This appeal is directed against the order dated 31st January, 2012 passed by the Assistant Controller of Patent and Designs (hereinafter referred to as the "said authority") in relation to a petition for cancellation of registration of Design No. 201728 under class 12-11 filed by M/s. Lucky Exports on 11th May, 2007.
The petitioner is aggrieved by the order passed by the said authority in allowing cancellation of the registered design of the petitioner.
Shorn of details, the petitioner on 10th October, 2005 applied for registration of design for article "Coaster Brake Hub" under class 12-11 in the name of partners of the appellant on 9th May, 2006. The Patent Office issued the certificate of registration of design. The design consists of three sheets. The certificate mentions that the novelty resides in the shape, configuration and surface pattern of the "Coaster Brake Hub" as illustrated. The appellant on 5th March, 2007 filed a suit being O.S. Suit No.13 of 2007 against the respondent No. 3 for infringement of its registered design and copyright. On 11th May, 2007 the respondent no. 3 filed a petition for cancellation of registration of the aforesaid design. On 24th July, 2009 the Division Bench of the Punjab and Haryana High Court in FAO No. 3664 of 2007 directed the said authorities to dispose of the cancellation application. Upon hearing the parties, the said authorities dismissed the application for cancellation of design. Being aggrieved by the said order the respondent no. 3 filed an appeal being AID 7 of 2010 before this Court. The said appeal was disposed of by remanding the matter to the controller for a fresh decision on merit. The order of Justice Patherya in AID 7 of 2010 dated 17th May, 2011 directed the controller to consider two most important issues, namely, prior publication and the originality and novelty of the said design. The controller was directed to take into consideration all the evidence that have been annexed not only to the affidavit of evidence but also in the Ludhiana suit filed by the respondent no. 3. The learned Single Judge found the decision of the controller to be erroneous as the controller did not consider Velo Bike Special Issue in February 2005, which formed the part of the plaint in the Ludhiana suit filed by the appellant. On remand the matter was taken up for consideration by the authority. The authority on consideration of the materials-on-record, namely, the statement of case, counter-statement, evidences and submissions made by both the parties arrived at a finding that the respondent no. 3 was able to establish the grounds that the impugned design is not significantly distinguishable from known and previously published design and the design is not a new or original design.
On such finding the petition for cancellation of the registered Design No. 201728 was allowed.
This order of the Controller has been assailed by the appellant in this appeal on the ground that the Controller has failed to appreciate that the differences between the registered design and that of the Russian model advertised in Velo Bike Special Issue in February, 2005 are significant and natural. It is argued that the registered design and that of the Russian Model advertised in Velo Bike Special Issue in February, 2005 are sufficiently and visibly different and distinct from each other.
Mr. Soumya Roy Chowdhury learned Counsel appearing on behalf of the appellant has referred to the definition of "original" in Section 2(g) of the Act and submitted that though the article of the registered design being a Coaster Brake Hub, is old in itself, yet is new in its application by virtue of the said design which fact the Assistant Controller has failed to appreciate. It is submitted that although the registered design and that of the Russian Model advertised in Velo Bike Special Issue in February, 2005, Punjab Kesari Newspaper of 26th March, 2005 and Bike Europe dated February, 2005 pertain to bicycle Coaster brake hub, the same are different from each other in various aspects. The features of the respective designs are also different. They are different and distinguishable at least in so far as the tightening nuts at both ends of the registered design and that of Russian model advertised in Velo Bike Special Issue in February, 2005 are concerned. The number and shape of the "steps" on the body of the registered design compared to the Russian model advertised in Velo Bike Issue in February 2005 would show remarkable and significant difference. It is submitted that the shape and configuration of the "cone" at the left end of the registered design compared to the Russian model are different from each other. In order to demonstrate that the impugned design is distinctly different from the Russian model, it is submitted that the design on which the Controller has placed much emphasis is different in shape and configuration as the advertised article is somewhat straight with a little curve compared to the registered design and is visibly different on ocular examination of the two designs.
By the impugned order, the learned Controller erred in, inter alia, holding that "the shapes of these sprockets are more attributable by its mechanical function, rather than its design." It is humbly submitted that the correct test would be, whether the design is a solely functional one or is a mere mechanical device and not whether it is more attributable by its mechanical function rather than its design. In other words, a design registration is prohibited only in a case where it is found that the subject design is solely functional. A design, being more attributable to function, does not mean that it does not have any eye appeal. A part of a design may be functional and there may be a part of the same design, which may have an eye appeal. In such cases, a design can be registered.
