Kay Cee Exports had registered a scarf design under class 2-5 bearing number 252082, with the indian patent office. The novelty is claimed to be residing in the surface pattern of the scarf. The controller after verification and satisfaction issued a certificate of registration of an aforesaid design. A petition for cancellation of registered design no.252082, for ‘scarf’, was filed in February under section 19 of Design act, by appellant. The Deputy Controller had rejected the cancellation of a petition of a registered design.
The Design registration was canceled on four grounds as mentioned under section 19;
that it has been published prior to the date of registration
that the design is not a new or original
the design is not registrable under the act
that it is designed is not distinguishable from design or combination of known design
Contention of Appellant
It was registered that the design was capable of being anticipated by prior known designs.
The Appellant stated that it was engaged in similar line of activities as design registrant,i.e., Kay Cee Exports. The Appellant stated that it was also engaged in similar line of activities as design registrants. The Appellant also furnished on record copies of its invoice and shipment details of shawls of similar design being exported to different countries, all dated prior to registration date to scarf design.
It was further claimed that design lacked novelty since the surface pattern applied to the impugned design was nothing but a combination of already known designs. There is no novelty in the surface pattern of the scarf which is a matter of impugned design registration.
The Appellant referred to the decision of a learned single judge in case of Wimco Limited Vs. Meena Match Industries reported at 1983 PTC 373.
A reference was made to the decision in case of ITC Limited vs. Controller of Patents and designs, where it was held that an idea may be potentially capable of registration but it has to be reduced into a visible form to be identified with.
Furthermore, he also referred to the case of Anuradha Doval vs. The Controller of Patent and Designs and Ors. where the Calcutta High Court had the occasion to consider what would constitute prior publication. The Court had said that if a document is to constitute prior publication, then a reader of it, possessed knowledge of the subject, must from his reading of document be able to at least, to see the design in his minds eye and should not have depended on his own originally to construct the design from the ideas which document may put into his head.
Contention of Respondents
The respondents when presiding over the cancellation petition perused the evidence on record and reached a finding that none of the documents and invoices referred to the impugned design show any prior publication of design.
The Respondents also examined other documents to decide if the registered design could be considered as devoid of newness. Each of the said document was scrutinized and finding of the respondents was that the picture shows a variety of dresses including scarves in different color and pattern but none of these document ascertains the details of the publication and the source of a said document.
The respondents relied on the decision of Delhi High Court in case of Hello Mineral Water Pvt.Ltd. Vs.Thermoking California Pure reported at 2000 PTC 177 for determining as to whether novelty could be claimed of surface pattern.
The Respondents found that none of the documents showed any prior publication of design. It appeared that the articles covered under the said invoices only relate to shawls and not to scarfs especially when they fall in the different class of goods.
Justice Soumen Sen of Calcutta High Court heard the matter and observed that the invoices and shipments details attached by the Appellant were pertaining to sale of shawls which is different articles from scarfs and fall under a different class of goods under Design Act 2000. Therefore, the cancellation petition was dismissed.
In absence of any cogent evidence to show the pattern disclosed in an application for registration is taught by prior published documents, the findings of the controller who is an expert in the field do not call for any interference.
Recently this case of T.K Shawal Industries Pvt. Ltd. vs. The Controller Of Patents And Designs & Ors., as mentioned in SS Rana, in which the Calcutta High Court was approached in appeal by T.K Shawal Industries Pvt. Ltd.