# 7 S.C.R. 397 ,,; _ BHARAT GLASS TUBE LIMITED v. GOPAL GLASS WORKS LIMITED

- **Citation:** [2008] 7 S.C.R. 397
- **Court:** Supreme Court of India
- **Decided:** 2008-05-01
- **Case number:** Civil Appeal No. 3185 of 2008
- **Bench:** A.K. Mathur, Altamas Kabir
- **Source:** https://unisonlegal.in/judgment/supreme-court-of-india/7-s-c-r-397-bharat-glass-tube-limited-v-gopal-glass-works-limited-24675
- **Pages:** 38

## Headnote

Designs Act, 2000:
s. 2(d),2(g), 4, 11 rlw r.11 and Form-1 of Designs Rules, c
2001 - 'Design' - Registration of - Purpose of - HELD: Is
protection of intellectual property right of new and original
design and to benefit the person for his research and labour
put in by him to evolve the new and original design - The
design which is sought to be registered is to be applied to
finished article which may be judged solely by eye appeal -
D
Name of article on which design is sought to be transcripted
has to be mentioned at the time of registration - Both the things
are required to be together, the design and article on which
design is sought to be applied - Design Rules, 2001 - r.11 rl
w Form 1 - Intellectual Property - Copy Right.
E
s.20) - 'Proprietor' - Connotation of
s. 4 - Expression "new or original" - HELD: Means that
design which has been registered has been invented for the
)
first time and it has not been published anywhere nor made
F
known to the public.
s. 19 r/w r29 of Design Rules, 2001 - Cancellation of
Registration - Design registered in India on glass sheet -
HELD: Burden is on complainant to show that design which
has been registered in India was not original or new - This G
burden was not discharged - No evidence was produced that
'-I
design was reproduced on glass sheet or it was prior registered
as such in India or any part of the World.- Order of Assistant
Controller canceling registration was rightly set aside by the
397
H
398
SUPREME COURT REPORTS
[2008] 7 S.C.R.
A High Court - Design Rules, 2001 - r.29.
s. 37 - Affidavit evidence - Admissibility of - Evidence.
Words and Phrases:
Expressions 'design', 'eye appeal', 'new and original' and
8 'proprietor' - Connotation of in the context of Designs Act, 2000.
The
respondent was in the business of
manufacturing and marketing of figured and wired glass
sheets since 1981. It claimed to be the originator of new
c and original industrial designs applied by mechanical
process to glass sheets. On an application by the
respondent u/s 51 of the Designs Act, 2000, the design of
the respondent was registered on 5.11.2002 as Design no.
190336, and it was to remain valid for a period of ten years
0 from the date of its registration. The respondent marketed
the glass sheets of the said design under the name of
'Diamond Square'. The respondent issued a notice on
21.5.2003 cautioning other manufacturers from infringing
its copyright of the said registered design. According to
the respondent, as in the meanwhile the appellant and its
E associate started imitating the said registered design, it
filed Civil Suit No. 1 of 2004 against the appellant, and
obtained a restraint order.
The appellant in turn filed an application u/s 19 of
F the Act before the Controller of Patents and Designs for
cancellation of respondent's registration of Design No.
190336 mainly on the ground that the design had already
been previously published in India and abroad and thus
it was not a new or original one. The appellant relied on a
G catalqgue of the German Company which had developed
Design No. 2960-9010 in the year 1992, and a document
downloaded from the official website of the Patent Office
of United Kingdom indicating registration of the design.
The stand of the respondent was that the German
H Company was engaged in the manufacture of engraving
,,
BHARAT GLASS TUBE LIMITED v. GOPAL GLASS
399
,;._
WORKS LIMITED
rollers only and it never manufactured engraved glass A
...
sheets; that the said German Company had sold the
embossing rollers covered by Design No. 2960-9010 .to
the respondents on a condition that all user rights in India
'\-
under l~dian laws would vest exclusively in the
~
. respondent for at least five years; and that the Company B
which had its design registered in United Kingdom never
manufactured glass sheets. The Assistant Controller of
the Patents and Designs, accepted the case of the
appellant and set aside the registration of the respondent.
The appeal of the respondent was

## Text

_Characters 0–39,924 of 76,154. This is a partial read: ask again with offset=39924 for what follows._

(2008] 7 S.C.R. 397
,,;.._
BHARAT GLASS TUBE LIMITED
A
...
v.
GOPAL GLASS WORKS LIMITED
(Civil Appeal No. 3185 of 2008)
MAY 1, 2008
B
..
-""'
(A.K. MATHUR AND ALTAMAS KABIR, JJ.)