Section 2(d) of the Design Act, 2000 defines a design. From the said definition, it would be apparent that only when the same is a mere mechanical device or in other words is solely functional, only in such cases, the same does not qualify as a design under Section 2(d) of the Design Act, 2000.
There is no different between the terms 'dictated solely by function' and 'mere mechanical device.' The same would also be clear since a mere mechanical device has been excluded from the purview of design registration under the Indian law. A mere mechanical device would mean a device which is solely dictated by function. The law, as has been laid down by the ITC judgment as well as the other judgments which have been followed in the said decision lays down the correct proposition of law.
From the aforesaid, it is evident that the Learned Controller erred in law in cancelling the registered design of the Coaster Brake Hub in spite of holding that the same is different from other designs only on the ground that the differences in the said registered design are 'more attributable to function'. The right test would be whether it is 'solely functional' or 'a mere mechanical device' and not 'more functional'.
The learned Counsel has referred to Rule 18 of the Designs Rule, 2001 and submits that the decision of the Controller with regard to the registrability of the design must be presumed to have been made only after consideration of the objections, if any, in respect of the impugned design. In any event, the Controller is a final authority to decide as to whether the said design is capable of registration under the Designs Act, 2000 and in absence of anything to show that the procedure prescribed under the Designs Act and the Rules framed there under have not been followed, it shall be presumed that the procedure laid down in Rule 18 before registration of the design was followed. The learned Counsel has referred to the novelty statement which forms part of the registration certificate and submits that only after following the due procedure and upon consideration of the objections, the Controller has granted registration with the novelty statement which reads:-
"the novelty resides in the shape, configuration and surface pattern of the Coaster Brake Hub as illustrated."
It is submitted that undue emphasis has been given in the impugned order on the nuts and sprockets without considering that even a mechanical device could have an aesthetic appeal and eye appeal in which case the design is capable of registration.
It is submitted that the Controller has relied upon the magazine Velo Bike Special Issue in February, 2005 without requiring the private respondent to prove the authenticity of the document. It is submitted that although the said magazine may be marked as Exhibit at the instance of the private respondent in the said proceeding but the fact remains that it was not proved in accordance with law. The mere marking of document and Exhibit does not dispense with the requirement to prove the document in accordance with law. On such considerations, the petitioner has prayed for setting aside of the order of the Controller.
Mr. Ranjan Bachwat learned Senior Counsel appearing for the private respondent has supported the judgment. It has been submitted that the report of the examiner which was earlier not taken into consideration by the Controller has surfaced now and it would appear from the said report that the design was not considered to be novel or original. It is submitted that anyone having a look at the Russian model can immediately visualize the design whose novelty is claimed in this proceeding by the appellant and there is nothing new or novel which can be claimed by the petitioner in order to justify that the said design is registrable under the Designs Act, 2000. It is submitted that the impugned design is essentially functional with no aesthetic value attached to it inasmuch as it is taught by a prior published design which itself is sufficient to rub it off of the claim of novelty. It is argued that it would be quite clear from the order of the Controller that the subject matter of design is essentially functional and once an expert body has come to a finding that the predominant feature of the impugned design is functional and/or mechanical, the said article is not registrable.
Mr. Bachawat has argued that the magazine on which an objection has now been raised in this proceeding is without any merit and no leg to stand. Mr. Bachawat has referred to the Plaint and the order passed by Justice Patherya in the earlier appeal and submits that one of the grounds on which earlier order of the Controller was set aside was non-consideration of the said magazine which contains the impugned design duly advertised by the appellant. Mr. Bachawat has submitted that the said design is a prior published document would be evident from the Plaint filed in the Court of the District Judge, Ludhiana in which the plaintiff has referred to two invented designs of unique shape, configuration and pattern of Coaster Brake Hub and Coaster Brake Assembly inasmuch as it is stated in the Plaint that the plaintiffs have made extensive sales of such products and has made publicity of the said cycle parts vide advertisement in various magazines, journals, newspapers and also through stickers, catalogues, participation in various foreign exhibition. The plaintiff has, in fact, relied upon such advertisements in the plaint. Mr. Bachawat submits that the plaint also shows that the advertisement and sale of the cycle parts preceded the registration as the Coaster Brake Hub was registered on 10th October, 2005 whereas the magazine is dated February, 2005. It is submitted that it is precisely for this reason that the appellant did not raise any objection when the said magazine was exhibited by the private respondent. It is submitted that, in fact, before the Controller, no such objection was raised. On the contrary, an attempt was made to distinguish the said design from the other known designs. Mr. Bachawat has referred to Paragraph 4 of the Plaint to show that the appellant has enumerated differences between the newly designed new Coaster Brake Hub and the traditional Coaster Brake Hub and it was never alleged that the Velo Bike Special Issue in February 2005 does not contain the design of which novelty and originality has been claimed by the plaintiff in the Ludhiana suit as well as before the Controller. Mr. Bachawat submits that by not disclosing the said prior published document before its registration, the appellant had obtained the registration in suppression of material facts.
