TMI Blog1983 (5) TMI 261X X X X Extracts X X X X X X X X Extracts X X X X ..... f the Schedule. The application was numbered as 146498 dated January 5, 1978. Subsequently, the said design was registered with effect from January 5, 1978 and a certificate to that effect was issued on October 19, 1978. A photostat copy of the said certificate together with the Design of the match box is filed in Court, The said design is valid and subsisting on the Register of Designs maintained in the office of the Controller of Patents and Designs, Calcutta. Wimco allege that from May 1978 onwards they started applying the said pattern/design to Ship Kapas, Tekka brands of their match boxes and started marketing the same. Within a short item after May 1978, the aesthetic appearance and utility value of match boxes bearing the said design/pattern on their match boxes was liked and recognised by the public at large. The sales of such match boxes bearing the said pattern design have tremendously gone high and have exceeded ₹ 10 crores in the year 1979 and ₹ 20 crores in the year 1980. Wimco believe that the sudden rise in the sale of the said matches is mainly due to the said pattern [design which has aesthetic appearance and utility value. By, virtue of its novelty, o ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... from the use of the distinctive trademark ROLLER . Due to acute scarcity of soft-wood timber for match boxes the Government of India thought it fit to encourage the use of card board boxes instead of veneers and announced concessions and incentives for the manufacturers using card board fii place of softwood. M/s. Thilagraj Match Works, the other petitioner, (for short called Thilagraj) is manufacturing and marketing card board matchboxes bearing the trade mark ROLLER under license arrangement with Meena. It is then averred that Wimco had made a fraudulent claim before the Controller of Patents and Designs, Calcutta, while claiming itself to be the proprietor of a new or original design not previously published in India and it was on the basis of such false claim that Wimco obtained the registration of Design No. 146498 dated January 5, 1978. The striking and igniting surface dots on the side walls of cardboard match boxes were well-known and published prior to the fraudulent claim on the part of Wimco. It is specifically pleaded that the perusal of Indian Patents Specification No. 29046 dated September 17, 1942, which was accepted on. April 3, 1943 and published on May 19, 194 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the affidavit and counter-affidavit by Shri J. M. Kaul and the other party filed affidavits in the affidavits of Shri S. Maheshwaran, partner of Thilagraj. At the stage of disposal of application for interim relief, Shri S. Maheshwaran offered himself for cross-examination. He was cross-examined on November 16, 1981 by the Counsel for Wimco. I also allowed the cross-examination of Shri J. M. Kaul and Shri S. Maheshwaran at the trial and they were subjected to cross-examination on April 29, 1983. I will deal with the evidence under the respective issues. (5) Issue NO. 1 I may first notice some relevant statutory provisions. A design is defined in Section 2(5) of the Act in the following terms : Design means only the features of shape configuration, pattern or ornament applied to any article by any industrial process or means whether manual, mechanical or Chemical, separate or combined, which in the finished article- appeal to arid 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 T ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he certificate of registration of the Design No. 146498 dated January 5, 1978 certifies that the Design of which a copy is annexed thereto, has been registered as of the number and date given above in class 5 in respect of the application of such design to match boxes in the name of Wimco in pursuance of and subject to the provisions of the Act and the Designs Rules, 1933. The Copyright has been extended for the second period up to January 5, 1988 and also for the third period up to January 5, 1993. The sheets are annexed with the certificate: one sheet contains the prospective view and the other sheet contains the side view . It. does not indicate whether the novelty resides in the shape and configuration of the match box or whether in the pattern of the friction application on the panels of the match box. Wimco did not specifically state before the Controller as to on what ground the design sought to be registered was claimed to be original or novel. Wimco should have endorsed on the application and of each of the representations a brief statement of the novelty they claimed for their design though it was optional. There is an element of duty to clearly define the design sough ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rounds, namely : (I)that the design has been previously registered in India, or (II)that it has been published in India prior to the date of registration; or (III)that the design is not a new or original design; or (B)within one year from the date of the registration, to the Controller on either of the grounds specified in sub-clauses (i) and (ii) of clause (a). (2)An appeal shall lie from any order of the Controller under 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. The cancellation is sought in the petition on the grounds that the design has been published in India prior to the date of its registration and that the design is not a new or original design. The registration of the design is on the application of any person merely claiming to be the proprietor of any new or original design not previously published in India. Under the scheme of the Act there is no provision for notice to the public regarding the registration of a design or for opposition by the public to the registration of the design. Even an inspection of the Register of Designs is not ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... It says this. The object of the invention is to provide a casing for a match box which will protect the match box whilst it is carried in the pocket. The casing itself will be made of leather or leather substitute which will be stiff enough to act as a protection and would be a sufficiently wear-resisting nature to give prolonged life to the match box and indeed to a succession of match boxes. The container casing will also preferably have an aperture or apertures at the side or sides to expose the match striking and igniting surface carried by the match box. Improvements in the container are then specified. It then states that in placing the match box into position in this container the slide is removed from the matchbox with. the contained matches and the outer sheath of. the match box is slipped into the space between the front and the back of the casing,with the elastic spring inside the match box sheath. The match box outer sheath is pushed down until its lower edge is against the inner side of the bottom of the contraire casing. The match box slide containing the