Jayson Industries and Anr. v. Crown Craft (India) Pvt. Ltd.

11. Detailed arguments were heard by me on these two applications. Orders were reserved thereon. By the present judgment, I propose to dispose of these two applications.

12. Arguments on behalf of the plaintiffs were advanced by Mr. M.K. Miglani and arguments on behalf of the defendant were advanced by Mr. Sushant Singh, learned Counsel. Rival contentions

13. Drawing my attention to physical samples of the plaintiffs’ and the defendant’s products, as well as the pictorial photographic representations thereof as filed with the plaint, Mr. Miglani contends that, quite simply, the designs of the defendant’s bucket, mug and tub are fraudulent imitations of the suit designs, registered in favour of Plaintiff 1. He points out that, in the written statement, the defendant has acknowledged that they commenced manufacture of the impugned bucket, mug and tub only in 2021, prior to which the suit designs already stand registered in favour of Plaintiff 1 w.e.f. 1/6 February

2020. On the aspect of imitation, Mr. Miglani reiterates the stand, taken in the plaint, that the essential and distinctive features of the suit designs are the ribbed nature of the body of the vessel in question and the flange-like extensions on the rim thereof. Both these features, he submits, stand replicated in the impugned designs of the defendant’s products. Clearly, therefore, in Mr. Miglani’s submission, the defendant has committed piracy within the meaning of Section 22(1) of the Designs Act, resulting in a clear case being made out for injuncting further piracy of the suit designs under Section 22(2)4.

14. In its written statement, the defendant has, besides, faintly contending that the designs of the bucket, mug and tub are not imitative of the suit designs, essentially questioned the validity of the suit designs, as is permissible under Section 22(3) of the Designs Act. The challenge to validity of the suit designs is, therefore, the principal ground of defence taken by the defendant in response to the charge of design piracy labeled by the plaintiffs.

15. Arguing on behalf of the defendant, Mr. Sushant Singh, learned Counsel, submits that the Designs Act does not contain any provision analogous to Section 31(1)5 (2) If any person acts in contravention of this section, he shall be liable for every contravention – (a) to pay to the registered proprietor of the design a sum not exceeding twenty-five thousand rupees recoverable as a contract debt, or (b) if the proprietor elects to bring a suit for the recovery of damages for any such contravention, and for an injunction against the repetition thereof, to pay such damages as may be awarded and to be restrained by injunction accordingly: Provided that the total sum recoverable in respect of any one design under clause (a) shall not exceed fifty thousand rupees: Provided further that no suit or any other proceeding for relief under this sub-section shall be instituted in any court below the court of District Judge. of the Trade Marks Act 1999, which statutorily presumes the validity of a registered trade mark. There is, therefore, he submits, no statutory presumption of validity, for a registered design. Registrations of designs, he submits, are, unlike trade marks, granted on a self-declaration basis. In other words, the applicant seeking registration of a design himself declares what, according to him, are the novel and original features of the design and,

31. Registration to be prima facie evidence of validity. – (1) In all legal proceedings relating to a trade mark registered under this Act (including applications under Section 57), the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof. subject to satisfaction of the Registrar of Designs in that respect, the design is accordingly registered. There is, therefore, no scope for any pre-grant opposition before registration of a design.

16. Mr. Sushant Singh has invited my attention to the statement of objects and reasons of the Designs Act. The purposes that the Designs Act intend to achieve are thus set out in the statement of objects and reasons: “Since the enactment of the Designs Act, 1911 considerable progress has been made in the field of science and technology. The legal system of the protection of industrial designs requires to be made more efficient in order to ensure effective protection to registered designs. It is also required to promote design activity in order to promote the design element in an article of production. The proposed Design Bill is essentially aimed to balance these interests. It is also intended to ensure that the law does not unnecessarily extent protection beyond what is necessary to create the required incentive for design activity while removing impediments to the free use of available designs.” Mr. Sushant Singh submits that, therefore, the object and purpose of the Designs Act is encouragement of innovation. A non-innovative design, therefore, is ex facie ineligible for registration.

17. Mr. Sushant Singh did not dispute the identity of the designs of the defendant’s bucket, mug and tub with the suit designs. He, however, submits that the suit designs themselves are liable to be cancelled both on the ground of want of novelty and originality as well as on the ground of prior publication. In other words, Mr. Sushant Singh has invoked Section 19(1)(b), (c) and (d)6 and clauses (a) and (b) of Section 47 of the Designs Act 2000.

18. In this context, Mr. Sushant Singh initially drew my attention to para 8 of the plaint, which already stands reproduced supra. He points out that the avowed stand of the plaintiffs, as set out in para 8 of the plaint, is that novelty and originality, in the suit designs, rests in the ribs on the body contained in the receptacles and the flanges on the lids thereof. Both these features, submits Mr. Sushant Singh, are to be found in any number of similar buckets, mugs and tubs, which were freely in distribution and sale much prior to the registration of the suit designs. He has, in this context, particularly drawn my attention to the following documents, filed with the written statement:

(i) Mr. Sushant Singh invited my attention to a 2018

Brochure of Migeplastics, a plastic injunction mould manufacturer. Among the goods figuring in the said Brochure is the following bucket:

19. Cancellation of registration. – (1) Any person interested may present a petition for the cancellation of the registration of a design at any time after the registration of the design, to the Controller on any of the following grounds, namely:— ***** (b) that it has been published in India or in any other country prior to the date of registration; or

(c) that the design is not a new or original design; or

(d) that the design is not registrable under this Act; or

4. Prohibition of registration of certain designs. – A design which – (a) is not new or original; or (b) has been disclosed to the public any where in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration; or ***** shall not be registered. Mr. Sushant Singh submits that the above bucket, which is one of the items reflected in the Brochure of Migeplastics, contains vertical ribs throughout its body as well as flanges on its rim, similar to those found in the suit designs and in respect of which the plaintiff claims novelty and originality.