Designs Act, 2000:
s. 2(d),2(g), 4, 11 rlw r.11 and Form-1 of Designs Rules, c
2001 - 'Design' - Registration of - Purpose of - HELD: Is
protection of intellectual property right of new and original
design and to benefit the person for his research and labour
put in by him to evolve the new and original design - The
design which is sought to be registered is to be applied to
finished article which may be judged solely by eye appeal -
D
Name of article on which design is sought to be transcripted
has to be mentioned at the time of registration - Both the things
are required to be together, the design and article on which
design is sought to be applied - Design Rules, 2001 - r.11 rl
w Form 1 - Intellectual Property - Copy Right.
E
s.20) - 'Proprietor' - Connotation of
s. 4 - Expression "new or original" - HELD: Means that
design which has been registered has been invented for the
)
first time and it has not been published anywhere nor made
F
known to the public.
s. 19 r/w r29 of Design Rules, 2001 - Cancellation of
Registration - Design registered in India on glass sheet -
HELD: Burden is on complainant to show that design which
has been registered in India was not original or new - This G
burden was not discharged - No evidence was produced that
'-I
design was reproduced on glass sheet or it was prior registered
as such in India or any part of the World.- Order of Assistant
Controller canceling registration was rightly set aside by the
397
H
398
SUPREME COURT REPORTS
[2008] 7 S.C.R.
A High Court - Design Rules, 2001 - r.29.
s. 37 - Affidavit evidence - Admissibility of - Evidence.
Words and Phrases:
Expressions 'design', 'eye appeal', 'new and original' and
8 'proprietor' - Connotation of in the context of Designs Act, 2000.
The
respondent was in the business of
manufacturing and marketing of figured and wired glass
sheets since 1981. It claimed to be the originator of new
c and original industrial designs applied by mechanical
process to glass sheets. On an application by the
respondent u/s 51 of the Designs Act, 2000, the design of
the respondent was registered on 5.11.2002 as Design no.
190336, and it was to remain valid for a period of ten years
0 from the date of its registration. The respondent marketed
the glass sheets of the said design under the name of
'Diamond Square'. The respondent issued a notice on
21.5.2003 cautioning other manufacturers from infringing
its copyright of the said registered design. According to
the respondent, as in the meanwhile the appellant and its
E associate started imitating the said registered design, it
filed Civil Suit No. 1 of 2004 against the appellant, and
obtained a restraint order.
The appellant in turn filed an application u/s 19 of
F the Act before the Controller of Patents and Designs for
cancellation of respondent's registration of Design No.
190336 mainly on the ground that the design had already
been previously published in India and abroad and thus
it was not a new or original one. The appellant relied on a
G catalqgue of the German Company which had developed
Design No. 2960-9010 in the year 1992, and a document
downloaded from the official website of the Patent Office
of United Kingdom indicating registration of the design.
The stand of the respondent was that the German
H Company was engaged in the manufacture of engraving
,,
BHARAT GLASS TUBE LIMITED v. GOPAL GLASS
399
,;._
WORKS LIMITED
rollers only and it never manufactured engraved glass A
...
sheets; that the said German Company had sold the
embossing rollers covered by Design No. 2960-9010 .to
the respondents on a condition that all user rights in India
'\-
under l~dian laws would vest exclusively in the
~
. respondent for at least five years; and that the Company B
which had its design registered in United Kingdom never
manufactured glass sheets. The Assistant Controller of
the Patents and Designs, accepted the case of the
appellant and set aside the registration of the respondent.
The appeal of the respondent was allowed by the High c
Court giving rise to the instant appeal.
Dismissing the appeal, the Court.
HELD: 1.1 The sole purpose of the Designs Act,2000
)..
is protection of the intellectual property right of the original D
design. The object behind this enactment is to benefit-the
person for his research and labour put in by him to evolve
the new and original design. Such original design which
is new and which has not been available in the country or
-
has not been previously registered or has not been
published in India or in any other country prior to the date E
of registration shall be protected for a period of ten years.
[para 6] [415-F, G; 416-E]
A
1.2 'Design', as has been defined in section 2(d) of
,
the Act, means that a feature of shape, configuration,
F
pf!ttern, 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,
and which is registered with the registering authorify for
being produced on a particular article by any industrial G
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 read with application for•registration and Rule
11 with form 1 makes it clear that the design which is H
400
SUPREME COURT REPORTS
(2008] 7 S.C.R.
,_,\.,,
A registered is to be applied to any finished article which
may be judged solely by eye appeal. [para 8) [419-D-E]
...