During the hearing of the appeal, I have directed the Controller to produce the original record of the proceeding as well as reports of the examiner. The said report was produced in Court on 4th October, 2018 and the Counsel for the parties have been duly served with such reports. The Controller upon receiving an application for design before registration referred the application for examination by an examiner. The examiner is appointed in the manner as prescribed in Section 3(2) of the Designs Act, 2000. The examiner has to file a report on examination as to whether such design is capable of being registered under the Act and the Rules made there under and upon consideration of the report of the examiner on such reference is required to decide as to whether the design is registrable under the Act. A design is capable of registration provided it is new or original and has not 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. It should be significantly distinguishable from known designs or combination of known designs and shall not comprise or contain scandalous or obscene matter. The Controller is to examine whether the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article muster the aforesaid test which is the finished article would appeal to eye and to be judged solely by the eye. However, a subject matter of design should not in substance be a mere mechanical device. The registration of a design is not conclusive as subsequently such registration can be challenged on the ground mentioned in Section 19 of the Designs Act, 2000. The grounds on which a design may be cancelled are enumerated in Clauses 19(a) to 19(e) which read:-
"19. Cancellation of registration.- ......
(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 registrable under this Act; or
(e) that it is not a design as defined under clause (d) of section 2."
The essential grounds for cancellation before the Controller were that it is a prior published design and is not new or original. The design will not be considered to be a new or original if it is taught by a prior published design. Even if one may not succeed to establish that an impugned design taught by a prior published design still then it is open to a party to allege that the design is not new and/or original if it is aliunde established that the predominant feature of the design is mechanical and/or functional or that finished article has no eye appeal. In the instant case, the examiner in its report has clearly stated that if there is any novel feature, the same should be pinpointed in the representation sheet and statement of novelty should be amended accordingly meaning thereby that the design lacks novelty. It further reiterated that "The design as applied to the article replates to a mere mechanical contrivance; the shape of each part thereto is solely dictated by the mechanical function which the article has to perform and it cannot be registered under the Designs Act, 2000". This observation of the examiner seems to have been ignored earlier by the Controller. The report of the examiner as well as the advertisement of the Russian model on remand now being considered by the Controller in order to find out as to whether the said design is registrable under the Designs Act. The comparison of the appellant's design No.201728 dated 10th October, 2005 as illustrated in the representations accompanying the registration with the design of the Russian model as advertised in the Velo Bike Special Issue in February, 2005 reveals that both the designs are almost similar. The differences pleaded by the learned counsel of registered proprietor before the Controller were the differences in the shape of arm, indentations on the shell (body of the article between two sides), shape of the sprocket and shape of tightening nuts as illustrated in the report of the Expert filed in the said proceeding. In dealing with such submission, the Controller has made the following observation:-
"It is observed that though the tightening nut used in coaster brake hub of the impugned registered design no. 201728 and the Russian model is different, it cannot be considered as design feature as tightening nut is a mechanical part having well known features of shape and configuration. The shapes of the sprockets are more attributed by its mechanical function rather than its design. Similarly, increase or decrease or one indentation or line on the centre body of the hub or minor angular variation in the arm is not qualified to be entitled as distinct design from the other. When the both coaster brake hubs of registered design no. 201728 and the Russian model are judged by eye, the broad features of shape, configuration and pattern appeared as same.
It is also observed that the impugned design no. 201728 was advertised in Indian Bicycle Ambassador in issue dated April 2010 where the registered design no.201728 was advertised as 'Coaster Brake Hub Russian Model'."
