INDIRA BANERJEE, J.: This appeal is against an order dated 29th May, 2009 passed by the respondent no. 1, whereby the application of the applicant for cancellation of the registration of a “box” being No. 204030, dated 1st May, 2006 under the Designs Act has been rejected.
The grounds on which cancellation of the impugned design is sought are as follows:-
(i) The impugned design had been published in India prior to date of registration.
(ii) The impugned design is not new or original.
(iii) The impugned design is not registrable under the Designs Act, 2000.
(iv) The impugned design does not fall within the purview of design as defined in Section 2(d) of the Designs Act, 2000.
v) The impugned design cannot be registered under Class 902 as a display cum dispenser box.
Mr. Ranjan Bachawat appearing on behalf of the appellant submitted that the design of the “box” of which registration has been obtained by the respondent no. 2 is common place and there is no originality or novelty in the same. In fact, six hexagonal pack boxes with display type outer were in the public domain much prior to registration of the impugned design. In the context of his argument Mr. Bachawat referred to a book titled Structures and Forms' in Paper Board Package Design, written by Harsh Pathak, published in 1996, long before the registration of the impugned design on 1 May, 2006, containing demonstrations of display boxes which were, according to Mr. Bachawat similar and/or identical. Mr. Bachawat argued that the book shows that the impugned design was in the public domain prior to its registration.
Mr. Bachawat next argued that the boxes of the respondent No. 2 bearing the self same design were published by the respondent No. 2 itself in the Trade Fair held between 13 to 16 October, 2002 at Pragati Maidan, New Delhi. The design was thus published prior to registration.
Mr. Bachawat further argued that the invoices from 20 December, 1999 to 2nd March, 2006 disclosed with the application show that hexagonal boxes were in the public domain prior to registration of the impugned design on l8t May, 2006.
Mr. Bachawat also submitted that the letter written by the respondent no. 2 to the appellant on 21 May, 2005, a copy of which is annexed to the application at Page 82, unequivocally records that in 1999, prior to the registration of the impugned design, respondent no. 2 had developed a new display outer, the unique feature of which included fabrication without pasting’ a “cut-off flap”, to enable dispensation and to create a beautiful display at the back panel of the box. It is, therefore, evident that hexagonal display boxes with a fabrication of a “cut-off flap” for dispensation, like the impugned design, applied on boxes was in public domain since long and the impugned registration is liable to be cancelled on the ground of prior publication.
Mr. Bachawat finally argued that the impugned design so applied to the article was incapable of being sold separately, as the display boxes on which the impugned design had been applied could not be sold without the Agarbatti strips and boxes. The design was thus incapable of application to an article which could be sold separately, and hence incapable of being registered under the Designs Act, 2000.
Mr. Bachawat emphatically argued that the impugned design is not significantly distinguishable from known designs or combination of known designs and is merely a trade variant, not capable of being registered under Section 4 of the Designs Act, 2000.
Mr. Mookerjee appearing on behalf of the respondent No. 2 submitted that the Respondent No. 2, a partnership firm, had been in active business in the field of manufacturing incense products for Indian and international markets since 1945. The firm's products were available in more than 30 countries and were highly popular and recognized in both Indian and International markets.
Mr. Mookerjee submitted that the respondent No. 2, in course of its business, had independently developed several unique packaging boxes for its products. Such packaging boxes for its articles were of unique, novel, original and attractive designs.
The respondent No. 2 claims to have its own expert designer team, which makes innovative designs for its products in packaging. The designers are, according to the respondent No. 2, well versed in the design skills and keep updated with new technical skills. The respondent No. 2 makes thorough study of the designs created by its in-house, designers and then applies for registration of the same on the basis of novelty, innovativeness and non-obviousness.
Mr. Mookerjee submitted that the respondent No. 2, in course of its business, developed a unique box, which works as a carton, and display box, for carrying ‘agarbati’ of the respondent No. 2. The design has a new and novel feature and when applied to the box has the dual utility of a box as well as of a display device of its contents. The novelty in the design resides in its shape, ornamentation and composition of colours and other features.
