M/S. Western Engineering Company Petitioner v. M/S. America Lock Company

D.K Kapur, J.:— The America Lock Company is a partnership firm which carries on business as a manufacturer of locks of various types. Among other products, it manufactures cycle frame locks of horse-shoe shape for locking bicycles. Similarly, Western Engineering Company, is another partnership firm carrying on business as a manufacturer of locks, which also manufactures bicycle locks. The latter firm, i.e, Western Engineering Company applied for the registration of a design of horse-shoe shape cycle lock used for locking bicyles, under the Indian Patents and Designs Act, 1911. This design was registered and allotted the number 125728 on 25th May, 1965. The former firm, i.e, America Lock Company also applied under the Indian Patents and Designs Act, 1911, for the registration of the design of a somewhat similar horse-shoe cycle lock for locking bicycles. Its design was also registered on 25th March, 1967, the application having been made on 29th October, 1966. The number allotted to this registered design was 129675. Thus, it came about that both the America Lock Company as well as the Western Engineering Company obtained registrations of their respective designs for horse-shoe shaped cycle lock.

On 22nd November, 1966, the America Lock Company instituted a petition under Section 51-A of the Indian Patents and Designs Act, 1911, for the cancellation of the design registered in favour of the Western Engineering Company. That petition was C. O. No. 1 of 1966, in this Court; it was subsequently amended on 28th July, 1967. According to the petition, the registration of the design of M/s. Western Engineering Company was liable to be cancelled because of prior publication and also because the design in question was neither new nor original. The petition has been contested by the respondents, M/s. Western Engineering Company, on various grounds. It is pleaded that design No. 125728 in question, is new and original and had not previously been published in India, and was rightly registered trader the Act; the respondent is claimed to be the owner and inventor of a new and original design as on the date of the application for registration. A rejoinder was filed by the petitioner which stated inter alia that there were previously in existence, horse-shoe shaped cycle locks bearing trade marks Chivalry and Wings even prior to 25th May, 1965, whose design had been exactly copied and got registered by M/s. Western Engineering Company.

On 2nd June, 1967, M/s. Western Engineering Company instituted a suit on the original side of this Court, for an injunction and damages by rendition of accounts, against M/s. America Lock Company and two of its partners, under Section 53 of the Indian Patents and Designs Act, 1911. That suit was numbered as Original Suit No. 3 of 1967, on the Original Side of this Court. According to the allegations in the plaint, the plaintiff was the owner of registered design No. 125728, the particular feature of which was that it had a protruding portion in front for the lock cylinder into which the key was inserted. Before this lock was introduced, it was said locks had the key-hole in the side without any raised portion. The registration of this new design for a cycle lock was issued on 20th January, 1966 against an application dated 25th May, 1965. The plaintiff claimed a copyright for the design registered, which prevented any other person from copying the same, or making a fraudulent or obvious imitation of the cycle lock covered by the registered design. The plaintiff was manufacturing locks, called the ‘King Cycle Locks’ in accordance with its registered design, which were being sold throughout India. A warning notice concerning this design had been published in various journals and newspapers specified in the plaint. It was claimed that the defendants had started manufacturing cycle locks which were approximately, of the same design as the plaintiff's registered design, without any written or other consent of the plaintiff and had thus committed piracy of the design, which was actionable. Thus, the plaintiff claimed that the defendants had copied or utilised the plaintiff's registered design No. 125728, dated 25th May, 1965. For restraining this, the plaintiff claimed an injunction as well as damages by taking accounts. It was claimed that at least Rs. 1.50 per cycle lock manufactured by the defendants was due to the plaintiff on account of damages, but as it was not possible to measure the damages, it was necessary to take accounts. The plaintiff thus claimed both damages and an injunction. An order was also prayed for against the defendants to deliver up the locks manufactured by the defendants, as well as the implements of manufacture, for destruction.

The suit was resisted by the defendants, who filed a written statement denying that the plaintiff's design was novel or original; it was claimed that the cycle locks manufactured by the plaintiff were not different from those which were commonly available in the market prior to the plaintiff's design being registered. It was also stated that the registered design had no protruding or raised portion in the lock cylinder. The only difference between the registered design and the locks produced previously was that the key-hole was not on the side but on the front. In addition, the defendants claimed that they had already instituted a petition under Section 51-A of the Patents and Designs Act, 1911, for cancellation of the plaintiff's design which was pending in this Court. Another defence of the defendants was that the locks they were manufacturing were entirely in accordance with their own registered design No. 129675 and, hence the plaintiff could not claim any monopoly. Furthermore, the defendants stated that there was no cause of action against the defendants who were manufacturing and selling cycle locks of their own design, which were manufactured in accordance with their own registered design No. 129675, and not in accordance with the plaintiff's registered design. As regards the claim for accounts, it was stated that the plaintiff had not suffered any damages and it had no right to claim any accounts. The plaintiff filed a replication in which it contested the defendants' version that the registered design did not have a protruding or raised portion. For the purpose of showing that there was a protuberance, portions of the decision of S. A. Masoud J. of the Calcutta High Court in Matter No. 574 of 1966, and also from the decision of Andley J. (as his Lordship then was) in O. M. No. 483 in Suit No. 298 of 1967, were quoted. In those quotations, there were references to the protuberance in the design of the plaintiff. In reply to the objections taken by the defendants that they were not manufacturing locks in accordance with the plaintiff's registered design No. 125728, the plaintiff reiterated that its manufacturing design was the same as its registered design. It was pleaded that the defendants were manufacturing cycle locks which were a fraudulent imitation of the plaintiff's registered design and the defendants' registered design was itself a fraudulent imitation of the plaintiffs' design and had no existence in the eyes of law. The plaintiff reiterated its claim for a decree in the suit in accordance with its claim in the suit.

M/s. Western Engineering Company having instituted the aforementioned suit, also instituted a further proceeding under Section 51-A of the Indian Patents and Designs Act, 1911 on 10th July, 1967. In this latter petition, which was C. O. No. 7 of 1967 in this Court, it was claimed that the registered design of M/s. America Lock Company should be revoked and cancelled. It was stated in the petition, that the petitioner firm already had a registered design No. 125728, the new or original part of which was the protruding portion of lock cylinder in which the key was inserted. It was claimed that prior to the petitioner's design being introduced into the market, cycle locks commonly in use had a key-hole in the side and the locking device was not visible. After the petitioners had introduced their design, they had been commercially manufacturing their locks and selling the same to the public in all the important markets in India. The petitioners having obtained an earlier registration, the respondents' design was liable to be cancelled on the ground that it was a very similar or identical to the existing design of the petitioners. It was further claimed that the petitioners' design had been registered and published before the registration of the respondents' design. A warning notice had also been published in the newspapers. The petitioners, therefore, claimed a monopoly in the use of the design. It was further claimed that the respondents' design was a mere fraudulent imitation of the petitioners' registered design and had been registered in contravention and infringement of the petitioners' rights as a registered proprietor of a design. The respondents were guilty of piracy of the petitioners' registered design and the design got registered by them was neither new nor original and had been got registered by false suggestions and representations that the respondents were the first inventors of a new and original design. It was further stated that the petitioners' suit was already pending in this Court on the Original Side, but, inspite of this, the respondents were continuing to manufacture their locks in infringement of the petitioners' registered design. It was also claimed that the petitioners' design had already been held to be new and original vide judgment of the Calcutta High Court in Matter No. 574 of 1966, and the judgment of this Court in O.M No. 483 of 1967, in Suit No. 298 of 1967, Western Engineering Company v. Tiger Products Ltd., decided on 31st May, 1967.

In reply to this petition, a written statement was filed by M/s. America Lock Company in which it was pleaded that the shape and configuration of the registered design was the main criterion to judge the novelty and originality of the same. It was also pleaded that the petitioner was not manufacturing locks in accordance with the shape and configuration in its registered design No. 125728. It was further stated that the registered design did not have a protruding portion in the lock cylinder and, therefore, the lock actually produced by the petitioner cannot be stated to be in accordance with its design or in accordance with its registered design No. 125728; it was stated that although locks with the key insertable on the side were commonly available earlier, they did not exhaust all the varieties of locks which were being manufactured and sold in the market at the relevant time. It was denied that the respondents' lock (a sample of which was produced) was in any way similar or identical with the petitioner's registered design; further, it was pleaded that the respondents' lock was quite different from the registered design of the petitioner and, therefore, the respondents' design was new and novel in the eyes of law. With reference to the warning notices published by the petitioner in various journals and newspapers, it was stated that the design published, did not show any protuberance on the front side. As far as the sale of their locks was concerned, the respondents stated that the ex-parte injunction granted in the suit, had already been vacated by the High Court on 16th June, 1967, and there was nothing to prevent the respondents from selling their locks in accordance with their own registered design. It was claimed by the respondents that the petition for cancellation of their design was only a counter-blast to the respondents' previous petition for cancellation of the petitioner's registration. A replication was filed by the petitioner which re-iterated the facts stated in the petition. It was further stated that the petitioners were manufacturing a lock with a protuberance and the respondents were misleading themselves and the Court in saying that the registered design does not have a protuberance. It was denied that there was no protuberance in the registered design No. 125728. It was stated that one had only to place the lock of the design of the petitioner and the lock of the registered design of the respondent together to see that the respondents had merely applied the petitioner's design to make their lock and thus committed an act of piracy and, hence the registration of the respondents' design was a nullity, for the circumstances showed that the respondents had only applied for registration on 29th October, 1966, yet in November, 1966, they had moved this Court to say that the petitioner's design was not new and original, as horse-shoe shape cycle locks of that design were commonly found in the market. It was alleged that the application of the respondents for registration, together with their application to this court for revocation of the petitioners' registration, already revealed the inconsistency of the respondents' case. As regards the claim of the respondents that the petitioners' registration design did not show any protruding portion, it was stated that such a protruding portion could not be shown in the photographs of the front and back of the lock, but it was claimed that locks as per the registered design had been sold since the year 1965 with the registered number inscribed on each lock. Regarding the vacation of the ex-parte injunction, it was stated that the Court had only given an advantage to the respondents of continuing manufacture, because it had a registered design without reversing its view that the respondents' design was a piracy of the petitioners' design. The judgments of the Calcutta and Delhi High Courts holding the petitioners' design to be new and original were again referred to.