(ii) The second document on which Mr. Sushant Singh relies is the design for a bucket liner registered in the US as Design D-784645 w.e.f. 9 March 2016, granted on 18 April 2017, in Class 7 of the Locarno Classification in favour of David A Richardson. The various views of the said design, as contained in the certificate of registration, are as under: Sr. No. Views of the design

1.

2.

3.

4.

5.

6.

7.

8. In this context, Mr. Sushant Singh relies on the judgment of a Division Bench of this Court in Aashiana Rolling Mills Ltd. v. Kamdhenu Ltd.8, to contend that though the mere drawing of a design may not be sufficient to constitute prior art, the drawing of the article with the design is sufficient in that regard. If all drawings were to be excluded from the prior art, Mr. Sushant Singh submits that it would unreasonably limit the concept of “publication” under the Designs Act. He relies, for this purpose, on Section 2(d)9 253 (2018) DLT 359 (DB) of the Designs Act, to (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 an industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the contend that even two dimensional features of shape or configuration would constitute a “design”. He has also cited para 3.10 of Russell-Clarke on Industrial Designs (6th “3.10. According to section 1 of the RDA, four kinds of features may constitute a design, namely, shape, configuration, pattern and ornament. For all practical purposes, however, these may be reduced to two categories of features, those in two dimensions and those in three. In a classic statement of what constitutes a design (at that time according to the definition in the Patents and Designs Acts 1907 to 1939), Lord Wright in King Features Syndicate Inc. and Belts v. O. & M. Kleemann Ltd Edn.) which reads thus: Referring to the definition of “original” in relation to a design, as contained in clause (g) of Section 2 (the Popeye case) said: "... thus a design may be the shape of a coal scuttle, a basin, a motor car, a locomotive engine or any material object, it may be the shape embodied in a sculptured or plastic figure which is to serve as a model for commercial production, or it may be a drawing in the flat or a complex pattern intended to be used for the manufacture of things such as linoleum or wallpaper.” of Designs Act, Mr. Sushant Singh submits that mere trade variants of existing prior art cannot be treated as “original” within the meaning of the said clause. If, therefore, the court is presented with such trade variants, a prima facie triable issue arises for consideration. He has further referred, in this context, to para 3.153 of Russell Clarke, 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 sub-section (1) of Section 2 of the Trade and Merchandise Marks Act, 1958 or property mark as defined in Section 479 of the Indian Penal Code or any artistic work as defined in clause

(c) of Section 2 of the Copyright Act, 1957;

(1941) 58 R.P.C 207 at 219 (g) “original”, in relation to a design, means originating from the author of such design and includes the cases which though old in themselves yet are new in their application; which reads thus: “3.153. Whether or not “or” in the phrase “new or original” is used in the disjunctive sense was considered in Aspro- Nicholas’ Application12. Graham J. held that it was not so used. The phrase was changed from “new and original” to “new or original” in an amendment made to Section 50(a) of the Patents and Designs Act 1907 by the Patents and Designs Act 1919, section 20. In Carr’s Design Application13, however, it would appear that the RDAT, relying upon words of Lord Simonds in Stenor Ltd. v. Whitesides (Clitheroe) Ltd.14 favoured the opposite point of view, though Whiteford

19. Mr. Sushant Singh submits that, except for the fact that there may be a slight difference in the shape of the flange on the rim of the bucket/tub, the suit design is an obvious imitation thereof. He submits that, in order to divest a design from novelty vis-à-vis prior art, it is not necessary that the design is identical to the design forming subject matter of prior art. Even if they are deceptively similar, he submits that the design in question would stand invalidated. He relies, for this. These, as well as the designs of other buckets, mugs and tubs, filed with the written statement of the defendants, submits Mr. Sushant Singh, entirely divest the suit designs of all novelty and originality, and render them liable to be cancelled on the ground of prior publication as well. [1974] R.P.C 645 [1973] R.P.C. 689 (1947) 65 RPC 1 at 11 purpose, on paras 25, 26, 31, 32 and 38 of the judgment of a learned Single Judge of this Court in Dart Industries v. Techno Plast15.

20. Mr. Sushant Singh submits that, in any event, in view of prior art cited by him, it cannot be said that the plaintiffs have a prima facie case, meriting a grant of interlocutory injunction. At the least, he submits that a serious question has been raised by him, amounting to a credible challenge to the validity of the suit designs, which would require to be resolved only consequent on trial.