1.3 A conjoined reading of the provisions of s.2(d)
and s.4 of the Act and Rule 11 of the Designs Rules, 2001
with Form 1 in which the application for registration is
.,
B required to be given shows that a particular shape or
>
configuration is to be registered which is sought to be
produced on any article which will have visual appeal;
and the name of the article on which the design is sought
to be transcripted has to be mentioned at the time of
c registration. The respondent moved an application filling
Form-I stating that the roller which has been manufactured
by the German company with that design shall be
reproduced on the glass. Therefore, when the application
was filed by the respondent for registration, it was
D registered on the basis that the roller which will be used
...
by mechanical process will bring the design on a glass
which is registered. Therefore, what is sought to be
protected is the design which will be reproduced on the
glass by way of mechanical process and that design
E cannot be reproduced on glass by anybody else. There
is no evidence to show that the design in question which
is reproduced on the glass sheet was either registered in
India or in Germany or for that matter in United Kingdom.
[para 8) [419-E-F; 422-A-D]
_..
F
Industrial Designs (Seventh Edition) by Russel- Clarke
and Howe, page 74 - referred to.
1.4 The concept of design is that a particular figure
conceived by its designer in his mind and it is reproduced
G 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
H on any article. Therefore, both the things are required to
BHARAT GLASS TUBE LIMITED v. GOPAL GLASS
401
WORKS LIMITED
,.L
go together, i.e. the design and the design which is to be A
applied to an article. [para 8] [425-F-G]
+
2.1 The expression, "new or original" appearing in
Section 4 means that the design which has been
registered has not been published anywhere nor has it B
,.
been made known to the public. The expression, "new or
..J.
original" means that it had been invented for the first time
or it has not been reproduced by anyone. [para 8]
[419-8-C]
2.2 The burden was on the complainant to show that c
the design was not original or new. The burden was not
discharged by the complainant. It only tried to prove on
the basis of the letter of the German company that they
produced the rollers and sold it in market but it was
nowhere mentioned that these rollers have been D
reproduced on the glass sheets by the German company
or by any other company.· [para 8] [420-B-C)
2.3 The complainant relied on the correspondence
of the German company which produced the rollers and
sold it to the respondent and it gave the proprietary right E
-
to the respondent company. 'Proprietor' as defined in
section 2 (j) of the Act means any person who acquires
the design or right to apply the design to any article, either
exclusively of any other person or otherwise, in respect
and to the extent in and to which the design or right has F
f...
been so acquired. Therefore, this right to reproduce the
"'
design on an article has been given by the German
company to the respondent. [para 8]
2.4 The expression 'new or original' in this context
has to be construed as to whether the design has ever G
been reproduced by any other company on the glass
'..{
sheet or not. There is no evidence whatsoever produced
by the complainant 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 H
402
SUPREME COURT REPORTS
(2008] 7 S.C.R.
A manufactured anywhere in the market in India or in United
Kingdom. There is no evidence to show that these rollers
which were manufactured or originally designed by the
German company were marketed by the said company to
be reproduced on glass sheets in India or even in United
B Kingdom. The proprietorship of the design was acquired
by the respondent from the German company and there
is no evidence on record to show that these rollers were
used for designing them on the glass sheets in Germany
or in India or in United Kingdom. [para 8] [420-C-F]
C
2.5 What is required to be registered is a design which
is sought to be reproduced on an article. It was the roller
which was designed and if it is reproduced on an article it
will give such visual feature to the design. The German
company only manufactured the roller and this roller
D could have been used for bringing a particular design on
glass, rexin or leather. But the instant case relates to the
reproduction of the design from the roller on glass which
has been registered for the first time in India and the
proprietary right was acquired from the German company.
E The contents of the letter of the German Company are very
clear. It shows that it was designed in 1992 and was
. marketed in 1993. It nowhere says that the design was
reproduced on a glass sheet. No evidence was produced
by the complainant that this design was reproduced on a
F glass sheet or it was registered in Germany or in India or
in any part of the world. As in the instant case the design
sought to be reproduced on a glass-sheet has been
registered and there is no evidence to show that this
design was registered earlier to be reproduced on glass
G · in India or any. other part of the country or in Germany or
even for that matter in United Kingdom, therefore, it is for
the first time registered in India which is new and original
design which is to be reproduced on glass sheet. Similarly,
the design which was registered in the name of the
respondent was not published in India or in Germany.
H
•
....
BHARAT GLASS TUBE LIMITED v. GOPAL GLASS
403
WORKS LIMITED
)-.
