Holding

A design is considered new and original only if it has not been published or reproduced on the article before registration; the burden of proving otherwise rests on the challenger, and in the absence of such evidence the registration stands.

Summary

Bharat Glass Tube Ltd. sought cancellation of Gopal Glass Works Ltd.'s design registration (Design No. 190336) on the ground that the design was not new or original, alleging prior publication in Germany and the United Kingdom. The Assistant Controller cancelled the registration, but the Calcutta High Court set aside that order. On appeal, the Supreme Court examined the statutory definition of "design" and "new or original" under the Designs Act, 2000, emphasizing that a design must be applied to a finished article and judged by eye appeal. The Court held that the burden of proving lack of novelty lies on the challenger and that no evidence showed the design had been reproduced on glass sheets abroad or in India before registration. Consequently, the design was deemed new and original, the Assistant Controller's cancellation was erroneous, and the High Court's decision was affirmed.

Issues considered

The design is not new or original because the roller bearing the design was published before registration and the registered proprietor is not the owner of the design.
The design was published outside India or in India prior to the filing date.
The design was in the public domain due to sale or use before the application date.
Whether the burden of proof to show lack of novelty lies on the complainant.
Whether the visual (eye) appeal of the design on the finished glass sheet must be considered for originality.

Legislation cited

Designs Act, 2000s. 11, s. 19, s. 20, s. 2(d), s. 2(g), s. 4

Subjects

industrial designnew and originaleye appealburden of proofcancellation under s.19Designs Act 2000Designs Rules 2001intellectual propertyregistration of designsprior publication

Judgment

(2008] 7 S.C.R. 397

,,;.._
BHARAT GLASS TUBE LIMITED A
... v.
GOPAL GLASS WORKS LIMITED
(Civil Appeal No. 3185 of 2008)
MAY 1, 2008
. B
-""' (A.K. MATHUR AND ALTAMAS KABIR, JJ.)

Designs Act, 2000:
s. 2(d),2(g), 4, 11 rlw r.11 and Form-1 of Designs Rules,
2001 - 'Design' - Registration of - Purpose of - HELD: Is c
protection of intellectual property right of new and original
design and to benefit the person for his research and labour
put in by him to evolve the new and original design - The
design which is sought to be registered is to be applied to
finished article which may be judged solely by eye appeal - D
Name of article on which design is sought to be transcripted
has to be mentioned at the time of registration - Both the things
are required to be together, the design and article on which
design is sought to be applied - Design Rules, 2001 - r.11 rl
w Form 1 - Intellectual Property - Copy Right. E
s.20) - 'Proprietor' - Connotation of
s. 4 - Expression "new or original" - HELD: Means that
design which has been registered has been invented for the
) first time and it has not been published anywhere nor made F
known to the public.
s. 19 r/w r29 of Design Rules, 2001 - Cancellation of
Registration - Design registered in India on glass sheet -
HELD: Burden is on complainant to show that design which
has been registered in India was not original or new - This G
burden was not discharged - No evidence was produced that
'-I design was reproduced on glass sheet or it was prior registered
as such in India or any part of the World.- Order of Assistant
Controller canceling registration was rightly set aside by the
397 H
398 SUPREME COURT REPORTS [2008] 7 S.C.R.

A High Court - Design Rules, 2001 - r.29.
s. 37 - Affidavit evidence - Admissibility of - Evidence.
Words and Phrases:
Expressions 'design', 'eye appeal', 'new and original' and
8 'proprietor' - Connotation of in the context of Designs Act, 2000.

The respondent was in the business of
manufacturing and marketing of figured and wired glass
sheets since 1981. It claimed to be the originator of new
c and original industrial designs applied by mechanical
process to glass sheets. On an application by the
respondent u/s 51 of the Designs Act, 2000, the design of
the respondent was registered on 5.11.2002 as Design no.
190336, and it was to remain valid for a period of ten years
from the date of its registration. The respondent marketed
0
the glass sheets of the said design under the name of
'Diamond Square'. The respondent issued a notice on
21.5.2003 cautioning other manufacturers from infringing
its copyright of the said registered design. According to
the respondent, as in the meanwhile the appellant and its
E associate started imitating the said registered design, it
filed Civil Suit No. 1 of 2004 against the appellant, and
obtained a restraint order.
The appellant in turn filed an application u/s 19 of
F the Act before the Controller of Patents and Designs for
cancellation of respondent's registration of Design No.
190336 mainly on the ground that the design had already
been previously published in India and abroad and thus
it was not a new or original one. The appellant relied on a
G catalqgue of the German Company which had developed
Design No. 2960-9010 in the year 1992, and a document
downloaded from the official website of the Patent Office
of United Kingdom indicating registration of the design.
The stand of the respondent was that the German
H Company was engaged in the manufacture of engraving
,,
BHARAT GLASS TUBE LIMITED v. GOPAL GLASS 399
,;._ WORKS LIMITED

... rollers only and it never manufactured engraved glass A
sheets; that the said German Company had sold the
embossing rollers covered by Design No. 2960-9010 .to
the respondents on a condition that all user rights in India
'\-
under l~dian laws would vest exclusively in the
~ . respondent for at least five years; and that the Company B
which had its design registered in United Kingdom never
manufactured glass sheets. The Assistant Controller of
the Patents and Designs, accepted the case of the
appellant and set aside the registration of the respondent.
The appeal of the respondent was allowed by the High c
Court giving rise to the instant appeal.
Dismissing the appeal, the Court.
HELD: 1.1 The sole purpose of the Designs Act,2000
is protection of the intellectual property right of the original
).. D
design. The object behind this enactment is to benefit-the
person for his research and labour put in by him to evolve
the new and original design. Such original design which

- is new and which has not been available in the country or
has not been previously registered or has not been
published in India or in any other country prior to the date E
of registration shall be protected for a period of ten years.
[para 6] [415-F, G; 416-E]
1.2 'Design', as has been defined in section 2(d) of
,A the Act, means that a feature of shape, configuration, F
pf!ttern, 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,
and which is registered with the registering authorify for
being produced on a particular article by any industrial
G
process whether manual, mechanical or chemical or by
'-{
any other means which appears in a finished article and
which can be judged solely by eye appeal. The definition
of design read with application for•registration and Rule
11 with form 1 makes it clear that the design which is
H
400 SUPREME COURT REPORTS (2008] 7 S.C.R.
,_,\.,,

A registered is to be applied to any finished article which
may be judged solely by eye appeal. [para 8) [419-D-E] ...
1.3 A conjoined reading of the provisions of s.2(d)
and s.4 of the Act and Rule 11 of the Designs Rules, 2001
with Form 1 in which the application for registration is .,
B required to be given shows that a particular shape or
>
configuration is to be registered which is sought to be
produced on any article which will have visual appeal;
and the name of the article on which the design is sought
to be transcripted has to be mentioned at the time of
c registration. The respondent moved an application filling
Form-I stating that the roller which has been manufactured
by the German company with that design shall be
reproduced on the glass. Therefore, when the application
was filed by the respondent for registration, it was
D registered on the basis that the roller which will be used ...
by mechanical process will bring the design on a glass
which is registered. Therefore, what is sought to be
protected is the design which will be reproduced on the
glass by way of mechanical process and that design
E cannot be reproduced on glass by anybody else. There
is no evidence to show that the design in question which
is reproduced on the glass sheet was either registered in
India or in Germany or for that matter in United Kingdom.
[para 8) [419-E-F; 422-A-D]
_..
F Industrial Designs (Seventh Edition) by Russel- Clarke
and Howe, page 74 - referred to.
1.4 The concept of design is that a particular figure
conceived by its designer in his mind and it is reproduced
in some identifiable manner and it is sought to be applied
G
to an article. Therefore, whenever registration is required
then those configuration has to be chosen for registration ,._.
to be reproduced in any article. 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
H
BHARAT GLASS TUBE LIMITED v. GOPAL GLASS 401
WORKS LIMITED
,.L go together, i.e. the design and the design which is to be A
applied to an article. [para 8] [425-F-G]
+
2.1 The expression, "new or original" appearing in
Section 4 means that the design which has been
registered has not been published anywhere nor has it
,. been made known to the public. The expression, "new or B
..J. original" means that it had been invented for the first time
or it has not been reproduced by anyone. [para 8]
[419-8-C]
2.2 The burden was on the complainant to show that c
the design was not original or new. The burden was not
discharged by the complainant. It only tried to prove on
the basis of the letter of the German company that they
produced the rollers and sold it in market but it was
nowhere mentioned that these rollers have been
D
reproduced on the glass sheets by the German company
or by any other company.· [para 8] [420-B-C)
2.3 The complainant relied on the correspondence

