Thakur Dass and Another vs Messrs Sardar Trading Co. and Others

Shamsher Bahadur, J.—This petition was filed originally by Thakur Dass and his son Lakhbir Singh as partners of Messrs Fancy Shoulder Pad Makers u/s 51A of the Indian Patents and Designs Act, 1911 (hereinafter called the Act), for cancellation of the designs which the first respondent, Sardar Trading Company, got registered on the 13th November 1961. Thakur Dass died during the pendency of this petition and his name was struck off from the array of parties.

Both the petitioner firm and the first respondent manufacture shoulder pads which are used for padding in the tailoring of coats, and there is hardly anything in the finished products to distinguish one from the other. The label of the petitioner''s pad is styled as-"JANTA SHOULDEK PAD" and these words are inserted underneath the pictorial representation of a lion. "Janta Shoulder Pad" is described in the label to be "Fast to wash and dry clean-Best selection of tailors & drapers." The label is registered as a trade-mark. A number of these pads are placed in a carton, which is a cardboard box, on two sides of which there is a pictorial representation of a lion on which is written the expression "Trade Mark " Adjacent to this pictorial representation is the word "JANTA" written in big block letters. No claim is made for registration of there words or pictorial representations on the two sides of the carton, the cover of the petitioner''s carton, which was registered as a design on the 4th of March 1960, consists of three or four features. On the top of it is the pictorial representation of a lion which is described as a trade-mark. On the right side is the picture of a dressed person to show the utility of the shoulder pad. On the left side is the picture of the pad with the words "JANTA SHOULDER PAD" written on it. The product is described as "JANTA SHOULDER PAD-Fast to was and dry clean Best selection of tailors & drapers." It is claimed that the respondents get their designs, which are imitative of the petitioner''s registered with the Controller of Designs, Calcutta, on the 13th of November 1961.

The respondents also manufacture shoulder pads and on their label the words "JANTA SHOULDER PAD" are inscribed. The pictorial representation of the lion is not on this label. The petitioner complains that the respondent''s carton, in which numerous shoulder pads can he packed, has identically similar designs as are to be found on the petitioner''s carton. The respondent firm got these designs on five sides of the carton registered, as I have said before, on the 13th of November 1961. The petitioner in the first instance filed a suit for infringement of trademark in a Court at Delhi and when on the 6th of February 1963 during the pendency of that suit designs on the carton of the respondent were shown to have been registered with the Controller of Designs, Calcutta, the petitioner felt obliged to bring the present action for cancellation of those designs u/s 51-A of the Act.

"Design" is defined in sub-section (5) of section 2 of the Act to mean "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 is 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 section 2(1)(u) of the Trade and Merchandise Marks Act, 1958 (43 of 1958)". It is necessary also to notice the definition of "article" in sub-section (2) of section 2 of the Act. "Article'''' means "any article of manufacture and any substance, artificial or natural, or partly artificial and partly natural." Part II of the Act provides the machinery for registration of designs and under subsection (1) of section 43 "The Controller may, on the application of any person claiming to be the proprietor of any new or original design not previously published in India, register the design under this Part.

Section 51-A, under which this application is moved, says that-

Any person interested may present a petition for the cancellation of the registration of a design.

(a) at any time after the registration of the design, to the High Court on any of the following grounds, namely :

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

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Though the point has not been specifically raised in the petition, it is contended by Mr. Anoop Singh in the first instance that the Controller could only register designs and what the respondent firm got registered were merely drawings on the carton in which the shoulder pads were packed. The "article" in this case is the shoulder pad and what can be protected under the Act is any design on it. The definition of "design" is clear on the point that the object of protection is any particular shape, configuration, pattern or ornament "which is the finished article" are the striking features appealing to the human eye A carton in which the shoulder pads are packed is certainly not a finished article and consequently there could be no registration of the drawing, figures or letters on the five sides of the carton. The impugned designs which were got registered by the respondent firm have no reference at all to the finished product and there is certainly nothing new or novel in the design of the five facets of the carton in which the shoulder pads are packed. It is noticeable that there must be something striking to the eye in the finished product before the Controller could be asked to register a design.

Mr. Anoop Singh has cited three English authorities in support of his contention. The first is a decision of the Court of Appeal in Dover Ltd. v. Nurnberger Celluloaiwaren Fabrik Gebruder Wolff 27 R.P.C. 498. Lord Justice Buckley, who delivered the judgment of the Court of Appeal, observed at page 503 of the report.

A design means something which is applicable to an article by printing, painting, etc, or any other means whatever, manual, mechanical, or chemical. Design means, therefore, a conception or suggestion or idea of a shape or of a picture or of a device or of some arrangement which can be applied to an article by some manual, mechanical, or chemical means. It is a conception, suggestion, or idea, and not an article, which is the thing capable of being registered.

It is argued that there must be some suggestion or idea which is appealing to the eye which can be called a design. It is certainly not an article which is capable of being registered under the Act. The object of the Act is to protect from piracy original concepts and ideas of a design in the final products. By no stretch of imagination can the drawings on the carton be called designs as defined in the Act. A similar view was expressed by Parker, J., in Pugh v. Riley Cycle Company Ld. 29 R.P.C. 190. He said at page 202 :

A Design to be remittable under the Act must be some conception or suggestion as to shape, configuration, pattern, or ornament. It must be capable of being applied to an article in such a way that the article, to which it has been applied, will show to the eye, the particular shape, configuration, pattern, or ornament, the conception or suggestion of which constitutes the Design.

The last case relied upon by the counsel for the petitioner is an authority of the House of Lords in King Features Syndicate Incorporated and Frank Cecil Betts v O & M Kleeman Ld. 52 R.P.C. 207. reference may be made to Lord Romer''s judgment at page 222, where it was observed by his Lordship that -

It is quite plain that the drawings are not themselves designs capable of registration under the Patents and Designs Act. No one could rightly say that by these drawings the author had applied features of shape or configuration to any article by some industrial process or means.

These English authorities show clearly and indeed the matter is placed beyond any shade of controversy by the definition of "design" itself that a registrable design must be some feature or aspect which catches the human eye and has become the characteristic of the finished article itself.

The cogency and reasoning of Mr. Anoop Singh''s contentions are not denied by the learned counsel for the respondent. All that is submitted on behalf of the respondent is that the plea is not definitely raised in the petition and the petitioner has himself got registered a design which is hit by the provisions of the Act. The objection raised by Mr. Anoop Singh is of fundamental importance and can certainly be raised. The counsel, however, frankly concedes that if the design of the respondent cannot be registered, that of the petitioner is also liable to cancellation. I need not refer to the second point raised by Mr. Anoop Singh that there is nothing new, original, or novel about the design of the respondent as I am inclined to agree with him that the registration did not relate to designs as defined in the Act. In this view of the matter, this petition must succeed and the registered designs of the first respondent would stand cancelled. It is not for me to cancel the registered design of the petitioner also as I am not called upon to do so in these proceedings. This could be done in appropriate proceedings. I would leave the parties to bear their own costs.

Appeal allowed