Therefore, it was a new and original design. [para 8-9] A
[420-F-H; 421-A-C; 425-H; 426-A-C; 427-G]
Mis. Domestic Appliances and Others v. Mis. Globe Super
Parts 1981 PTC 239; and The Wimco Ltd. Bombay v. Mis.
Meena Match Industries, Sivakasi & Ors. 1983 PTC 373;and
B
'
~
Gammeter v. Controller of Patents & Designs and others
•
A.l.R.1919 Cal.887 - referred to.
Dover Ltd. v. Nurnberger Celluloidaren Fabrik Gebr.uder
Wolff [1910] 27 R.P.C. 498; and Elzie Chrisler.Segar,
Deceased. V 0. & M. Kleeman Ld. ([1941] 58 R.P.C. 207 - c
referred to.
3.1 As regards the eye appeal, one has to be very
cautious unless two articles are simultaneously produced
before the Court, then alone the Court will be able to
appreciate. But in the instant case no design reproduced D
on the glass-sheets was produced before the Assistant
Controller or the High Court or before this Court by the
·appellant to appreci<1te the eye appeal. The appellant.could
have produced the design reproduced on glass-sheet
which it claimed to have been manufactured in United E
Kingdom or Germany. That could have been decisive.
[para 10] [427-H; 428-H; 429-A]
lnterlegoA.G. v. Tyco Industries Inc. [1988] 16 R.P.C. 343
- referred to.
f. .
3.2 The evidence which was led by the appellant was
F
..
a document downloaded from official website of the
United Kingdom Patent Office pertaicing to a patent that
may be applied to glass sheets. No evidence has been
produced to show that the Company .in United Kingdom
had reproduced this design on glass sheet in U.K. The G
Assistant Cohtroller has only observed that he has made
.. -{
a visual comparison of the U.K. registered design
No.2022468 with the impugned design No.190336 which
was prior published and he was satisfied that both the
designs make same appeal to the eye and there was H
404
SUPREME COURT REPORTS
(2008] 7 S.C.R.
A sufficient resemblance between the two designs. This
was not accepted by Single Judge of the Calcutta High
Court and for the good reason. [para 14] [431-E-H; 432-A]
3.3 From the judgment of the High Court it appears
B
that in fact the patt&rn of the design which is reproduced
by the respondent on the glass-sheet and the design and
•
the pattern of the United Kingdom shown in the document
...
by the complainant were not common. The affidavit sworn
by the Liaison Executive of the respondent shows that
he had ascertained from the proprietor of the design
c registered in United Kingdom and they have never
manufactured glass-sheet of the design registered. This
affidavit evidence of the respondent has remained unrebutted. Secondly, the Assistant Controller has not
properly compared the two designs arid has not indicated
D as to how he found that the two configurations or patterns
are identical. The finding recorded by the Assistant
Controller is most inconclusive and it does not give any
assurance that it was a proper comparison of the two
patterns by the Assistant Controller. The original glass
E pattern of the respondent was produced. The complainant
has not produced the pattern which was reproduced on
the glass-sheet in the United Kingdom. If both the glasssheet patterns were placed before the Single Judge or
before this Court a finding could have been recorded.
F From the glass-sheets placed before this Court with all
,l.
dimensions along with a copy of the print out of the deign
published in United Kingdom, it is clear that there is no
comparison between the two. From the visual appeal, the
Single Judge has rightly concluded that there is no
G comparison of pattern or configuration of the two designs.
Hence on this count also the view taken by the Assistant
Controller does not appear to be correct and the view
taken by the Single Judge of the High Court is correct.
)."
[para 14] [432-H; 433-A-H; 434-A]
H
CIVILAPPELLATE JURISDICTION: Civil Appeal No. 3185
BHARAT GLASS TUBE LIMITED v. GOPAL GLASS
405
WORKS LIMITED [A.K. MATHUR. J.]
of 2008.
A
From the final Judgment and Order dated 17.8.2005 of
the High Court at Calcuta in AID No. 1 of 2005.
Dipankar P. Gupta, Jaideep Gupta, Saurav Banerjee, S.
..
Majumdar and Pranab Kumar Mullick for the Appellant.
B
..(
Ashok Kumar Desai, Huzefa Ahmadi, Harin P. Raval,
Raghavendra S. Srivatsa, Jasani and Abhijat P. Medh for the
Respondent.
The Judgment of the Court was delivered by
c
A.K. MATHUR, J. 1. Leave granted.