-
of the German company which produced the rollers and
sold it to the respondent and it gave the proprietary right E
to the respondent company. 'Proprietor' as defined in
section 2 (j) of the Act means any person who acquires
the design or right to apply the design to any article, either
exclusively of any other person or otherwise, in respect
and to the extent in and to which the design or right has F
f... been so acquired. Therefore, this right to reproduce the
"' design on an article has been given by the German
company to the respondent. [para 8]
2.4 The expression 'new or original' in this context
has to be construed as to whether the design has ever G
been reproduced by any other company on the glass
sheet or not. There is no evidence whatsoever produced
'..{
by the complainant either before the Assistant Controller
or before any other forum to show that this very design
which has been reproduced on the glass sheet was H
402 SUPREME COURT REPORTS (2008] 7 S.C.R.

A manufactured anywhere in the market in India or in United
Kingdom. There is no evidence to show that these rollers
which were manufactured or originally designed by the
German company were marketed by the said company to
be reproduced on glass sheets in India or even in United
B Kingdom. The proprietorship of the design was acquired
by the respondent from the German company and there •
is no evidence on record to show that these rollers were
used for designing them on the glass sheets in Germany
or in India or in United Kingdom. [para 8] [420-C-F]
C 2.5 What is required to be registered is a design which
is sought to be reproduced on an article. It was the roller
which was designed and if it is reproduced on an article it
will give such visual feature to the design. The German
company only manufactured the roller and this roller
D could have been used for bringing a particular design on
glass, rexin or leather. But the instant case relates to the
reproduction of the design from the roller on glass which
has been registered for the first time in India and the
proprietary right was acquired from the German company.
E The contents of the letter of the German Company are very
clear. It shows that it was designed in 1992 and was
. marketed in 1993. It nowhere says that the design was
reproduced on a glass sheet. No evidence was produced
by the complainant that this design was reproduced on a
F glass sheet or it was registered in Germany or in India or
in any part of the world. As in the instant case the design ....
sought to be reproduced on a glass-sheet has been
registered and there is no evidence to show that this
design was registered earlier to be reproduced on glass
G · in India or any. other part of the country or in Germany or
even for that matter in United Kingdom, therefore, it is for
the first time registered in India which is new and original
design which is to be reproduced on glass sheet. Similarly,
the design which was registered in the name of the
respondent was not published in India or in Germany.
H
BHARAT GLASS TUBE LIMITED v. GOPAL GLASS 403
WORKS LIMITED
)-.
Therefore, it was a new and original design. [para 8-9] A
[420-F-H; 421-A-C; 425-H; 426-A-C; 427-G]
Mis. Domestic Appliances and Others v. Mis. Globe Super
Parts 1981 PTC 239; and The Wimco Ltd. Bombay v. Mis.
Meena Match Industries, Sivakasi & Ors. 1983 PTC 373;and
' ~ Gammeter v. Controller of Patents & Designs and others B
• A.l.R.1919 Cal.887 - referred to.
Dover Ltd. v. Nurnberger Celluloidaren Fabrik Gebr.uder
Wolff [1910] 27 R.P.C. 498; and Elzie Chrisler.Segar,
Deceased. V 0. & M. Kleeman Ld. ([1941] 58 R.P.C. 207 -
referred to.
c
3.1 As regards the eye appeal, one has to be very
cautious unless two articles are simultaneously produced
before the Court, then alone the Court will be able to
appreciate. But in the instant case no design reproduced D
on the glass-sheets was produced before the Assistant
Controller or the High Court or before this Court by the
·appellant to appreci<1te the eye appeal. The appellant.could
have produced the design reproduced on glass-sheet
which it claimed to have been manufactured in United
E
Kingdom or Germany. That could have been decisive.
[para 10] [427-H; 428-H; 429-A]
lnterlegoA.G. v. Tyco Industries Inc. [1988] 16 R.P.C. 343
- referred to.

..f.. 3.2 The evidence which was led by the appellant was F
a document downloaded from official website of the
United Kingdom Patent Office pertaicing to a patent that
may be applied to glass sheets. No evidence has been
produced to show that the Company .in United Kingdom
had reproduced this design on glass sheet in U.K. The G
Assistant Cohtroller has only observed that he has made
.. -{
a visual comparison of the U.K. registered design
No.2022468 with the impugned design No.190336 which
was prior published and he was satisfied that both the
designs make same appeal to the eye and there was H
404 SUPREME COURT REPORTS (2008] 7 S.C.R.

A sufficient resemblance between the two designs. This
was not accepted by Single Judge of the Calcutta High
Court and for the good reason. [para 14] [431-E-H; 432-A]
3.3 From the judgment of the High Court it appears
that in fact the patt&rn of the design which is reproduced
B
...•
by the respondent on the glass-sheet and the design and
the pattern of the United Kingdom shown in the document
by the complainant were not common. The affidavit sworn
by the Liaison Executive of the respondent shows that
he had ascertained from the proprietor of the design
c registered in United Kingdom and they have never
manufactured glass-sheet of the design registered. This
affidavit evidence of the respondent has remained un-
rebutted. Secondly, the Assistant Controller has not
properly compared the two designs arid has not indicated
D as to how he found that the two configurations or patterns
are identical. The finding recorded by the Assistant
Controller is most inconclusive and it does not give any
assurance that it was a proper comparison of the two
patterns by the Assistant Controller. The original glass
E pattern of the respondent was produced. The complainant
has not produced the pattern which was reproduced on
the glass-sheet in the United Kingdom. If both the glass-
sheet patterns were placed before the Single Judge or
before this Court a finding could have been recorded.
F From the glass-sheets placed before this Court with all ,l.
dimensions along with a copy of the print out of the deign
published in United Kingdom, it is clear that there is no
comparison between the two. From the visual appeal, the
Single Judge has rightly concluded that there is no
comparison of pattern or configuration of the two designs.
G
Hence on this count also the view taken by the Assistant
Controller does not appear to be correct and the view
)."
taken by the Single Judge of the High Court is correct.
[para 14] [432-H; 433-A-H; 434-A]
H CIVILAPPELLATE JURISDICTION: Civil Appeal No. 3185
BHARAT GLASS TUBE LIMITED v. GOPAL GLASS 405
WORKS LIMITED [A.K. MATHUR. J.]

of 2008. A
From the final Judgment and Order dated 17.8.2005 of
the High Court at Calcuta in AID No. 1 of 2005.
Dipankar P. Gupta, Jaideep Gupta, Saurav Banerjee, S.
.. Majumdar and Pranab Kumar Mullick for the Appellant. B
..(
Ashok Kumar Desai, Huzefa Ahmadi, Harin P. Raval,
Raghavendra S. Srivatsa, Jasani and Abhijat P. Medh for the
Respondent.
The Judgment of the Court was delivered by c
A.K. MATHUR, J. 1. Leave granted.
2. This appeal is directed against the order dated
17.8.2005 passed by_ the Calcutta High Court whereby learned
Single Judge has set aside the order passed by the Assistant
D
Controller of Patents & Designs, Kolkata dated 20.9.2004
"'· whereby the Assistant Controller has cancelled the registration
of the respondent herein and held that there was no material on
record to show that the design had previously been applied to
glass sheets. It was also held by learned Single Judge that the
E
order impugned considered with the materials on record,
including in particular the computer print-outs clearly revealed
that the respondent has only compared the pattern and/or
configuration considered the visual appeal thereof, but not the
visual appeal of the pattern and/ or configuration on the article.
>-- In other words, the Assistant Controller has not considered the F
•
visual appeal of the finished product. The visual effect and/or
appeal of a pattern embossed into glass sheets by use of
embossing rollers could be different from the visual effect of the
same pattern etched into glass sheets manually. This aspect
was not considered. Aggrieved against this order passed by G
learned Single Judge, the present appeal has been filed by the
.-i appellant.
3. In order to appreciate the controversy involved in the
present appeal, a few facts may be dilated here. The respondent
H
406 SUPREME COURT REPORTS [2008] 7 S.C.R.