21. Mr. Sushant Singh has also referred to the following garbage household trash can, available for sale on amazon.in as far back as on 14 March 2019 which, according to him, also has a ribbed body, identical to the suit designs: 141(2007) DLT 777 He has further referred to the following mug, also available for sale on Amazon since 10 July 2015, which has, not only a ribbed body but also flanges on the lid:

22. Thus, submits Mr. Sushant Singh, neither can the flange on the rib, nor can the ribs on the body of the suit design, be treated as entitled to registration, as they lack novelty and originality and are also bad for prior publication.

23. Apropos the designs of the articles cited by Mr. Sushant Singh and shown hereinabove, he submits that the differences in the suit designs, which may perhaps relate to the number of flanges or other minor changes in shape or contour, are merely trade variants. They cannot, therefore, confer either novelty or originality to the suit designs.

24. Where, thus, the defendant has thrown up a credible challenge to the piracy of the suit design, evidencing a serious triable issue, Mr. Sushant Singh submits, relying on Niki Tasha India Pvt. Ltd. v. Faridabad Gas Gadgets Pvt. Ltd.16, that injunction cannot be granted by the court. Moreover, he submits that the suit design is of recent date, which, too, would militate against grant of an injunction, applying the principle enunciated in para 19 of Niki Tasha16.

25. Mr. Sushant Singh has also cited, in this context, the decision of a Division Bench of this Court in B. Chawla and Sons v. M/s Bright Auto Industries17, the decision of the Chancery Division in Phillips v. Harbro Rubber Company18 and the judgment of a learned Single Judge of this Court in Steelbird Hi-Tech India Ltd. v. S.P.S. Gambhir19.

26. Applying the principles contained in these decisions, Mr. Sushant Singh submits that changes in the number and shape of the flanges on the rim of the suit designs, vis-à-vis prior art, are merely workshop improvements, insufficient to confer novelty and originality.

27. Mr. Sushant Singh further submits that it was in full awareness of the fact that the defendant has, in its written statement, even while acknowledging the fact that it had applied for registration of the impugned designs under the Designs Act, undertaken to withdraw the said registrations, as it has realized that the designs are neither new nor original. Having been permitted, by the Registrar of Designs, to withdraw his application, Mr. Sushant Singh submits that the ILR 1984 (2) Del 530 AIR 1981 Del 95 (1920) 37 RPC 233 2014 (58) PTC 428 (Del) defendant cannot be estopped from contesting the validity of the suit designs. Even otherwise, he submits, there can be no estoppel against a right in rem for which purpose he relies on para 26 of the judgment of a coordinate Bench of this Court in Philips Lighting Holding B.V. v. Jai Prakash Aggarwal20 and para 24 of the judgment of an earlier coordinate single Bench of this Court in Babbar Wreckers Pvt. Ltd. v. Ashok Leyland Ltd.21

28. In conclusion, Mr. Sushant Singh has again referred to Section 22(3) read with clauses (b) and (c) of Section 19(1) and clause (c) of Section 4 to submit that the suit design is neither novel nor original, nor sufficiently distinguishable from designs which constitute known prior art. A triable challenge having thus been raised by the defendant to the validity of the suit designs, Mr. Sushant Singh submits that the plaintiffs are not entitled to any interlocutory injunction.

29. Arguing in rejoinder, Mr. Miglani submits that none of the designs shown by Mr. Sushant Singh as representing prior art contain flanges on the rim of the cup/bucket/tub, which are similar to the flanges contained on the rim of the suit designs. That apart, he submits that, apropos the design constituting subject matter of registration D-784645 granted to David A Richardson, there was no evidence that the said design had ever been applied to any article or sold. In the absence of any such evidence, Mr. Miglani submits that the said design cannot constitute prior art and relies for the said purpose, on para 45 of the judgment of the Supreme Court in Bharat 293 (2022) DLT 185 2010 (120) DRJ 517 Glass Tube Ltd. v. Gopal Glassworks Ltd.22. Besides, he submits that the flange on the rim of Design D-784645 is totally dissimilar to the flange on the lid of the plaintiffs’ suit designs.

30. Mr. Miglani has, in conclusion, relied, on the aspect of estoppel, on paras 5, 7, 12 and 13 of the judgment of a Division Bench of this Court in Pentel Kabushiki Kaisha v. Arora Stationers23, and, on merits, on the following decisions:

(i) paras 36, 37, 42 and 44 of the judgment of the High

(ii) para 37 of the judgment of the High Court of Calcutta in

(iii) para 18 of the judgment of this Court in Dabur India v.

(iv) paras 29 and 33 of the judgment of this Court in Diageo

(v) paras 80 and 81 of the judgment of this Court in Havells

(1996) 16 PTC 202 2016(67) PTC 286 (Bom) 1996 (16) PTC 202 (Cal) 2009 (39) PTC 104 (Del)

31. That the design of the mug, tub and bucket of the defendant is identical to the suit designs has not been seriously disputed by Mr. Sushant Singh. However, Mr. Sushant Singh disputes the entitlement, of the suit designs, to registration. He submits that the suit designs are neither novel nor original and are, additionally, published prior in point of time to their registration. Thus, he submits that the suit designs are liable to be cancelled under clauses (b), (c) and (d) of Section 19(1) read with Section 4(a) and (b) of the Designs Act. At the least, submits Mr. Sushant Singh, his submissions make out a credible challenge to the validity of the suit designs, which is sufficient to justify rejection of the prayer for interlocutory injunction.

