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Harish Chhabra Petitioners. v. Bajaj Electricals Ltd. And Another
Factual and Procedural Background
The petitioner, engaged in the manufacture of ceiling fans under the name Siri Ram and Sons, claims to have conceived and registered a new design for the central motor body (dome with canopy) of ceiling fans under Design No. 167584 in class 1. The respondent No. 1, also a ceiling fan manufacturer, holds a design registration (No. 163381 dated 5-7-1991) for a ceiling fan design, which the petitioner challenges. The petitioner alleges that the respondent's registration improperly covers the entire ceiling fan rather than a distinct new design or part. After receiving a cease and desist letter from the respondent alleging infringement, the petitioner filed the present petition under section 51A of the Design Act, 1911, seeking cancellation of the respondent's design registration and removal of the entry from the register of designs. The respondent had earlier filed a suit alleging infringement and passing off.
Legal Issues Presented
- Whether the design registered by respondent No. 1, covering the entire ceiling fan, is valid under the Design Act, 1911, given that it is not a new or original design invented by respondent No. 1.
- Whether the registration certificate issued by respondent No. 2 for the whole ceiling fan design should be cancelled and expunged from the register of designs.
Arguments of the Parties
Petitioner's Arguments
- The respondent No. 1 has not invented any new design or part but has registered the entire ceiling fan as a design, which is impermissible.
- The registration certificate covers the whole ceiling fan without specifying any particular part or special feature as a new design.
- The petitioner's own design for the dome with canopy is registered and original.
- The respondent's registration should be cancelled under section 51A of the Design Act, 1911.
Respondent No. 1's Arguments
- The registered design pertains to an ornamental ring fitted on the central part of the ceiling fan, constituting a new design.
- The design registration is therefore valid and rightly granted.
Table of Precedents Cited
| Precedent | Rule or Principle Cited For | Application by the Court |
|---|---|---|
| William J. Holdsworth v. Henry C. M’crea, 1987 Vol. II English and Irish Appeal 380 | Protection under design registration applies only to the entire design as registered and cannot be selectively applied to parts or elements of the design. A design registration protects exactly what is shown and described, not separate integral parts. | The Court relied on this principle to hold that the respondent's registration of the whole ceiling fan was erroneous since the fan as a whole was not a new design invented by respondent No. 1. |
Court's Reasoning and Analysis
The Court analyzed the nature of the design registration held by respondent No. 1 and found that the registration covered the entire ceiling fan rather than a distinct new design or part. Drawing on the precedent from the House of Lords in William J. Holdsworth v. Henry C. M’crea, the Court emphasized that design protection applies only to the exact design as registered, not to parts of it selectively. The Court accepted the concession that the ceiling fan as a whole was not a new design invented by respondent No. 1, and therefore the registration certificate issued by respondent No. 2 was erroneous. Consequently, the Court concluded that the registration must be cancelled and the entry expunged from the register of designs.
Holding and Implications
The petition is allowed and the registration certificate issued to respondent No. 1 is cancelled.
The direct effect of this decision is the removal of the respondent No. 1’s design registration from the register of designs under the Design Act, 1911. No order as to costs was made. The Court’s ruling clarifies that registration of an entire product as a design is impermissible if the whole product is not a new design, reinforcing the principle that design protection covers only the specific design as registered and not its integral parts separately. No broader precedent beyond the application of the cited House of Lords decision was established.
The present petition has been filed inter alia seeking relief that the design registered by the respondent No. 1 being design No. 163381 dated 5-7-1991 in class-1 be cancelled and the second respondent should be directed to expunged and or remove the entry of the said registration from the register of designs. Some of the material facts are as under:
2. The petitioner before this Court is claiming to be carrying on business in manufacturing ceiling fans of various designs in the name and style of Siri Ram and Sons. The petitioner is claiming that he was carrying on the aforesaid business for many years and he is also claiming to be the registered sole proprietor of various designs of electrical fans including the design in respect of the dome (the central motor body) of ceiling fan together with canopy registered under No. 167584 in class 1. The respondent No. 1 is also a manufacturer of ceiling fans and the claiming to be an inventor of a design of a part of the ceiling fans being decorative ring on the central part of the ceiling fan. However, the registration of the said design claimed by the respondent No. 1 and consequently granted by the second respondent is not in respect of any part invented by the first respondent but is in respect of the ceiling fan as a whole.