A herein claimed to carry on business inter alia of manufacture
and marketing of figured and wired glass sheets since 1981.
The respondent claimed to be the originator of new and original
industrial designs, applied by mechanical process to glass
sheets. According to the respondent, the glass sheets have eye
B catching shape, configuration, ornamental patters, get up and
colour shades and the same were registered and/or were
..
>
awaiting registration as industrial designs under the Designs
Act, 2000 (hereinafter to be referred to as the Act of 2000) and
the Rules framed thereunder. For production of glass sheets of
c the design registered as Design No.190336, two rollers are
required. The rollers are manufactured by Mis. Dorn Bausch
Gravuren GMBH of Germany (hereinafter to be referred as the
German Company). According to the respondent the rollers are
not only used for manufacture of glass sheets, but for various
D other articles including plastic, rexin and leather. The respondent
-.1aced an order on the German Company for supply of the rollers
for launching a design of figured glass with new and novel
features not produced before by anyone else. On or about
29.10.2002 the respondent applied to the Controller of Patents
and Designs under Section 51 of the Act of 2000 for registration
E of the said design in Class 25-01. The said design was duly
registered on 5.11.2002 and was to remain valid for a period of
10 years from the date of its registration. The respondent
claimed the exclusive copyright in India on the said design
applied to glass sheets. It was claimed that no other person
F has any right to apply the said design to glass sheets as the
respondent has exclusive right over the said design on the glass
sheets. The respondent marketed the glass sheets of the said
design under the name of Diamond Square and that became
popular ~l"Ylongst the customers soon after its launch in the
G market After registration of the said design the respondent
issued a notice on 21.5.2003 cautioning other manufactures
from infringing copyright of the respondent in respect of the said
registered design. But in the meanwhile the appellant and its
associate IAG Co.Ltd started imitating the said registered
H design, as a result thereof the respondent was constrained to
BHARAT GLASS TUBE LIMITED v. GOPAL GLASS 407
WORKS LIMITED (A.K. MATHUR, J.]
A
file a suit being Civil Suit No.1 of 2004 against the appellant in A
the District Court of Mehsana. The respondent obtained a
restraint order restraining IAG Co. Ltd. from infringing the
copyright of the respondent against the said design. In order to
counter-blast the suit, the appellant herein filed an application
under Section 19 of the Act of 2000 before the Controller of B
~
Patents & Designs for cancellation of registration of Design
-4
No.190336 in the name of the respondent mainly on the ground '
that the design has already been previously published in India
and abroad and on the ground that the design was not new or
original. The appellant primarily relied on a catalogue of the c
German Company and letter dated 10.9.2003 of the German
company addressed to Mis. IAG Co. Ltd. the holding company
' of the appellant stating that the said German Company had
" developed design No.2960-9010 in the year 1992 and the other
evidence relied on by the appellant was a document downloaded
D
from the internet from the official website of the Patent Office of
the United Kingdom on 22.9.2004 which indicated that the same
""· design had been registered in United Kingdom in the name of
.
·1
M/s.Vegla Vereinigte Glaswerke Gmbh sometime in 1992. As
against this the respondent filed an affidavit stating that the
German Company has been engaged in the manufacture of E
engraving rollers and no other goods and it was contended that
the company was not engaged in manufacture of the goods other
than engraving rollers. It was contended that the company never
manufactured engraved glass sheets by using engraved rollers.
The respondent also relied on the communication dated F
,. >-·
4.3.2004 of the German company confirming that the embossing
rollers covered by Design No.2950-910 had been sold to the
respondent on condition that all user rights available in India
.,(
under Indian laws would vest exclusively in the respondent and
that the respondent would be entitled to exclusive user rights for G
at least five years. The German company was aware of the
registration of the Design No.190331 and it had no objection to
-1·
,., the design being marketed by the respondent herein. An affidavit
was also filed by the Liaison Executive of the respondent
company that he visited Germany and upon enquiry ascertained H
408 SUPREME COURT REPORTS [2008] 7 S.C.R.

A that M/s. Vegla Vereinigte Glaswerke Gmbh had never
manufactured glass sheets of the design registered as Design
No.2022468 in the United Kingdom. The respondent also
objected to the admissibility of the materials alleged to have
been downloaded from the United Kingdom Patent Office. It
B was also contended that in absence of corroborative evidence,
such evidence cannot be tendered
,,. and it cannot be treated as
I>
'
admissible evidence. It was also contended that the German
Company only manufactured rollers but did not produce glass-
sheets prepared out of these rollers .
.v
~

4. On the basis of the pleadings , learned Assistant
Controller of Patents and Designs framed following three issues
for determination:
(i) Whether the design was not new er original in view
of the fact that the roller bearing the design is
D
published before the date of registration and the
registered proprietor is not owner of design.
(ii) Whether the design was published outside India as
well as in India prior to the date of application.
E
(iii) 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
F and the third issue was not adjudicated since the evidence by
way of affidavit was not taken on record on technical reasons. -""
'
Hence, the Assistant Controller of the Patents and Designs set
aside the registration of the respOl'ldent. Aggrieved against this
order the respondent filed a regular appeal under Section 36 of
the Act of 2000 before the High Court. Learned Single Judge
G
after consJdering the matter reversed the finding of the Assistant
Controller and dismissed the application filed by the appellant
for cancellation of registration of tht:l respondent herein. '.> ---

Aggrieved against this impugned order passed by learned '
Single Judge of the Calcutta High Court the present appeal was
H
BHARAT GLASS TUBE LIMITED v. GOPAL GLASS 409
WORKS LIMITED [A.K. MATHUR, J.)

filed by the appellant-complaint. A
5. Wa'have heard learned senior counsel for the parties at
length and perused the record. Before we proceed to decide
on the merit of the matter, it would be profitable to refer to the
relevant provisions of the Act. It may be mentioned here that in
' 1911 the Designs Act was passed by the then British B
Government in India. But with the advancement of science and
technology and the number of registration of the design having
increased in India, the Act of 1911 was amended wholesale by
the Parliament and this new Act known as Designs Act, 2000
came to be introduced in the Parliament and the same was C
passed as such. The statement of objects and reasons read as
under:

" STATEMENT OF OBJECTS AND REASONS

Since the enactment of the Designs Act, 1911 D
considerable progress has been made in the field of science
and technology. The legal system of the protection of industrial
designs requires to be made more efficient in order to ensure
effective protection to registered designs. It is also required to
promote design activity in order to promote the design element E
in an article of production. The proposed Design Bill is essentially
aimed to balance these interests. It is also intended to ensure
that the law does not unnecessarily extent protection beyond
what is necessary to create the required incentive for design
>- activity while removing impediments to the free use of available F
·' designs."

Section 2 of the Act of 2000 deals with the definitions and
the Controller has been defined in Section 2 (b) as follows:
" (b)"Controller" means the Controller-General of Patents, G
Designs and Trade Marks referred to in section 3."
"Copyright" means the exclusive right to apply a design fo
any article in any class in which the design is registered. Section
2 (d) defines design which reads as under :
H
410 SUPREME COURT REPORTS [2008] 7 S. C.R.

