., 1988 RPC 343 which dealt with almost all the important cases on the subject, including the above three cases. This case also had followed the dicta that a design cannot stand on its own, and stated - "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 arte fact." Thus, the primary concern is what the finished article is to look like and not that 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 articles of a design not substantially different from the registered design." The emphasis, therefore, is upon the visual image or eye appeal conveyed by the manufactured article.

26. The last case cited by the petitioners is the recent decision of the Delhi High Court in Samsomte Corporation v. Vijay Sales,1998 PTC 618. The exhaustive order in this case deals with the development of the Copyright Law and Designs Act in U.K. and India and also had dealt with almost all the important decisions on the subject. The Judge came to the conclusion after dealing with the U.K. cases that the proposition that if at the time of the drawing it was intended to be for manufacturing an article by the industrial process, the ban under section 22 (U.K Act) will operate upon them. He quoted profusely from Copinger and Skone James on Copyright (Eleventh Edition), where the learned author has put the principles in the following terms:-

"It is clear that it cannot have been in ended that every artistic work, the design of which is reproduced or is intended to be- reproduced in more than fifty articles, was to be excluded from protection under the Copyright Act, since this would affect many engravings and photographs of a purely artistic character. The only guide given is that the section only applies to a designs capable of registration under the Designs Act, but, as has been pointed out, this affords little assistance. There seems no reason, upon a literal reading of the Designs Act, why the design for a poster or a Christmas card should not be registered as a design, since features of pattern or ornament are to be applied to paper in such cases just as much as in the case of a design for wallpaper, which has always been regarded as registrable. It is submitted, however, that the/imdamental distinction between a "design" and a simple "artistic work" lies in the applicability of the former to another article. That is to say an artistic work is bough purely and simply for its artistic properties, an article to which a design has been applied is bought, not simply because of the artistic qualities of the design, but because of the utility of the article apart from the design, and that this distinction may be implied from the obvious purpose of the Designs Act, and from the use of the words, "pattern or ornament", which are not properly applicable to such designs as are not merely appurtenances but are the essence of the thing created. For example, the plate from which an engraving is to be printed is intended to be applied to a sheet of paper or other material but an engraving is not usually purchased for the material on which it is printed. Therefore, engravings are prima facie entitled to protection under the Copyright Act. But if it were intended that this engraving should be applied to, say, a wall paper, then it would be different; for nobody would be likely to purchase an engraving printed upon a wallpaper, unless it was for the purpose of papering a room. In such a case the engraving would fall under the law as to designs."

The judgement also quotes from the Thirteenth edition of the author which after discussing all the authorities and taking into account the 1988 U.K. Act rejects the requirement of any novelty.

"The drawings simipliciter are not of any use to the plaintiffs. They are only instructions or ideas to give shape to an article to be manufactured. Therefore, they are designs capable of being registered... I am not able to accept the contention whatever be the nature of the drawing, the purpose or intention could be the relevant criterion to consider whether the drawings or designs in the light of the provisions of the Designs Act and the Copyright Act. No argument was advanced on behalf of the plaintiffs that the ultimate purpose of the drawing was not for the purpose of manufacture but the drawings were made for keeping the artistic quality of the drawings. The distinction between the drawing for artistic purpose and manufacturing is ignored by the plaintiffs and held that the work is clearly a design within the meaning of the Designs Act and section 15 of the- Copyright Act."

27. On going through the cases, it is felt that each case dealt with different aspects of the problem. The English decisions dealt with the provisions of exclusion as contained in the definitions of successive U.K. Acts and the functional aspect of the designs. But the ratio as culled out from the decisions is the same in both the English and Indian decisions. This is because the operative portions of the provisions continue to be the same though the exclusions were different at different times.

28. To sum up, for the application of section 15(2) of the Copyright Act to a design registered under that Act and on the basis of the principles laid down by the decided cases discussed above, the following requirements have to be satisfied on the basis of the provisions of both the Acts, namely:-

1. Designs capable of being registered under the Designs Act - (vide section 15(2) of the Copyright Act.

(a) Designs, that is to say, the features of such design like shape etc., applied to any article by any industrial process; and

(b) Such article shall -

(i) be registrable in a class specified under the Designs Rules; and

(ii) appeal to, and is solely judged by, the eye.

2. Not registered as a design under the Designs Act (if it is so registered, it will come under section 15(1) of the Copyright Act).

3. Application of a design to an article (occurring both in section 15(2) of the Copyright Act and in the definition of "design" under the Designs Act.)

4. Reproduction of the said article by more than fifty times by an industrial process by the owner or his agent.

29. The application of the design to the sewing machines manufactured by the respondent satisfies the conditions specified in sub-item (b)(i) of item 1, item 2 and item 4 without any reservation as it is admitted by the learned Counsel for the respondent that the article is reproduced

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by an industrial process and the invoices produced on behalf of the respondent show that they have manufactured more than fifty sewing machines over the years. We may examine about the other conditions being satisfied. For this purpose, item 1(a), item 3 and sub-item (b)(ii) of item 1 in that order should be read together. So read, it would mean that the design should be applied to a class of article as specified in the Designs Rules (application of the design alone, without its application to an article, will not quality for registration) in such a manner that by virtue of such application, the features of the design so applied to the article should appeal to, and judged solely by, the eye. In other words, the shape, configuration, pattern or ornament or any of them of the design after its application should bring about a change or transformation in the article so as to appeal to the eye, etc. As observed earlier, under the Designs Act, the design is always registered with the article to which it is applied though the registration is said to be of the design. The Certificates of registration granted to M/s. Jay Engineering Company and one of the petitioners, Gemini Industries, are instances in point where the sewing machines are also registered with the design applied to them and prominently indicating the features of the design which are distinct. In the case under issue, the design is only pasted in the sewing machine and the sketches or modes in the design, after it is so pasted, do not make any change in the sewing machine, let alone changes being appealing to the eye. The design in the artistic work continues as it is even after it is pasted, without making any change in the sewing machine, even conceding that the pasting of the design simpliciter is an application to the article to come under both the provisions. It is argued that the design itself after it is pasted, appeals to the eye so as to come within the definition and to distinguish the sewing machine produced by the respondent. This had already been dealt with and we cannot agree to this argument as whatever appeals the article could have brought was present already in the artistic work and it had not contributed to any fresh appeal in the article. 30. So viewed, the artistic work registered in favour of the respondent in the Copyright register is not capable of being registered as a design under the Designs Act, 1911, and consequently, section 15(2) of the Copyright Act is not attracted so as to effect a cesser of the right. 31. In addition, we had seen that there are some exclusions in the definition of design as contained in the Designs Act which prohibit the design from being registered as a design under the Act. Among other exclusions, a registered trademark cannot be registered as a design under the Act. It is admitted by at least one of the petitioner, that the respondents work is a trade mark registered in favour of the respondent. On this ground alone, the work is not capable of being registered as a design, without going into other exclusions, as the respondent has claimed that it is also a property mark, which is also one of the exclusions. 32. In the light of the discussion that section 15(2) of the Copyright Act is not applicable to the work registered in favour of the respondent, the copyright in such work shall not cease and as such the expunctions prayed for by the petitioners under section 50 of the Act cannot be acceded to. The petitions are accordingly dismissed and in the nature of the cases, we are constrained to impose a cost of Rs. 1, 000/- in each of the petitions which shall be paid by the petitioners to the respondent.
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