Bharat Glass Tube Limited v. Gopal Glass Works Limited 2008 (37) PTC 1 (SC)

Bharat Glass Tube Limited v. Gopal Glass Works Limited

2008 (37) PTC 1 (SC)

Brief 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.
• 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.
• 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.
• Previous Proceedings: Controller of Patents & Designs and High Court of Calcutta

Issues framed by the Controller:

1. Whether the design was not new or original in view of the fact that the roller bearing the design is published before the date of registration and the registered proprietor is not owner of the design;
2. Whether the design was published outside India as well as in India prior to the date of application; and
3. 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 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.
• Single Judge of the Hon’ble 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.

Supreme Court’s Observations:

• The object behind Designs Act, 2000 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.
• The idea is that the design has to be registered which is sought to be reproduced on any article. Therefore, both the things are required to go together, i.e. the design and the design which is to be applied to an article.
• Section 4 which is couched in the negative terms, says that the design which is not new or original cannot be registered. Therefore, the question is 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 it 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.
• The pattern might be similar, but what matters is the ultimate visual appeal of the products, which is totally different here.

Video Summary - https://www.youtube.com/watch?v=Mcn08pivylU&list=PL-1DBVyVi7EaCojbQa5_XKBVJqA1y1REh&index=6