A "(d) "design" means only the features of shape,
configuration, pattern, ornament or composition of lines of
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
B 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 which is in substance a mere mechanical device,
and does not include any trade mark as defined in clause
c (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© of
section 2 of the Copyright Act, 1957 (14 of 1957);"
D Section 2 (g) defines original which reads as follows:
"(g)" original", in relation to a design, means originating
from the author of such design and includes the cases
which though old in themselves yet are new in their
application;"
E
Section 2 (i) defines 'prescribed' which means prescribed
by rules made under this Act. Section 2U) defines ' proprietor of
a new or original design' which reads as under:

" U) "proprietor of a new or original design".-
F
(i) where the author of the design, for good
consideration, executes the work for some other
person, means the person for whom the design is so
executed;
G (ii) where any person acquires the design or the right to
apply the design to any article, either exclusively of
any other person or otherwise, means, in the respect
and to the extent in and to which the design or rig,llt
has been so acquired, the per-son by whom the design
H or right is so acquired; and
BHARAT GLASS TUBE LIMITED v. GOPAL GLASS 411
WORKS LIMITED [A.K. MATHUR, J.]
J.
(iii) in any other case, means the author of the design; A
and where the property in or the right to apply, the
design has devolved from the original proprietor upon
any other person, includes that other person."
Section 3 deals with the Controller and otf, ~1 officer';.
Section 4 deals with the prohibition of registration of certain B
+ designs which has relevant bearing on our case. It reads as
follows:

"4. Prohibition of registration of certain designs.-A design
which- c
(a) is not new or original; or

(b) has been disclosed to the public anywhere in India
or in any other country by publication in tangible form
or by use or in any other way prior to the filing date,
D
or where applicable, the priority date of the application
for registration; or
(c) is not significantly distinguishable from known
designs or combination of known designs; or
E
(d) comprises or contains scandalous or obscene
matter,

shall not be registered."
Section 5 deals with the application for registration of
, >- designs. Section 6 deals with the registration to be in respect F
of particular article. Section 7 deals with publication of particulars
of registered designs. Section 9 deals with the certificate of
registration which reads as under :
" 9. Certificate of registration.- (1) The Controller shall G
grant a certificate of registration to the proprietor of the
design when registered.
-~·
(2) The Controller may, in case of loss of the original
~ certificate. or in any other case in which he deems it
expedient, furnish one or more copies of the certificate." H
412 SUPREME COURT REPORTS (2008] 7 S.C.R.

.......
A Section 10 deals with register of designs which reads as
follows:

" 10. Register of designs.- (1 )There shall be kept at the
patent office a book called the register of designs, wherein
shall be entered the names and addresses of proprietors
B of registered designs, notifications of assignments and of
transmissions of registered designs, and such other matter ...
as may be prescribed and such register may be
maintained wholly or partly on computer floppies or
diskettes, subject to such safeguards as may be
c prescribed.

(2) Where the register is maintained wholly or partly on
computer floppies or diskettes under sub-section (1 ), any
reference in this Act to any entry in the register shall be
construed as the reference to the entry so maintained on
D computer floppies or diskettes.

(3) lheregister of designs existing at the commencement
of this Act shall be incorporated with and form part of the
register of designs under this Act.
E (4) The register of designs shall be prima facie evidence
of any matter by this Act directed or authorized to be
entered therein."

Section 11 deals with copyright on registration which reads
as under:
F -<
" 11. Copyright on registration. -(1) When a design is '
registered, the registered proprietor of the design shall,
subject to the provisions of this Act, have copyright in the
design during ten years from the date of registration.
G (2) If, before the expiration of the said ten years,
appffcation for extension of the period of copyright is made
to the Controller in the prescribed manner, the Controller
shall, on payment of the prescribed fee, extend the period ~--
of copyright for a second period cf five years from the ......
H expiration of the original period of ten years."
BHARAT GLASS TUBE LIMITED v. GOPAL GLASS 413
WORKS LIMITED [AK. MATHUR, J.]

Section 12 deals with restoration of lapsed designs which A
reads as under :
"12. Restoration of lapsed designs.- (1) Where a design
has ceased to have effect by reason of failure to pay the
fee for the extension of copyright under sub- section (2) of
B
•_.. section 11, the proprietor of such design or his legal
representative and where the design was held by two or
more persons jointly, then, with the leave of the Controller
one or more of them without joining the others, may, within
one year from the date on which the design ceased to
have effect, make an application for the restoration of the c
design in the prescribed manner on payment of such fee
as may be prescribed.
(2) An application under this section shall contain a
statement, verified in the prescribed manner, fully setting
D
out the circumstances which led to the failure to pay the
......
prescribed fee, and the Controller may require from the
applicant such further evidence as he may think
necessary."
Section 17 deals with inspection of registered designs E
which reads as under:
" 17. Inspection of registered designs.- (1) During the
existence of copyright in a design, any person on furnishing
such information as may enable the Controller to identify
/.- the design and on payment of the prescribed fee may F
" inspect the design in the prescribed manner.
(2) Any person may, on an application to the Controller
and on payment of such fee as may be prescribed, obtain
a certified copy of any registered design."
G
Section 18 deals with information as to existence of
~~ copyright which reads as under:
" 18. Information as to existence of copyright.- On the
-.i request of any person furnishing such information as may
H
414 SUPREME COURT REPORTS [2008] 7 S.C.R.

A enable the Controller to identify the design, and on payment
of the prescribed fee, the Controller shall inform such
person whether the registration still exists in respect of the
design, and, if so, in respect of what classes of articles,
and shall state the date of registration, and the name and
B address of the registered proprietor. ~

Section 19 deals with cancellation of registration which •
reads as under:
"19. Cancellation of registration.- (1) Any person interested
c may present a petition for the cancellation of the registration
of a design at any time after the registration of the design,
to the Controller on any of the following grounds, namely:-
(a) that the design has been previously registered in
India; or
D
(b) that it has been published in India or in any other
country prior to the date of registration; or
(c) that the design is not a new or original design; or
(d) that the design is not registerable under this Act; or
E
(e) that it is not a design as defined under clause (d) of
section 2.
(2) An appeal shall lie from any order of the Controller under
this section to the High Court, and the Controller may at any
F time refer any such petition to the High Court, and the High Court ~

'
shall decide any petition so referred."
Section 22 deals with piracy of registered design. Chapter
VI deals with fees, notice of trust not to be entered in registers
G etc. with which we are not concerned. Section 32 in Chapter VI I
deals with the powers and duties of the Controller which reads
as follows:
" 32. Powers of Controller in proceedings under Act.-
Subject to any rules in this behalf, the Controller in any
H proceedings before him under this Act shall have the
~HARAT GLASS TUBE LIMITED v. GOPAL GLASS 415
WORKS LIMITED [A.K. MATHUR, J.]

powers of a civil court for the purpose of receiving A
evidence, administering oaths, enforcing the attendance
of witnesses, compelling the discovery and production of
documents, issuing commissions for the examining of
witnesses and awarding costs and such award shall be
executable in any court having jurisdiction as if it were a B
_...._ decree of that court."

Section 36 deals with the appeals to the High Court.
Section 37 in Chapter VIII says that evidence can be tendered
by affidavit or it can be by way of viva- voice in lieu of or in
addition to evidence by affidavit and the party may be allowed c
to cross-examine on the contents of the affidavit. Section 44
deals with reciprocal arrangement with the United Kingdom and
other convention countries or group of countries or inter-
governmental organizations. The Central Government in
exercise of power conferred under sub-section (3) of section 1 D
of the Act of 2000 framed the rules known ·as The Designs Rules,
2001 (hereinafter to be referred to as the Rules of 2001 ). It has
framed necessary rules to implement the provisions of the Act.
Rule 11 says how the application is to be made for registration
and says the mode of submission of application for registration. E
Rule 29 deals with the procedure how the cancellation of the
registration can be made and a detailed provision has been
made for implementation of Rule 29 of the Rules of 2001. Form
of application for applying for registration is also provided as
,,_ Form 1. Form 8 deals with the petition for cancellation for the F
" registration of a design. This is the whole background of the
Act.
6. In fact, the sole purpose of this Act is protection of the
intellectual property right of the original design for a period of
ten years or whatever further period extendable. The object G
behind this enactment 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. It has also laid down
~ that if design is not new or original or published previously then
such design should not be registered. It further lays down that if H
416 SUPREME COURT REPORTS [2008] 7 S.C.R.