These three proceedings, which I have referred to above, namely, the petition of America Lock Company for the revocation of the registered design of the Western Engineering Company (C.O No. 1 of 1966) and the petition of M/s. Western Engineering Company for the revocation of the registered design of M/s. America Lock Company (C.O No. 7 of 1967) as well as the suit of M/s. Western Engineering Company against the America Lock Company for an injunction to restrain the manufacture of horse-shoe shape cycle locks of the type involved in this case, i.e with a protruding placed in the key-hole which opens from the front and not from the side; and for accounts in the nature of damages (S. No. 390 of 1967) have now been consolidated. Some of the evidence on record is in the form of affidavits, and some is in the form of oral statements, and all three cases have been heard by me at the arguments stage.

Before turning to the questions arising in these three cases, it is necessary to refer to the issues framed in the proceedings and also to certain miscellaneous orders passed in the form of directions concerning the trial of the proceedings and the manner in which the cases have been consolidated. The earliest of the three cases was the petition for revocation instituted by America Lock Company, C.O 1 of 1966. In that case, four issues were framed on 16th March, 1967. Later, an additional issue was added as Issue No. 4 by an order dated 16th May, 1967. The issues as finally framed run as under:—

“1. Does a petition under section 51-A of the Indian Patent and Design Act require verification ?

2. Is the petition incomplete in the absence of disclosure whether the petitioner is a firm and association of persons or a business run by an individual ?

3. Is the Design No. 125728 liable to cancellation on the ground alleged in the petition ?

4. Is the petitioner a “person interested” within meaning of section 51-A of the Act ?

5. Relief”.

The next case was Suit No. 390 of 1967 for an injunction and damages instituted by Western Engineering Company against America Lock Company. In that suit, five issues were framed on 14th November, 1967. Then an application was made to the Court by the plaintiffs, M/s. Western Engineering Company that the proceedings in the revocation application and the proceedings in the suit should be consolidated. This application was accepted on the ground that some of the issues arising in the revocation application instituted by America Lock Company were raised in this case. At the same time, another application was moved by America Lock Company for consolidating the revocation petition filed by Western Engineering Company against America Lock Company, i.e, C. O. No. 7 of 1967, with the already pending C.O 1 of 1966, instituted by America Lock Company, which was rejected. These two petitions were decided together by an order dated 7th at that stage. The defendants in the suit i.e, M/s America Lock February, 1968. The Court ordered that the suit should be consolidated with C.O No. 1 of 1966 but the other petition was dismissed. Consequently, the revocation petition instituted by Western Engineering Company remained separate from the other two proceedings, at that stage. The defendants in the suit, i.e, M/s America Lock Company applied for the framing of an additional issue, which resulted in a new issue No. 3-A being framed. The issues as finally settled were as follows:

“1. Whether the lock (Object No. 1) of the plaintiff is in accordance with his registered design No. 125728 ? If not, with what effect ?

(O.P.P)

2. If Issue No. 1 is found in favour of the plaintiff, whether the lock as per design (Object No. 1) is of previously published and known design ?

(O.P.D)

3. Is the defendant entitled to manufacture locks as per his registered design ?

(O.P.D)

3-A. Are the cycle locks manufactured by the defendants as per object No. 2 infringement and/or a piracy of the plaintiffs' registered design No. 125728 and/or of their cycle locks, object No. 1, and what is its effect ?

(O.P.P)

4. What is the value of the suit for purposes of court fees and with what effect ?

5. Relief.”

After the suit and C.O No. 1 of 1966 had been consolidated, there was a dispute between the parties, as to whether the evidence should be led first in C.O No. 1 of 1966, or in Suit No. 390 of 1967. The Court ordered on 13th February, 1968, that the proper procedure would be that the petitioner in C.O No. 1 of 1966 should lead its evidence first as that was the earlier case, and the evidence in Suit No. 390 of 1967 should be recorded later. Although, there are several orders concerning the examination of several witnesses, it does not appear that the parties examined more than one witness each, in this case.

It is now necessary to turn to C.O No. 7 of 1967, which is the application of Western Engineering Company for the revocation of the design registered in favour of the America Lock Company. In this case, only one issue was framed on 4th March, 1968. Later on, certain amendments were allowed in the application for revocation, and a second issue was framed on 20th April, 1970. The two issues as finally framed were as follows:—

“1. Whether the registration of the respondents' design No. 129675 is liable to be cancelled on the grounds mentioned in the application ?

2. Are the applicants entitled to the relief sought by them on the grounds introduced through amendments in the amended petition ?”

At the time the first issue was framed, the counsel for the petitioners stated that he wanted to give evidence on three matters, which were:—

“1. that the registration of the cycle lock effected in favour of the petitioners was prior in time to the registration of the cycle lock manufactured by the respondent;

2. to prove the certificate of registration; and

3. to prove that design No. 129675 being the respondent's registered design has been published in India prior to its registration.”

The petitioners prayed that they might be permitted to file affidavits in proof of the allegations set out in para No. 10 (b) of the petition. In accordance with these directions, affidavits and counter-affidavits were filed by the parties. At that stage, the respondent, i.e, the America Lock Company asked for permission to cross-examine the deponents. Although, this was contested by the petitioners, permission was granted to cross-examine all the deponents. In consequence of this order, a number of witnesses, whose affidavits had been filed, were subjected to cross-examination. After the second issue was framed, as reproduced above, further affidavits were filed by the parties and a further permission to cross-examine the deponents was allowed. While this procedure was adopted by the Court, the records of C.O No. 1 of 1966 and the Suit No. 390 of 1967 which had been consolidated were ordered to be attached to the file of C.O No. 7 of 1967. Hence, even though there was no actual order consolidating C.O No. 7 of 1967, all the files were amalgamated and the cases were thus proceeding side by side.

At the stage when the case came before me for the first time, on 8th August, 1972, all the parties agreed that the three proceedings should be consolidated and the evidence already recorded should be treated as recorded in all the three cases and should be read as evidence in all the cases. I recorded the statements of counsel in this respect, and ordered the consolidation of all the three cases. In consequence of the agreement of the parties, I have treated the evidence recorded in all the three cases as being common evidence for all the three cases.

On 29th August, 1972, after the arguments had commenced, counsel for the petitioners in C.O No. 7 of 1967 wanted to bring more material on record, to establish the lack of novelty and originality in the respondents' design. This was contested by the respondents on the ground that orders had previously been passed restricting the nature of the evidence to be led. I considered this matter and passed an order on 14th September, 1972, in which I stated:

“I think such a view would lead to an almost endless controversy as to what was novel or original in a design. Parties were perfectly well aware of their cases and on 4th March, 1968, learned counsel for the petitioner made a statement concerning the nature of the evidence he intended to lead.”

I then proceeded to say that the order dated 4th March, 1968, limited the nature of the evidence the petitioners sought to lead, and new material now would re-open the entire case, and I was reluctant to allow a re-trial in a case which was already five years old. I, therefore, rejected the plea for further evidence, but stated that I would consider whatever evidence had already been led on the points pleaded.

I have mentioned all these orders in order to give the background in which these three cases came before me. I now proceed to analyse the three cases, before proceeding to deal with the points that arise for decision.

The first of the cases is the application of M/s. America Lock Company to have the registered design of M/s. Western Engineering Company cancelled or revoked, that is C.O No. 1 of 1966. The converse case of M/s. Western Engineering Company to get the registered design of M/s. America Lock Company cancelled or revoked is C.O No. 7 of 1967. The decision on both these cases turns on the novelty and originality of the registered designs in question. As the registered designs of both the parties are more or less similar, the effect of these two cases is to call in question the registered designs of both parties. The grounds of challenge are, however, different. According to M/s. Western Engineering Company the design of M/s. America Lock Company is a copy or imitation of their previously registered design and is, therefore, clearly not novel or original. On the other hand, the case of M/s. America Lock Company is that the design of M/s. Western Engineering Company is not novel or original. As will be seen later, the two cases have a considerable bearing on each other. The law applicable to a registered design which is a mere variation of a previously registered design is quite different from the law applicable to a registered design which has no similarity with a previously registered design. The question whether a design is new or original is very largely dependent on the nature of the manufactured article to which it is to apply; the nature of the design of articles manufactured before the introduction of the design in question; and also the state of knowledge of the industry producing such articles. Thus, in different situations a design may be novel and original even though it is slightly different from the previous design, or it may be only a trading variation which is not novel or original in the sense required by the Patents and Designs Act, 1911. At the same time, if a still further variation in the design is produced, it may still not infringe the registered design, even though it is not itself new or original. I shall, therefore, have to examine the state of knowledge which existed prior to the introduction of the designs in question in respect of cycle locks in general and the horse-shoe shape in particular. As regards the third case, namely, the suit for injunction and damages brought by M/s. Western Engineering Company against M/s. America Lock Company, which is based on infringement of the registered design of the former, it is necessary to say that the result of that suit is largely dependent on the conclusions I reach on the two revocation applications before me. At present both parties have registered designs and the question of infringement does not arise. If both designs are revoked, then the suit will fail, but if the design of M/s. America Lock Company is revoked and that M/s. Western Engineering Company is maintained, then the suit will be maintainable. Hence, the decision in the suit depends largely on the result of the two applications for revocation.

