Anchor Health And Beauty Care Pvt. … vs The Controller Of Patents And … on 19 May, 2011

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/F.J(2)


                    IN THE HIGH COURT AT CALCUTTA
                          SPECIAL JURISDICTION
                             ORIGINAL SIDE



PRESENT :

THE HON'BLE JUSTICE PATHERYA



AID No.9 of 2008


            ANCHOR HEALTH AND BEAUTY CARE PVT. LTD.

                            VERSUS

          THE CONTROLLER OF PATENTS AND DESIGNS & Another.




FOR THE APPELLANT     : Mr. Ranjan Bachwat, Adv.,
                        Mr. Sayantan Basu, Adv.,
                        Mr. Sourabh Maitra, Adv.


FOR THE RESPONDENT : Mr. P. C. Sen, Sr. Adv.,

No.2                 Mr. Rudraman Bhattacharyya, Adv.,
                     Mr. Firoze Edulji, Adv.



HEARD ON              : 11-09-08, 20-09-10, 22-11-10, 07-12-10, 23-12-10,
                        07-01-11, 21-01-11, 04-02-11, 15-02-11 and
                        22-02-11.



JUDGMENT ON           : 19th May 2011



PATHERYA, J. :
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This is an appeal filed from order dated 29th July 2008 passed by the

Controller thereby dismissing the appellant’s application for cancellation.

The case of the appellant is that an application was filed for cancellation of

respondent’s registered design 176343 which was registered in Class-3 on 4th

May, 1998. There was nothing new or original in the said design and variation, if

any, was only a trade variation and functional. In fact, in 1997, similar designs

had been registered. On the ground of prior publication the registered design of

May, 1998 was also liable to be cancelled, as the design of the neck of the

toothbrush registered in 1997 was the same as that registered in May, 1998.

Similarly, for the same reason the handle of the registered design of May, 1998

could not have been registered. The bristles of the registered design of May, 1998

is identical to that of the registered design of 1996 and for the same reason such

registration was not permitted. In fact, neither the handle, neck nor bristles

which constitute a toothbrush has a distinctive eye appeal from the prior

published design nor is there any distinct addition to such design. Addition, if

any, is functional, therefore, there is no novelty. The bristles in the prior

registered design is long and short which can be described as zigzag bristles and

the registered design has also the same zigzag bristles. Therefore, there is no

novelty in the registered design of May, 1998. In the order of the Controller dated

29th July, 2008 no reasons have been given by the Controller to support the

finding that the toothbrush was identical. In fact, the said finding is incorrect as

the articles were not before him. As there was no novelty which must be
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substantial in design the registered design is nothing but a trade variant and in

view of being prior published could not have been registered. For the said

proposition, reliance is placed on 22 PTC Supp-I 151 and AIR 1981 Delhi 95. For

the proposition that if the features are functional no protection can be sought,

reliance is placed on 2000 PTC 83 para 50, Flexible toothbrushes have been in

the market for some time. Sections 4 and 5 of the Designs Act, is very clear.

Section 4 prohibits registration of certain designs. Section 5 deals with

application for registration of designs. Section 19 sets out the grounds for

cancellation.

The toothbrush manufactured by Colgate-Palmolive (Respondent Company)

is not a design under Section 2(d) of the Designs Act, 2000. Each part is

functional, therefore, the same is mechanical and could not have been registered.

The registered design of May 1998 on the ground of being prior published by the

United States Patent Department in 1997 could not have been registered. This is

also applicable to registered design No. 176345 as the US Patent was issued in

November, 1997, and the said design is nothing but ornamental. Therefore,

design Nos.176343 and 176345 on the ground of prior publication by the

international design W 098/01055 so also registered design 174511 ought to

have been cancelled.

Registered Design No.180362 is a mere trade variant and was registered in

September 1999. There is nothing original or new about the said design and in
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view of registered design Nos. 176343 and 176345 being prior published, must

be cancelled. Although the said points were argued before the Controller but the

same has not been considered. The test applied that the design features were not

identical, is not the correct test to be applied. For all the said reasons, therefore,

the order dated 29th July, 2008 be set aside.