A it has been disclosed to the public anywhere in India or in any
other country by publication in tangible form or by use or in any
other way prior to the filing date, or where applicable, the priority
date of the application for registration then such design will not
be registered or if it is found that it is not significantly
B distinguishable from known designs or.combination of known
designs, then such designs shall not be registered. It also 4.

provides that registration can be cancelled under section 19 of
the Act if proper application is filed before the competent
authority i.e. the Controller that the design has been previously
c registered in India or published in India or in any other country
prior to the date of registration, or that the design is not a new
or original design or that the design is not registerable under
this Act or that it is not a design as defined in clause (d) of section
2. The Controller after hearing both the parties if satisfied that
the design is not new or original or that it has already been
D
registered or if it is not registerable, cancel such registration
and aggrieved against that order, appeal shall lie to the High
Court. These prohibitions have been engrafted so as to protect
the original person who has designed a new one by virtue of his
own efforts by researching for a long time. The new and original
E design when registered is for a period of ten years. Such original
design which is new and which has not been available in the
country or has not been previously registered or has not been
published in India or in any other country prior to the date of
registration shall be protected for a period of ten years.
F Therefore, it is in the nature of protection of the intellectual --4
'
property right. This was the purpose as is evident from the
statement of objects and reasons and from various provisions
of the Act. In this background, we have to examine whether the
design which was registered on the ap~lication filed by the
G respondent herein can be cancelled or not on the basis of the
application filed by the appellant. In this connection, the law of
Copyright and Industrial Designs by P.Narayanan (Fourth ~ ....
Edition), Para 27.01 needs to be quoted.

H
" 27.01. Object of registration of designs. The protection --
'
BHARAT GLASS TUBE LIMITED v. GOPAL GLASS 417
WORKS LIMITED [A.K. MATHUR, J.]
~
given by the law relating to designs to those who produce A
new and original designs, is primarily to advance industries,
and keep them at a high level of competitive progress.

" Those who wish to purchase an article for use are often
influenced in their choice not only by practical efficiency
but the appearance. Common experience shows that not B
~
all are influenced in the same way. Some look for artistic
merit. Some are attracted by a design which is a stranger
or bizarre. Many simply choose the article which catches
their eye. Whatever the reason may be one article with a
particular design may sell better than one without it: then c
it is profitable to use the design. And much thought, time
and expense may have been incurred in finding a design
which will increase sales". The object of design registration
is to see that the originator of a profitable design is not
deprived of his reward by others applying it to their goods. D
-"' The purpose of the Designs Act is to protect novel designs
devised.to be applied to ( or in other words, to govern the
shape and configuration of) particular articles to be
manufactured and marketed commercially. It is not to
protect principles of operation or invention which, if E
profitable at all, ought to be made the subject-matter of a
patent. Nor is it to prevent the copying of the direct product
of original artistic effort in producing a drawing. Indeed
the whole purpose of a design is that it shall not stand on
~ it~ own as an artistic work but shall be copied by F
" embodiment in a commercially produced artefact. Thus
the primary concern, is what the finished article is to look
like and not with what it does and the monopoly provided
for the proprietor is effected by according not, as in the
case of ordinary copyright, a right to prevent direct G
reproduction of the image registered as the design but
'· the right, over a much more limited period, to prevent the
~ manufacture and sale of article of a design not substantially
different from the registered design. The emphasis
therefore is upon the visual image· conveyed by the H
418 SUPREME COURT REPORTS [2008] 7 S.C.R.

~

A manufactured article. "

7. As mentioned above, the Assistant Controller primarily
has taken into consideration the two evidence, (i) that the design
was registered way back 1992 by the German company on the
roller to be used either on glass, or rexin or on leather, therefore
B it is not new and original and (ii) that the same design has been
~
obtained in United Kingdom as is evident from the downloading
of Patent website of the United Kingdom. On the basis of this
two evidence, the Assistant Controller has held that the design
which was registered on the application filed by the respondent
c herein was not a new and original. Therefore, on the application
filed by the appellant, the Assistant Controller of Patents and
Designs cancelled that design of the respondent. ,~

8. Now, we shall examine to what extent the view taken by
the Assistant Controller can be sustained and whether the view
D Y'"
taken by learned Single Judge was correct or not. Now, coming
).
to the first issue which has been framed by the Assistant
Controller, the Assistant Controller found that Mis.Dornbusch
Gravuren Gmbh, a German Company published a brochure
bearing distinctive number 2960-910 for the first time on
E 10.9.1993 and the registered proprietor took the user's right
and got it registered. The Assistant Controller found that it is not
the inventive ingenuity of the respondent and found that in order
to register the design it should be new or original and the
jio
Assistant Controller found that there is insufficient evidence of
F originality and therefore, he came to the conclusion that the ~

design is not a new and original one registered prior to the date '
of registration. Therefore, the question is whether the design is ""'
new and original. Section 4 which is couched in the negative
terms, says that the design which is not a new or original then
G such design cannot be registered. Therefore, the question is
the design which has been prepared by the German Company
and which has been sold tv the respondent which became the ~

proprietor of it, is a new or original or not. In this connection, the
burden was on the complainant to show that the design was not
H original or new. We have no hesitation in recording a finding "'i
-
BHARAT GLASS TUBE LIMITED v. GOPAL GLASS 419
WORKS LIMITED [A.K. MATHUR, J.]

that the burden was not discharged by the complainant. It only A
tried to prove on the basis of the letter of the German company
that they produced the rollers and sold in market but it was
nowhere mentioned that these rollers have been reproduced
on the glass sheets by the German company or by any other
company. The expression, "new or original" appearing in B
~. Section 4 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 respondent company purchased the rollers from
the German company and got it registered with the registering
c
authority that by these rollers they are going to produce the
design on the glass sheets. Design has been defined in section
2(d) which means that a feature of shape, configuration, pattern,
ornament or composition of lines or colours applied to any article
D
whether in two dimensional or three dimensional or in both forms,
-'-.
by any industrial process. That means that a feature or a pattern
which is regi?tered with the registering authority for being
produced on a particular article by any industrial process whether
manual, mechanical or chemical or by any other means which
appears in a finished article and which can be judged solely by E
eye appeal. The definition of design as defined in section 2(d)
read with application for registration and rule 11 with form 1
makes it clear that the design which is registered is to be applied
to any finished article which may be judged solely by eye appeal.
, >- A conjoined reading of these three provisions makes it clear F
that a particular shape or a particular configuration is to be
registered which is sought to be produced on any article which
will have visual appeal. Such design once it is registered then it
cannot be pirated by any other person. But the question is
whether it is new or original. In the present case, the complainant G
relied on the correspondence of the German company which
~ produced the rollers and sold it to the respondent herein and it
gave the proprietary right to the present respondent company.
'Proprietor' as defined in section 2 U) of the Act means that any
person who acquires the design or right to apply the design to H
420 SUPREME COURT REPORTS [2008] 7 S.C.R.