matches is then pushed in and its lower edge engages the loop of the elastic. The elastic is stretched as the slid ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he 'front view'. It is a view of the striking panels of the match box. It is to be judged by the ocular test with the anticipated design. The production of the original article is not necessarily required. If the anticipation of the design in suit can fairly be found within the four corners of the specification as applied to the earlier article it will follow that the design has been previously published. The side pannel of the match box marked 17 as the igniting surface is shown in figure-1 and figure-2 of the specification no. 29046 of 1942. The pattern is identical with the registered design of Wimco as shown both in the 'perspective view' and in the 'front view' with the two sheets attached with the certificate of registration of the design. The second objection is that the specification No. 29046 relates to container of leather which is in class 6 whereas Wimco's design is registered in Class 5 and thus there is no pre-publication in the class in which the registration has been obtained by Wimco. Reference is made to paragraph 85 of the Instructions for the Guidance of Inventors and Applicants for the grant of Patents and for the Registration of Des ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... large and this constitutes pre-publication. (12) The second publication is by SM-1 attached with the affidavit of Shri S.Maheshwaran dated May 25,1981. SM-1 is a matchbox made in Sweden by J.John Master Company Ltd., London, with the trade-mark Ship as used by Wimco. The side panels of this match box contains the identical pattern in rectangular form with multiple diamond-shaped spots with the registered Design of Wimco. Shri S. Maheshwaran deposes that during the period 15th June, 1976 to 28th July, 1976 he had visited various countries including United Kingdom, Germany, France, Amsterdam, Greece, Finland, Japan, Bangkok and Singapore for purposes of export promotion and to acquire knowledge with regard to modern methods of production. He says that the intermittent type friction application was found to be existing on card board match boxes during his visit abroad, that he had also collected card board matchboxes incorporating such features, and at least one such match box out of the many such match boxes which he had Collected and brought to India is still with him and he produced it as SM-1. Mr. Maheshwaran was subjected to cross-examination at the interim stage on Novem ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... g of the strip and therefore he bought them since it was a new item and it interested him as a manufacturer. He was called upon to produce the 11 match boxes of the type of SM-1 and he asked for time to check up. It is then that six more match boxes, of the type of SM-I were filed along with the affidavit dated November 23, 1981. Match boxes as SM-1 are deposed as having been brought in India in 1976 and distributed .to various other manufacturers. The other skillets containing the identical design as mentioned in the written statement and annexed thereto were received by the witness after the registration of the design and during the pendency of the suit and have been so deposed by Shri Maheshwaran. He says that the skillets Exts. Pi and P2at pages 15 and 16 of the file were sent by the German Company called Goebel in' 1979 and the skillets Exts. P4 and P5 at pages 18 and 19 were also sent by Goebel in 1979. Skillets annexed to the written statement were received from England during the pendency of the suit and they are collectively marked as Ext. P-9 The identical design was being applied by the Swedish Company on their matchboxes in the year 1976, as found above. Shri Mahesh ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... t he tenders in evidence one original issue of each of Newsletter and Vesta , Exts. P1O and P11 respectively. He further deposes that the subscription of each of the magazines is 3 per year apart from shipping charges, that he can-get evidence from the publisher or from the bank showing that he subscribed to those magazines in the. year 1977 and that he will write to the bank and get information if they have kept the records. With/the supplementary affidavit dated November 23, 1981, Shri S. Maheshwaran filed a certificate dated November 20, 1981 from the State Bank of India, Sivakasi that a demand draft No. 041823 for 2/50 was issued by them on March 23, 1977 to M/s. Pioneer Match Works, Sivakasi in, favor of the British Match Box and Booklet Society towards subscription for their magazine NEWSLETTER payable at their London Office. The original letter dated May 3, 1977 from the British Matchbox Label and Booklet Society acknowledging the receipt of . 2-50 along with the original receipt is also placed on the record along with this affidavit. Shri Maheshwaran deposes that he is one of the directors of M/s Pioneer Match Works, Sivakasi. The original receipt for the subscrip ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ute anticipation. Lord Evershed, M. R. said : '......THUSapproahing the,matter, I have for my part come to the clear conclusion that the design was not published by Clarice Jones' specification. To conclude otherwise would, in my judgment, at least require that somewhere in the specification the design or something substantially the same as the design was described with reasonable clarity on a fair reading of the document. 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 (1862) 31 L. J. (Ch.) 457 at p. 463 : the antecedent statement must, in order to invalidate the subsequent 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... #39;s Design Application , 1979 Rpc 197(2); G. Gottsohalck Co. v. H. Velez Co., 1936(53) Rpc 403(3); Charles Henry Nevill and others v. John Bennett and Sons, 15 Rpc 412(4) and Walker, Hunter and Co. v. Falkirk fron Company, 4 Rpc 390(5). Because of the definition in Section 2(5) of the Act, the features of shape, configuration, pattern and ornament when applied to an article are design. What actually constitutes the design is, therefore, that peculiar combination and arrangement of lines which give such features. This is what has been laid in those cases that a design for a pattern may consist of a mere arrangement of straight lines or stripes or a pattern on the border of the shawl. It may be a printed or woven or embroidered design on textile goods or it may be in checks or designs, but these must be new or original. The design may be applied to any kind of article but some novelty or originality must exist in a substantial degree otherwise it would paralyse the industry to make the design a trap for honest traders. There is no novelty or originality as the identical design has already been applied to the match boxes. I have already discussed at length the evidence of pre-pub ..... X X X X Extracts X X X X X X X X Extracts X X X X
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