India: Calcutta High Court Revisits The Tests For Novelty In A Design In View Of Prior Publication

In its recent judgment in Anuradha Doval vs. the Controller of Patents and Ors., the Hon'ble High Court of Calcutta delved into the tests and requisites for assessing novelty in a design. The case was related to an appeal filed by the registered proprietor of a design registration No. 222799 relating to a "bottle cap" in class 09-01 against the order of cancellation of the said design by the Controller of Patents & Designs.

FACTS OF THE CASE:

The Petitioner applied for cancellation of the registered design of the Appellant on 24th December 2012. The Petitioner contended that the said registered design shall be cancelled on the basis of following grounds:

• that the shape and configuration of the impugned design was conventionally used by the liquor industry since many years, thereby the design features are not new or original;
• that the impugned design is previously registered in India;
• that impugned design is stated to be common feature of all plastic caps having been published in various documents including a magazine titled 'Ambrosia' issue of January/February, 2009 and in view of this prior art documents, the impugned design is neither new nor original;
• that the cylindrical shape of the impugned design is absolutely dictated by the nature of the product.

The Assistant Controller after considering the contention of both parties observed that with reference to the pictures of bottles on rear page of front covers as well as back covers of the magazine issue of January 2009 (Vol. 16 No.8) and February 2009 (Vol.16 No.9), the designs are substantially identical. The Controller also noted that the said magazine was available in India and worldwide upon payment of subscription and there is no condition mentioned in those issues of the magazine about non disclosure of secrecy to be maintained by the subscriber readers.

Further, the Controller referred to the Delhi High Court judgment in Wimco Limited Vs. Meena Match Industries whereby it was held that "...It is not, however, necessary to prove that large number of copies of the specification have been actually sold or circulated. It is sufficient to show that the design was so described in the specification and some persons may fairly be supposed to have known of it".

In view of the said publication, it was held that the impugned design was published prior to its date of registration and upon comparison it has to be avowed that nothing new in terms of design has emerged from the impugned registration.

In view of the above, the Assistant Controller allowed the petition for cancellation of the impugned design.

The present appeal was filed by the registered proprietor Anuradha Doval challenging the said order by the Assistant Controller. In this case the Appellant has asserted that the Controller has committed a fundamental error in arriving at the said finding with regard to the novelty or originality of the design without the actual article being produced in reliance whereof prior publication has been alleged. A design cannot be cancelled as reproduction of a design on a piece of paper will have a different eye appeal as compared to viewing the actual product itself. The Appellant went on to state that registrable design must have a reference to some specific article to which it is applied and the Controller having held that the 'bottle cap' which is an article, should have considered the features and configuration of the said article along with the other bottle caps in order to find out whether there has been any novelty or originality. It was submitted that in the impugned order, there is no finding that the design lacks novelty or originality, per se, but registration was cancelled on the ground of prior art documents without insisting for the production of the other similar bottle caps and examination thereof.

In Gopal Glass Works Limited v. Assistant Controller of Patents& Designs & Ors., it was observed that it is significant that Parliament consciously, made publication in a country other than India a ground of cancellation, in addition to publication in India, but expressly restricted the embargo of prior registration to registration in India. Registration in a country other than India has not been made a ground for the cancellation of a registered design. Moreover, in order to destroy the novelty of a design registration, prior disclosure whether by publication or use or any other way, must be of the pattern, shape and/or configuration applied to the same article. The relevant observations can be found in Paragraphs 39 to 46 of the said judgment:

"39. The next question, in issue before this Court, is whether the finding of the respondent No. 1 that the document downloaded from the internet from the website of the Patent Office of the United Kingdom, might be taken as prior publication of the impugned design, is legally sustainable.

40. It is true that publication has not been defined in the 2000 Act. Yet, for reasons discussed above, mere publication of design specifications, drawings and/or demonstrations by the Patent Office of the United Kingdom, or for that matter, any other foreign country, in connection with an application for registration, would not, in itself, amount to publication that would render a design registered in India liable to cancellation.

41. To constitute prior disclosure by publication to destroy the novelty of a registered design, the publication would have to be, in tangible form, of the design applied to the same article. Prior publication of a trade catalogue, brochure, book, journal, magazine or newspaper containing photographs or explicit picture illustrations that clearly depict the application of the design on the same article, with the same visual effect would be sufficient.

42. When the novelty of an article is tested against a prior published document, the main factor required to be adjudged is the visual effect and the appeal of the picture illustration.