~
A any article, either exclusively of any other person or otherwise,
means, in the respect and to the extent in and to which the design
or right has been so acquired. Therefore, this right to reproduce
this design on an article has been given by the German company
to the respondent. But again the question is whether the
B complainant had discharged their burden to show that this
design is not new or original. For this purpose, they only banked ,.
upon the letter of the German company which prepared these
rollers and there is no evidence to show that the design which
was reproduced on glass sheets was either produced by any
c other agency. Therefore, the expression that' new or original' in
this context has to be construed that whether this design has
ever been reproduced by any other company on the glass sheet
or not. There is no evidence whatsoever produced by the
complainant either before the Assistant Controller or before any
other forum to show that this very design which has been
D
reproduced on the glass sheet was manufactured anywhere in
the market in India or in United Kingdom. There is no evidence
to show that these rollers which were manufactured or originally
designed by the company was marketed by this company to be
reproduced on glass sheets in India or even in United Kingdom.
E This proprietorship of this design was acquired by this
respondent from the German company and there is no evidence
on record to show that these rollers were used for designing
them on the glass sheets in Germany or in India or in United
Kingdom. What is required to be registered is a design which
F is sought to be reproduced on an article. This was the roller ~

which was designed and if it is reproduced on an article it will '
give such visual feature to the design. No evidence was
produced by the complainant before the Assistant Controller
that anywhere in any part of the world or in India this design was
G reproduced on glass or it was registered anywhere in India or
in any part of the world. The German company only manufactured
the roller and this roller could have been used for bringing a ).~

;:>articular design on the glass, rexin or leather but we are
concerned here with the reproductio:i of the design from the
H roller on glass which has been registered oefore the registering
BHARAT GLASS TUBE LIMITED v. GOPAL GLASS 421
WORKS LIMITED [A.K. MATHUR, J.]
_.._ authority. Therefore, this design which is to be reproduced on A
the article i.e. glass has been registered for the first time in India
and the proprietary right was acquired from the German
company. We have gone through the letter of the German
company and it nowhere says that this was reproduced on a
glass sheet. No evidence was produced by the complainant B
~
.that this design was reproduced on a glass sheet in Germany
~-
or in lndia ..The content~ of the letter are very clear. It shows that
it was designed in 1992 and was marketed in 1993. But there
is no evidence to show that this design was reproduced on glass
sheet any where in Germany. Section 4 clearly says that the c
~ Controller will only register a design on application made under
"'4
Section 5 by the proprietor of any new or original design not
previously published in any country and which is not contrary to
public order or morality and it further says that this application
.shall be in a prescribed form and the prescribed form has been
D
· given in form 1.. Form. 1 clearly says that the design is to be
•
applied. Relevant column of the form reads as under :
"""
Insert number of class You are requested to
register the accompanying
in Class No ..... in the name of E
' ; ......................
Insert (in full) the name .
'
.' Address and nationality ......... .....
'•

.... who claim(s) to be the
'
proprietor thereof. F
State whether drawings, Four exactly similar ... of
Photographs, traCings or the design accompany this
specirriens. request.

Insert name of article or The design is to be applied G
· '· articles to which the to ........................
design is to be applied
or state trade description
of each of the articles
contained in 'the set. H
'
'
422 SUPREME COURT REPORTS [2008] 7 S.C.R.

A That shows that for name of the article on which the design
is sought to be transcripted has to be mentioned at the time of
registration. The respondent moved an application filling this
form that this roller which has been manufactured by the German
company with that design shall be reproduced on the glass.
B Therefore, when the application was filed by the respondent for
registration, it was registered on the basis that the roller which ~
4-
will be used by mechanical process will bring design on a glass
which is registered. Therefore, what is sought to be protected
is that the design which will be reproduced on the roller by way
c of mechanical process and that design cannot be reproduced
on glass by anybody else. Now, the question is whether it is
new or original design. For that it is clear that there is no evidence
to show that this design which is reproduced on the glass sheet
...
was either registered in India or in Germany or for that matter in
United Kingdom. The expression,' design' has come up for
D
interpretation in English courts. The expression, design is almost ,
pari materia with the definition of design in the Indian context. ...
The expression, 'design' in the English Act which is known as
the Registered Designs Act, 1949 reads as under :

E " In this Act the expression';'' design' means features of
shape, configuration, pattern or ornament applied to an
article by any industrial process, being features which in
the finished article appeal to and are judged solely by the r
eye, but does not include
F (a) a method or principle of construction or ....\

(b) features of shape or configuration which
(i) are dictated solely by the function lNhich the
article has to perform, or
G
(ii) are dependent upon the appearance of another
article of which the article is intended by the
author of the design to form an integral part." ........
The history of this definition has been detailed by Russel-
H Clarke and Howe on Industrial Designs (Seventh Edition) at para

'·
BHARAT GLASS TUBE LIMITED v. GOPAL GLASS 423
WORKS LIMITED [A.K. MATHUR, J.]

3.11 at page 74 which reads as under : A
" 3-11. This definition contains a cumulative series of
requirements, many of which have been the subject of
judicial decision and analysis. The historical process by
which this definition has evolved is of importance to its
present day interpretation and application. Some of the B
more important embellishments to the definition, such as
those dealing with eye appeal and methods or principles
of construction, have found their way into the pre-2001
statutory definition as a result of the explicit adoption such
requirements were held to be implicit in the earlier and C
less elaborate statutory definitions of "design". This
manifests an intention by the legislature to adopt and make
explicit the principles developed in those cases.
Xx xx xx
D
3.13. The words of the section are:"... design means
features of shape configuration, pattern or ornament
applied to an article ........ "(emphasis supplied). Thus a
registrable design, as defined by the RDA (A), must have
reference to some specific article to which it is to be E
applied. The design to be registered " is a shape,
configuration or pattern to be applied a particular specified
article". It can be readily seen that a particular pattern of
surface ornamentation could be applied to wide range of
different articles. An application for registration was not in F
respect of the pattern as such, but in respect of its
application to the specific article named. If it was desired
to register the same design, e.g. a surface pattern or
decoration, in respect of a series of different articles (aJ1>art
from the special case of articles which together form .a G
set), then a separate application had to be made in respect
of each article, and each application to register was
numbered separately and treated as a separate and
distinct application.
In the case of designs consisting c;>f features of shape or H
424 SUPREME COURT REPORTS [2008) 7 S.C.R.

A configuration, there may of course be cases where the ........
design is intrinsically applicable only to a specific kind of
article. The article itself does not, however, constitute the
design. In Dover v. Nurnberger Celluloid Waren Fabrik
Gebruder Wolff, Buckley L.J. said:
B "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
c capable of being registered .... It is a suggestion of form
or ornament to be applied to a physical body." ...
[Pugh v. Riely Cycle Co Ltd. (1912) 29 R.P.C. 196)
Accordingly, it is submitted that a design is an idea or
D conception as to features of shape, configuration, pattern
or ornament applied to an article. Although that idea, while .._
still in the author's head, may be potentially capable of
registration, in fact it must be reduced to visible form to be
identifiable, and until it is so reduced there is nothing
E capable of registration, It may be so rendered either by its
being embodied in the actual article, or by its being placed
upon a piece of paper in such a way that the shape or
other features of the article to be made are clear to the
eye. Whenever the means of identification ( under some
F of the old Acts, provision was made whereby a mere verbal
description could in some cases be accepted as ....
sufficient), as soon as the idea is reduced to a form which
is identifiable, there is something which is a "design", and
which, if new or original, may be registrable."
G Similarly our attention was also invited to para 27.07 of
the law of Copyright and Industrial Designs by P.Narayanan
(Fourth Edition) which reads as under:
)'"

"27.07. Design as a conception or idea "Design means
a conception or suggestion or idea of a shape or of a
H
BHARAT GLASS TUBE LIMITED v. GOPAL GLASS 425
..-"' WORKS LIMITED [A.K. MATHUR, J.]

picture or of a device or of some arrangement which can A
be applied to an article by some manual, mechanical or
chemical means mentioned in the definition clause. It is a
suggestion of form or ornament to be applied to a physical
body". It is a conception, suggestion or idea, and not an
.... article, which is the thing capable of being registered. It B
may according to the definition clause, be applicable to
any article whether for the pattern or for the shape or
configuration or for the ornament thereof (that is to say of
the article) or for any two or more of such purposes. The
design, therefore, is not the article, but is the conception, c
suggestion, or idea of a shape, picture, device or
arrangement which is to be applied to the article, by some
one of the means to be applied to a physical body."

