RADHA ENGINIRS v. YOUNGMEN ELECTRICLAS — 1982 DIGILAW 180 (DEL)

S. S. Chadha ( 1 ) S. S. CHADHA : This is an application under Section 51-A of the Designs Act, 1911 in which the petitioner has sought the cancellation of registered Design No. 147,334 dated 15th July 1968 registered in favour of the respondent. ( 2 ) THE petitioner claims that he was doing the business of manufacturing and selling Frinders, Mixer-cum-grinder, Juicer, Mixer etc. since the year 1976 under the name and style of M/s Radha Engineers, that since the year 1977, the petitioner has been manufacturing Mixer-cum-Grinder of a particular ^ design under the trade mark radha and that the respondent get the designs of Grinder an Mix-er-cum-Grinder registered under nos. 147,333 and 147,334 both dated 15th July 1978. The basis of the claim for cancellation of the registered design no. 147,334 madeby the petitioner is that the deisgn of Mixer- cum-Grinder of which the respondent has fradulently obtained registration thereof under no. 147,334 was previously published in Indian and it is a well known design of kanwood (America), already in existence in India much; prior to the date of its registration. ( 3 ) THE respondent in the written statement has denied the claim of the petitioner for cancellation of the registration. The defence is that the respondent after making a research on a novel design of Mixer-cum-Grinder chose the design in 1978 and get it registered under No. 147,334. The plea is that the design of the respondent s Mixer-cum-Grinder was new and original and that such a design was never published in India prior to the registration of the said design in favour of the respondent. ( 4 ) ON the pleadings of the parties, the following issues arose :- 1. IS the petitioner entitled to get design no. 147,334 dated 15. 7. 1978 rectified on the grounds stated in the petition ? 2. Relief. Issue No. 1: The cancellation of registration is provided by Section 51-A of the Designs Act, 1911. SEC. ( 4 ) ON the pleadings of the parties, the following issues arose :- 1. IS the petitioner entitled to get design no. 147,334 dated 15. 7. 1978 rectified on the grounds stated in the petition ? 2. Relief. Issue No. 1: The cancellation of registration is provided by Section 51-A of the Designs Act, 1911. SEC. 51 A: "cancellation of registration- (1) Any person interested may present a petition for the cancellation of the registration of a design- (a) at any time after the registration of the design, to the High Court on any of the following grounds, namely :- (i) that the design has been previously registered in India ; or (ii) that it has been published in India prior to the date of registration ; or (iii) that the design is not a new or original design ; or (b) within one year from the date of the registration to the Controller on either of the grounds specified in sub-clause (i) and (ii) of clause (a ). (2) An appeal shall lie from any order of the Controller under this Section to the High Court, and the Controller may at any time refer any such petition to the High Court, and the High Court shall decide any petition so referred. " ( 5 ) IT is not the petitioner s case that the design has been previously registered in India. The petitioner s claim is that it has been published in India prior to the date of its registration and that the design is not a new or original design. Counsel for the parties stated that evidence in the case be recorded in the form of affidavits to be filed by both the parties and their witnesses. The petitioner filed the affidavit of Shri S. M. Jain date 7th July 1980 along with copies of certain documents. The respondent filed two affidavits, one of Shri Bhupinder Singh Shingari dated 15th September 1980. respondent also prayed for condenation of delay in filing the affidavits in I. A. 3171/80. Though no formal orders have been passed on the application, implicedly there was the condenation of delay in filing the counter-affidavits. The case came up for bearing before R. N. Aggarwal J. on 30th March 1982 when the parties were allowed to adduce further oral and documentary evidence to substantiate their pleas. Though no formal orders have been passed on the application, implicedly there was the condenation of delay in filing the counter-affidavits. The case came up for bearing before R. N. Aggarwal J. on 30th March 1982 when the parties were allowed to adduce further oral and documentary evidence to substantiate their pleas. The petitioner was allowed to file affidavits by way of evidence within two weeks with advance copy to the counsel for the respondent who was allowed to file counter-affidavits within two weeks thereafter. The parties were given liberty to examine any witness in Court. The petitioner filed two affidavits of Shri Surinder Mohan Jain both dated 30th April, 1982. No counter-affidavit has been filed. No oral evidence has been tendered for examination. ( 6 ) SECTION 2 (5) of the Act defines design means only the features of shape, configuration, pattern or ornament applied to any article 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 which is in substance a more mechanical device, and does not include any trade mark as defined in Section 2 (1) (V) of the Trade and Merchandise Marks Act, 1958. The competing design is, therefore, to be judged solely by the eye that is to say, by seeing the two and getting a total synoptic view of the same. ( 7 ) THE design of petitioner s Mixer-cum-grinder is Ext. P-7 which is a photograph. The designs of respondent s Mixer-cum-grinder are Exts. p. 1 and P2. Theses are cuttings of the designs published in the newspaper. A close visual inspection of the two designs shows distinct similarity in the designs. The sameness of the features does not necessarily mean that the two designs must be identical on all points and differ on no point. Section 51-A does not contaplate