Before dealing with the merits of the controversy, it is necessary to describe, as far as possible, the two locks in question. For sake of convenience, I shall refer to the lock of M/s. Western Engineering Company (KING LOCK) as Lock ‘A’ and the lock of M/s. America Company (GOLD MOHAR) as lock ‘B’. Both locks are locking devices shaped like a horse-shoe with a projection at the top, the locks are fixed to the bicycle in such a manner that the projection is at the top of the wheel of the bicycle, which passes through the circular part of the lock. For locking the bicycle, a semi-circular metal bolt which is within the rest of the horse-shoe, is pushed out to close the circle. The bolt passes through the spokes of the bicycle-wheel in the locking position. There is a kind of handle or knob which moves along with the bolt. By pressing this knob, the bolt is taken through the wheel of the bicycle and locked by the locking mechanism which is in the projection at the top of the horse-shoe shape and the key-hole projection from the face of the horse-shoe in a cylinder. In the case of lock ‘A’, the upper part of the horse-shoe shape is parabolic, but in the case of the lock ‘B’ the upper portion is rectangular. The protuberance in the parabolic portion in lock ‘A’ is circular in shape and the key is inserted therein. In the case of lock ‘B’ the protuberance is not circular, but is a kind of elliptical cylinder. The horse-shoe shape portion in both locks is black in colour, and the bolt which emerges from the horse-shoe portion to lock the bicycle is made of some shiny white metal. The cylinders are also white in colour. There are minor difference in the number of bolts provided. The general appearance of the two locking devices is similar, but there are some dissimilarities. There are on record, a number of other locks of this type, manufactured earlier. They are exactly similar to both locks ‘A’ and ‘B’ except for the protuberance at the top of the horse-shoe shape where the locking mechanism is situated. In the case of the previously manufactured locks, the key-hole is not to be found in a protruding cylinder on the face of the horse-shoe shape, but the projection is inside to the horse-shoe, with the opening for the key on the side. The major difference between these previous locks and the locks of the two parties before me, is that those locks were locked from the side and did not have a key-hole or protuberance at the top of the horse-shoe. Both the present locks have their key-holes in the front, and the key-hole is itself in the protruding portion already referred to. If one was to cover up the top of the horse-shoe with the hand in the case of both the present locks ‘A’ and ‘B’ as well as in the case of the previously manufactured locks, there would be no identifiable difference between the various locks. Thus, the novelty, if any, in the two locks before me, lies only in the position of the key-hole and the shape of the little cylinder into which the key fixes. All the rest of the lock is exactly similar to the locks previously manufactured. Thus, to compare the two locks before me, it is not necessary to compare the horse-shoe shape at the bottom of the lock i.e the actual locking device, but it is only necessary to compare the little cylinders at the top. Even according to the case of M/s. Western Engineering Company the only novelty lies in the shape of the protuberance at the top of the lock and in nothing else. The case of M/s. America Lock Company is that their protuberance is quite different from the one in the Western Engineering Company's lock. I have tried to give as accurate a description as is possible without a photograph of the locks in question.

Before proceeding further with the case, I may refer to some decisions which have been relied upon by M/s. Western Engineering Company to affirm the novelty and originality of their design. The first case is Matter No. 574 of 1966, decided by S. A. Masud J. in the Calcutta High Court. That was a petition under Section 51-A of the Patents and Designs Act, 1911, instituted by M/s. Western Engineering Company against Paul Engineering Company. The judgment is reported as A.I.R 1968, Calcutta 109. In that case, design No. 127199 registered in favour of M/s. Paul Engineering Company was revoked on the ground that it was not new or original, but was a mere copy of the registered design of M/s. Western Engineering Company. The Court compared the two designs by comparing the two locks and found certain similarities in the two designs and certain differences. It is useful to mention the similarities. As stated by the Court, the following similarities existed:—

”(a) Both the designs are of equally circular or semi-circular shape.

(b) In both cases the lock portion is raised from the flat surface of the design.

(c) Bodies in both the farmes are painted black.

(d) The pin, the lock and the two lafes (sic.) at the end of two sides of the design are of silvery colour.

(e) A protruded round-shaped lock was fitted on the top of both the frames.

(f) The device and method of locking a cycle and opening by the key is the same in both cases.”

The same similarities exist in the present designs. It may be pointed cut that all these similarities, (a), (c), (d) and (f) are also to be found in the previously existing designs, models of which have been produced in this Court. Therefore, the only two similarities which have to be considered as vital in the present cases are: (i) the fact that the lock portion is raised and (ii) there is reprotruded round-shape lock at the top of the frame. Some dissimilarities are also pointed out in the judgment which I need not refer to. In the proceedings before the Calcutta High Court, it was urged on behalf of M/s. Paul Engineering Company that the design of M/s. Western Engineering Company was not new and original. The Court in fact stated that the design was new and original, but also stated as follows:—

“With respect to Mr. Tibriwala's contention that the petitioner's design is not a new or original one, it seems to me that he is indirectly raising a question of validity of the petitioner's registration. In my view, the invalidity of an earlier registration could have been challenged by him in a substantive application. In an application under Section 51-A of the Act, the question cannot be gone into.”

The Court then proceeded to consider whether similar locks as the one produced by M/s. Western Engineering Company had been imported from China, but did not accept the respondent's contention in that behalf. Although, I have referred to the decision, I may point out that the case before me is quite different. In the case before me, M/s. America Lock Company has relied on the design of the previously manufactured locks, as well as the designs of Chinese Locks called ‘Wings’ and ‘Chivalry’, and further had relied on the patent of a British lock similar to the ones commonly manufactured in India. It has also been urged that the lock of M/s. Western Engineering Company is a mere trade variant of the previously manufactured locks and is, therefore, not new and original in itself. In addition to this point, it has also been urged that the registered design of M/s. Western Engineering Company does not contain the protruded portion on the basis of which novelty and originality is claimed and, hence this case should be decided on the basis of the registered design and not on the basis of the manufactured design. I will later have opportunity to refer to the registered design for the purposes of considering this question.

The next judgment referred to is the judgment delivered by Andley J. (as his Lordship then was) in O.M No. 483 of 1967 in Suit No. 298 of 1967, M/s. Western Engineering Company v. M/s. Tiger Products (Private) Ltd., and Others, dated 31st May, 1967. That was a case in which an interlocutory injuction was granted to M/s. Western Engineering Company against M/s. Tiger Products (Private) Ltd., on the ground that they were manufacturing locks in accordance with the registered design of M/s. Western Engineering Company. In that case it was observed:—

“The design which was registered by the plaintiffs also has the general shape of a horse-shoe but the protuberance at the top is not rectangular but elliptical in shape. Further, in the centre of this elliptical protuberance at the top is affixed a cylinder which contains the key hole of the lock in the centre.”

Later on, in the judgment the registered design of M/s. Western Engineering Company was stated to be prima facie separate, and it was also observed that the same could not be challenged in those proceedings.

During arguments, another decision of this Court in O.M No. 743 of 1967 in Suit No. 389 of 1967, M/s. Western Engineering Co. v. M/s. Pal Engineering Co. and Nirman Industries, etc., dated 14th May, 1969, and delivered by Prakash Narain J. was referred to. In that case, it was stated that the registered design of the plaintiffs was prima facie valid; the former judgment of M. A. Masud J. was referred to and it was stated that the:—

“registered design cannot be looked at in isolation from the finished product.”

In my view, the two decisions of this Court referred to above are judgments delivered at an interlocutory stage, and cannot be decisive of the novelty or originality of the design of M/s. Western Engineering Company, because they are based on the view that a person holding a registered design has a right to get the same protected. The judgment of M. A. Masud J., although it holds the design of M/s. Western Engineering Company to be new and original was based on the evidence and material produced in that case. As I have said, the evidence before me is quite different and a number of additional points have been urged which have to be considered for the purpose of deciding the validity of the registration of the two registered designs before me. Furthermore, and this is the most important difference in the cases before me, the validity of the registered design in favour of M/s. Western Engineering Company has itself been challenged on the ground of lack of novelty and originality. In case, I hold the registered design hold by M/s. Western Engineering Company is itself not novel and original, I must necessarily hold that the registered design of M/s. America Lock Company is also not new and original. Therefore, the 1st petition that has to be dealt with by me is the one brought by M/s. America Lock Company against Western Engineering Company.

I have already set out the issues framed in C.O No. I of 1966. An amended petition was filed by the petitioners on 28th July, 1967. There appears to be no order of the Court permitting this amended petition to be filed. In this amended petition, it is disclosed that M/S. America Lock Company is a partnership firm and the petition is also verified. The first two issues framed in this case, relate to the absence of verification and the absence of averment in the application concerning the status of M/s. America Lock Company. Both these objections have been met in the amended petition, but I am unable to find any application praying for the amendment of the petition on record. As three cases have been consolidated in the manner stated above, it is possible that an application for amendment was made, but is not now traceable. For the purpose of convenience, I am going to treat the original petition as the only petition before me. No arguments have been addressed on the first two issues, and therefore, inspite of there being no order regarding amendment on record, I decide those issues in favour of the petitioners, M/S. America Lock Company.

The remaining three issues relate to the merits of the case. Issue No. 3 is concerned with whether the registered design in question is liable to be cancelled under Section 51-A, and Issue No. 4 relates, to whether M/S. America Lock Company is ‘a person interested’ in the cancellation. It is plain from the facts on the record that M/S. America Lock Company is a person interested in the cancellation of the respondent's design for the simple reason that it itself holds a registered design of a similar lock and is also a manufacturer of a similar lock. I, therefore, propose to deal principally with the question whether the registered design No. 125728 of M/S. Western Engineering Company is liable to be cancelled. It is clear that the only ground on which it can be cancelled is because of lack of novelty and originality in the design.