Counsel for the respondent Company in opposing the said appeal submits

that in view of Section 22(3) of the 2000 Act, the said points agitated by the

appellant could have been taken as a defence in the Delhi suit filed on the

ground of infringement on 1st March, 2004. The cancellation application has

been filed on 23rd July, 2004 and an order was passed by the Delhi High Court

on 29th August, 2005. Sections 6(3) and 6(4) of the Designs Act permits a

registered proprietor of a design in an article to register the design in respect of

other articles.

The grounds on which the application for cancellation was filed is

mentioned in the order of the Controller. In respect of Issue No.1 for lack of

documentary evidence the issue has been decided in favour of the appellant. The

second Issue of prior publication has not been accepted. In respect of Issue No.3

the case of mere trade variant has not been accepted. As no evidence was

produced in respect of Issue No.4 to counter the contention that the registered

design was not new or original the same went in favour of the respondent. The

fifth Issue being converse to the case of prior publication was held against the
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appellant and the sixth Issue was also held in favour of the respondent. Each of

the issues has been dealt with separately and it has been found that registered

design Nos.176343 and 174511 are different from each other. Although the

appellant has craved leave to refer to the statutory provisions of the US Law and

Rules with regard to registration of design, no such rule has been produced.

Therefore, it is not from the date of application that the design comes in the

public domain in the U.S. but will take effect from the date of registration, i.e., in

1999 and 1995 in respect of design Nos.417960 and 360981, respectively.

Registered design No.174511 defers from the designs of which cancellation is

sought. Admittedly, design No.174511 has no rib, the sidelines are missing and

the bristle pattern is also different. In the US registered design No.360981 the

handle pattern is different so also the ribs and bristles pattern. Design

No.417960 was registered in December, 1999. Therefore, none of the US designs

were prior published except 360981 which in any event cannot be construed as

prior published and will have no application to the registered design in respect of

which cancellation is sought as each of them was prior published to the US

designs. In design No.386313 the bristles are different and, admittedly, there are

no ribs and there are only etchings. Therefore, the appellant as complainant has

not discharged its onus in view of its pleadings in paragraph 13 of the affidavit

affirmed by Mr. Mayur S. Gala in January, 2009. In respect of the registered

Trisa design novelty was claimed in the shape, configuration and pattern of the

toothbrush. The Controller has considered all materials and this will be evident

from his order which is not perverse and calls for no interference. Reliance is
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placed on 1959 RPC 347; 1959 RPC 240; and 42 RPC 443. 2000 PTC 82, is

distinguishable as it was a case of passing off action and the Design Act was not

being considered so also AIR 1981 Delhi 95 is distinguishable as the only finding

therein is that no skill was involved.

The cancellation application is a counter-blast to the Delhi suit. These

points could have been taken as a defence. The Controller has considered all

materials and the case of puffing and functional has not been accepted nor the

case of trade variant.

In reply, Counsel for the appellant submits that the Controller has not

considered Section 22(3) of the Design Act, 2000. High Court cannot cancel

registration of a design. Section 6 of the 2000 Act is not applicable. The last

registered design 180362 of 1999 in any event stands cancelled in view of the

designs 176343 and 176345 being prior published. Registered design No.176343

was prior published in view of W.O. 1998/001055, which was registered in

January 1998. Section 2(d) of the 2000 Act has defined design as follows:- S.2

(d) ” design” means only the features of shape, configuration,
pattern, 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 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
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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

(c) of section 2 of the Copyright Act, 1957 o (14 of 1957 )”

Rule 11 (3) of the 2001 Rules as also Form-I mentioned thereunder and

Rule 35 of the 1911 Rules and Form-15 mentioned thereunder is same and has

not undergone any change. 42 RPC 443 is not applicable as there is nothing new

or original in the toothbrush in question. 1959 RPC 347 was not a case of

principles of construction.

Having considered the submissions of the parties in view of registered

design Nos. 176343 and 176345 being prior published, design 180362 could not

have been registered and therefore the findings of the Controller in respect

thereof cannot be sustained and is accordingly set aside. The bristle though

different from those in design 176343 and 176345 is a trade variant and

functional. Accordingly AID 9 of 2008 is allowed.

(Patherya, J.)
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Later:

Stay prayed for is considered and refused.

( Patherya, J. )