32. In order to understand the scope of the concept of a “design” under the Designs Act and the extent to which it is entitled to protection, one has to refer to the relevant provisions of the Designs Act in conjunction with the judgment of the Supreme Court in Bharat Glass Tubes The law, which is the only authoritative pronouncement from the Supreme Court on the point.

33. The expression “design” is defined, essentially, in clause (d) of Section 2 of the Designs Act, as 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 which, in the finished article appeal to and are judged solely by the eye. The definition expressly excludes “any mode or principle of construction or anything which is in substance a mere mechanical device”.

34. The following features of the definition of “design”, as contained in the Designs Act, are of significance:

(i) The application of the features of shape, configuration, pattern, etc. to an article, in order for it to constitute a “design” may be two dimensional, three dimensional or both. No article, in its physical form, is two dimensional. Howsoever slim an article may be, it is, per definition, three dimensional. By extending the definition of “design”, to the application of shapes, configuration, patterns, etc. to articles even in two dimensional forms, the statute makes it clear that even a two dimensional representation of the application of features or shape, configuration, pattern etc. to an article would constitute a “design”.

(ii) The design is to be judged “solely by the eye”. The test to decide whether a particular application of shape, configuration, pattern, etc. to an article constitutes a design is, therefore, essentially ocular/visual.

(iii) Judged thus in an ocular/visual manner, the application of the shape, configuration, pattern, etc., to the article must appeal to the eye. Thus, it is not mere ocular assessment, but ocular appeal, which is necessary for a particular application of shape, configuration, etc. to an article, to constitute a “design”. Sans ocular appeal, there can be no design. Thus, unlike the Patents Act, which deals with inventions and judges their patentability on the basis of whether they involve inventive steps, the application of shape, configuration, etc., to an article, in order to constitute a “design”, must have ocular appeal, irrespective of whether it is inventive, or is or is not functionally superior to prior art.

(iv) The definition, as already noted, excludes any mode or principle of construction or any thing which is in substance a mere mechanical advice. This expression, quite frankly, is not easy to comprehend. However, a Full Bench of this Court has, in Mohan Lal v. Sona Paint & Hardwares29

36. What the Designs Act protects is, however, an idea which is to be applied to an article, and not a mere idea in vacuo. An idea, which is not intended for temporal manifestation, by application of industrial process, cannot, therefore, be protected under the Designs Act. That much is clear even from Section 2(d), which envisages every “design”, under the Designs Act, being applied to an article. To quote from Narayanan, as approved in Bharat Glass Tubes22, “the whole purpose of a design is that it shall not stand on its own as an artistic work but shall be copied by embodiment in a commercially produced artefact.” What the finished article would look like, is primordial to the issue. Thus, when considering whether the features of shape, configuration, etc., when applied to an article, constitute a “design” within the meaning of Section 2(d) of the Designs Act, one has to visualize, in the mind’s eye, the finished article, after the features have been applied to it. If the features, when applied to an article, appeal to the eye, and the eye alone, then the features constitute a “design”. Thus, a “design” constitutes of features of shape, configuration, etc., applied, or meant to be applied, to an article of manufacture by industrial process which, when so applied, appeal when judged solely by the eye, and must not be purely functional in nature. This is the somewhat nuanced concept of a “design”, under the Designs Act.

37. Designs which are not “new or original” cannot be registered, by virtue of the proscription contained in clause (a) of Section 4 of the Designs Act.

38. The Designs Act does not define “new”. The expression “original” is, however, defined in Clause (g) of Section 2, vis-à-vis a design, as originating from the author of the design. In other words, the feature of shape, configuration, pattern, etc. which is sought to be regarded as “design” must have its origin in the originator of the design. At the same time, the definition includes “cases which though old in themselves yet are new in their application”. Features of shape, configuration, pattern, etc. which may already existed in prior art may, nonetheless, qualify as original, within the Section 2(g), if, the manner in which they are applied is new.

