Bharat Glass Tube Limited v. Gopal Glass Works Limited (2008)

It is the Supreme Court's fullest modern statement of what a registered design is — a conception applied to an article and judged by the eye of the finished article — and of how prior publication must be proved before a registration is cancelled under s. 19. Any question on the subject matter of design protection, on novelty, or on cancellation begins here.

Gopal Glass Works manufactured figured and wired glass sheets. It claimed to originate new and original industrial designs applied by a mechanical process to glass sheets. For one such design, produced by two embossing rollers made by a German engraving company, it applied to the Controller of Patents and Designs on about 29 October 2002 and obtained registration on 5 November 2002, valid for ten years, in Class 25-01. It marketed the sheets under a product name that became popular, and in May 2003 issued a notice cautioning other manufacturers.

Bharat Glass Tube and its associate began, on Gopal's case, to imitate the design. Gopal sued at Mehsana and obtained a restraint order. Bharat Glass Tube answered by applying to the Controller under s. 19 of the Designs Act 2000 to cancel Gopal's registration, on the grounds that the design had already been published in India and abroad and was not new or original.

Its evidence was a catalogue of the German engraving company; a letter from that company saying it had developed the corresponding roller design in 1992; and a document downloaded from the website of the United Kingdom Patent Office showing a corresponding registration in the United Kingdom in 1992 in the name of a German glass company.

Gopal answered that the German company made only engraving rollers and never made engraved glass sheets; that the rollers had been sold to Gopal on terms that all user rights in India vested exclusively in it; that the United Kingdom registrant had never manufactured glass sheets of that design, proved by an unrebutted affidavit of Gopal's liaison executive who had visited Germany; and that the downloaded material was inadmissible without corroboration.

The Assistant Controller cancelled the registration. A single Judge of the Calcutta High Court, on appeal under s. 36, reversed him, holding that the Assistant Controller had compared only the pattern or configuration and its visual appeal in the abstract, and had not considered the visual appeal of the pattern on the article — the visual effect of a pattern embossed into glass by rollers may differ from the same pattern etched into glass by hand. Bharat Glass Tube appealed to the Supreme Court.

1. What is the subject matter of a design registration — the pattern in the abstract, or the pattern as it appears on a particular article?
2. Was the registered design new or original within ss. 2(g) and 4(a)?
3. Did the German catalogue, the German company's letter and the entry in the United Kingdom register amount to prior publication or disclosure under s. 4(b)?

Appeal dismissed with costs of fifty thousand rupees. The registration stood.

On what a design is. A design is not the article. It is the conception, suggestion or idea of a shape, picture, device or arrangement which is to be applied to an article by one of the industrial means named in s. 2(d). But a registrable design cannot consist of the mere conception: in order to satisfy the definition it must consist of the features as they appear in the article to which they have been applied by an industrial process. So design and article go together, and the applicant must produce a pictorial illustration of the idea which he must establish as new or original.

On novelty in this case. The design registered was the design as reproduced on a glass sheet. The same rollers could have been used on plastic, rexine or leather. There was no evidence that this design had been registered earlier to be reproduced on glass in India, in Germany or in the United Kingdom. It was therefore for the first time registered in India as applied to glass, and was new and original.

On the alleged prior publication. The affidavit that the United Kingdom registrant had never manufactured glass sheets of the registered design was unrebutted. More important, the Assistant Controller had not properly compared the two designs at all: he had said visually one was liable to make a mistake, without a real comparison of the patterns as reproduced on glass. The party attacking novelty could have produced the glass sheet made in the United Kingdom alongside the glass sheet made by the rollers in issue, and did not. The Court examined the original glass pattern and the photographs and agreed with the single Judge that there was no comparison between the two.

1. A design under s. 2(d) is a conception of features applied to an article by an industrial process, and is protected only as it appears in the finished article and is judged solely by the eye of that article. The same pattern applied to a different article, or produced by a different process with a different visual effect, is a different question.
2. An attack on novelty under s. 19 must be proved by a real comparison of the impugned design with the prior design as applied to the article, on evidence. An inconclusive visual impression by the Controller, or an entry in a foreign register unaccompanied by proof of the design as applied, will not do.