Khadim Shoe Pvt. Ltd. v. Bata India Ltd. & Anr.

Ashim Kumar Banerjee, J.:— Respondent No. 1, Bata India Limited (hereinafter referred to as “Bata”) is manufacturer of various rubber slippers commonly known as hawai. The petitioner, Khadim Shoe Pvt. Ltd. (hereinafter referred to as “Khadim”) is also a manufacturer of similar product and sales it in the market with the brand name “Vibrato”.

2. Bata got a particular design of rubber slippers registered on 10th September, 1998 being the design No. 177386. Before the said design was registered Bata made a wide publicity in print media as well as in electronic media under the banner Hawai Revolution.

3. Khadim applied for cancellation of the said design on the ground that the said design was published prior to the date of registration and hence such registration was liable for cancellation.

4. Prior to initiation of the said cancellation proceeding before this Court, on 9 April, 1999, Bata filed a suit for infringement of their registered design as against the Khadim before this Court being Civil Suit No. 1888 of 1999. Bata obtained an interim order restraining Khadim from infringing three registered designs which include design No. 177386 dated December 10, 1998. The said civil suit is still pending before this Court and awaiting its disposal.

5. Although several points were taken in the petition Mr. Goutam Chakraborty, learned Senior Counsel appearing in support of the application prayed for cancellation of the design only on the ground of prior publication.

6. In support of the contention of prior publication two items were relied upon, one is an advertisement in Business Telegraph published on August 12, 1998 wherein a picture of several slippers with the heading “Hawai Revolution” was published. The said picture includes the subject item.

7. Mr. Chakraborty in support of his contention also relied on a Compact Disc (CD) containing the advertisement published by Bata on various dates in television. He relied on a list of different slots telecast from March, 1998 being Annexure-C to the petition appearing at page 18-19 thereof. The said Compact Disc was displayed in a lap top computer in Court. The said display was made in usual speed as well as in slow motion. Photographs of the particular slipper as shown in slow motion were filed in Court in a sheet produced in Court.

8. From the photograph it would clearly show that not only the front portion but also the back portion of the slipper was clearly visible in slow motion.

9. Mr. Chakrabotry relied on various paragraphs from the book by the title “Law of Copyright and Industrial Designs” by P. Narayanan, 3rd Edition. According to Mr. Chakraborty the word “publish” by no means limits to the publishing of a design in a printed publication, although it includes that. According to him there are two main ways in which a design can be published, by prior use or by sale or display by paper publication of one short or another. Mr. Chakraborty further contended that if a design had been given in a book or catalogue which had been circulated that would amount to publication. According to him, it was, however, not necessary that large number of documents should be proved to have been actually circulated. Presence of even only one copy of a document in public library was earlier held to be publication.

10. Mr. Ranjan Bachawat, learned Counsel appearing for Bata, opposing the application for cancellation contended that the publication of the picture in the newspaper would show the front portion of the slipper where from shole of the slipper was not visible. Hence it could not be said that it was a publication of the design as a whole. According to Mr. Bachawat a partial disclosure of the design would not amount to publication which could warrant cancellation thereof. On the Compact Disc Mr. Bachawat contended that display of the short film for about 10 seconds did not reveal the exact nature of the design unless it was played in slow motion and as such it was not a publication in true sense.

11. On the admissibility of evidence of the Compact Disc. Mr. Bachawat heavily relied on the various provisions of the Evidence Act and contended that it was incumbent upon the applicant to prove that the said television ad film was shown prior to the date of registration. By merely displaying the same in Court through lap top computer would not conclusively prove that it was a prior publication.

12. Mr. Bachawat relied on a decision in the case of Rosedale Associated Manufacturers Limited, reported in 1957, Reports of Patent, Design and Trade Mark Cases, page 239. In the said decision Lord Justice Hodson observed that whether the question is solely a question of prior publication, it is not enough to prove that an apparatus described in an earlier specification could have been used to produce this or that result. It must also be shown that the specification contains clear and unmistakable directions so to use it.

13. It is an admitted fact that the only issue involved herein is whether there was a prior publication of the design and whether the petitioner had been able to prove the same before this Court.

14. In paragraph 5 of the affidavit Bata admitted that the photograph of “Dangler” appeared in Telegraph on 12 August, 1998. However, this was not intended to be published prior to launch of the product. According to Bata, publication in Telegraph was not for public circulation and it was made only for preparation for promotional materials prior to launching of the product.

15. Paragraph 21 of the affidavit of Bata dealt with the issue of publication in electronic medica. The said paragraph being relevant herein is quoted below:

“21. With reference to paragraph 10 of the petition, I say that the petitioner has failed to produce evidence of publication of the design in question therefore the bald allegations of publication is of no avail in the present proceedings. I say that the expression Bata Hawai is used in relation to a wide range of rubber slippers. I say that admittedly R.K Swami is the advertising agent of the petitioner itself and its letter dated 6 April, 1999 (being annexed as Annexure ‘C’, to the petition) cannot be a valid evidence and no reliance can be placed thereon. Save as aforesaid, each and every statement made in the paragraph under reference are denied”.