39. The jurisprudential contours of a “design”, as well as the expression “new” used in the context thereof, were thus identified by the Supreme Court in Bharat Glass Tube22 “ “Design” has been defined in Section 2(d) which means that a feature 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. That means that a feature or a pattern which is registered with the registering authority for being produced on a particular article by any industrial process whether manual, mechanical or chemical or by any other means which appears in a finished article and which can be judged solely by eye appeal. The definition of “design” as defined in Section 2(d) read with application for registration and Rule 11 with Form 1 makes it clear that the design which is registered is to be applied to any finished article which may be judged solely by eye appeal. A conjoint reading of these three provisions makes it clear that a particular shape or a particular configuration is to be registered which is sought to be produced on any article which will have visual appeal.: Such design once it is registered then it cannot be pirated by any other person. But the question is whether it is new or original.” (from para 30) “Therefore, what is sought to be protected is that the design which will be reproduced on the roller by way of mechanical process and that design cannot be reproduced on glass by anybody else. Now, the question is whether it is new or original design. For that it is clear that there is no evidence to show that this design which is reproduced on the glass sheet was either registered in India or in Germany or for that matter in the United Kingdom.” (from para 34) “Therefore, the concept of design is that a particular figure conceived by its designer in his mind and it is reproduced in some identifiable manner and it is sought to be applied to an article. Therefore, whenever registration is required then those configuration has to be chosen for registration to be reproduced in any article. The idea is that the design has to be registered which is sought to be reproduced on any article. Therefore, both the things are required to go together i.e. the design and the design which is to be applied to an article.” (from para 36) “The question of eye appeal came up for consideration in Interlego AG v. Tyco Industries Ltd31 ‘In relation, however, to an assessment of whether a particular shape or configuration satisfies the former and positive part of the definition, the fact that an important part of the very purpose of the finished article is to appeal to the eye cannot be ignored. That factor was one which was conspicuously absent from the articles upon which the courts were required to adjudicate in Tecalemit Ltd. v. Ewarts Ltd. (No. 2). In that case Their Lordships have laid down important test in the matter of visual appeal of the eye. It was observed as follows:, Stenor Ltd. v. Whitesides (Clitheroe) Ltd14, and Amp Inc. v. Utilux Pty. Ltd.33, and in the more recent Irish case of Allibert S.A. v. O-Connor34 (1988) 3 All ER 949 (1927) 44 RPC 503 1972 RPC 103 (HL) 1981 FSR 613 in all of which the claim to registration failed. It was one which was present in Kestos case, where the claim to the validity of the design succeeded. It is present in the instant case. One starts with the expectation of eye appeal, for part of the very purpose of the article is to have eye appeal. That was aptly expressed by Whitford, J. in relation to the same subject-matter as in this appeal in Interlego AG v. Alex Folley (Vic) Pty. Ltd.35

40. The Supreme Court held, in Bharat Glass Tube: ‘I would have expected a designer designing toys to have the question of the appeal of the toy to the eye, even in the case of a functional toy, in mind. Mr. Rylands who gave evidence for the defendants said that when designing a functional toy it is necessary to have regard not only to suitability for purpose but to overall appearance. You have to design so that the article in question will make an immediate visual appeal to a child or to the parent or other person buying for a child.’” (from para 40) “The expression, “new or original” appearing in Section 4 means that the design which has been registered has not been published anywhere or it has been made known to the public. The expression, “new or original” means that it had been invented for the first time or it has not been reproduced by anyone.”, that the burden to show that a registered design suffered from want of novelty and originality was on the person who so alleged or asserted. While so holding, the Supreme Court explained the expression “new or original”, as it figures in Clause (a) of Section 4 of the Designs Act, thus:

41. The aspect of novelty and originality of a registered design vis- à-vis prior art was also considered by a Full Bench of this Court in Carlsberg Breweries A/S v. Som Distilleries And Breweries Ltd36 1987 FSR 283 AIR 2019 DEL 23 (FB): 2056 (2019) DLT 1 (FB), in which it was observed as under:

42. Thus, held the Full Bench,

(i) the registration of a design facially indicates satisfaction of the test of novelty and absence of prior publication, but

(ii) to be eligible to registration,

(a) the article in question must be unique or novel in regard to elements such as shape, configuration, pattern, ornament or composition of lines of colours applied to it and (b) it has to have visual, i.e. aesthetic, appeal.

43. While Carlsberg Breweries36 examined the aspect of novelty and originality, prior publication of the design is also one of the grounds on which it is rendered vulnerable to cancellation on the ground of invalidity. The Designs Act does not, however, define “publication”. A Full Bench of this Court examined the matter in Reckitt Benckiser Ltd. v. Wyeth Ltd.37. Reckitt Benckiser37 was rendered by a Full Bench to which the aspect of “prior publication” have been referred by an earlier Division Bench who, in turn, doubted the correctness of an earlier Division Bench decision in Dabur India Ltd. v. Amit Jain26. Dabur India26 held that publication abroad by existence of the asserted design in a suit in the records of Registrar of designs which was open to public inspection constituted “prior publication”.

44. The Full Bench noted that, by virtue of Section 19(1)(b) of the Designs Act, prior publication of a design could either in India or abroad, unlike prior registration of a design, which had necessarily to be in India, under Section 19(1)(a), in order to constitute a ground to cancel a subsequent registered design. Thereafter, on the aspect of publication, the Full Bench went on to hold thus:

45. After holding that, in Bharat Glass Tube22, the Supreme Court had held that prior publication was required to possess sufficient clarity, in that it had to be capable of being completely understood for its effect when actually put on an article, the Full Bench in Reckitt Benckiser37 “19(i) In our opinion the expression ‘tangible form’ refers to a specific physical form or shape as applied to an article and not the mere ability to replicate, convert and give a physical shape to the design, though of course to fall under the expression ‘tangible form’ it is not necessary that the article should have been used, but the expression ‘in any other way’ takes some of its colour from the words ‘used’ or ‘tangible form’. The principle of Nositur a Sociis will be applicable. Section 4(b) therefore, not only, requires publication but it should be publication by use, in tangible form or in any other way. The expression ‘any other way’ here is wider in context and takes into its ambit a design which has been created though not still put to use or exists in tangible form but at the same went on to explain, in para 19, the concept of “publication in a tangible form”, as envisaged in Section 4(b) of the Designs Act: time it is guided by the words “use” and “tangible form”. Thus, to disqualify a claim for registration or cancel registration of a design in India, the publication abroad should be by use, in tangible form, or in some other way, means that the design should not be a factum on paper/document alone, but further that the design on paper should be recognizable i.e. have the same impact in the public as a furnished article will appeal when judged solely by the eye (see Section 2(d)). Putting it differently if the design is on paper then it must exist upon a piece of paper in such a way that the shape or other features of the article are made clear to the eye. The visual impact should be similar to when we see the design on a physical object i.e. an object in tangible form/in use. As noted otherwise in the present judgment, registration of a design is article specific and thus-depending on the facts of each case registration or publication of design of a particular article may or may not necessarily result in rejection or cancellation of registration of the same or similar design on another article. The Act protects the original artistic effort not in form of an idea or on its own as an artistic work, but is an embodiment in a commercially produced artefact. Thus the primary concern is what the finished article is to look like. ”

