Bharat Glass Tube Limited v. Gopal Glass Works Limited, 2008

AREA: Designs

FACTS:

Respondent had registered their designs for diamond-shaped glass sheets under the Designs Act, 2000. The Respondent therefore acquired the sole right to manufacture and market the glass sheets in the design that was registered in its name. The designs that were formed on the glass sheets were formed by engraved rollers which were developed by Dornbusch Gravuren GMBH, (Hereinafter ‘German Company’), which had licensed all Indian rights to the respondent. Appellant, along with its associate IAG Co. Ltd. started imitating the said registered designs. As a result, Respondent was constrained to file a suit against the Appellant and IAG Co. Ltd. in the District Court of Mehsana, Gujarat. Respondent also obtained a restraint order in the said suit. On the other hand, Appellant filed an application under Section 19 of the Designs Act, 2000 before the Controller of Patents & Designs for cancellation of registration of Design No. 190336 in the name of the Respondent.

ISSUES:

1. Whether the design was not new or original the fact that the roller bearing the design was published before the date of registration and the registered proprietor is not the owner of the design?

2. Whether the design was published outside India as well as in India before the date of application?

3. Whether the registered design was in the public domain due to the sale/use of the design before the date of application of the registered proprietor?

ANALYSIS:

The first two issues were decided against the Respondent and the design registration was cancelled. The third issue was not adjudicated for technical reasons. Aggrieved against this order the Respondent filed a regular appeal under Section 36 of the Designs Act, 2000 before the High Court of Calcutta. Learned Single Judge of the Humble High Court reversed the findings of the Assistant Controller. Aggrieved by the said order the appeal was filed by the Appellant in the Supreme Court. The object behind the Designs Act, of 2000 is to benefit the person for his research and labor put in by him to evolve a new and original design. This is the sole aim of enacting this Act. Section 4 says that a design that is not new or original cannot be registered. Therefore, the question is whether the design which has been prepared by the German Company is new or original or not. In this connection, the burden was on the Appellant to show that the design was not original or new. The expression, ‘new or original’ means that the design which has been registered has not been published anywhere or 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.

JUDGMENT:

There is no evidence whatsoever produced by the Appellant either before the Assistant Controller or before any other forum to show that this very design which has been reproduced on the glass sheet was manufactured anywhere in the market in India or the United Kingdom. Therefore, this design which is to be reproduced in the article i.e. glass has been registered for the first time in India. The respondent had specifically mentioned in the application form that he was applying the designs only to glass sheets. M/s. Vegla Vereinigte Glaswerke Gmbh had never manufactured glass sheets of the design registered in the United Kingdom. Thus the Supreme Court found no merit in the appeal and it was dismissed with costs of Rs. 50,000/-.