The first basic conflict between the parties before me is, as to what is the shape of the design which was got registered by M/S. Western Engineering Company. The photographs annexed to the design show only the front and back view of the lock. No protuberance of a lock or cylinder is visible from the front view of the lock and unfortunately there is no side photograph which would show whether there is a protuberance at the place where the key is inserted. On the other hand, the model of the lock ‘A’ which has been placed on record clearly shows the protuberance which stands out about 3/4 inches from the horse-shoe shape of the lock. If any photograph of the lock had been produced before the Registrar giving a three dimensional view, then the protuberance omits absence would have been immediately visible. Unfortunately, M/s. Western Engineering Company placed on record before the Registrar only a flat view of their lock from back and front. It is, however, urged by learned counsel for M/s. Western Engineering Company that the shading in the photograph of the front view clearly shows that there is a protuberance. I am afraid that the protuberance is not at all visible in that picture. There is an affidavit of Maulana Masoud-ul-Hasan in C.O No. 7 of 1967, which has been marked Exhibit P-1, in which it is stated that the deponent prepared the drawing of the front and back portions of the cycle lock in question and got prepared five photograph copies of the design of each side, and handed over the same to Shri Om Prakash Sharma of Calcutta Trade Mark Co. It is also stated that the design of the cycle lock was identical to the cycle locks being marketed in Delhi as ‘Western King’ and ‘Royal Ambassador’. Further, it is stated that the protuberance on the front side was the novel feature of the cycle lock. This witness in cross-examination stated that he had been shown a cycle lock before he prepared the drawing. He also stated that the design was prepared by pencil and then photographed. He admitted that the design prepared by him did not prominently show the protruding portion of the lock because when a design is prepared of the front view, the protruding portion does not appear in the design. He stated that the shading was done by him to indicate the protruding nature of the portion where the keyhole existed. Shri Om Prakash Sharma, a partner of Calcutta Trade Mark Co. also gave his affidavit in which he stated that the design in question was prepared from a cycle lock relating to ‘western king.’ In cross-examination he stated that the novel feature of the lock was the protruding cylinder in the front, where there was a hole for the key. He, however, admitted that this novelty was not mentioned in the application for registration, but according to him the photograph did not show the protruding portion of the lock. In the affidavit of Shri Anant Ram Manocha, a partner of M/s. Western Engineering Company, it was stated that the firm had introduced a cycle lock covered by the registered design towards the end of 1965 and the novelty of the design consisted in the protuberance. When he was cross-examined on this point, he stated that the illustration of the design did not show the protruding portion, but it was not claimed as a novelty.

Looking at the design itself, which is Exhibit D-1 in C.O No. 1 of 1966, though it is differently marked in the other proceedings, I am satisfied that no protruding portion is shown in the photograph. The photograph in question is not a photograph of the lock, but a photograph of a drawing made by Maulana Masoud-ul-Hasan. If there was a protruding portion it could have been shown by appropriate shading. I have to judge the shape of the design from the conception of the article which I derive from the photograph. I cannot see any protruding portion in this design. It is possible that Maulana Masouod-ul-Hasan, due to lack of experience as an artist or otherwise, was unable to show the protruding portion in the design. That is not for the Court to decide. For this purpose, it is now necessary to turn to the Rules framed under the Indian Patents and Designs Act, 1911; these Rules, are the Indian Patents and Designs Rules, 1933. Rule 36 of these Rules requires a statement of novelty. That rule runs as follows:—

“36. Statement of novelty:— The applicant may, and shall, if required by the Controller in any case to do so, endorse on the application and each of the representations a brief statement of the novelty he claims for his design.”

Now, before me it is contended that the novelty of the design was the protruding portion of the cylinder into which the key fits. No such statement can be found in the registered design. On the other hand, it is stated in the certified copy of the Certificate of Registration:

“The novelty resides in the shape and configuration of the article as illustrated. No claim is made by virtue of this registration in respect of any mechanical or other action of the mechanism whatsoever or in respect of any mode or principle of construction of the article.”

An examination of the registered design and the drawing show some other differences also. For instance, in the manufactured design, there is a protruding cylinder inside of which there is a smaller cyclinder with a depression into which the key fits. On the other hand, the registered design does not show the larger cylinder to be protruding nor does it show any smaller cylinder similarly protruding inside the larger cylinder. Thus, the registered design does not depict the manufactured design. This does not, however, make much difference to the decision of this application, but has a greater bearing on the novelty and originality of the registered design of M/s. America Lock Company which is the subject-matter of C.O No. 7 of 1967. For the purposes of this case I will deal with the registered design of M/s. Western Engineering Company, both on the footing that there is a protuberance as claimed and also on the footing that there is none.

The main ground on which the registered design is challenged is that the whole lock or design of the same, is not new or original. This challenge is based on several factors. The first claim is that Chinese locks, named ‘Wings’ and Chivalry' of this type, were of the type manufactured by M/s. Western Engineering Company, introduced the design. No lock of this type has been produced, but there is a photograph of a ‘Wing’ lock of Chinese origin. There is insufficient material on record, to show that these Chinese locks were introduced into the Indian market before M/s. Western Engineering Company introduced its locks. Shri N. S. Kapur, P. W. 1, partner of America Lock Company, admitted in cross-examination that he was not able to say whether Chinese locks were being sold in India. The next point raised is that the registered design in question does not differ much from the previously manufactured locks which were available in the market. On this point, it is necessary to mention that those locks are exactly of the type made by M/s. Western Engineering Company, except that the place for inserting the key is on the side and there is no cylinderical protruding portion. It is urged on behalf of the petitioners that the lock ‘A’ is a mere trade variant of all the locks previously manufactured. The point that requires examination regarding this question is whether the change in the position of the key in a well-known design was sufficient in itself to make a new design capable of being registered. The next point of challenge is that there is a patented British cycle-lock of the type manufactured by M/s. Western Engineering Company, the abridgement of whose patent was available for inspection in the office of the Registrar of Patents and Designs. It is urged that the design got registered by M/s. Western Engineering Company is also almost identical with the article patented by the British firm. I shall examine this question also.

On these two points, it is necessary to examine the concept of novelty and originality which is the pre-requisite for a design to be registered under the Indian Patents and Designs Act, 1911.

A large body of case law has been built up during the years, to explain what is meant by ‘novelty and originality’. As the English law on the subject is almost the same as in India, the English cases are also a great help in determining the principles to be applied. In fact there are very few Indian decisions on the subject. Generally, the test for novelty and originality is dependent on determining the type of mental activity involved in conceiving the design in question. If the design is original, then the designer must have conceived something new; if the design is a mere trade variation of a previous design, then the designer could be said to have merely kept an existing design in view and made some changes in it. Taking the instant case, it is clear that the previously existing design was almost exactly the same as the design of M/s. Western Engineering Company as well as that of M/s. America Lock Company in some respects. The only modification made in the existing design was to change the position of the lock. Instead of the lock being fixed sideways into the projecting portion of the horse-shoe, the lock was affixed in the centre of the projection so that the lock could be operated with a key inserted from the front instead of the side. The lock itself being in the form of a protruding cylinder. There is, therefore, some original mental application involved in conceiving the new design. The designer must have thought that the lock could be operated, perhaps more conveniently, by having the key-hole in the front instead of the side. To that extent there is some novelty and originally in the design of M/s. Western Engineering Company. It is true, however, that this novelty can also be treated as being merely a variation in the existing design. Thus, the new design can be treated as a new or original design, or it can be treated as being merely a trade variant of an already existing design. In order to illustrate this point, it is only necessary to first compare the design of M/s. Western Engineering Company with the previously existing design and then to compare the design of M/s. America Lock Company with the manufactured product of M/s. Western Engineering Company. In the former case, the comparison shows that there has been a change in the product. No person could be deceived into believing that the design of M/s. Western Engineering Company, either registered or manufactured, was the same design as that of the previously existing locks. On the other hand, the design of M/s. America Lock Company is so similar to the design of M/s. Western Engineering Company, that one can say that the designer merely looked at the lock manufactured by M/s. Western Engineering Company and made some variation in the same. It would, therefore, be difficult to say that the design of M/s. America Lock Company was itself new or original. The only change made by M/s. America Lock Company was to alter the shape of the cylinder and make a few other changes. This would lead to one of the two results, either the lock of M/s. America Lock Company could be said to be a copy or imitation of M/s. Western Engineering Company, or it could be said to be sufficiently different as not to be a mere imitation. It would not in my view be itself new or original. Thus, there is a difference in the mental process or application involved, in changing an existing design to such an extent, that a new design which is itself new or original is produced, or in merely producing a trade variant of the previous design.

Referring again to the design of M/s. Western Engineering Company, I have already observed that the design is almost the same as the existing design except for the position of the key. Thus, it could be said that the designer merely looked at the previous design and made a variation in the same by changing the position of the key. The provision of a protruding cylinder at the point where the key is inserted does not make much difference. Thus, the design of M/s. Western Engineering Company, whether the registered design, or the manufactured design, both, can be said to be mere trade variants of the previous design. On the other hand, it can also be said that the design is new and original, because it sufficiently differs from the previous design and there is no possibility of mistaking one for the other. I have to decide whether the design of M/s. Western Engineering Company is new and original to the extent that it is capable of being registered under the Act as such. There are numerous judicial pronouncements which have been cited before me which have now to be referred to. I first turn to the English cases.