On such consideration, the Controller opined that the impugned design is not significantly distinguishable from the prior design of the Russian model. The modifications and variations in the appellant's design are not sufficient to alter the broad features of shape, configuration and pattern or the identity of the prior design.
The learned Counsel for the appellant in this proceeding has tried to emphasize the differences between the two designs which on examination are found to be essentially and predominantly mechanical and functional. This was the view of the expert as well. The features are predominantly if not solely dictated by the function that the article had to perform. There cannot be any doubt that Russian model was published in February, 2005 prior to the application filed by the appellant for registration of the impugned design. From the publication of coaster brake hub (Russian model) in Indian Bicycle Channels: Velo Bike Special Issue February 2005 (Exhibit 4), other publications consisting advertisement in Punjab Kesari dated 26/03/2005 as well as Bike Europe dated February 2005 (Exhibit 5) as well as sale invoices of 2004 and 2005 (particularly pages 57, 59, 73, 75 and 77 etc. of Exhibit 3), it is apparent that there exists a coaster brake hub, termed as Russian Model, which was published and used before the date of registration of the impugned design. The design of the Russian model is clearly visible in the Velo Bike Special Issue February 2005.
A comparison of the respondent's design no. 201728 dated October 10, 2005 as illustrated in the representations accompanying the registration, with the design of Russian model, as advertised in the Velo Bike Special Issue February 2005, reveals that both the designs are similar.
The design must in order to qualify for registration be such that in the finished article the features of it 'appeal to and are judged solely by the eye'. It does not relate to features which are dictated by function. The rationale behind this exclusion is that the point of design protection is to reward and encourage good product design by protecting the skill, creativity and labour of product designers. Design is concerned with both form and function. Design law is not seeking to reward advances in function. A good subject of design must be visually appealing, though it need not be an artistic work or possess artistic merit. In Parle Products Private Limited v. Surya Food & Agro Limited reported at 2009 (40) PTC 638 (Mad.) (DB) at p.648, the court stated that the purpose of the Designs Act was to protect novel designs devised to be applied to particular articles to be manufactured and marketed commercially. The main concern was what the finished article was to look like and not with what it did.
A mere mechanical device or a functional design is not registrable. While pattern or an ornament would ordinarily be applied to an article; shape and configuration becomes the article itself. Design in that sense relate to the non-functional features of the article. Therefore, by necessary corollary, a design which has functional attributes cannot be registered under the Designs Act. This is the essence of section 2(d) of the Designs Act. The protection under the Designs Act is granted only to those designs which have an aesthetic value or otherwise appeal to the eye. There may be, however, cases where the design while fulfilling the test of being appealing to the eye, is also functional. (Mohan Lal v. Sona Paint & Hardwares, AIR 2013 Del 143: 2013 (55) PTC 61 (Del) and Micolube India Limited v. Rakesh Kumar, 2013 (55) PTC 61 (Del) (FB) at p.75.
In Kestos Ltd. v. Kempat Ltd., (1936) 53 RPC 139, the court observed that "a mere mechanical device is a shape in which all the features are dictated solely by the function or functions which the article has to perform". In AMP Incorporated v. Utilux Proprietary P. Ltd., (1972 RPC 103), the House of Lords approved the above statement of law in Kestos Ltd. (supra). The House of Lords held that "dictated solely by function" meant "attributable to or caused or prompted by function". The House of Lords further held that where a design would perform a particular function, but the designer had also added some features of shape that appealed to the eye and was additional to or supplementary to the function the design could be registered. In other words, where a designer sets out to produce an article that would perform a particular function, but where in producing it he has added or applied some features of shape that are additional to or supplementary to what is functionally needed, with the result that in the finished article there are features that appeal to the eye, there may be a design which is registrable within the statutory definition. (Amp v. Utilux, (1972) R.P.C. 103 at 113) In Brighto Auto Industries Vs. B.Chawla & Sons reported at PTC (Suppl) (1) 851 (Del) in Paragraph 12 it was held:-
"12. .......what a substantial difference is, is a question upon which no general principle can be laid down at all; it must depend on the particular facts in each case. In one case a quite small variation in the details of a design may be enough to make the design something quite different from an existing design. On the other hand, there are cases even where quite large alterations in details leave two designs for all practical purposes the same. The Court has to consider and look at the designs in question with an instructed eye and say whether there is or is not such a substantial difference between that which had been published previously and the registered design as to entitle to proprietor of the registered design to say that at the date of registration that was a new or original design and therefore properly registered."
