2008 (37) PTC 1 (SC)
Respondent, had registered their designs for diamond shaped glass sheets under the Designs Act, 2000. The Respondent therefore acquired the sole right to manufacture and market the glass sheets in the design that was registered in its name. The designs that were formed on the glass sheets were formed by engraved rollers which were developed by Dornbusch Gravuren GMBH, (Hereinafter ‘German Company’), which had licensed all Indian rights to the respondent.
Appellant, along with its associate IAG Co. Ltd. started imitating the said registered designs. As a result, Respondent was constrained to file a suit against the Appellant and IAG Co. Ltd. in the District Court of Mehsana, Gujarat. Respondent also obtained a restraint order in the said suit.
On the other hand, Appellant filed an application under Section 19 of the Designs Act, 2000 before the Controller of Patents & Designs for cancellation of registration of Design No. 190336 in the name of the Respondent.
Previous Proceedings: Controller of Patents & Designs and High Court of Calcutta
- Design has already been previously published in India and abroad and that the design was not new or original.
- This is evident from the perusal of the two documents:
- a catalogue of the German Company and a letter dated 10.9.2003 of the German company addressed to IAG Co. Ltd. the holding company of the appellant stating that the said German Company had developed the design in the year 1992; and
- a document downloaded from the official website of the Patent Office of the United Kingdom on 22.9.2004 which indicated that the same design had been registered in the United Kingdom in the name of M/s. Vegla Vereinigte Glaswerke Gmbh in 1992.
- German Company only manufactured rollers but did not produce glass sheets prepared out of these rollers.
- As per the communication dated 4.3.2004 of the German Company, the said Company confirmed that the embossing rollers had been sold to the Respondent on condition that all user rights available in India under Indian laws would vest exclusively with the Respondent and that the Respondent would be entitled to exclusive user rights for at least five years.
- Respondent visited Germany and upon enquiry ascertained that M/s. Vegla Vereinigte Glaswerke Gmbh had never manufactured glass sheets of the design registered in the United Kingdom.
Issues framed by the Controller:
- Whether the design was not new or original in view of the fact that the roller bearing the design is published before the date of registration and the registered proprietor is not owner of the design;
- Whether the design was published outside India as well as in India prior to the date of application; and
- Whether the registered design was in public domain due to sale/use of the design prior to the date of application of the registered proprietor.
The first two issues were decided against the Respondent and the design registration was cancelled. The third issue was not adjudicated for technical reasons. Aggrieved against this order the Respondent filed a regular appeal under Section 36 of the Designs Act, 2000 before the High Court of Calcutta.
Learned Single Judge of the Hon’ble High Court reversed the findings of the Assistant Controller. Aggrieved by the said order the appeal was filed by the Appellant in the Supreme Court.
Supreme Court’s Observations:
On object of the Designs Act, 2000
The object behind Designs Act, 2000 is to benefit the person for his research and labour put in by him to evolve the new and original design. This is the sole aim of enacting this Act.
The idea is that the design has to be registered which is sought to be reproduced on any article. Therefore, both the things are required to go together, i.e. the design and the design which is to be applied to an article.
On burden of proof in a Cancellation Petition
Section 4 which is couched in the negative terms, says that the design which is not new or original cannot be registered. Therefore, the question is the design which has been prepared by the German Company, is new or original or not. In this connection, the burden was on the Appellant to show that the design was not original or new.
On interpretation of the term ‘new or original’ under the Designs Act, 2000
The expression, ‘new or original’ means that the design which has been registered has not been published anywhere or it has been made known to the public. The expression, ‘new or original’ means that it had been invented for the first time or it has not been reproduced by anyone.
On application of law to facts of present case
- What has to be seen as to whether the design has ever been reproduced by any other company on the glass sheet or not. There is no evidence whatsoever produced by the Appellant either before the Assistant Controller or before any other forum to show that this very design which has been reproduced on the glass sheet was manufactured anywhere in the market in India or in United Kingdom.
- The German company only manufactured the roller and this roller could have been used for bringing a particular design on the glass, rexin or leather but we are concerned here with the reproduction of the design from the roller on glass. Therefore, this design which is to be reproduced on the article i.e. glass has been registered for the first time in India. Respondent had specifically mentioned in the application form that he was applying the designs only to glass sheets, thus he would have exclusive rights to do so despite the fact that the design already existed on the engraved rollers.
- As far as the second document is concerned, the Learned Single Judge has rightly held that the glass patterns reproduced on the glass sheet in the design published in the United Kingdomt and the glass sheet of the design in question are not common. Secondly, M/s. Vegla Vereinigte Glaswerke Gmbh had never manufactured glass sheets of the design registered in the United Kingdom
Thus the Supreme Court found no merit in the appeal and it was dismissed with costs of Rs. 50,000/-.
With Contributions from: Ms. Pragati Pachisia, JCCLC