Mr. Mookerjee submitted that the said design has been independently created by it, using its own expertise, keeping in mind the need to develop novel and unique packaging boxes which have aesthetic eye appeal to meet the customer's needs. The design has been conceptualized and prototyped by its in-house team and it had engaged Ms. H. Vijayalakshmi, an independent designer to make the design ready for commercial production.
Respondent No. 2 applied for protection of the said novel design with the Design Registry and has been granted registration for the said design by the Controller of Patents and Designs vide Design Registration number 204030 in Class 09-03 of the Designs Rules. It is claimed that the respondent No. 2 has exclusive ownership over the design under the Designs. Act. The Copyright over the design is valid till 2016. After obtaining registration for the said design, the Respondent No. 2 started using the boxes to carry its products.
It is alleged that the respondent No. 2 noticed that the appellant was infringing the registered design of the respondent No. 2. On noticing this, Respondent No. 2 immediately issued a legal notice asking the appellant to stop infringing its registered design dated December 12, 2006.
Mr. Mookerjee submitted that the appellant gave a reply to the above said notice on January 05, 2007 making incorrect and frivolous statements. Mr. Mookerjee submitted that the averment made in the reply that the appellant had been using the impugned design for the past 10 years for packaging its products was incorrect and intended to confuse and mislead this Court. The Respondent No. 2 was not aware of such usage and the same was not supported with any documents or evidence.
Mr. Mookerjee submitted respondent No. 2 had not issued any notice to the appellant other than the legal notice sent on December 12, 2006 in relation to the impugned design 204030. Respondent No. 2 had not issued any notices to the appellant in relation to the impugned design earlier as this design was a recent one and respondent No. 2 had started using it after applying for registration in the year 2006.
Mr. Mookerjee submitted that in spite of receiving notice from respondent No. 2, the appellant continued with its action of infringing the registered design. Respondent No. 2 was, therefore, constrained to file an Injunction Suit against the appellant to restrain them from infringing its rights. The said suit is still pending. As a counter-blast, the appellant filed the cancellation proceeding before the learned Controller of Patents and Designs.
In course of the arguments the appellants mainly argued that the article for which the design registration had been granted was neither a new article nor had any eye appeal. The article was not novel or unique in any way.
The expressions ‘article’ and ‘design’ as defined in Sections 2(a) and (d) of the Designs Act are set out hereinbelow:
(a) “article” means any article of manufacture and any substance, artificial; or partly artificial and partly natural; and includes any part of an article capable of being made and sold separately;
(d) “design” means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of subsection (1) of section 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958) or property mark as defined in section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957 (14 of 1957);
As submitted by Mr. Mukherjee, the argument of the appellant, that the display box or container box is not an article as such, has no substance, as every kind of box is an article including display boxes. Entire Class 9 of the Design Rules is specifically with regard to packages and containers for the transport and handling of goods, and Class 09-03 is specifically for boxes, cases, containers, tins or cans.
From the classification given in the Design Rules it is clear that boxes are Articles. A box can be made and sold separately. A box is an article of manufacture and it satisfies the definition of article in See 2(a).
It is true that the respondent is using the box for packing agarbattis. However that does not mean the said box for which design is registered cannot be used to carry any other item. Boxes can be made and sold separately as well. Hence the arguments made by the appellants have no merit.
The registered design of the respondent also satisfies the definition of design in Section 2(d) as its shape, configuration and pattern, ornament, composition of lines and colours are all unique. From the sample of the box produced before this Court it is very clear that the configuration of the top flap of the box containing specific lines at measured intervals, which helps the top flap to convert as a display, is unique in the perspective of its configuration and pattern. The shape of the article is another unique feature. The measurements of its length, breadth, and width are unique and gives a separate novel finish. Even the surface pattern of the design is unique.
As argued by Mr. Mookerjee, the Controller of Patents has granted design registration after identifying novelty, unique shape and surface pattern. The Controller of Patents is well experienced and the Competent Authority with regard to and in relation to adjudging the novelty in an article.