2. This appeal is directed against the order dated
17.8.2005 passed by_ the Calcutta High Court whereby learned
Single Judge has set aside the order passed by the Assistant D
"'·
Controller of Patents & Designs, Kolkata dated 20.9.2004
whereby the Assistant Controller has cancelled the registration
of the respondent herein and held that there was no material on
record to show that the design had previously been applied to
glass sheets. It was also held by learned Single Judge that the
E
order impugned considered with the materials on record,
including in particular the computer print-outs clearly revealed
that the respondent has only compared the pattern and/or
configuration considered the visual appeal thereof, but not the
visual appeal of the pattern and/ or configuration on the article.
F
>--
In other words, the Assistant Controller has not considered the
•
visual appeal of the finished product. The visual effect and/or
appeal of a pattern embossed into glass sheets by use of
embossing rollers could be different from the visual effect of the
same pattern etched into glass sheets manually. This aspect
was not considered. Aggrieved against this order passed by G
learned Single Judge, the present appeal has been filed by the
.-i
appellant.
3. In order to appreciate the controversy involved in the
present appeal, a few facts may be dilated here. The respondent H
406
SUPREME COURT REPORTS
[2008] 7 S.C.R.
A herein claimed to carry on business inter alia of manufacture
and marketing of figured and wired glass sheets since 1981.
The respondent claimed to be the originator of new and original
industrial designs, applied by mechanical process to glass
sheets. According to the respondent, the glass sheets have eye
B catching shape, configuration, ornamental patters, get up and
colour shades and the same were registered and/or were
awaiting registration as industrial designs under the Designs
Act, 2000 (hereinafter to be referred to as the Act of 2000) and
the Rules framed thereunder. For production of glass sheets of
c the design registered as Design No.190336, two rollers are
required. The rollers are manufactured by Mis. Dorn Bausch
Gravuren GMBH of Germany (hereinafter to be referred as the
German Company). According to the respondent the rollers are
not only used for manufacture of glass sheets, but for various
D other articles including plastic, rexin and leather. The respondent
-.1aced an order on the German Company for supply of the rollers
for launching a design of figured glass with new and novel
features not produced before by anyone else. On or about
29.10.2002 the respondent applied to the Controller of Patents
and Designs under Section 51 of the Act of 2000 for registration
E of the said design in Class 25-01. The said design was duly
registered on 5.11.2002 and was to remain valid for a period of
10 years from the date of its registration. The respondent
claimed the exclusive copyright in India on the said design
applied to glass sheets. It was claimed that no other person
F
has any right to apply the said design to glass sheets as the
respondent has exclusive right over the said design on the glass
sheets. The respondent marketed the glass sheets of the said
design under the name of Diamond Square and that became
popular ~l"Ylongst the customers soon after its launch in the
G market After registration of the said design the respondent
issued a notice on 21.5.2003 cautioning other manufactures
from infringing copyright of the respondent in respect of the said
registered design. But in the meanwhile the appellant and its
associate IAG Co.Ltd started imitating the said registered
H design, as a result thereof the respondent was constrained to
..
>
BHARAT GLASS TUBE LIMITED v. GOPAL GLASS
407
WORKS LIMITED (A.K. MATHUR, J.]
A
file a suit being Civil Suit No.1 of 2004 against the appellant in
A
the District Court of Mehsana. The respondent obtained a
restraint order restraining IAG Co. Ltd. from infringing the
copyright of the respondent against the said design. In order to
counter-blast the suit, the appellant herein filed an application
under Section 19 of the Act of 2000 before the Controller of B
~
Patents & Designs for cancellation of registration of Design
-4
No.190336 in the name of the respondent mainly on the ground '
that the design has already been previously published in India
and abroad and on the ground that the design was not new or
original. The appellant primarily relied on a catalogue of the c
German Company and letter dated 10.9.2003 of the German
company addressed to Mis. IAG Co. Ltd. the holding company
'
of the appellant stating that the said German Company had
"
developed design No.2960-9010 in the year 1992 and the other
evidence relied on by the appellant was a document downloaded
D
from the internet 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 United Kingdom in the name of
..
M/s.Vegla Vereinigte Glaswerke Gmbh sometime in 1992. As
·1
against this the respondent filed an affidavit stating that the
German Company has been engaged in the manufacture of E
engraving rollers and no other goods and it was contended that
the company was not engaged in manufacture of the goods other
than engraving rollers. It was contended that the company never
manufactured engraved glass sheets by using engraved rollers.
The respondent also relied on the communication dated
F
>-·
,.