46. The principles in Bharat Glass Tube22 were held, by the Full Bench, to be reinforced by the following passages from Russell-Clark and Howe on Industrial Design “: What counts as “published” for the purpose of calling into question the novelty of a later design registration? This is broader than the word at first suggests. It is by no means limited to the publishing of a design in a printed publication, although it includes that. In practical terms, there are two main ways in which a design can be published: by prior use of the design, by selling or displaying to the public articles to which the design has been applied; and by paper publications of one sort or another. A special exception existed to the general rule that the novelty of a design will be destroyed by the prior registration or publication of that design It is not, in fact, necessary that publication should be on paper; an oral disclosure, provided it is non-confidential, will amount to publication. Re-registration of the same design for different articles, or a similar design for same or different articles as applied to any kind of article. By S. 4(1) of the RDA(A), the proprietor of a registered design was entitled to apply for registration of the same design, or a design with modifications or variations not sufficient to affect its identity, in respect of another article. His own previous registration, or the publication of his design as registered, does not then destroy the novelty of his new design registration in respect of the new article, but his term of protection is limited to the term of the original design. This, in effect, gave the proprietor of a design registration the ability to extend the scope of the registration during its lifetime to cover further articles, although in formal terms each application to protect his design on a new article will be a separate application leading to a separate design registration. The same rule applied to the registration (whether in respect of the same article or a different article) of a design which is not exactly the same as the earlier registered design, but has “modifications or variations not sufficient to alter the character or substantially to affect the identity thereof”. However, this provision has been interpreted narrowly so that practically any significant change or difference between the earlier and later design will destroy the protective effect of this provision. For an applicant to rely on s. 4(1)(b), the subject of his application must have substantial identity with his prior published design. In Sebel Ltd's Application (No. 1), it was held that substitution in the old design of a different stand did substantially alter the identity of the article (a rocking horse), and that the subsection did not apply. Since the stand had already been published in an advertisement showing it applied to another horse, it was held that design failed to qualify for novelty under s. 1, the said stand being a mere trade variant. In Sebel Ltd's Application (No. 2), a design was held not to fall within s. 4 because the character of the design was different from the character of the applicant's earlier design. Thus it seems that the applicant's own earlier design may be sufficiently similar to It appears that his application for registration of the design on the new article must precede his actual use of the design on the new article. This is because, if he uses the design on an article which falls outside the scope of his earlier registration, then that will not count as a publication “of the registered design”, which is all that s. 4(1) of the RDA(A) shields him against as regards the novelty of his new application. A person who makes an application to register a design and finds that it has previously been registered in respect of a different article was allowed to buy up the earlier design registration while his own application was still pending, and if he did so he could take advantage of this rule in the same way as if he had himself been the owner of the earlier registration all along. destroy the novelty of his later application for protection of his modified design, and yet too different to allow him to take advantage of the protection of RDA(A) s. 4(1). This is an odd and unfortunate result if it is indeed correct. Publication in documents In cases of publication of a design by prior use as applied to an article, normally the only questions which arise are whether it has been published at all (i.e. whether the articles to which it has been applied have been disclosed to the public), and whether the design is similar enough to the design in suit to destroy the latter's novelty. But where the novelty of a design is tested against a prior published document, a number of additional questions can arise which do not arise in the case of a prior use. First, it may not be clear whether or not the document discloses a design as applied to an article at all. A trade catalogue containing photographs or illustrations of articles to which a design has been applied may be a clear enough case. But the publication in a document of a pattern or picture does not as such destroy the novelty of a design which consists of applying that pattern or picture to an article. For it to destroy the novelty of such a design, the paper publication must suggest explicitly or implicitly by context that the pattern or picture should be applied to an article. Secondly, the pattern (if it is two-dimensional) or shape (if it is three-dimensional) of the design may not be clear from the document. Particularly in a case where it involves a written description rather than an explicit picture or illustration, there may be room for argument as to the precise nature of the design which the document discloses, before one can go on to ask whether or not it is similar enough to the later design to destroy novelty. Thirdly, a paper publication may be shielded from destroying the novelty of a later design registration by the special provisions of subss.6(4)-(5) of the RDA(A). These provisions allowed the owner of copyright in an artistic work to exploit his work so long as he did not apply it industrially to an article, without his own exploitation of it counting against the novelty of his own later application for a design registration covering the artistic work as applied to an article. Does the document disclose a design applied to an article? In order to destroy the novelty of a design registration, an earlier design must be published “in respect of the same or any other article”. Mere publication of the pattern which constitutes the design was therefore not sufficient to destroy the novelty of a design registration, which consisted of the application of that pattern to an article. In principle, the same holds true of the publication of a shape, although it is less easy to envisage cases where the publication of a shape does not implicitly convey the article to which that shape is to be applied. Thus, novelty may reside in the application of an old shape or pattern to new subjectmatter. This was first laid down in the leading case of Saunders v. Wiel38. There, the design consisted of the handle of a spoon made to represent Westminster Abbey seen from a particular point of view. The design had actually been copied from a photograph of the Abbey. The validity of the design was upheld, Bowen L.J. saying. “It seems to me that the novelty and originality in the design, within this section, is not destroyed by its being taken from a source common to mankind…The novelty may consist in the applicability to the article of manufacture of a drawing or design which is taken from a source to which all the world may resort. It should be recalled that under the 1949 Act, if a pattern (or shape) has been published in respect of any article, the publication will destroy the novelty of any design which consists of the application of that pattern (or shape) to an article of any kind, however different it is from the kind of article to which the Otherwise, it would be impossible to take any natural or artistic object and to reduce it into a design applicable to an article of manufacture, without also having this consequence following, that you could not do it at all in the first place unless you were to alter the design so as not to represent exactly the original; otherwise there would be no novelty in it, because it would be said that the thing which was taken was not new. You could not take a tree and put it on a spoon, unless you drew the tree in some shape in which a tree never grew, nor an elephant unless you drew it and carved it of a kind which had never been seen. An illustration, it seems to me, that may be taken about this is what we all know as the Apostles spoons. The figures of the Apostles are figures which have been embodied in sacred art for centuries, and there is nothing new in taking the figures of the Apostles, but the novelty of applying the figures of the Apostles to spoons was in contriving to design the Apostles’ figures so that they should be applicable to that particular subject-matter. How does a building differ from that? In no sense it seems to me. 1893 RPC 29 publication suggests that the design should be applied. However, the publication will not invalidate such later design registrations if it does not suggest the application of the pattern (or shape) to an article at all. Thus, a series of pictures published in a fine art catalogue would not destroy the novelty of a later design consisting of the application of one of those pictures to, say, the back of a chair, because a painting or picture simpliciter is not an “article”. But the same pictures published in a catalogue of patterns for application to wallpaper would destroy the novelty of such a later design registration, because wallpaper is an article. What design is disclosed by a prior published document? Assuming that a prior published document does satisfy the requirement that it discloses a design, i.e. a shape or pattern, as applied or to be applied to an article, the next question may be what is the shape or pattern which it discloses? In some cases this will be clear, for instance where the publication contains explicit pictures or illustrations. However, it may be less clear and the disclosure may consist in whole or in part of written text which needs to be interpreted, or general instructions which can be put into practice in a variety of ways. In such cases the test to be applied is that borrowed from the hpre-1977 patent law of anticipation, i.e. that the prior art document must contain “clear and unmistakable directions” to make an article with the shape or pattern which is the same as, or similar enough to the registered design in suit to deprive it of novelty. This was laid down in Rosedale Associated Manufacturers Ltd. v. Airfix Ltd.39 “In this respect the test of prior publication of an alleged invention should, in my judgment, be no less applicable in the case of a registered design, and as regards the former, I venture to cite once more the oft-quoted language of Lord Westbury in Hills v. Evans Lord Evershed M.R. said: 1957 RPC 239 (1862) 4 DeG., F&J. 288:‘The antecedent statement must, in order to invalidate the sub-sequent patent, be such that a person of ordinary knowledge of the subject would at once perceive and understand and be able practically to apply the discovery without the necessity of making further experiments.’ By a like reasoning, to my mind, if a document is to constitute prior publication, then a reader of it, possessed of ordinary knowledge of the subject, must from his reading of the document be able at least to see the design in his mind's eye and should not have to depend on his own originality to construct the design from the ideas which the document may put into his head.” On the same point Romer L.J. said: “In Flour Oxidising Co. v. Carr & Co41 Parker J. (as he then was) said:‘Where the question is solely a question of prior publication it is not, in my opinion, 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.’ These observations by Parker J. were cited with approval by Lord Dunedin in British Thomson Houston Co. v. Metropolitan- Vickers Electrical Co.42, and again (when delivering the judgment of the Judicial Committee) in Pope Alliance Corporation v. Spanish River Pulp & Paper Mills Ltd.43