the identity on every points. A slight variation cannot make the two designs different. If the two are substantially of the same design, then the provisions of Section 51-A are attractes. The evidence of prior publication of the petitioner s Mixer-cum-grinder is contained in the affidavits filed on behalf of the petitioner and the supporting documents. A slight variation cannot make the two designs different. If the two are substantially of the same design, then the provisions of Section 51-A are attractes. The evidence of prior publication of the petitioner s Mixer-cum-grinder is contained in the affidavits filed on behalf of the petitioner and the supporting documents. Shri Surinder Mohan Jain, the Proprietor of M/s Radha Engineers, the petitioner, deposes that since the year 1976 he has been manufacturing and selling Mixer- cum-Grinder similar to the one under the design which is registered under No. 147,334 dated 15th July, 1976 in favour of the respondent. Shri Ramesh Chand Jain, one of the dealers, in his affidavit deposes that his firm has been selling Mixer-cum-Grinder under the design marked Exhibit i since March 1977, Ext. i is a photo print of the Mixer-cum-Grinder of the petitioner. In the supplementary affidavit dated 13th April 1982 Shri Surinder Mohan Jain reiterates and confirms the statement already made in the affidavit. Documents have been placed on record along with the affidavits showing the sales by the petitioner from March 1977 of the Mixer-cum-grinder. The design of the Mixer-cum-grinder is also shown in the sale documents. Documenterelating to the payment of excise duty by the petitioner on manufacture of Mixer-cum- Grinder have also been placed on record. The ward publish in India, has not been defined in the Designs Act, 1911. There is publication if the design has been disclosed to the public or the public has been put in possession of the design. Russell-Clarks says :- ". . . IT is sufficient, and there will be publication if the knowledge was neither- (1) Available to members of the public ; or (2) Actually in fact shown and disclosed to some individual member of the public who was under no obligation to keep it secret. "in the case before me it has been established by the evidence in the shope of affidavit, and supporting documents that there was publication of the design of the Mixer-cum-Grinder by the petitioner much prior to the date of registration, i. e. 15th July 1978. ( 8 ) THE second ground for cancellation of the design is that the Mixercum-Grinder of the design which is registered under No. 147,334 was published in India prior to 15th July 1978 by M/s Kenwood (Americal ). ( 8 ) THE second ground for cancellation of the design is that the Mixercum-Grinder of the design which is registered under No. 147,334 was published in India prior to 15th July 1978 by M/s Kenwood (Americal ). A pamphlet entitled "thorn" having the design of mixer-cum-Grinder of M/s Kenwood (America) were available in India much prior to 15th July 1978 and was filed with the affidavit dated 7th July 1980. The respondent in his reply affidavit had only stated that the corresponding paragraph of the petitioner s affidavit is wrong and is specifically denied. The parties were given further opportunity to produce oral and documentary evidence. The petitioner filed two additional affidavits and again deposed that the MIXER- cum-grinder of the design which is registered under No. 147,334 was published in India prior to 15th July 1978 by M/s Kenwood (America ). In support of the above fact the petitioner placed on record catalogue No. 9 Spring 1978 of Argos Distributers Limited published in February 1978. The said catalogue contained the picture of the Mixer-cum-grinder of M/s Kenwood (America) at page 163 item no. 8. To the eye the design as depicted in the catelogue is substantially similar to the design registered in favour of the respondent. The respondent did not take courage to file a counter-affidavit to the averments made in the affidavit dated 13th April 1982 despite opportunity. To an extent the non-traverse by the respondent can be taken as an implied admission. There is no rebuttal evidence that the Mixer-cum-grinder of the design which is registered under No. 147,334 was not published in India prior to 15th July 1978 by M/s Kenwood (America ). As there has been publication in India prior to the date of its registration, the petitioner is certainly entitled to obtain an order from this Court of the cancellation of registration of the design. The underlying principle is that while the Commercial exigenciee require that a specific design which is noval and original should be protected, the monopoly of a trade in respect of a common design with no special originality should not be encouraged. I do not find any substantial difference in the two designs. A general view of the features of the two designs with the design registered shows that there is complete similarity of device in external appearance. I do not find any substantial difference in the two designs. A general view of the features of the two designs with the design registered shows that there is complete similarity of device in external appearance. ( 9 ) IN case C. D. No. 8/77 on 14th August 1981 by G. C. Jain J (M/s Domestic Appliances and Other v. M/s Clobe Super Parts) on evidence it was found that the design has been published in India prior to the date of its registration and, therefore, it was liable to be cancelled. ( 10 ) ISSUE No. 1, is therefore, held in favour of the petitioner. (Issue No. 2 (Relief) : ( 11 ) THE petition is accepted and the design bearing No. 147,334 dated 15th July 1978 is ordered to be cancelled. An intimation of the cancellation be sent to the Controller of Patents and Designs, 214-Lower Circular Head, Calcutta. The petitioner is awarded costs of these proceedings. Counsel s fee Rs. 250. 00.