4.3.2004 of the German company confirming that the embossing
rollers covered by Design No.2950-910 had been sold to the
(
respondent on condition that all user rights available in India
.,
under Indian laws would vest exclusively in the respondent and
that the respondent would be entitled to exclusive user rights for G
at least five years. The German company was aware of the
-1·
registration of the Design No.190331 and it had no objection to
,.,
the design being marketed by the respondent herein. An affidavit
was also filed by the Liaison Executive of the respondent
company that he visited Germany and upon enquiry ascertained H
408
SUPREME COURT REPORTS
[2008] 7 S.C.R.
A that M/s. Vegla Vereinigte Glaswerke Gmbh had never
manufactured glass sheets of the design registered as Design
No.2022468 in the United Kingdom. The respondent also
objected to the admissibility of the materials alleged to have
been downloaded from the United Kingdom Patent Office. It
B was also contended that in absence of corroborative evidence,
such evidence cannot be tendered and it cannot be treated as
'
,,.
I>
admissible evidence. It was also contended that the German
Company only manufactured rollers but did not produce glasssheets prepared out of these rollers .
.
~
4. On the basis of the pleadings , learned Assistant
v
Controller of Patents and Designs framed following three issues
for determination:
(i)
Whether the design was not new er original in view
D
of the fact that the roller bearing the design is
published before the date of registration and the
registered proprietor is not owner of design.
(ii)
Whether the design was published outside India as
well as in India prior to the date of application.
E
(iii) Whether the registered design was in public domain
due to sale/use of the design prior to the date of
application of the registered proprietor.
The first two issues were decided against the respondent
F and the third issue was not adjudicated since the evidence by
-""
way of affidavit was not taken on record on technical reasons.
'
Hence, the Assistant Controller of the Patents and Designs set
aside the registration of the respOl'ldent. Aggrieved against this
order the respondent filed a regular appeal under Section 36 of
G the Act of 2000 before the High Court. Learned Single Judge
after consJdering the matter reversed the finding of the Assistant
Controller and dismissed the application filed by the appellant
for cancellation of registration of tht:l respondent herein.
'.> ---'
Aggrieved against this impugned order passed by learned
H Single Judge of the Calcutta High Court the present appeal was
'
>-
·'
BHARAT GLASS TUBE LIMITED v. GOPAL GLASS
WORKS LIMITED [A.K. MATHUR, J.)
filed by the appellant-complaint.
409
5. Wa'have heard learned senior counsel for the parties at
length and perused the record. Before we proceed to decide
A
on the merit of the matter, it would be profitable to refer to the
relevant provisions of the Act. It may be mentioned here that in
1911 the Designs Act was passed by the then British
B
Government in India. But with the advancement of science and
technology and the number of registration of the design having
increased in India, the Act of 1911 was amended wholesale by
the Parliament and this new Act known as Designs Act, 2000
came to be introduced in the Parliament and the same was C
passed as such. The statement of objects and reasons read as
under:
" STATEMENT OF OBJECTS AND REASONS
Since the enactment of the Designs Act, 1911
D
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
E
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
F
designs."
Section 2 of the Act of 2000 deals with the definitions and
the Controller has been defined in Section 2 (b) as follows:
" (b)"Controller" means the Controller-General of Patents,
G
Designs and Trade Marks referred to in section 3."
"Copyright" means the exclusive right to apply a design fo
any article in any class in which the design is registered. Section
2 (d) defines design which reads as under :
H
410
A
B
c
SUPREME COURT REPORTS
[2008] 7 S. C.R.
"(d) "design" means only the features of shape,
configuration, pattern, ornament or composition of lines of
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 sub-section ( 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© of
section 2 of the Copyright Act, 1957 (14 of 1957);"
D
Section 2 (g) defines original which reads as follows:
E
F
G
H
"(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;"
Section 2 (i) defines 'prescribed' which means prescribed
by rules made under this Act. Section 2U) defines ' proprietor of
a new or original design' which reads as under:
" U) "proprietor of a new or original design".-
(i)
where the author of the design, for good
consideration, executes the work for some other
person, means the person for whom the design is so
executed;
(ii)
where any person acquires the design or the right to
apply the design to any article, either exclusively of
any other person or otherwise, means, in the respect
and to the extent in and to which the design or rig,llt
has been so acquired, the per-son by whom the design
or right is so acquired; and
BHARAT GLASS TUBE LIMITED v. GOPAL GLASS
411
WORKS LIMITED [A.K. MATHUR, J.]
J.
(iii) in any other case, means the author of the design; A
and where the property in or the right to apply, the
design has devolved from the original proprietor upon
any other person, includes that other person."
Section 3 deals with the Controller and otf, ~1 officer';.
