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Exactly a year back, Calcutta High Court gave an elaborate judgement discussing the conditions for grant of design. The case holds relevance as it discusses element of Novelty and Prior Publication in detail. This post will try to comprehensively analyse the case.
The design-in-dispute is a bottle cap under class 09-01 bearing Application No. 222799. The Private Respondent applied for cancellation under all the grounds mentioned in Section 19 of the Designs Act, 2000. The grounds are:
a. Design has been previously registered in India.
b. Design was published prior to the date of registration.
c. Design is not new or original.
d. Design is not registrable under the Act.
e. It is not a design as per Section 2(d) of the Act.
The Private Respondent claimed that the design features of the bottle-cap were not original or new. To adduce his statement, he relied on three evidences. Firstly, he provided the impugned registration nos. 195268, 195269, 200344 and 200682. All these ‘registered’ designs had bottle caps and closures with shape and configuration which was claimed by the Applicant. Secondly, he also produced a document titled ‘Ambrosia’ which was a magazine published in January 2009 and alleged it to be a prior art. Thirdly, he contended that the claimed design was a conventional design which has been in use for a long time.
|1.||Publication of magazine ‘Ambrosia’ Vol. 16 No. 8||JANUARY 2009|
|2.||Applicant filed for registration of ‘claimed’ design||MAY 2009|
|3.||Design published in Journal||MARCH 2010|
|4.||Private Respondent filed for cancellation of ‘claimed’ design under Section 19||DECEMBER 2012|
|5.||Controller upheld the cancellation of design||–|
|6.||Calcutta High Court upheld Controller’s decision||APRIL 2017|
Whether the Controller was correct in allowing for cancellation of the registration of the design under Section 19 of the Act?
In the present case, J. Soumen Sen found out that the Private Respondent is an expert and thus has the required expertise to decide the matter. The Court held that the claimed design was published prior to registration and hence liable to be cancelled under Section 19 of the Act. The Court relied on Ambrosia magazine and held that since it was published in February 2009, the design cannot be granted protection. It was devoid of novelty and originality. The Court upheld the decision of the Controller and justified the cancellation of registration of design.
The present judgement revisits the element of Novelty and Prior Publication. Both the conditions are grounds for cancellation of registration of design under Section 19 of the Act. The design in the finished article has to be judged solely by the eye is no new fact. The reason why this exclusion was granted to the eye was that the purpose of granting design is to encourage and reward design of a good product. This helps in protecting the skill, creativity and labor of product designers.
What amounts to prior publication is a question of fact. It depends upon case to case. The test of prior publication is satisfied only when the previously registered design is out in public. The details of the design applied to the article should be such that it is can be judged by the eye. A person of ordinary intelligence and imperfect recollection must be able to see the design in his mind’s eye and not rely on imaginative faculties in constructing the design. The main ratio is that cancellation of design will be allowed if the claimed design is substantially similar to the of the prior publication design.
J Sen also cited various landmark cases like Parle Products Ltd.(2008) and Gopal Glass Works (2005) to elaborate on the concept of novelty and publication. Specifications, drawings of any demonstration done in connection with the registration of design does not constitute publication per se of the said design. This applies in registration of a design in foreign country as well. It means that specifications of the design disclosed while getting a registration will not amount to prior publication. Also, the judgement states that to constitute prior disclosure, the publication needs to firstly, be in tangible form of the design so applied to the article. The main factor that needs to be compared in prior publication is the visual effect and the appeal of the picture illustration.
The Court also cites Reckitt Benckiser IndiaLtd. v. Wyeth Ltd (2013) and few paragraphs from Russell-Clarke and Howe on Industrial Designs VIIIth edition quoting:
“In practical terms, there are two main ways in which a design can be published: by prior use of the design, by selling or displaying to the public articles to which the design has been applied; and by paper publications of one sort or another. It is not, in fact, necessary that publication should be on paper; an oral disclosure, provided it is non-confidential, will amount to publication.”
One of the notable mention is of Section 4(1) of the Registered Designs Act 1949 of UK. It is an exception wherein no prior art will be constituted if the proprietor of the registered design applies for registration with modifications and variations subject to conditions in respect of another article. In such case, his previous registration or the publication of his design as registered will not constitute prior publication. However, the term of protection will be limited only to the term of original design. This proves to be a great deal in UK as an Applicant who finds out that the claimed design has been previously registered with respect to a different article is allowed to buy the earlier design and then enjoy the advantage under the said section.
However, there lies a shortfall in the judgement. J. Sen has based on his findings based on the expertise of the Respondent (Refer Para. 39 of the judgement). This has further been aggravated by absence of any mention of the qualifications of the un-named Respondent. The Court should have compared the features of the design physically. Rather, it just relied on the Respondent’s submission as he was an expertise in the said field. Apart from this point, the judgement is a must-read for summarizing the element of publication and novelty in Design protection.
 Anuradha Doval v. The Controller of Patents and Designs [2017(71) PTC 288 (Cal)]
 Section 19, The Designs Act 2000
 Parle Products Private Limited v. Surya Food & Agro Limited [2009 (40) PTC 638 (Mad.) (DB)]
 Reckitt Benckiser India Ltd. V. Wyeth Ltd. [2013 (54) PTC 90 (Del) (FB)]
 Gopal Glass Works Limited v. Assistant Controller of Patents & Designs & Ors. [2006 (3) CHN 188]
 Russell-Clarke and Howe on Industrial Designs [VIIIth Edition]