A design capable of registration cannot consist of a mere
conception of the features mentioned in the definition, or D
in the case of an article in three dimensions, of a
representation of such features in two dimensions It must,
in such a case, in order to comply with the definition, consist
of the features as they appear in the article to which they
have been applied by some industrial process or means. E
An applicant for registration of a design has to produce a
pictorial illustration of the idea or suggestion which he has
to establish as new or original;"

>-· Therefore, the concept of design is that a particular figure
~
conceived by its designer in his mind and it is reproduced in F
some identifiable manner and it is sought to be applied to an
article. Therefore, whenever registration is required then those
configuration has to be chosen for registration to be reproduced
in any article. The idea is that the design has to be registered
which is sought to be reproduced on any article. Therefore, both G
the things are required to go together, i.e. the design and the
--'(
design which is to be applied to an article. In the present case,
the design has been reproduced in the article like glass which
is registered. This could have been registered with rexin or
leather. Therefore, for registration of a particular configuration H
426 · SUPREME COURT REPORTS [2008) 7 S.C.R.

A or particular shape of thing which is sought to be reproduced
on a particular article has to be applied. As in the present case
the design sought to be reproduced on a glass-sheet has been
registered and there is no evidence to show that this design
was registered earlier to be reproduced on glass in India or any
B other part of the country or in Germany or even for that matter in
United Kingdom, therefore, it is for the first time registered in
India which is new and original design which is to be reproduced
on glass sheet. Therefore, the submission of learned senior
counsel for the appellant, Mr.Gupta cannot be accepted that this
c design was not new and original.

9. In this connection, our attention was invited to the
decisions of the Delhi High Court in 1981 PTC 239 [M/s.
Domestic Appliances and Others v. M/s. Globe Super Parts]
and 1983 PTC 373[ The Wimco Ltd. Bombay v. Mis. Meena
D Match Industries, Sivakasi & Ors.). In M/s. Domestic Appliances
& Ors., M/s. Globe Super Parts, Faridabad manufactured gas
tandoors and they got the design registered in respect of gas
tandoor. The petitioners- M/s. Domestic Appliances & Ors. also
manufacture gas tandoors under the trade mark 'Sizzler'. They
E were selling the same in Delhi market. The respondent filed a
suit against the petitioners alleging inter alia infringement of the
design and obtained temporary injunction restraining the
petitioners from selling the seasonal goods. The petitioners filed
an application under Section 51A of the Designs Act, 1911 for
F cancellation of the design No.145258 before the Controller of
Designs, Calcutta. The cancellation was sought on the
allegations that the design No.145258 was pre-published in
India on the date of registration in as much as the respondents
themselves were manufacturing and selling the gas tandoors
G earlier to the date of application for registration of design
No.145258 and sold the same to various parties in Delhi, Punjab,
Haryana, Jammu & Kashmir & Uttar Pradesh and also
advertised the said supercook gas tandoor in several
newspapers. It was also alleged that the respondents were not
the originators or the owners of the design. Therefore, it should
H
BHARAT GLASS TUBE LIMITED v. GOPAL GLASS 427
WORKS LIMITED [AK. MATHUR, J.]
be cancelled. This was resisted by the respondents. Similarly A
..
in this case here also it was alleged that this application has
been filed as a counterblast to the suit filed by the respondent
and it was also pleaded that the petitioners were not interested
in cancellation of the design. In the suit certain issues were
framed and the High Court held that there was no definite B
~
evidence produced by the parties that the design had been
previously registered in India. It was also held that the
respondents were manufacturing the gas tandoors of the
impugned design prior to 1977 and ultimately the Court held
that the gas tandoors of the impugned design had been sold c
prior to the date of its publication. In other words the design had
been published for the first time in India in 1977. Therefore, this
case was decided purely on the question of fact and no ratio
has been laid down. Similarly in 1983 PTC 373, this was a case
by the Wimco Limited, a public limited company which carried
D
on business of manufacturing and selling match boxes. It was
claiming that they were one of the famous manufacturers of
matches and they developed a design and gave it a name as
'HOTSPOT' and made an application for registration under the
provisions of the Designs Act, 1911 and the same was
registered. Thereafter a suit was instituted against M/s. Meena E
Match Industries, M/s. Thilgaraj Match Works and Ms. Sanjay &
Co to restrain the defendants from manufacturing, producing,
selling and/or marketing or offering for same match boxes
bearing the impugned pattern/ design on the match boxes. After
>-
t review of the evidence on record the Court held that the design F
given to M/s. Wimco was liable to be cancelled on the ground
that it has been published in India prior to the date of registration
and the design was not a new or original one. Therefore, this
was also decided basically on the question of fact. Similarly in
the present case, as we have discussed above, that this design G
which was registered in the name of M/s. Gopal Glass Works
. >"'(
was not published in India or in Germany. Therefore, it was a
new and original design.
10. The question of eye appeal came up for consideration
H
428 SUPREME COURT REPORTS (2008] 7 S.C.R.

A in lnterlegoA.G. v. Tyco Industries Inc. ([1988] 16 R.P.C. 343). In
that their Lordships have laid down important test in the matter
of visual appeal of the eye. It was observed as follows:

" In relation, however, to an assessment of whether a
particular shape or configuration satisfies the former and
8 positive part of the definition, the fact that an important
part of the very purpose of the finished article is to appeal
to the eye cannot be ignored. That factor was one which
was conspicuously absent from the articles upon which
the courts were required to adjudicate in the cases of
c Tecalemit Ltd. v. Ewarts Ltd.(1927) 44 R.P.C. 503, Stenor
and Amp and in the more recent Irish case of Allibert S.A.
v. O'Connor [1981] F.S.R. 613, in all of which the claim to
registration failed. It was one which was present in the
case of Kestos where the claim to the validity of the design
D succeeded. It is present in the instant case. One starts
with the expectation of eye-appeal, for part of the very
purpose of the article is to have eye-appeal. That. was
aptly expressed by Whitford J. in relation to the same
subject-matter as in this appeal in the case of lnterlego
E A.G. v. Alex Folley (Vic) Pty.Ltd. [1987]F.S.R. 283 at page
298:-

" I would have expected a designer designing toys to have
the question of the appeal of the toy to the eye, even in the
case of a functional toy, in mind. Mr.Rylands who have
F evidence for the defendants said that when designing a •
functional toy it is necessary to have regard not only to
suitability for purpose but to overall appearance. You have
to design so that the article in question will make an
immediate visual appeal to a child or to the parent or
G other person buying for a child.""
One has to be very cautious unless two articles are ))-.C:",

simultaneously produced the Court then alone the Court will be
able to appreciate. But in the present case no design reproduced
H on the glass-sheets was either produced before the Assistant
BHARAT GLASS TUBE LIMITED v. GOPAL GLASS 429
WORKS LIMITED [A.K. MATHUR, J.]

Controller or before the High Court or before us by the appellant A
to appreciate the eye appeal. The appellant could have produced
the design reproduced on glass-sheet it manufactured in United
Kingdom or Germany. That could have been decisive.
11'. Our attention was invited to Dover Ltd. v. Nurnberger
-i
.... Celluloidaren Fabrik Gebruder Wolff ([191 OJ 27 R.P.C. 498) . B
This was a case in which the question was of the pattern or
ornament of hand grip for cycle handles brought an action for
infringement against a German firm of manufacturers, and
against their London agents. The defendants admitted that they
were selling cycle handles with the design resembling the c
plaintiffs' registered design but pleaded that the plaintiffs'
registered design was not a new or original design not previously
published in the United Kingdom and alleged that it was
commonly known for many years prior to the date of the
registration. Though the Single Judge held that the design was D
new and original having regard to the kind of article for which it
was registered and that it had been applied by the defendants
to the cycle handles sold by them but the Court of Appeal held
that the design was not new or original within the definition of
the Patents and Designs Act, 1907, and that the defendants E
had not infringed. Therefore, this case was decided on the
question of fact and evidence lead by the parties. In this case,
Buckley,J. observed as follows:

. ~-
" In my opinion, there is in this no originality. If, however,
the Respondents' Counsel are right in saying that the F
Design is the whole thing as showh in the picture, then, it
seems to me, that the Defendants have not infringed. Their
handle is not divided into six panels but into nine panels ..
Their grooves are so much more shallow than the Plaintiffs'
grooves as to be easily distinguishable from them . . G
Fraudulent imitation there was certainly none; neither was
there obvious imitation either.
In my judgment, this Act was intended to protect Designs
which really have some merit by way of novelty or originality H .
430 SUPREME COURT REPORTS [2008] 7 S.C.R.

