Background of case
In this case, the respondent Gopal Glass Works Limited applied to register a diamond‑shaped pattern on a flat glass sheet under the Designs Act, 2000 (Design No. 190336). This application was made on 29th October 2009 and the registration for the same was granted on 5th November 2002 by the Controller of Designs, in just 6 days. This granted the respondents the sole right to manufacture and market the glass sheets with the specific registered design. These designs on the glass sheets were formed by engraved rollers developed by a German company (Dornbusch Gravuren GMBH), which had licensed its Indian rights to the respondents. The appellant, IAG Glass Company Limited, began imitating the designs registered to the respondents. The respondents then filed a suit, asking for interim injunction which was granted. Following this, the appellants moved to Assistant Controller of Patents for cancellation of the respondent’s registration claiming it is not new or original, as it was published by the German firm and had a similar UK patent. The Assistant Controller of Patent found this a meritorious claim by the appellants and decided to cancel the registration of the respondent’s design. They claimed it did not fulfil the “originality” requirements enshrined in Section 4 of the Designs Act. The matter went to the high court where the judge ruled against the Asistant Controller of Patents and restored the respondent’s design rights. The appellants appealed this decision to the Supreme Court.
Argument by Petitioner/Appellant
Design has already been previously published in India and abroad and that the design was not new or original. They produced only two documents to prove this a catalogue of the German Company and a letter dated 10.9.2003 of the German company addressed to IAG Co. Ltd. the holding company of the appellant stating that the said German Company had developed the design in the year 1992; and a document downloaded from the official website of the Patent Office of the United Kingdom on 22.9.2004 which indicated that the same design had been registered in the United Kingdom in the name of M/s. Vegla Vereinigte Glaswerke Gmbh in 1992.
Argument by Defendant/Respondent
German Company only manufactured rollers but did not produce glass sheets prepared out of these rollers.
As per the communication dated 4.3.2004 of the German Company, the said Company confirmed that the embossing rollers had been sold to the Respondent on condition that all user rights available in India under Indian laws would vest exclusively with the Respondent and that the Respondent would be entitled to exclusive user rights for at least five years. Respondent visited Germany and upon enquiry ascertained that M/s. Vegla Vereinigte Glaswerke Gmbh had never manufactured glass sheets of the design registered in the United Kingdom.
Decision of Court with reasoning
Supreme Court held that the burden was on the appellant to show that the design was not new or original, and the appellant failed to discharge this burden. The SC found no evidence to show that the design registered by the respondents was ever registered, published, or manufactured in India, Germany, or the United Kingdom before this instance. The Court further stated that the Assistant Controller did not properly compare the registered design with the UK design and failed to consider the visual appeal of the finished product (glass sheet). The Court upheld the High Court’s view that there was a distinguishable difference between the registered design and the UK design when applied to glass sheets. The Supreme Court dismissed the appeal and upheld the respondent’s registration, finding that the design was new and original when applied to glass sheets.
Conclusion
Supreme Court found no merit in the appeal and dismissed it with costs of Rs. 50000/-. It upheld the high court’s decision. The court concluded that the expression, “new or original” in Section 4 of the act 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. This case was landmark in that it clarified the meaning and interpretation of what a new or original design means according to this act.
The court clarified certain things:
A design must be previously unpublished on the specific article concerned.
That the burden of proof to prove that a pre-existing usage of a design exists prior to the registration of design lies only on the challenger to demonstrate prior public availability of the same article‑specific design.
Protects the effort invested in applying a novel design to an article, even if the underlying tooling pattern existed earlier.
References:
Bharat Glass Tube Ltd. V. Gopal Glass Works Ltd., (2008) 10 SCC 657
Vedika Vaidya, Gujarat National Law University, Gandhinagar