The book published by Haresh Pathak on which reliance has been placed by the appellant is of no assistance since it depicts a line drawing of “Hook Lock and Walker Lock Combination Display” and Folding Counter Display With Bottom Lock Slots. The drawing shown in those pages are merely line drawings and would not show the shape, configuration, pattern of the article. The line drawings show Hook Lock and Walker Locks. On the other hand the construction of the boxes of the registered design as demonstrated during the submissions reveals that the mode of construction of the box of the respondent is different. It has not made use of any Hook Lock or Walker Lock and if we compare the line drawings shown in these pages it is evident that the design of the boxes are different.
Mr. Mookerjee argued that the appellant is trying to challenge the novelty of the registered design by merely showing some other display boxes which have no resemblance with the registered design. The photographs produced by the appellant do not carry any dates and those having dates are all subsequent to the registration of the impugned design. Mr. Mookerjee emphatically asserted that the design specifically shown in the advertisement given by this respondent at Pages 319 to 322 of the Official Fair Directory of Export Promotion Council for handicraft for the period 13 to 16 October 2002 is different. During arguments the respondents demonstrated how these boxes shown in the said directory were made. The design used at that point of time by the respondents for its boxes was not the same as the registered design. During that time, the respondent used to make an outer box for agarbattis and a display flap separately. Once the box was opened, the display flap would be inserted on the back and used as a display box. The differences demonstrated by Mr. Mookerjee point to novelty of the registered design.
Hence fundamentally both the boxes are different and the way in which it is made is different. A visual impact created by using two articles (box and display flap) cannot be prior art to invalidate a new design which gives a combined visual feel. The order of the Controller and the reasoning given by the Controller in its order refusing the cancellation is quite detailed and has addressed each issue raised by the appellant.
The appellant had argued that the letter dated 21 May, 2005 written by the respondent No. 2 to the appellant itself, shows the respondent No. 2 was using a similar design much before registration of the impugned design was applied for or granted. However, Mr. Mookerjee pointed out by, upon reference to the pleadings of the respondent No. 2 in the proceedings before the Controller that the said letter had been written with regard to another design which the respondent had developed. The letter shows that the said product had a display type outer. The said letter does not establish what was the design at that point of time and is not sufficient to destroy the novelty of the present design registration.
During arguments, the appellant showed some invoices raised by the appellant with regard to the products of the appellant to show that the appellant had been using the same design. The invoices do not show what was the design of the packaging of the appellant. The invoices only show some product names and the price at which they were sold. The evidence produced by the appellant has no relevance in the determination of novelty of the design.
During arguments some photographs of some display boxes already available in the market were shown in an attempt to demonstrate that the impugned design was not novel. The photographs show different boxes of different patterns, shapes as well as ornamentation. Most of the photographs do not have any date, and those which have the date, appear to have been taken after the respondent No. 2 obtained registration of the impugned design.
Design, as defined in Sec 2(d) of the Designs Act, is protected for the features of shape, configuration, pattern and ornament. Inorder to challenge the validity of a design, what is required is evidence of prior publication of an identical design in terms of its features of shape, configuration, pattern, ornament and composition of lines and colours. Most of the photographs depict a completely different design and the dates on those which have some apparent similarity show that they had been taken on a later date.
The appellant also showed some computer prints downloaded from the internet to show that similar designs were available in the market. All those internet prints are dated 25/4/2007 which is long after the impugned design and in any case depict one box and a separate display flap put together. The impugned design is made in such a way that the top portion of the box itself is folded in a peculiar way and made as a display.
As observed above, fundamentally both the boxes are different and the way in which they are made is different. A visual impact created by using two articles (box and display flap) cannot be prior art to invalidate a new design which gives a combined visual feel. The order of the Controller and the reasoning given by the Controller in its order refusing the cancellation is quite detailed and has addressed each issue raised by the appellant.
Publication of a design made in good faith prior to the registration thereof also amounts to publication of the said design making the same liable to be cancelled, as argued by Mr. Bachawat upon reference to BK. Plastics v. Jayantilall reported in AIR 1072 CAL 339.