Section 4 deals with the prohibition of registration of certain
B
+
designs which has relevant bearing on our case. It reads as
follows:
"4. Prohibition of registration of certain designs.-A design
whichc
(a)
is not new or original; or
(b)
has been disclosed to the public anywhere 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,
D
or where applicable, the priority date of the application
for registration; or
(c)
is not significantly distinguishable from known
designs or combination of known designs; or
(d)
comprises or contains scandalous or obscene E
matter,
shall not be registered."
Section 5 deals with the application for registration of
F
>-
designs. Section 6 deals with the registration to be in respect
,
of particular article. Section 7 deals with publication of particulars
of registered designs. Section 9 deals with the certificate of
registration which reads as under :
" 9. Certificate of registration.- (1) The Controller shall G
grant a certificate of registration to the proprietor of the
-~·
design when registered.
(2) The Controller may, in case of loss of the original
~
certificate. or in any other case in which he deems it
expedient, furnish one or more copies of the certificate."
H
412
SUPREME COURT REPORTS
(2008] 7 S.C.R.
A
Section 10 deals with register of designs which reads as
.......
follows:
" 10. Register of designs.- (1 )There shall be kept at the
patent office a book called the register of designs, wherein
B
shall be entered the names and addresses of proprietors
of registered designs, notifications of assignments and of
transmissions of registered designs, and such other matter
...
as may be prescribed and such register may be
maintained wholly or partly on computer floppies or
diskettes, subject to such safeguards as may be
c
prescribed.
(2) Where the register is maintained wholly or partly on
computer floppies or diskettes under sub-section (1 ), any
reference in this Act to any entry in the register shall be
D
construed as the reference to the entry so maintained on
computer floppies or diskettes.
(3) lheregister of designs existing at the commencement
of this Act shall be incorporated with and form part of the
register of designs under this Act.
E
(4) The register of designs shall be prima facie evidence
of any matter by this Act directed or authorized to be
entered therein."
Section 11 deals with copyright on registration which reads
F as under:
-<
" 11. Copyright on registration. -(1) When a design is
'
registered, the registered proprietor of the design shall,
subject to the provisions of this Act, have copyright in the
design during ten years from the date of registration.
G
(2) If, before the expiration of the said ten years,
appffcation for extension of the period of copyright is made
to the Controller in the prescribed manner, the Controller
~--
shall, on payment of the prescribed fee, extend the period
of copyright for a second period cf five years from the
......
H
expiration of the original period of ten years."
BHARAT GLASS TUBE LIMITED v. GOPAL GLASS
413
WORKS LIMITED [AK. MATHUR, J.]
Section 12 deals with restoration of lapsed designs which A
reads as under :
"12. Restoration of lapsed designs.- (1) Where a design
has ceased to have effect by reason of failure to pay the
fee for the extension of copyright under sub- section (2) of B
•
section 11, the proprietor of such design or his legal
_..
representative and where the design was held by two or
more persons jointly, then, with the leave of the Controller
one or more of them without joining the others, may, within
one year from the date on which the design ceased to
have effect, make an application for the restoration of the c
design in the prescribed manner on payment of such fee
as may be prescribed.
(2) An application under this section shall contain a
statement, verified in the prescribed manner, fully setting D
out the circumstances which led to the failure to pay the
......
prescribed fee, and the Controller may require from the
applicant such further evidence as he may think
necessary."
Section 17 deals with inspection of registered designs E
which reads as under:
" 17. Inspection of registered designs.- (1) During the
existence of copyright in a design, any person on furnishing
such information as may enable the Controller to identify
F
/.-
the design and on payment of the prescribed fee may
"
inspect the design in the prescribed manner.
(2) Any person may, on an application to the Controller
and on payment of such fee as may be prescribed, obtain
a certified copy of any registered design."
G
Section 18 deals with information as to existence of
~~
copyright which reads as under:
" 18. Information as to existence of copyright.- On the
-.i
request of any person furnishing such information as may H
414
SUPREME COURT REPORTS
[2008] 7 S.C.R.
A
enable the Controller to identify the design, and on payment
of the prescribed fee, the Controller shall inform such
person whether the registration still exists in respect of the
design, and, if so, in respect of what classes of articles,
and shall state the date of registration, and the name and
B
address of the registered proprietor.
~
Section 19 deals with cancellation of registration which
•
reads as under:
"19. Cancellation of registration.- (1) Any person interested
c
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:-
(a)
that the design has been previously registered in
India; or
D
(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
E
(d)
that the design is not registerable under this Act; or
(e)
that it is not a design as defined under clause (d) of
section 2.