43. If the visual effect of the pattern, the shape or the combination of the pattern, shape, dimension, color scheme, if any, are not clear from the picture illustrations, the novelty cannot be said to have been destroyed by prior publication, unless there are clear and unmistakable directions to make an article which is the same or similar enough to the impugned design.

44. In the case of Rosedale Associated Manufacturers Ltd. v. Airfix Ltd., reported in 1957 RPC 239, Lord Evershed M.R. held as follows:

45. The illustrations in the form of drawings downloaded from the website of the United Kingdom Patent Office depict the patterns that may be applied to glass sheets. The patterns may be same but the illustrations do not give the same visual effect as the samples of the glass sheets produced by the appellant in Court. There are also no clear unmistakable instructions or directions for production of glass sheets of the pattern illustrated.

46. The visual effect and/or appeal of a pattern embossed into glass sheets by use of embossing rollers could be different from the visual effect of the same pattern etched into glass sheets manually. The respondent No.1 has not considered these factors."

Based on the above, the appellant submitted that when a design is sought to be applied to an article unless two articles are simultaneously produced for examination, the Controller could not have held that there was no novelty or originality in the design of the petitioner.

With regards to aforesaid Gopal Glass Works judgment, the Hon'ble Calcutta High Court cited paragraphs 21 & 22 of Reckitt Benkiser India Ltd. v. Wyeth Ltd¹ noting that in Gopal Gas Works case, the the Supreme Court has in no manner laid down an absolute rule that there can never be prior publication although in the public record of the Registrar of Design abroad a particular design is found to be registered. The Supreme Court in fact, has specifically held that facts in each case have to be very minutely examined and Courts have to be extremely cautious, by thoroughly scrutinizing the evidence in each case, for deciding whether the public record available in Registrar of Design abroad could or could not be taken as prior publication, and in the peculiar facts of the case before the Supreme Court when we refer to paragraphs 45 to 47 [of Gopal Gas Works case] it becomes clear that the Supreme Court approved the view of the learned Single Judge of the Calcutta High Court because even the Supreme Court found that sufficient evidence was not led on behalf of the objector to the registered design and that the documents downloaded through internet from the website of U.K. Patent Office did not add that amount of clarity for the same to be said to be prior publication for seeking cancellation on the basis of such alleged prior publication of a design registered in India.

Accordingly, it was observed that in cases of publication of a design by prior use as applied to an article, normally the questions which arise are whether it has been published at all (i.e whether the articles to which it has been applied have been disclosed to the public), and whether the design is similar enough to the design in suit to destroy the latter's novelty. But where the novelty of a design is tested against a prior published document, a number of additional questions can arise which do not arise in the case of a prior use.

First, it may not be clear whether or not the document discloses a design as applied to an article at all. A trade catalogue containing photographs or illustrations of articles to which a design has been applied may be a clear enough case.

But the publication in a document of a pattern or picture does not as such destroy the novelty of a design which consists of applying that pattern or picture to an article. For it to destroy the novelty of such a design, the paper publication must suggest explicitly or implicitly by context that the pattern or picture should be applied to an article.

Secondly, the pattern (if it is two-dimensional) or shape (if it is three-dimensional) of the design may not be clear from the document. Particularly in a case where it involves a written description rather than an explicit picture or illustration, there may be room for argument as to the precise nature of the design which the document discloses, before one can go on to ask whether or not it is similar enough to the latter design to destroy novelty.

Thirdly, a paper publication may be shielded from destroying the novelty of a later design registration by the special provisions and specific exceptions, as available in the Act.

Further, referring to the Rosedale judgment, the court in Dart Industries Inc. and Another v. Techno Plast and others², 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 seen before'."

After citing several judicial decisions and authorities, the Calcutta High Court observed 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 was held that 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.

Further, the Calcutta High Court emphasized that it has to be remembered that the respondent No.1, i.e., the Controller of Patents & Designs, is an expert body and has the required expertise to decide the matter. The said authority on consideration of all aspects of the matter clearly observed that the design features of the impugned registration no.222799 have been already taught by said publication prior to the date of registration of the impugned design. Similar advertisement showing the design of the bottle cap of impugned design can also be seen from the internal page 15 of the Vol.16 No.9 issue of the said magazine. This issue was published in February 2009 which is prior to the date of registration of the registered design. Comparing the bottle cap of impugned registration with those of previous publications, it has to be avowed that no new design has emerged from the impugned registration.

In view of the above, it was held that the impugned design is devoid of newness and originality and upheld the order of the Controller cancelling the registered design.

Footnote

1 AIR 2013 Delhi 101 (FB)

2 2007 (35) PTC 129 (Del)

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.