In Negretti and Zambra v. W. F. Etanley & Co. Ltd. (1925) 42, R.P.C 358, (1) the question was whether the plaintiff's registered design for a thermometer had been infringed by the defendants. It was pleaded by the defendants that the plaintiff's design was itself not new or original. On a comparison between the plaintiff's design and the design of other thermometers, it was found that all the features to be found in the plaintiff's design existed in previous thermometers but not in the same combination. Reference was made to the decision in Philips v. Harbo Rubber Co. (1928) 37, R.P.C, 233, (2) where Lord Moulton stated:—

“The introduction of ordinary trade variants into an old Design cannot make it new or original. For example, if it is common practice to have or not to have spikes in the soles of running shoes, a man does not make a new and original Design out of an old type of running shoes by putting spikes into the sole. The working world, as well as the trade world, is entitled at its will to take, in all cases, its choice of ordinary trade variants for use in any particular instance, and no patent and no registration of a Design can prevent an ordinary workman from using or not using trade knowledge of this kind.”

In the same quotation, it had been held that the Court should take special care to declare only that design as new or original which was:

“distinguished from all the previously existed by something essentially new or original which is different from ordinary trade variants which have long been common matters of taste or choice in the trade.”

Applying this test, the Court came to the conclusion that the plaintiff's design for a thermometer was not new or original as it had no novelty within the meaning of the Act which rendered it distinct from the many other similar designs which had previously existed. It was stated :—

“all that has been done has been to apply ordinary trade variants or trade adjustments well known and common for the purpose of making an instrument useful for the purpose for which it was intended and not rendering it qua configuration or design anything substantially new and original at all.”

Thus, it is urged that M/s. Western Engineering Company has merely made a trade variation in the design, as previously existing and in common use, by merely changing the position of the key-hole. This, it is urged is a trade variant. Later on, the same judgment cited Allan West & Co. Ltd. v. British Westinghouse Electric and Manufacturing Co. Ltd. (1916) 33, R.P.C 157 (3), in which it was stated :—

“it is, I think most important to bear in mind the fact that they are not intended, and ought not to be allowed, to paralyse or impede the natural and normal growth and development of the manufacturers which they are intended to benefit. I think this case ought to be determined upon the question whether the difference in the registered design of the right-angled finger support is or is not sufficient to make it an original Design within the meaning of the Act, or, whether, on the contrary, it is not an ordinary and natural alteration of the shape of a known article for the purpose of fitting it into a case or apparatus in which it is desired that it shall work.”

Later on, in the same quoted passage, it is stated :—

“This is a Design for shape or configuration. I agree it must be looked at by a person with knowledge of what has gone before, and with knowledge of what the article, the subject-matter to which the Design applies, is to be used for. The Design as a whole is substantially identical with the anticipation. Every single part of it is the same, excepting the angle of the finger support. It is perfectly true that if you take the outline, the alteration of that angle makes a certain amount of difference, but, qua Design of the thing as a whole, the difference is small. The question I have to decide is whether the alteration is a workshop alteration such as one would except any competent workman to make as soon as the knew the shape of the support on to which this thing had to be screwed, or whether the Design as a whole is a new or original one within the meaning of the Act.”

In the case in question, the court found that the thermometer differed from the previous designs to a very small extent and, therefore, the plaintiff's design was not new or original within the meaning of the statute. It was also found that even if the design was valid, there was a distinct difference between the plaintiff's article as manufactured and the infringing thermometer. It was held that an exact reproduction of the design was necessary in order to constitute an infringement. Applied to the present case, the question I have to determine is, whether the design of M/s. Western Engineering Company which differs from the previous designs only in respect of the position of the key-hole, is a trade variant which any competent workman could produce, or whether it is in itself a substantial alteration in the existing design. In this respect, it is note-worthy to point out that no novelty was claimed, according to the certified copy of the registered design in respect of the position of the key, but novelty and originality was claimed for the whole design, which is, as I have said, substantially the same as the previous designs.

In Wallpaper Manufacturers, Limited v. Derby Paper Staining Company, (1925) 42, R.P.C 443 (4), the Court had to consider the design of wall-papers. It was found that though the two wall-papers had somewhat different patterns when analysed closely, in fact, the total impression of the two designs was the same. One design could be mistaken for the other. The infringing design was held to be an infringement. The test as applied in this case, was whether the eye could be deceived into believing that the infringing design was the same as the previous design. Now, it cannot be said that the design of M/s. Western Engineering Company can be mistaken for the previous design. Equally, there is some change in the design of M/s. America Lock Company qua M/s. Western Engineering Company's design. The eye can see that the two designs are similar and yet dissimilar. The only novelty claimed by M/s. Western Engineering Company is in the protruding cylinder where the key fits. In the case of M/s. America Lock Company that cylinder is of a different shape. The locks are different at the very point where the similarity should exist, but they are exactly similar at other points where M/s Western Engineering Company clearly had no novelty. This is a case like the thermometer case quoted above. Thus, M/s. America Lock Company's lock ‘B’ can be said to be a trade variant of M/s. Western Engineering Company's lock ‘A’.

In Dover Ltd. v. Nernberger Colluloidwaren Febrik Gebruder Wolff, (1910) 27, R.P.C 493 (5), the plaintiffs had claimed an injunction to restrain the defendants from making and selling cycle handles with a design resembling the plaintiff's registered design and the defence raised was that the plaintiff's design was not new or original. The plaintiff succeeded at the trial. On appeal to the Court of Appeal, it was held that the cycle handles of the plaintiff were in themselves not new or original. The handles were in the form of a grip which was divided into panels by grooves and ornamented with a sinuous pattern. It was held that though the exact combination of the handle with the exact engine-turnings had not been produced before, it was not a new or original design capable of being registered under the Act, As observed by Buckley, L. J.:—

“I then ask myself what new or original Design was there in that well-known form of bicycle handle grooved as it had previously been, ornamented with that engine-turning which was common upon other cylindrical or approximately cylindrical bodies. There was nothing there which was new, every part was old; and what did the designer originate ? Nothing except the idea of putting the picture, which really is the Design, upon a bicycle handle instead of a penholder.”

It was also observed that there were some slight differences in the design made by the defendants. The panels were nine in number and the grooves were more shallow. There was no obvious imitation. In Kennedy L. Js. judgment it was observed :—

“In the present case, as I have already said, if I rightly appreciate the evidence, a panelled hand grip with grooved divisions was not new, nor was the engine-turning of surface as an ornamentation of those surfaces new, for it had been applied to what I may, I think, fairly call the kindred surfaces of knife handles and penholders, where the hand grips them. I cannot find either novelty or originality in the plaintiffs' Design by reason of such a combination.”

Thus, the registration of the plaintiff's design was rejected on the ground that the idea of having a design of the type produced by the plaintiffs was not new or original. The same can obviously be said of both the designs of M/s. Western Engineering Company and M/s. America Lock Company. They differ only in one respect from the previous designs of horse-shoe shape cycle locks, and that is in respect of the position of the key. Why should the design become new or original merely because of a difference in the position of the key ? In a Lock of this description, the key-hole has to be placed somewhere. It may be in the back, it may be in the front, it may be at the bottom. The design is not perceptibly altered to the extent of becoming new or original by making the key-hole at a different position. There is no doubt a protruding cylinder at the point where the key-hole is. That cylinder, in my view, should not make any difference to the newness or originality in the design. As explained to me, that cylinder is in the form it is, because, a more efficient lock can be provided if there is a protuberance. If there is no protuberance, the lock would have to be placed within a much smaller space in the horse-shoe. Thus the protuberance allows for the provision of additional tublers and the lock is consequently much more effective. This protuberance seems to be in the design merely to allow for a more efficient looking device being fixed to the apparatus.

I have been referred to the decision of the House of Lords in Gramophone Company Ltd. v. Magazine Holder Company (1911) 28, R.P.C 221, (6) and particularly to the observations of the Earl of Halsbury therein:—

“My Lords, the only refuge which I can find from being constrained to restrain other people from taking the most ordinary thing in the work and making it peculiar to themselves, is that you must recognise the fact that the principles which guide as in Patent cases are not applicable here. Therefore in order to come within the Act of Parliament — and I think you may come within the Act of Parliament in the case of the commonest and most ordinary thing — the one thing must be an exact reproduction of the other; and the old view which one had in dealing with Patents as to a thing being simply a colourable departure is no longer applicable.”

The case in question was concerned with a design for a gramophone cabinet. There was considerable similarity between the cabinets of the plaintiff and the defendant, but there were also some differences. For example, the shape of the doors of the cabinet was different and the proportions were also different. The judgment in the case, is restricted in application only to cases where the goods produced are of common type. It is, however, of some value in the present case, because the common case of both parties is that horse-shoe shape cycle locks of the previous shape and design were quite common. The only thing that was un-common was to have the key-hole at the point where M/s. Western Engineering Company placed it in its registered design. If the design of M/s. Western Engineering Company is upheld, it would follow that no other manufacturer could place the key-hole in the front of the lock. This means that a monopoly would be given to M/s. Western Engineering Company for the manufacture of locks of this type, merely because of the position of the key-hole.

In the matter of Wingate's Registered Design No. 768, 611, (1935) 52, R.P.C 126, (7) there was an application for removing the design in question from the register. It was observed by the Court that the design had to be examined and analysed by the Court itself. It was thus stated:—

“In this definition which I have read the appeal is to be an appeal to the eye, and I think it is plain that the eye there means the eye of the Court. But it does not mean the untutored eye. The Court is entitled to have instruction from persons who, because they are engaged in the trade or art in question, or because of some special knowledge of the trade or art, are in a position to assist the Judge in coming to a proper conclusion. For that purpose, in my view, witnesses are entitled to inform the Court as to the differences or similarities which they see in the various designs in question; but they are not entitled to tell the Court whether such designs are novel or new or original or not”.