Prior publication by the registered proprietor himself also makes the design liable for cancellation as held in Khadim v. Bata reported in 2005 (1) CHN 346, cited by Mr. Bachawat. In Khadim Shoe Pvt. Ltd. v. Bata India Ltd. & Anr. (Supra) there were clear advertisements in a newspaper as well as in other media. The argument that publication was for a promotional purpose and did not constitute prior publication, was not accepted. On facts, the Court found that there had been prior publication. In the instant case, prior publication is not admitted. This judgment has no relevance in the determination of this appeal.
It is well-settled that novelty and originality of a design should be substantial and slight variation made in the articles already in public domain are not enough to secure protection under the Act. The monopoly of trade in respect of a common design with no special skill or originality should not be encouraged as held in Western Engineering Co.… v. Paul Engineering Co.… reported in AIR 1968 CAL 109, cited by Mr. Bachawat.
To consider prior publication, the earlier design and the design of which cancellation is sought need not necessarily be identical in every respect with no difference at all. Substantial difference is the material consideration and differences must be objective in essential features to escape “prior publication”. To come within the ambit of section 19 of the Act it is not necessary that prior registration or prior publication must be identical to the design that has been impugned but substantial identity must be looked at as held in Khaitan India Ltd. v. Metro Appliances P. Ltd. (supra).
An addition of a curve here and there, in a shape which is a well recognised shape of an article of common use in the market cannot make an article new or original in design This proposition derives support from B. Chawla v. Bright Auto reported in AIR 81 DEL 95 DB Para 12.
The judgment in The The Wimco Limited…Plaintiff; v. M/S. Meena Match Industries…Defendant. reported in AIR 1983 Delhi 537 cited by Mr. Bachawat is with regard to a registered design in relation to the pattern of the striking and igniting surface of side walls of a match box, and the judgment in B. Chawla & Sons v. Bright Auto Industries reported in AIR 1981 Delhi 95 also cited by Mr. Bachawat is with regard to the shape and design of a mirror.
The judgments in The The Wimco Limited…Plaintiff; v. M/S. Meena Match Industries…Defendant. (supra) and B. Chawla & Sons v. Bright Auto Industries (supra) were rendered having regard to the particular facts of those cases and are distinguishable.
The respondents cited Gopal Glass Works Ltd. v. Assistant Controller of Patents & Designs reported in 2006 (33) PTC 434 (Cal) and the Order of the Supreme Court in the above case reported as AIR 2008 SC 2520 dismissing the appeal and reaffirming the High Court order. In Gopal Glass v. Asst. Controller of Patents & Designs (supra), this Court held that even if the design was known to the world, use of the said design applied on a different article would constitute a new design. In the said case, this Court quashed the order of the Controller cancelling the registration, and restored the registration of the design.
Prime contention of the appellant in the present case is that the respondent published and advertised the same design in the year 2002 in the Directory of Indian Handicrafts and Gifts Fair Autumn 2002, and it constitutes a prior publication. As explained and demonstrated before the Court, prior publication mentioned was in relation to two articles kept together (box and a display flap inserted therein) whereas the present invention is one single box where the top portion can be made as a display. The present design is in relation to “an” article whereas the earlier image is of two articles kept together. As held by this Court in its judgment in Gopal Glass Work, which has been affirmed by Supreme Court, a new application of the same design on a novel article satisfies the requirements of a design registration.
From the evidence available it is clear that the appellant has miserably failed to prove prior publication of the same design. This Court is unable to accept the argument that the design lacks novelty. As observed above, the Controller is the Competent Authority in order to determine the novelty of a design. The Order passed by the Controller is very elaborate and detailed. The Controller has considered all aspects and the evidence adduced. There is no material evidence before this Court to reject the findings of the Controller of Patents & Designs.
For the reasons discussed above, this appeal is dismissed.
Urgent certified copy of this order, if applied for, be supplied to the parties subject to compliance with all requisite formalities.