(2) An appeal shall lie from any order of the Controller under
F
this section to the High Court, and the Controller may at any
time refer any such petition to the High Court, and the High Court
~
'
shall decide any petition so referred."
Section 22 deals with piracy of registered design. Chapter
VI deals with fees, notice of trust not to be entered in registers
G etc. with which we are not concerned. Section 32 in Chapter VI I
deals with the powers and duties of the Controller which reads
as follows:
" 32. Powers of Controller in proceedings under Act.-
Subject to any rules in this behalf, the Controller in any
H
proceedings before him under this Act shall have the
~HARAT GLASS TUBE LIMITED v. GOPAL GLASS
415
WORKS LIMITED [A.K. MATHUR, J.]
powers of a civil court for the purpose of receiving
A
evidence, administering oaths, enforcing the attendance
of witnesses, compelling the discovery and production of
documents, issuing commissions for the examining of
witnesses and awarding costs and such award shall be
executable in any court having jurisdiction as if it were a
B
_...._
decree of that court."
Section 36 deals with the appeals to the High Court.
Section 37 in Chapter VIII says that evidence can be tendered
by affidavit or it can be by way of viva- voice in lieu of or in
addition to evidence by affidavit and the party may be allowed c
to cross-examine on the contents of the affidavit. Section 44
deals with reciprocal arrangement with the United Kingdom and
other convention countries or group of countries or intergovernmental organizations. The Central Government in
exercise of power conferred under sub-section (3) of section 1 D
of the Act of 2000 framed the rules known ·as The Designs Rules,
2001 (hereinafter to be referred to as the Rules of 2001 ). It has
framed necessary rules to implement the provisions of the Act.
Rule 11 says how the application is to be made for registration
and says the mode of submission of application for registration.
E
Rule 29 deals with the procedure how the cancellation of the
registration can be made and a detailed provision has been
made for implementation of Rule 29 of the Rules of 2001. Form
of application for applying for registration is also provided as
,,_
Form 1. Form 8 deals with the petition for cancellation for the
F
"
registration of a design. This is the whole background of the
Act.
6. In fact, the sole purpose of this Act is protection of the
intellectual property right of the original design for a period of
ten years or whatever further period extendable. The object G
behind this enactment is to benefit the person for his research
.. ~
and labour put in by him to evolve the new and original design .
This is the sole aim of enacting this Act. It has also laid down
~
that if design is not new or original or published previously then
such design should not be registered. It further lays down that if H
416
SUPREME COURT REPORTS
[2008] 7 S.C.R.
A
it has been disclosed to the public anywhere 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 then such design will not
be registered or if it is found that it is not significantly
B distinguishable from known designs or.combination of known
designs, then such designs shall not be registered. It also
4.
provides that registration can be cancelled under section 19 of
the Act if proper application is filed before the competent
authority i.e. the Controller that the design has been previously
c registered in India or published in India or in any other country
prior to the date of registration, or that the design is not a new
or original design or that the design is not registerable under
this Act or that it is not a design as defined in clause (d) of section
2. The Controller after hearing both the parties if satisfied that
D the design is not new or original or that it has already been
registered or if it is not registerable, cancel such registration
and aggrieved against that order, appeal shall lie to the High
Court. These prohibitions have been engrafted so as to protect
the original person who has designed a new one by virtue of his
E
own efforts by researching for a long time. The new and original
design when registered is for a period of ten years. Such original
design which is new and which has not been available in the
country or has not been previously registered or has not been
published in India or in any other country prior to the date of
registration shall be protected for a period of ten years.
F Therefore, it is in the nature of protection of the intellectual
--4
'
property right. This was the purpose as is evident from the
statement of objects and reasons and from various provisions
of the Act. In this background, we have to examine whether the
design which was registered on the ap~lication filed by the
G respondent herein can be cancelled or not on the basis of the
application filed by the appellant. In this connection, the law of
Copyright and Industrial Designs by P.Narayanan (Fourth
~ ....
Edition), Para 27.01 needs to be quoted.
--
H
" 27.01. Object of registration of designs. The protection
'
BHARAT GLASS TUBE LIMITED v. GOPAL GLASS
417
WORKS LIMITED [A.K. MATHUR, J.]
~
given by the law relating to designs to those who produce A
new and original designs, is primarily to advance industries,
and keep them at a high level of competitive progress.
" Those who wish to purchase an article for use are often
influenced in their choice not only by practical efficiency B
but the appearance. Common experience shows that not
~
all are influenced in the same way. Some look for artistic
merit. Some are attracted by a design which is a stranger
or bizarre. Many simply choose the article which catches
their eye.