16. The said paragraph dealt with paragraph 10 of the petition where the petitioner contended about prior publication in electronic media. The said paragraph being relevant herein is also quoted below:

“10. Your petitioner has been further informed by their advertising agent R.K Swami, New Delhi, that respondent No. 1 have caused several spots released in electronic media under the banner Bata Hawai which also includes the design in question prior to 10 September, 1998. In the months of March, April, May, 1998, about 56, 389 and 102 spots were released in electronic media such as TV showing the aforesaid design and as such there was no novelty or originality in the said design and the same could not be registered in land. Details of spots telecasted on various TV channels such as Zee Cinema, Zee TV, Asian Net, Ydaya TV, DD2, Sony provided by R.K Swami vide their letter of 6 April, 1999 are annexed hereto and marked ‘C’.”

17. Considering the averments made in the pleadings it would appear that the publication in print media as well as electronic media were not in dispute, what was being highlighted is that such publication could not amount to prior publication as the design was not shown as a whole. Hence, the issue of admissibility of those publication in print media as well as the electronic media, in my view, is of no consequence. It is not at all an issue validly raised by Bata. An argument made from the Bar without having any support from the pleading, however, forceful it may be, has no leg to stand.

18. Mr. Chakraborty in course of his submission contended that the video cassette was earlier shown to Mr. Satyabrata Chakraborty, learned Advocate-on-Record for Bata.

19. Bata missed the opportunity when cassette was shown to their Advocate-on-Record. Even after the hearing was concluded before me, I gave opportunity to Mr. Bachawat to take proper instruction as to whether the ad film shown in Court through the Compact Disc was the film shown prior to launching of the product or not. Mr. Bachawat did not come back with such instruction during the period when my judgment was kept reserved.

20. The photograph published in Telegraph would clearly show the product from top through a naked eye. The original product was also shown to me in course of hearing. I compared the same with the photograph. I did not find any distinction between the actual product and the photograph published in newspaper prior to this registration.

21. That leaves us with the question whether the back portion of the product being the shole was also published or not.

22. Let me first deal with the issue of admissibility of the Compact Disc in evidence.

23. Section 101 of the Evidence Act, 1872 provides that whoever desires the Court to give judgment on an issue dependent on the existence of the fact which he asserts, he must prove the existence of those facts and burden of proof lies on that person. Section 103 obligates a person to prove a particular fact on which he relies and wishes the Court to believe existence of that fact unless law provides proving of such fact by any other person.

24. Here Khadim wants this Court to believe that the said television ad was published prior to the date of registration. Hence, it was their burden to prove it. However, when a fact is not in dispute or when a fact is disputed and such dispute is without any basis, the Court need not ask the party to go for a regular mode of proving such fact as it estopes the other party from contending otherwise.

25. Here the publication of the picture in print media is an admitted fact as appears from the pleadings. Hence, no formal proof is required for the said purpose.

26. On the issue of electronic media I find no effective denial made by Bata in their pleadings which could require proving of such fact by Khadim. I specifically gave opportunity to Mr. Bachawat to take instruction on the said ad film although no such assertion was made in the pleadings. Such opportunity was not availed of by Bata.

27. The law of evidence was enacted as far back in 1872. The same was time to time amended by the legislature considering the reality. We have to consider the law in its modem perspective. With the advancement of science specially in electronic field it would not be proper for me to disregard the Compact Disc shown in a lap top computer in Court so long there was no definite ascertain on the part of Bata that the television ad shown in Court was not a publication of Bata or it was published after the design was registered. It was the consistent case of Bata as I understand from the pleadings that such publication was nothing but a promotional approach before launching of a product to attract the attention of the public and it was not intended for a prior publication.

28. My understanding of the phrase “prior publication” is a publication by which the members of the public at large are made known the design prior to its registration either by the registered designer himself or by any other party. Such publication might be an unintentional act on the part of the publisher. The intention of the publisher is not relevant fact for considering a prior publication. The idea is whether the people knew of the design or not prior to the date of registration.

29. Hence, the contention of the Bata that the publication was not intended for any purpose other than as they explained, for making promotional approach prior to the launching of the product. The Compact Disc shown in slow motion would reveal the entire design with its distinctive features. The photographs taken from the computer exclusively proved the said fact.

30. Hence, I have no hesitation to hold that the design was published prior to its date of registration.

31. In the result, the application succeeds. The design No. 177386 dated 10 September, 1998 granted to Bata is cancelled. The appropriate authority being the respondent No. 2 is directed to effect such cancellation by appropriately recording the same in their records within a period of three (3) weeks from date.

32. AID No. 5 of 1999 is disposed of accordingly.

33. There would be no order as to costs.

34. The operation of this order would remain stayed till 15 October, 2004.

35. Urgent xerox certified copy would be given to the parties, if applied for.

Appeal succeeds.

S.K.P