The Calcutta High Court in two recent decisions has clarified some important aspects of the Designs Act, 2000 (“the Act”). Both cases were appeals to the High Court against the orders of the Controller of Designs, under Section 36 the Act. Our previous posts on the law of designs in India are available here.
Case No. 1: Controller Must Pass Reasoned Orders
In Krishna Plastic Industries vs Controller Of Patents And Designs, the subject matter of the Appeal was an application for cancellation of the registration of the Appellant’s design, which the Deputy Controller had allowed. The design in question related to a specific ‘surface pattern’ applied to a plastic seal. The Court perused the novelty statement filed by the Appellant at the time of registration, which read that the novelty in the design resided in the ‘surface pattern’ of the plastic seal, which was illustrated. The High Court noted that the Deputy Controller had allowed the application for cancellation without providing proper reasoning as to whether the surface patterns constituted a shape, configuration, pattern or ornament, to fall under the definition of a design under the Act, noting that ‘only a single sentence (in the Controller’s order) relates to the surface pattern.’
The Court found, prima facie, that the ‘ocular impression’ given by the design of the Appellant seemed distinct from the design which was the basis of the challenge of the registration. On this basis, the Court remanded the matter to be reconsidered afresh by Deputy Controller, and to give a reasoned order on the basis. Separately, the Court also considered the distinction between a shape and configuration and a pattern or ornament, and opined that ornaments or patterns, particularly if pronounced (as in the case of grooves in a hot water bottle or markings on a chair) may also constitute a ‘shape or ornament’, applied upon an article, and asked the Deputy Controller to make a reasoned decision on the issue as to whether the surface pattern constitutes a shape, configuration, pattern or ornament.
Unreasoned orders by adjudicatory authorities are unfortunately far too common, and this judgement is a positive step towards ensuring that adjudicating authorities exercise their quasi-judicial functions in a fair manner by giving reasoned judgements as to why they came to their conclusions.
Case No. 2: Design Which is Neither Entirely New or Original in its Application, is Liable for Cancellation
In the second decision, in the case of Anuradha Doval vs. The Controller Of Patents And Designs & Ors., the High Court was once again approached in Appeal against the order of the Controller allowing an application for cancellation of the registration of the Appellant’s design. The judgement was delivered by Justice Soumen Sen.
The brief facts of this case are as follows:
The Appellant had registered their design on May 7, 2009, as registered design No. 222799. The novelty statement in the design stated that the novelty resided in the shape and configuration of a bottle cap (which design was illustrated in three sheets – with a top view, side view and bottom view of the bottle cap). In December, 2012, the registration was challenged by the private Respondent before the Assistant Controller, under Section 19 of the Act (cancellation of registration), on all five grounds available for cancellation under that section, namely –
(a) that the design has been previously registered in India;
(b) that it has been published prior to the date of registration;
(c) that the design is not a new or original design;
(d) that the design is not registerable under the Act;
(e) that it is not a design as defined under Section 2(d) of the Act.
The Assistant Controller held that the design was not a mechanical device and was distinct from the article to which is was applied, and as such, was registrable. However, on the issue of novelty (ground (c) above), the Assistant Controller held the design to be not new or original. The basis for this was the publication of prior art which was submitted as evidence by the Applicant. Therefore, the application to challenge the registration was allowed.
In Appeal, the Appellant raised the following contentions before the High Court –
(a) that the Controller could not have come to a finding on the novelty of the design solely on the basis of the prior publication and without the actual article to which the impugned design has been previously applied being produced for physical examination; and
(b) that the impugned design is sufficiently distinguishable from the prior art brought on record by the private Respondent, and as such, should be considered to be novel.
The published prior art in question consisted of a magazine, called ‘Ambrosia’, which was published in India. The subscription was public in the sense that there was no obligation on the readers of the magazine as to maintaining the secrecy or confidence of its contents. The February and January, 2009, editions of the magazine contained pictures of an article (bottle caps) with similar designs to the impugned design.
The Court first discussed the scope of protection of a design, stating that a design only seeks to protect the visual appeal of a creation, and not any underlying function which it may have. The Court then discussed the meaning of ‘new’ and ‘original’ within the Act. The Court relied on the Delhi High Court judgement in Reckitt Benkiser (India) Ltd. v. Wyeth Limited, to hold that ‘newness’ in a design is one which came into public knowledge for the first time, while the concept of originality rested upon the novel application of a design to an article, regardless of whether the design itself was known or not. However, none of this was relevant to the Court’s decision on the matter.
The Court considered the issue at hand, namely, that of whether the design had been anticipated by prior publication in Ambrosia Magazine, by relying upon Reckitt Benkiser and its earlier judgement in Gopal Glass Works Limited v. Assistant Controller of Patents & Designs & Ors., wherein the Court was concerned with the scope of ‘prior publication’. The Court held that ‘in order to claim novelty, there has to be a significant change or difference in the design, although, it may have a common source.’ In the present case, the Court held that the impugned design was not new or original, as it was substantially identical to the design published in Ambrosia Magazine.
The Court did not, however, come to such a conclusion upon an actual comparison of the impugned design and the prior art. The Court held that the Controller has the expertise to decide the matter of similarity between the two designs, and that the Appellate Court would not interfere with the Controller’s order unless it found that the Controller ‘proceeded on some wrong principle’. Therefore, the Court upheld the order of cancellation of the Appellant’s design.