Although, considerable evidence has been recorded in the cases before me, there is not much evidence of the type referred to above on record. I have had to gauge the nature of the novelty of the design in question from a comparison between the various horse-shoe type cycle locks which are on record. It is later stated in the same judgment that to determine whether a design is new or original, the Court has to compare the design in question with previous designs. The Court stated :—

“That, in my view on the authorities, means that there must be substantial differences from designs which were known, or had been published prior to the date of registration. What a substantial difference is, is a question upon which no general principle can be laid down at all; it must depend on the particular facts in each case. In one case a quite small variation in the details of a design may be enough to make the design something quite different from an existing design. On the other hand, there are cases even where quite large alterations in detail leave two designs for all practical purposes the same. The Court has to consider and look at the designs in question with an instructed eye and say whether there is or is not such a substantial difference between that which had been published previously and the registered design as to entitle the proprietor of the registered design to say that at the date of registration that was a new or original design and therefore properly registered.”

The Court then compared the design which was in question in the case with the designs of spectacles published in various magazines and journals and came to the conclusion that there was a dissimilarity between the registered design and the previous publications. Thus, the registered design could not be defeated on the ground of prior publication. Continuing the analysis, the Court stated :—

“The real crux of the whole of this case to my mind is: was the Design in question new or original at the date of registration ? As I have already pointed out, there is so far as I have seen in the documents and spectacles which have been produced before me nothing which exactly corresponds to the registered Design. That is not enough in itself to entitle the Design to registration, because there must be substantial difference between what was known or had been published at the date of registration and what is alleged to be a new design. I have already said that there is a distinction in the roughly triangular shaped part, but I have to consider looking at the registered Design and looking at the other designs, picturing them if you please upon the face of a person wearing the spectacles, whether there is any real substantial difference between the two, or whether so far as appeal to the eye is concerned they are not so much alike as to deprive the Design in question of novelty or originality.”

On comparing the two designs, the Court came to the conclusion that there was no substantial difference as required by law. Left to myself, I would consider that the design of M/s. Western Engineering Company is sufficiently different from the previous designs as to be distinct and not-similar to previous designs. Judging from the eye alone, I would have held that it was different. This is subject, of course, to my observations already made, concerning the difference in question being only a trade variant. Although, the difference is substantial in the sense that the previous designs in use and the design or M/s. Western Engineering, Company cannot be mistaken for each other; there is still this factor to be taken into consideration, namely, whether the mere altering of the position of the key-hole by a designer, can render the resulting design, new or original.

The next case referred to in Dunlop Rubber Co. Ltd. v. Golf Ball Developments Ltd. (1941) 48, R.P.C 268, (8) which is a case of two competing golf balls. In this case, the Court found that the two golf balls, though similar, were distinguishable from each other. It was observed at page 281 of the Report:—

“Now, in a case where the registered Design is made up of a pattern which has no one striking feature in it, but it appeals to the eye as a whole, it may very well be that another design may be an imitation of it which makes the same appeal to the eye, notwithstanding that there are many differences in the details. It may well be that is so; but I think conversely it is true to say that, if a design has in it a striking feature the eye when one looks at the design, a design which otherwise may be like a registered design but which eliminates the striking feature or alters it so that it is not recognisable, in such a case it seems to me it is impossible to say that one is an imitation of the other. I think that anyone having seen and handled D. 5 looked at it and then put it away, and gone away, and then looked at the Maxfli ball, or was offered the Defendant's ball instead of it, would at once perceive the difference, and would at once had said: “These two balls are not the same at all.”

If this test is applied, no doubt one would say that M/s. Western Engineering Company's lock ‘A’ cannot be mistaken for the design of the previous locks. It would equally be true to say that M/s. America lock Company's lock ‘B’ differs from the lock of M/s. Western Engineering Company in respect of, what one might call the striking feature of M/s. Western Engineering Company's lock, namely, the protuberance and the key-hole in it. The protuberance in the case of M/s. America Lock Company's lock, is of a different shape. It would, therefore, follow that a person looking at the two locks would indeed have to say: “These are not the same two locks”. Thus, the design of M/s. Western Engineering Company could be considered to be distinguishable from the previous designs, subject of course, to what I have said about trade variant, but if this difference is sufficient to give M/s. Western Engineering Company a right to get its design registered, it would follow that M/s. America Lock Company's design is also different and, therefore, sufficiently distinguishable from M/s. Western Engineering Company's design and is an infringement of that design. I will deal with this matter again later.

Up to this point, I have been comparing the designs of M/s. Western Engineering Company's design lock ‘A’ and M/s. America Lock Company's design lock ‘B’ with the design of horse-shoe locks in common use, before these designs were introduced. I have come to the conclusion that the design of M/s. Western Engineering Company was sufficiently distinguishable from the previous locks, to permit the design to be registered, except if it can be said that the difference is only a trade variant, which could be easily introduced into the existing lock. In my view, the lock in the projection is a trade variant, which will be more obvious from the later discussion.

I now turn to the other main point urged on behalf of M/s. America Lock Company, which is based on the patent of the British lock, a certified copy of which has been produced as Exhibit P-2. This document is designated as an Abridgement of U. K. Patent Specification No. 560027. It has been stated by Shri N. S. Kapur, a partner of the petitioner that this Abridgement was available for inspection to the public. A certificate issued by the Joint Controller of Patents and Designs has been produced as Exhibit P-3. In this certificate, it is stated that the Abridgement of the U. K. Patent Specification No. 560027 was received on 6th February, 1952 and has since been available to the public for inspection and study at the above office. From these two circumstances, I can conclude that the patent in question was available for inspection to the public in general and it can thus be taken into consideration for determining whether the designs of M/s. Western Engineering Company and M/s. America Lock Company, which are in question in these cases, were new or original. It is now necessary to refer to the contents of the specification. There is a drawing of a horse-shoe cycle lock, the shape and design of which is virtually the same as that of lock ‘A’ produced by M/s. Western Engineering Company. The only descernible difference is that the knob which operates the locking device and makes the bolt pass through the spokes of the bicycle wheel is on the other side, i.e, in M/s. Western Engineering Company's design it is on the left-hand side, and in the case of the patent it is on the right hand side. The other difference is that the position of the key-hole is not given in the drawing. However, there is at point 18 in the drawing mention of a ‘Pawl’ for locking the bolt in the closed position, which is at exactly the same position as the key-hole in the registered design of M/s. Western Engineering Company. I now reproduce the description of the patent, for convenience:—

“560027. Locking cycles. TIGHE, J. July 7, 1942 No. 9389 (class 79) (iii) A cycle lock of the kind comprising a shaped frame (10), a C-shaped bolt (11), slidably-mounted therein and adapted to be moved to close the opening in the frame, a return spring (14) for withdrawing the bolt and retractable means such as a pawl (18) for locking the bolt in the closing position, is characterised in that the lock frame (10) is provided with inwardly-directed ears (15) by which it is adapted to be secured to the cycle frame fork (not shown). To lock the cycle wheel the bolt (11) is moved by means of a knob (12), which passes through a bolt (13), so that it passes between the wheel spokes and closes the wheel opening, the pawl (18) then locking the bolt. To release the wheel the pawl (18) is withdrawn by a key and the bolt is retracted by its spring (14). Any suitable locking mechanism may be used.”

On comparing this patent with the designs of M/s. Western Engineering Company and M/s. America Lock Company and also the previous designs of locks commonly in use, I come to the conclusion that all of these are imitations of the British Patent. All of them have the same general shape in configuration. The only factor which distinguishes the lock of M/s. Western Engineering Company and M/s. America Lock Company and the previously commonly used designs is the position of the key-hole, which in the case of the previous designs is in the side and in the case of M/s. Western Engineering Company and M/s. America Lock Company is in the front. In the manufactured design of M/s. Western Engineering Company and M/s. America Lock Company, there is a protuberance where the key fits. In the case of M/s. Western Engineering Company's registered design, there appears to be no protuberance as I have already stated before. If an article, like the cycle lock mentioned in the Abridgement of the U.K Patent, is produced by several manufacturers, I would have thought that none of those cycle locks or their designs could be considered new or original. All of them would be copies of the patented article. It is quite true that the U. K. Patent is not a patent in India and, therefore, it can be copied by various manufactures without infringing the U. K. Patent. All the same, these designs cannot themselves be treated as new or original. If the copy of the exact article shown in the registration cannot be treated as new or original, I cannot see why giving the protuberance at point (18) should make it any more new of original. The registration of the patent does not in fact show where exactly the key-hole is in the English patented lock. However, it does show where the locking device is, and to my mind that locking device is situated exactly where both M/s. Western Engineering Company and M/S. America Lock Company have placed their key-hole. This locking device could as easily be provided in the front as on the side. The previous designs in use in India, had the key-hole from the side and the designs of M/S. Western Engineering Company and M/S. America Lock Company have the lock operated from the front, by inserting the key into the protuberance provided in the manufactured article. A copy of a well-known article would not be new or original. I do not, therefore, see why a copy with slight modifications should be new or original. In the patented design depicted in the U. K. Abridgement, the exact position of the key-hole is not shown. But it does say: “any suitable locking mechanism may be used”. It would follow that the key-hole had to be provided in the finished article at some point or other. One of the convenient points would be in the front and one would be in the side. The key-hole might also be in the top or elsewhere in the projecting portion of the horse-shoe. No such design could be considered new and original, because the whole design is a copy or imitation of a patented article. Thus, by no test could the designs of the M/s. Western Engineering Company or M/s. America Lock Company be considered to be new or original because of the existence of this Abridgement of the U. K. Patent Specification No. 560027, which was open for inspection in the office of the Registrar of Patents and Designs to the public in general. I would thus find that neither the design of M/s. Western Engineering Company nor the design of M/s. America Lock Company can be designated as new or original.