3. It is the case of the petitioner that in 1994 he conceived a new and original design for the central motor body hub part of ceiling fan known as dome with a canopy in respect of ceiling fan. It is his case that when he made an application for registration under class 1 under the Design Act, 1911 the office of the second respondent registered the said design under number No. 167584 dated 2-6-1984 in class 1.
4. Sometime in or about March, 1994 the petitioner received a letter dated 24-3-1995 calling upon the petitioner to cease and resist from manufacturing and marketing fans similar to the said registered design on the ground that the petitioners fans with the said design is colourable imitation of the first respondent design of a ceiling fan bearing registration design No. 163381 dated 5-7-1981. The petitioner replied to the said notice by their advocate's letter dated 11-4-1985 and informed the respondent No. 1’ s attorney that the petitioner is the registered proprietor of the said design under class 1. It is the case of the petitioner that the design which was registered by him was conceived and invented by him. The petitioner states that thereafter the respondent No. 1 filed a suit in this Court being Suit No. 3905 of 1995 on the basis of infringement of the registered design and passing off against the petitioner and claimed that the petitioner should be restrained from acting upon the said design. The petitioner has thereafter filed the present petition under section 51A of the Design Act, 1911 sometime in or about 1996 challenging the design of the respondent No. 1 registered by respondent No. 2.
5. The essential grounds on which the said relief is sought by the petitioner firstly is that the respondent No. 1 has not invented any a new design and/or any new item but has purportedly sought to register the whole of the ceiling fan as an invented design which is not permissible in law as a ceiling fan is not an invention or a new design for the first time prepared by the respondent No. 1. It has been also contended that the registration certificate issued by the respondent No. 2 indicates the whole of the ceiling fan in the photograph as a registered design and does not indicate any part or a special features which is separately and independently registered as an invention of such a hew design. It has been thus contended that under the provisions of section 51a of the design act the present registration is required to be cancelled and/or registered entry is required to be expunged from the record. On the other hand the learned counsel appearing for the respondent contended that what is invented design is an ornamental ring fitted on a fan and therefore a fan with such a feature is a design registered by the respondent No. 1 and therefore the design is rightly registered. However the learned Advocate General appearing on behalf of the respondent No. 1 has fairly drawn my attention to the judgment of the House of Lords in the case of William J. Holdsworth v. Henry C. M’crea reported in 1987 Vol. II English and Irish Appeal page 380 wherein it has been held as under:
“The only thing which it is here necessary to point out, as well for warning to inventors as for the protection of the public, is this, that if a design, as exhibited in a pattern is filed and registered by an inventor, without any farther limitation or description than that which is given by the design itself, it protects the entire thing and the entire thing only, and the protection cannot, at pleasure, be made applicable one day to the entirety and another day to the separate integral parts or elements of the entire design. It must be considered that the protection of the statute is invoked for the entire thing that appears upon the register and is applicable to nothing but the exact copy of the thing so registered.”
6. In the light of the aforesaid judgment, the learned counsel has fairly conceded that the fan as a whole could not have been registered by respondent No. 2 and the certificate of registration issued is not in respect of any part or an separate innovated design but is in respect of the whole of the ceiling fan since the ceiling fan is not the invention or a new design by the first respondent, the same could not have been registered by the second respondent. In view of the aforesaid I am of. the opinion that in the light of the law laid down by the house of lords in the aforesaid judgment the registration certificate; issued by second respondent in favourof the first respondent is erroneous and is not in respect of a design invented as a new design by the respondent No. 1 and thus consequently requires to be cancelled. In the light of the aforesaid I make the present petition absolute in terms of prayer clause (a) and (b). However there shall be no order as to costs.
Order accordingly.
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