A and not to give colour to such paltry and trivial claims as
have been set up in this case. The appeal must, I think,
succeed and the action be dismissed with costs."
Kennedy L.J. also took the similar view and observed as
follows:
B
" In the present case, as I have already said, if I rightly _,. ' '
appreciate the evidence, a paneled hand grip with grooved
divisions was not new, nor was the engine-turning of
surfaces as an ornamentation of those surfaces new, for
c it had been applied to what I may, I think, fairly call the
kindred surfaces of knife handles and penholders, where
the hand grips them. I cannot find either novelty or originality
in the Plaintiffs' Design by reason of such a combination."
Therefore, both the case was distinguishable on question
D offacts only.
12. Our attention was also invited to King Features
Syndicate Incorporated and Frank Cecil Betts, the Personal
Representative of Elzie Chrisler Segar, Deceased. V. 0. & M.
Kleeman Ld. ([1941] 58 R.P.C. 207). In this case also, action
E was brought for alleged infringement of certain copyright in
certain drawings. It was contended by the defendants that they
had not manufactured or imported and sold as alleged by the
plaintiffs and there was no infringement. Leave was granted.
The Court of Appeal allowed the appeal. The plaintiffs appealed
F to the House of Lords and the appeal was allowed. There also ....
~
much turned on the question of evidence.
13. Our attention was invited to Gammeter v. Controller of
Patents & Designs and others A.l.R.1919 Cal.887. Their
Lordships discussed the concept of new and original. In that
G
context, it was observed as follows:
"A design in order to be new or original within the meaning
of the Act, need not be new or original in the sense of
never having been seen before as applied to any article
H whatever, there might be a novelty in applying an old thing
BHARAT GLASS TUBE LIMITED v. GOPAL GLASS 431
WORKS LIMITED [A.K. MATHUR, J.]
~

to a new use, provided it is not merely analogous. Where A
'•
the design of a metal band called the "Novelty band,"
intended to attach a watch to the wrist, was similar in
shape and configuration to a bracelet previously
manufactured for ornamental purpose."
j_ Their Lordships further held as follows: B

" Though the shape of the "Novelty" band by itself could
not be said to be new and original, the application of it to
a watch to be worn on the wrist was for a purpose so
different from and for a use so similar to the purpose and c
use of the bracelet that the design in question might be
said to be original. worn on the wrist was for a purpose so
different from and for a use so similar to the purpose and
use of the bracelet that the design in question might be
said to be original."
D
Therefore, this case also depended on the appreciation
of the material placed before the Court.
14. The next evidence which was lead by the appellant
was a website had been downloaded from the United Kingdom
E
Patent Office effecting patent that may t>e applied to glass
sheets. No evidence has been produced to show that M/
s.Vegla Vereinigte Glaswerke Gmbh had manufactured this
design in glass sheet or not. It is only a design downloaded
~-
from the website of the Patent office in U.K. and it is not known
whether it was reproduced on glass-sheet in U.K. or not. In F
this connection, the Assistant Controller has only observed
that he has made a visual comparison of the U.K. registered
design No.2022468 with the impugned design No.190336
and he was satisfied that both the designs make same appeal
to the eye and there was sufficient resemblance between the G
_....... .. two designs. Therefore, the Assistant Controller held that the
impugned design was prior published and it could not be said
to be new or original. The Assistant Controller further observed
that the proprietor of this design had not been able to make a
difference between the U.K. design and the present design. This H
432 SUPREME COURT REPORTS (2008) 7 S.C.R.
.~.

A was not accepted by learned Single Judge of the Calcutta High
Cour:t and for the good reason. It was observed by learned
Single Judge as under :
" The illustrations in the form of drawings downloaded
from the website of the United Kingdom Patent Office
B depict the patterns that may be applied to glass sheets. ~

The patterns may be same but the illustrations do not give
the same visual effect as the samples of the glass sheets
produced by the appellant in Court. There are also no
clean unmistakable instructions or directions for production
c of glass sheets of the pattern illustrated.
The visual effect and/or appeal of a pattern embossed
into glass sheets by use of embossing rollers could be
different from the visual effect of the same pattern etched
into glass sheets manually. The respondent no.1 has not
D
considered these factors.
The order impugned considered with the materials on
record, including in particular the computer print outs clearly
reveals that the respondent no.1 has only compared the
E pattern and/or configuration considered the visual appeal
thereof, but not the visual appeal of the pattern and/or
configuration on the article. In other words, the Respondent
No.1 has not considered the visual appeal of the finished
product.
.....
F There are no materials on record to show that the design
had previously been applied to glass sheets. On the other
hand, an affidavit was sworn on behalf of the appellant by
a Liaison Executive affirming that he had ascertained that
the proprietor of the design registered in the United
G Kingdom had never manufactured glass sheets of the
design registered."
.........
From this it appears that in fact the pattern of the design
which is reproduced on the glass-sheet and the design and the
pattern which was reproduced on the glass-sheet of the United
H
BHARAT GLASS TUBE LIMITED v. GOPAL GLASS 433
WORKS LIMITED [A.K. MATHUR, J.]
........ Kingdom was not common. The affidavit sworn on behalf of the A
respondent herein, the liaison Executive that he had ascertained
from the proprietor of the design registered in United Kingdom
. and they have never manufactured glasscsheet of the design
registered. This affidavit evidence of the Liaison Executive of
the respondent company has remained un-rebutted. Secondly, B
the learned Assistant Controller has not p~operly compared the
..L
two designs that on what coIT)parison h~ found that. the same
configuration or pattern are identical with that of the impugned
design~ Simply by saying visually one can liable to commit the
mistake but if the comparison is to be judged whether the pattern c
of the United Kingdom and that of the present pattern is three
dimension or not. Both the designs were placed before us as
was done before the High Court also. Learned Single Judge
recorded its finding after seeing both the designs that there is
distinguishable difference between the two. Similar attempt was
D
made before us to show that both the designs i.e. one that is
published in United Kingdom and the impugned design are
identical. We have seen the original glass pattern produced
before us and the photograph of the pattern produced on record.
If the complainant was serious about the same, it could have
produced the pattern which was reproduced on the glass-sheet E
in the United Kingdom and the pattern which is reproduced on
the glass-sheet by the rollers of the design produced before us.
If these two glass-sheets were placed before learned Single
Judge or before us we would have been able to record the
,,... finding. The finding recorded by the Assistant Controller is most F
inconclusive and it does not give us any assurance that it was a
proper comparison of the two patters by the Assistant Controller.
Learned Single Judge of the Calcutta High Court had occasion
to go through both the patterns and found that there is no
comparison. Likewise, the glass-sheets were placed before us G
with all dimensions along with a copy of the print out of the United
Kingdom and we are of opinion that there is no comparison
'":r~
between the two. From the visual appeal placed before us,
learned Single Judge has rightly concluded that there is no
comparison of pattern or configuration of two designs. We fully H
434 SUPREME COURT REPORTS [2008] 7 S.C.R.

A agree with the view taken by learned Single Judge. Hence on
this count also the view taken by the Assistant Controller does
not appear to be correct and the view taken by learned Single
Judge of the Calcutta High Court is correct.
15. As a result of our above discussion, we do not
B
find any merit in this appeal and the same is dismissed
with costs of Rs.50,000/-(Rupees fifty thousand only).
R.P. Appeal dismissed.

)._,. ...