There is an English case reported as Plimpton V. Malcolmson, (1876) 3, Ch. D. 531, (9) where the question was whether a description of an invention contained in an American book sent to the Patent Office in London, was sufficiently published as to be available to show novelty in the design in question in the case. In that case, it had been held that the book in question was kept in the Library and, there was no sufficient publication of the prior design as to add to the public stock of knowledge. Such a question has to be determined on the facts of a given case. In the book which contained a description of the patent in question, a drawing of the article (a skate), plus a short description of the specifications of the article were included. It was held by the Court, that there was no publication in the ordinary sense. It was held:—

“the existence of this book on the shelf in a private room in the Patent Library — private in the sense of not being accessible to the public, though public in the sense that if anybody had by accident known of it he could have sent for the book. . . ”

On this view of the matter, the Court held that there was no prior publication to prevent the plaintiff's invention being patented. In the present case, the British patent seems to have been available for inspection for a number of years. Also, there seems to have been a large number of cycle locks produced by various manufacturers in India, of the type shown in the Abridgement. None of those previously existing locks have been patented, nor is there any evidence that their design was registered. It would be quite extraordinary if all those locks had been produced in the country by simultaneously acquired knowledge, and I therefore come to the conclusion that they must be copies, in some sense, of the U.K patented article. I cannot hold that all persons manufacturing cycle frame locks before M/s. Western Engineering Company and M/s. America Lock Company entered the field, designed their own locks. To my mind, all those locks had been copied from the design of the lock appearing in the U.K Patent referred to, or from the design of other locks produced earlier. The aforementioned decision in Plimpton's case is a very old decision, being delivered in 1876. The previous publication was in the form of a book to be found in the Library of the Patent Office. The previous publication I am dealing with is an official Abridgement contained on the record of the Patents and Designs Office. The two cases are, therefore, quite distinguishable. I must, therefore, treat the Abridgement of the English patent as being a prior publication.

There is a decision of the Controller of Patents and Designs delivered in 1921, in Re. Patent Application No. 5879, mentioned at page 244 of the ‘Patent Office Hand Book’ published by the Government of India, in which it is stated as follows :—

“The fact of British specifications being received in the Patent Office, Calcutta, and being available for inspection is sufficient to constitute publication of said specification.”

Similarly, in National Carbon Co., Inc. v. Borough & Co. and Another, Calcutta High Court (1933) (10) in the case of a U. S. A. Specification, it was held that it was not published because it was not available to the public. These two decisions show that when a document is available to the public, it is sufficiently published for the purpose of establishing novelty or originality. I, therefore, come to the conclusion that the aforementioned decision in plimpton's case is no authority for holding that the British Patent has not been published.

The Indian cases which have been cited before me, include the case of M/s. Western Engineering Company v. Paul Engineering Company, A.I.R 1968, Cal. 109, (11) already referred to, Lallubhai Chakubhai Jariwala v. Chimanlal Chunilal and Co. A.I.R 1936, Bombay 99, (12) and Calico Printers Association Ltd. v. Savani & Co. A.I.R 1939, Bombay 103, (13). Of these latter two judgments, the first was a case of infringement of patent. It was held in that case that even a combination of well-known processes may produce a new invention capable of being patented. The real test for establishing the validity of the patent was the novelty and originality of the article manufactured. The second case was concerned with a design for a sari. The plaintiffs had a registered design in India and the defendants had imported Saris from Japan which used a similar design. It was found that though the design was not an exact copy, that was not necessary to make a design a fraudulent or an obvious imitation of an existing registered design. Several decisions which I have not referred to earlier were cited before the Court and relied upon. This case has been cited before me, to show that the design of M/s. America Lock Company is an obvious imitation of the design of M/s. Western Engineering Company. It is equally applicable for the purpose of examining whether the design of M/s. Western Engineering Company is not an obvious imitation of the previous designs and particularly of the British Patent I have already referred to. It is note-worthy that in the British Patent, the position of the locking mechanism is not given, and the description in the patent shows that ‘any suitable locking mechanism might be provided’. M/s. Western Engineering Company has a lock which might be described as an exact replica of the patented design, except that the knob which operates the bolt is on the opposite side and the only addition is the locking mechanism. The provision of the locking mechanism cannot prevent the design being an imitation of the British Patent. It, therefore, follows that the design of M/s. Western Engineering Company cannot be accepted as being new or original. Equally, the design of M/s. America Lock Company cannot be accepted as being new or original. The consequence of this would be that both these registered designs would have to be revoked. The position of the key-hole and the projection in these two designs are clearly, trade variants or copies of the British patented cycle lock.

I have proceeded to determine the facts and law applicable to Civil Original No. 1 of 1966, the petition of M/s. America Lock Company in respect of M/s. Western Engineering Company's registered design. In coming to the conclusion that the design of M/s. Western Engineering Company is not new and original, I must necessarily also hold that the design of M/s. America Lock Company is not new or original.

I now proceed to deal with the design of M/s. America Lock Company, which is subject to the same objections as the design of M/s. Western Engineering Company plus a few additional objections arising from the fact that it was registered after the design of M/s. Western Engineering Company. I, therefore, now proceed to deal with Civil Original No. 7 of 1967, which is the petition of M/s. Western Engineering Company for the revocation and cancellation of registered design No. 129675 registered in the name of M/s. America Lock Company. This design is subject to the same objections as the design of M/s. Western Engineering Company itself.

The petition is based on the fact that the registered design of M/s. America Lock Company is not new or original because it is similar to the design of M/s. Western Engineering Company. I have already analysed that registered design. If it is accepted that there is no protuberance in the registered design, then it follows that the design of M/s. America Lock Company is sufficiently distinguishable from the registered design of M/s. Western Engineering Company. However, there is on record an issue of a journal called ‘Indian Bicycle Ambassador, Industry and Trade Linker, Special Republic Number 1966’. In the advertisement pages of this Journal, there is a photograph of ‘Royal Ambassador’ cycle lock similar to be one manufactured by M/s. Western Engineering Company's lock ‘A’. There is evidence on record to show that M/s. Western Engineering Company was also manufacturing a lock under the name of ‘Royal Ambassador’ also. This page of the Journal has been marked as Exhibit P-8 and Exhibit P-9 in Suit No. 390 of 1967. This picture is a sufficient publication of the design of M/s. Western Engineering Company or a similar design. There are slight differences between this picture and the lock actually manufactured by M/s. America Lock Company's lock ‘B’. The protuberance in the projection in the horse-shoe is of a different shape, the projection itself is not parabolic or rounded, but is somewhat square. It is possible to say that the lock manufactured by M/s. America Lock Company cannot be mistaken for this particular lock, but it is impossible to say that the lock of M/s. America Lock Company, Lock ‘B’ is new or original, merely because it is slightly different from the one depicted in this Journal and marketed under the name ‘Royal Ambassador’. I, therefore, come to the conclusion that the registered design of M/s. America Lock Company is not new or original, both for the reasons mentioned by me in dealing with the case of M/s. Western Engineering Company and also because there had been a prior publication of at least the manufactured design of M/s. Western Engineering Company or a similar design in the Journal just referred to. This is, therefore, an additional ground for revoking the registered design of M/s. America Lock Company.

The above discussion would mean that I would accept both Civil Original No. 1 of 1966 as well as Civil Original No. 7 of 1967 and in consequence the registered design of both the firms before me, would stand revoked. I have thus reached the same conclusion as reached by Masud J. in the case reported as M/s. Western Engineering Co. v. M/s. Paul Engineering Co. A.I.R 1968, Calcutta 109, (14).

I now proceed to deal with Suit No. 390 of 1967, which is the suit brought by M/s. Western Engineering Company against M/s. America Lock Company for an injunction as well as damages. This suit has been brought under Section 53 of the Indian Patents and Designs Act, 1911 and the first requirement of that Section is that there should be a registered design. As I have already held that M/s. Western Engineering Company's design should be revoked, this suit would have to be dismissed on that footing. If, on the other hand, I am wrong in my conclusion that M/s. Western Engineering Company's design has to be revoked, I would have to decide the suit on different grounds. If I am also wrong in my conclusion that M/s. America Lock Company's design has also to be revoked, then this suit would again fail, because M/s. America Lock Company cannot be restrained from manufacturing a lock according to their registered design. Hence, I now proceed to deal with the suit on the footing that the design of M/s. Western Engineering Company is not to be revoked, but the design of M/s. America Lock Company has to be revoked. If that is the position; the suit can only be decreed if the design of M/s. America Lock Company is either a copy of the design of M/s. Western Engineering Company or is a fraudulent or obvious imitation of that design. It is obviously, not an exact copy, because of certain differences which have been pointed out already, hence the question to be seen is, whether it is a fraudulent or obvious imitation of the registered design. In this respect, it again becomes necessary to refer to my conclusions regarding registered design No. 125728. I have held that the said registered design of M/s. Western Engineering Company does not contain a protuberance. I have held this, on an examination of the photographs which are appended to the certified copy of the registered design. Under Section 71 of the Indian Patents and Designs Act, 1911, a certificate issued by the Controller is prima facie evidence of the entry regarding the registered design. The photographs do not show any protuberance in the design and, it is therefore, impossible to say by comparing the registered design of M/s. Western Engineering Company and the manufactured design of M/s. America Lock Company, as represented by lock ‘B’, that the latter is a fraudulent or obvious imitation of the former. To amplify my conclusions in this matter, I may refer to the fact that the photographs (which appear on the record of Civil Original No. 1 of 1966) show the lock only from front and the back. The protuberance, if it was there, would be visible only from the side, because the protuberance would be towards the front, i.e, outwards, when seen from the front. If there had been a side view, the presence or absence of the protuberance would be obvious. It is stated in the description of the novelty appearing in the registered design:—

“The novelty resides in the shape and configuration of the article as illustrated.”