Good design involves two fundamental elements: the product must perform its function and it should be pleasant to look at and appealing to the eyes. Predominance and pre-eminence of the aesthetic elements over the functional element would satisfy the definition of 'design' under the Act.
Drawing a distinction between "new" and "original", Buckley L.J. stated in Dover Ltd. v. Nurnberger Celluloidwaren Fabric Gebruder Wolff reported at (1910) 27 RPC 498, that "new' referred to cases where the shape or pattern was completely new in itself and on the other hand "original" referred to cases where though old in itself, it was new in its application to the article in question. The word "original" contemplates that the person has originated something, that by the exercise of intellectual activity he has started an idea which had not occurred to anyone before, that a particular pattern or shape or ornament may be rendered applicable to the particular article to which he suggest that it shall be applied. He said:-
"If the design be new it may be registered under that expression. But the Act by section 49 seems to contemplate that it may be registered, even if it be not new, provided it be original. The explanation of this lies possibly in the fact that the novelty may consist not in the idea itself, but in the way in which, the idea is to be rendered applicable to some special subject-matter. The word 'original' contemplates that the person has originated some thing that by the exercise of intellectual activity he has started an idea which had not occurred to anyone before, that a particular pattern or shape or ornament may be rendered applicable to the particular article to which he suggests that it should be applied... It is easier by illustration in the concrete than by words in the abstract to explain what I mean. First, a few illustrations as to shape. The traditional figure of Falstaff is as old as Shakespeare, but if a person conceived for the first time, the idea of making a wine beaker in the form of the figure of Falstaff, that would be an original design for a wine beaker. The same would be true of an Uncle Toby jug for beer. The words new, or original, involve the idea of novelty, either in the pattern, shape, or ornament itself, or in the way in which an old pattern, shape, or ornament is to be applied to some special subject-matter."
Their Lordships discussed the concept of new and original in Gammeter v. The Controller of Patents and Designs, AIR 1919 Cal.
887. In this context, it was observed:
"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."
In Saunders v. Wiel reported in Reports of Patent, Design and Trade Mark, Vol. X, No.4, Page 29, it was held that new or original design not previously published did not require novelty in the ide
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a of the design but novelty in the application of the design to some article of manufacturer. If it is found that the design is novel in its application, its novelty and originality is not destroyed by its being taken from source common to mankind. Referring to the Rosedale judgment, the court in Dart Industries Inc. And Another v. Techno Plast and others reported at 2007 (35) PTC 129 (Del) at p.140 observed that "a person with ordinary prudence while seeing the designs/documents in question is able to relate, in his mind's eye, the same antecedents designs/statements without the necessity of making further experiments i.e., the moment he sees the designs, he is able to at once say 'Oh! I have not seen before'." The principle that emerges from the judicial decisions as well as from the authorities on the subject is that, in the event, it is found that the impugned design has substantial identity with the prior published design, it is liable to be cancelled. In order to claim novelty, there has to be a significant change or difference in the design, although, it may have a common source. A mere trade variant without significant and substantial noticeable features would destroy novelty. A drawing or publication of a design in any form must suggest explicitly or implicitly by context that the pattern or picture should be applied to an article. In the instant case, it cannot be said that the impugned design is new in its application. The prior published documents show almost similar features if not identical and it cannot be doubted that both the designs are substantially identical and the impugned design has been already taught by the publication prior to its registration. "Oh! I have seen before" would be the immediate and prompt reaction of a man looking at the impugned design. The impugned design is devoid of newness and originality. The Appellate Court ordinarily will not interfere with the finding of the controller unless it is found that the controller has proceeded on some wrong principle. The controller must, prima facie, be the judge of novelty having regard to its knowledge and experience in the matter and certainly in this case, I see nothing wrong in principle what the said controller has done. Moreover, the said design is taught and/or anticipated by a prior publication. The application for cancellation could have succeeded on the ground prior publication alone. This court is of the view that the controller was justified in the circumstances in cancelling the registered Design No.201728 dated 11th May, 2007, in respect of 'Coaster Brake Hub' in Class 12-11. The appeal being AID No.3 of 2012 stands dismissed. However, there shall be no order as to costs. The original papers produced before this Court during hearing shall be returned to the Learned Counsel representing the statutory authorities. Urgent xerox certified copy of this judgment, if applied for, be given to the parties on usual undertaking.