47. If the differences between prior art and the suit design are merely trade variants, the suit design cannot aspire either to novelty or to originality. On what is a “trade variant”, this Court has consistently been following the principles laid down in Phillips v. Harbro Rubber Co. In the latter case and at the same page Lord Dunedin posed the test as follows: ‘would a man who was grappling with the problem solved by the Patent attacked, and having no knowledge of that Patent, if he had had the alleged anticipation in his hand, have said “that gives me what I wish”? It is true that these citations were related to anticipation of inventions, but it seems to me that they apply by analogy to alleged anticipation by “paper publications” of registered designs.” It is not permissible to make a mosaic of a number of prior documents for the purpose of attacking novelty. If the attack on novelty is to succeed, the design must be disclosed in the single prior document. If, however, one document contains a reference to another document, the two may be read together.” (Italics supplied; underscored in original), which was thus distilled by a Division Bench of this Court in B. Chawla17 (1908) 25 RPC 428 (1928) 45 RPC 1 AIR 1929 PC 38: “In Phillips v. Harbro Rubber Company18, Lord Moulton observed that while question of the meaning of design and of the fact of its infringement are matters to be judged by the eye, it is necessary with regard to the question of infringement, and still more with regard to the question of novelty or originality, that the eye should be that of an instructed person, i.e. that he should know that was common trade knowledge and usage in the class of articles to which the design applies. The introduction of ordinary trade variants into an old design cannot make it new or original, He went on to give the example saying, if it is common practice to have) or not to have, spikes in the soles of running shows any man does not make a new and original designs out of an old type of running shoes by putting spikes into the sales. 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 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. It was emphasized that it is the duly of the court to take special care that no design is to be counted a "new and original design" unless it distinguished from that previously existed by something essentially new or original which is different from ordinary trade variants which have long been common matters of taste workman who made a coat (of ordinary cut) for a customer should be left in tender whether putting braid on the edges of the coat in the ordinary way so common a few years ago, or increasing the number of buttons or the like, would expose him for the prescribed years to an action for having infringed a registered design. On final analysis, it was emphasized that the use of the words "new or original" in the statute is intended to prevent this and that the introduction or substitution of ordinary trade variants in a design is not only insufficient to make the design "new or original" but that it did not even contribute to give it a new or original character. If it is not new or original without them the presence of them cannot render it so.”

48. When the aforesaid legal position is applied to the suit designs, vis-à-vis the prior art to which Mr. Sushant Singh has drawn attention, this Court is unable to convince itself that the suit designs can be treated as, prima facie, novel and original vis-à-vis prior art. The only two features of the suit designs, in which novelty and originality are Applying the law to the facts claimed by the plaintiffs, are the vertical ribs along the length of the suit designs and the flanges on the rim. The various prior arts to which Mr. Sushant has alluded clearly indicate that vertical ribs along the length of the bucket/tub/mug in question, from apex to base, as well as extended flanges at the rim of the concerned vessel, are not features which have originated from the plaintiff, but have been in use and application even prior thereto. The vertical ribs in the designs are identical to the vertical ribs in the designs constituting prior art. Insofar as the flanges on the rim are concerned, no doubt, there may be minor variations regarding their shape, number, the extent of their protrusion from the rim, and other such minor features. The plaintiffs have not been able to convince us these changes make any substantial difference to the flanges. These minor changes, therefore, in my considered opinion, constitute merely trade variants within the meaning of the expression as understood in Phillips18.

49. The following prior published designs (as applied to specific articles), in my view, make out a credible challenge to the validity of the suit designs:

(i) Bathroom tub as uploaded by Sara China Bona Mould on

(ii) Mug, as uploaded by Sara China Bona Mould on 18 June

2019:

(iii) Tub No. BN2103169 invoiced by Bona Mould to Crown

(iv) Mug No. BN2103170 invoiced by Bona Mould to Crown

(v) Bucket from the catalogue of Migeplastics:

(vi) Design 784645 registered in favour of David A.

(vii) SeMius Durable Practical Solid Geometric Shape Storage

Garbage Household Trash Can available on amazon.in since 14 March 2019: These designs constitute legitimate prior art so as to constitute prior publication within the meaning of Section 4(b) read with 19(d), and 19(b), as well as to divest the suit designs of novelty and originality within the meaning of Section 4(a)/19(c) of the Designs Act.

50. I am, therefore, prima facie of the opinion that the defendant has succeeded in launching a credible challenge to the suit designs as suffering from lack of novelty and originality vis-à-vis prior published designs both with respect to the ribs along bodies of the suit designs as well as the extensions/flanges on the rim.

51. As I have arrived at the aforesaid conclusion on a visual appreciation of the suit designs, vis-à-vis prior art, it is not necessary to examine, in detail, the various judicial precedents on which learned Counsel sought to place reliance. Suffice it to state that, insofar as the aspect of estoppel is concerned, no registration having been obtained by the defendant in respect of the impugned designs, and Mr. Sushant Singh having, on instructions from his clients, undertaken to withdraw the application seeking registration, it cannot be said that the defendants are estopped from questioning novelty and originality of the suit designs vis-à-vis prior art.

52. As a result, the plaintiffs’ prayer for interlocutory injunction has necessarily to be rejected, in view of Section 22(3) of the Designs Act.

53. Accordingly, I.A. 13422/2022 is dismissed and I.A. 13425/2022 is allowed.

54. The ad interim interlocutory injunction granted by the learned Commercial Court on 8 June 2022 stands accordingly vacated.

C. HARI SHANKAR, J.