There is nothing in the description to show the protuberance. The requirements of law in the matter of indicating the novelty are contained in the Indian Patents and Designs Rules, 1933. Rule 36 requires the novelty to be stated in the application. Clearly, if the novelty consisted in the protuberance, it would have been specified in the statement of novelty required by the Rules. One of the other Rules, Rule 38, deals with the representations which are to accompany an application for registration. There is no limit to the angles from which photographs can be taken to accompany an application for registration. It is, however, necessary under Rule 38 (3) that each figure or representation should be designated, e.g, as perspective view, front view or side view. It is significant that no side view accompanied the application of M/s. Western Engineering Company. In the official ‘Patent Office Hand Book’ there are certain instructions: ‘for the guidance of Inventors and Applicants for the Grant of Patents and for the Registration of Designs’. Para 89 of these instructions states:—

“Copies of Designs. — The copies of the design which should accompany an application may be drawings, photographs, tracings or specimens. The copy of the design should be such as would enable a person looking at it to form a mental picture of the shape, a configuration, pattern, or ornament of the finished article to which the design is to be applied.”

Later on, it is stated :—

“The copies should, therefore, illustrate one or more perspective views of the finished article, such as, photographs from different points of view, so as to illustrate clearly the shape, or configuration of the article.”

The purpose of these instructions is to enable a person looking at the photographs or drawings submitted to get a three-dimensional view of the finished article. To my mind, the application of M/s. Western Engineering Company was defective as it did not give a perspective view of the finished article, but merely gave a view from the front or the back. This has led to all the controversy in these cases before me, and also to the contention of M/s. Western Engineering Company that in fact there is a protuberance, which is shown by the alleged shading in the photograph. There are some further instructions which are of interest in the present case, contained in para 90, which read :—

“Endorsement of novelty. — A brief statement of the novelty claimed for the design should preferably be endorsed on the representations. The following are suitable forms of the statement of novelty:—

The novelty resides in the shape of the ash-trade, as illustrated.

The novelty resides in the shape or configuration of the book-shelf as illustrated.

The novelty resides in the groove (A) and the projection (B) as illustrated.

The novelty resides in the ornamental surface pattern of the football as illustrated.

The novelty is claimed for the floral ornamental of the tea-pot as illustrated.”

It is note-worthy that these examples relate to objects in which the novelty is claimed to reside in different concepts. For example, the first case is where the novelty resides in the shape; the second where the novelty resides in the shape or configuration; the third where the novelty resides in the projection or groove, and the other cases, are where the novelty resides in ornamentation or floral decorations. In the present case, the novelty did not in fact reside in the shape of the lock, because that shape was exactly the same as of the previous designs. It also did not lie in the configuration, except to the extent that the key-hole was at a different place from the previous designs manufactured in India. Therefore, in this respect, the design could be registered as a new or original, subject to the objection that it was not sufficiently new or original as discussed previously. The design could also have been registered as new and original because of the novelty of its ‘projection or protuberance’. But this novelty is not specified, in the written statement of novelty, nor is obvious from the photographs. It, therefore, follows that as the suit of the plaintiff, M/s. Western Engineering Company has to be decided on the basis of the registered design, that design has to be taken as it appears. It is contended by counsel for the plaintiff, that the manufactured article can also be taken into consideration because it is a manufactured representation of the registered design.

There is a case which is almost on all fours with the present case, reported as Kestosd, v. Komnat Ld. and Vivan Fitch Kemp, (1936) 53, R.P.C 139, (14). In that case, the design which had been registered related to a bust bodice (brassiere). The action in question was one like the present for infringement. The defendant challenged the registered design on account of it not being new or original. The objection failed. The Court found that the defendant company was manufacturing brassieres which were in all respects substantially copies of the plaintiff's manufactured products. It was, however, held that this was not sufficient to decide the question of infringement. It was stated:—

“This, however, is not conclusive on the question of infringement of the registered Design unless the Plaintiff Company's brassiere is itself substantially in accordance with the registered Design.

If the Plaintiff Company's brassiere P. 1 is compared with the registered Design, it is I think obvious to the eye that there are a number of points of difference between them.

First, in P. 1 there is a cross-over which to the eye presents the picture of one complete triangle imposed over a portion of another triangle, etc.”

After dealing with the differences, the court compared the registered and manufactured design of the defendants. It was held :—

“These differences between D. 1 and the registered Design are in my judgment of sufficient importance to prevent brassiere of the same shape and construction as D. 1 infringing the registered Design. In my judgment, the plaintiff Company has failed to establish that the Defendant Company has infringed the registered Design either by applying (a) the design, or (b) an obvious imitation of it, or (c) a fraudulent imitation of it to the Defendant Company's brassiere.”

Thus, although the manufactured products of the plaintiff and the defendants were similar, the suit failed on the ground that the defendant's manufactured design differed from the registered design of the plaintiff. That is exactly the situation in the present case. The protuberance at the place where the key-hole is situated, which is to be found both in the manufactured design of the plaintiffs and that of the defendants, is not to be found in the registered design. This is sufficient to defeat the plaintiff's claim.

I now come to deal with the situation which would exist, if I am wrong in my conclusions concerning the registered design of the plaintiff. For the purpose of this analysis, I am going to assume that the registered design of M/s. Western Engineering Company was exactly the same as lock ‘A’ which I have referred to already. In other words, I am assuming that the manufactured design of M/s. Western Engineering Company is the registered design of that firm. I have now to determine whether the plaintiff's suit could succeed even on this view of the matter. If the design of M/s. Western Engineering Company was new and original in other respects, i.e if the whole design was new or original, I would have no difficulty in holding that the design of M/s. America Lock Company was a fraudulent or obvious imitation of the design of M/s. Western Engineering Company. But, the design of M/s. Western Engineering Company is not new or original in other respects. As I have pointed out, it is new or original only to the extent of the key-hole and the protuberance. The rest of the design is copied from previously existing designs. Therefore, a comparison between the two designs has to be made only with respect to the key-hole and the protuberance. Now, the key-hole of the two locks is in exactly the same position, i.e, in the front of the projection to the horse-shoe. On the other hand, the two protuberances are of different shape. Thus, the two locks can be identified and distinguished one from the other; they cannot be confused, because the protuberance in one case is circular and in the other case it is elliptical. A person looking at one lock and then looking at the other lock cannot be deceived. As stated by the Court in the aforementioned decision of Dunlop Rubber Co. Ltd., v. Golf Ball Developments Ltd., (1941) 48, R.P.C 268, (18) a case of this type has to be decided by asking the question: Whether a person looking at the plaintiff's lock and then going away and later being offered the defendant's lock is likely to perceive the difference. I have to ask the question, is he likely to say: “These two locks are the same”, or is he likely to say: “These two locks are not the same”. In my view, he is likely to say that these two locks are not the same. He will say so, particularly, if he keeps in view that the novelty of the plaintiff's lock is in the protuberance and the key-hole. Because, it is in respect of the protuberance itself that the two locks differ from each other.

I have been referred to certain passages in Halsbury's Laws of England, Volume 38, on the question of infringement, especially to para 1116 appearing at page 675, which appears to correctly and succinctly state the legal position. That para reads as follows:—

“1116. Design not substantially different from registered design. The question whether a design which is alleged to infringe a registered design is or is not an infringement must be determined by the eye alone. The court has to decide only whether the alleged infringement has the same shape or pattern, and must eliminate the question of the identity of function, since another design may have parts fulfilling the same functions without being an infringement. Small differences in detail do not necessarily prevent infringement, but generally speaking, if under normal conditions of user the eye would not confuse the two designs, there is no infringement. If there is some outstanding feature in the registered design which is not reproduced, this would generally negative infringement. It is not an actionable imitation merely to take the idea suggested by the design unless it works out in the way protected by the registration. Where an article may be readily manipulated into a position similar to the illustration of a design registration, there will be infringement.”

It is note-worthy, that the two points on which this passage seems to apply to the present case, is regarding the possibility of confusion by the eye, and alternatively, on the question whether an outstanding feature of the design has been reproduced. As I have stated, the eye could not confuse these two designs; I must also say that the outstanding feature of the registered design, according to the plaintiff, is the protuberance at the point where the key-hole is. This is circular according to the plaintiff's design. In the allegedly infringing design, it is not of the same shape. Clearly, it is not reproduced in the sense required by law. It would, therefore, follow that infringement does not exist. If the entire design of M/s. Western Engineering Company was considered to be new or original, then there would clearly be an infringement, because then the protuberance and the key-hole would be an insignificant part of the whole design. Therefore, my conclusion is that the suit of the plaintiff must fail on account of the fact that infringement of the registered design has not been established, even if the manufactured product of the plaintiff is taken to be the registered design of the plaintiff.

It is unnecessary to deal with the other issues which arise in the suit, on the view I have taken regarding infringement.

In the circumstances, both the applications, Civil Original No. 1 of 1966 and Civil Original No. 7 of 1967 succeed, and the designs of both M/s. Western Engineering Company and M/s. America Lock Company are hereby ordered to be cancelled under Section 51-A of the Patents and Designs Act, 1911. The suit of M/s. Western Engineering Company against M/s. America Lock Company fails and is dismissed. I leave the parties to bear their own costs in all these proceedings.

Order accordingly.