1983 (5) TMI 261 - HC - Indian Laws

Summary

Issues Involved:
1. Whether the Design No. 146498 dated January 5, 1978, is liable to be cancelled on the grounds mentioned in the application for cancellation under Section 51-A of the Designs Act, 1911.
2. Whether the defendant is infringing the plaintiff's registered design.
3. Relief.

Issue-wise Detailed Analysis:

Issue No. 1: Whether the Design No. 146498 dated January 5, 1978, is liable to be cancelled on the grounds mentioned in the application for cancellation under Section 51-A of the Designs Act, 1911.

The court first examined the statutory provisions relevant to the case, particularly the definitions of "design" and "proprietor of a new or original design" under Sections 2(5) and 2(14) of the Designs Act, 1911, respectively. Section 43 allows the Controller to register a new or original design not previously published in India. Section 51-A provides for the cancellation of a registered design on grounds including prior publication and lack of novelty or originality.

The court noted that Wimco did not specifically state the novelty claimed for their design before the Controller. The novelty claimed by Wimco's counsel was in the grooves and projections on both sides of the matchbox panels and the ornamental surface pattern. However, the court found that these features were merely functional and mechanical devices, not novel or original.

The court then examined the evidence of prior publication, starting with Government of India Patent Office Specification No. 29046 dated September 17, 1942, which showed an identical pattern of striking and igniting surface dots on matchboxes. This constituted prior publication as it was available to the public and described with reasonable clarity.

Further evidence of prior publication was found in a matchbox (SM-1) made in Sweden by J. John Master & Company Ltd., which contained the identical pattern. Shri S. Maheshwaran's testimony and supporting documents established that these matchboxes were available in 1976, before Wimco's registration.

Additionally, publications in the magazines "NEWSLETTER" and "VESTA" before the registration date also showed the identical pattern. The court found that these magazines were subscribed to and circulated in India, constituting prior publication.

The court concluded that Design No. 146498 was not new or original and had been published in India prior to its registration. Therefore, the design was liable to be cancelled on both grounds.

Issue No. 2: Whether the defendant is infringing the plaintiff's registered design.

The court noted that the defendants had introduced matchboxes with an identical pattern/design as Wimco's registered design. However, since the court had already found that the design was liable to be cancelled, this issue did not arise. The court stated that if the design had not been cancelled, the defendants' matchboxes would have constituted an infringement.

Relief:

The court ordered the cancellation of Design No. 146498 dated January 5, 1978, under the Designs Act, 1911, and directed the Controller of Designs, Calcutta, to be informed accordingly. Consequently, Wimco's suit was dismissed. Each party was ordered to bear its own costs.

Conclusion:

The court's judgment comprehensively addressed the issues of prior publication and lack of novelty or originality, leading to the cancellation of Wimco's registered design and the dismissal of their infringement suit.