In May this year Shamnad had blogged about how the Supreme Court was on an ‘IP Roll’ since it had rendered three IP related judgments in that month itself. Well here is another Supreme Court decision from the month of May. In this case of Bharat Glass Tubes Ltd. v. Gopal Glass Works Ltd. the Supreme Court upheld the decision of the single judge of the Calcutta High Court to reverse an order passed by the Asst. Controller of Patents canceling the registration of a design by the respondent under the Designs Act.
The facts of the case are quite straight-forward: The respondents – Gopal Glass Works – had registered their designs for diamond shaped glass sheets (pictured above left) under the Designs Act, 2000 and were granted a certificate of registration for the same in the year 2002 in a record 6 days! The respondents therefore acquired the sole right to manufacture and market the glass sheets in the design that was registered in their names. The appellant however started marketing his glass sheets with the same design. The designs that were formed on the glass sheets were formed by engraved rollers which were developed by a German Company which had licensed all Indian rights to the respondent.
On learning that the appellants were manufacturing glass sheets in the same protected design the respondents moved Court for an interim injunction which they were granted following which the appellants moved the Asst. Controller of Patents for cancellation of the respondents design on the ground that it already been published by the German Company in the year 1992 as was evidenced by a letter produced from the German Company and also that the design had been published on the website of the U.K Patent Office by another company which had sought for design protection. The respondents countered by pointing out that the German Company manufactured only the engraved rollers and not the glass sheets. They contended that the engraved rollers could then be applied to a wide variety of material from glass sheets to plastic and that their registration for design protection under Class 25-01 was for the application of that design to glass sheets.
The Asst. Controller of Patents found merit in the appellant’s contentions that the respondents design was not new or original since the German company had been manufacturing the engraving rollers with the same design since 1992 and also because the design had already been published in the U.K. Patent Office Website by another German Company and thus the registration of the respondent’s design was canceled since it did not meet the requirements of originality laid down by Section 4. When the matter went on appeal to the High Court the single judge over-ruled the Asst. Controller of Patents and restored the design to the respondents. The Appellants then appealed against this decision to the Supreme Court.
Supreme Court Decision: In its decision the Supreme Court accepted the respondent’s distinction between the design on the engraved rollers and the glass sheets. The Court noted that under Section 2(d) design means the application of shape, configuration etc. to any article and since in this case the respondent had specifically mentioned in the application form that he was applying the designs only to glass sheets, he would have exclusive rights to do so despite the fact that the design already existed on the engraved rollers. On the question of whether the design was new and original the Supreme Court held that the appellant had failed to establish that the design had already been published. The publication of the design on the U.K. Patent Office Website was dismissed since it did not clearly establish that the designs in question had been applied to glass sheets and also because on a visual comparison the designs did not match each other. The appeal was therefore dismissed and the registration of the design was restored to the respondent.
It is however strange that the Supreme Court did not simply dismiss the appeal on the basis of the statutory definition of original which is as follows: “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. The Court could have simply held that the German designs were on rollers and any novel application of this design to new articles was eligible for protection. Ultimately the Court’s decision was on similar lines but it unecessarily got itself tangled up in the statutory definition of ‘design’ without a single mention of the statutory definition of ‘original’.