D. P. Wadhwa, J ( 1 ) THIS is a petition under section 51-A of the Designsact, 1911 (for short the act ) for cancellation of design No. 150873 in class 4by the Controller of Patents and Designs who is respondent No. 2 in thepetition. This design pertains to glass tiles in the name of Randm Co. , afirm of which Ravi Raj Gupta, respondent No. 1, is the proprietor. The dateof design is 8/06/1981. It is mentioned in the certificate that the noveltyof this design resided in the shape and configuration and in particular to therounded corners and on the mottling design on the top and side walls of theglass tiles and registration of the desing with rounded corners is shown in thecertificate. This certificate also recites as under : "no claim is made by virtue of this registration in respect of anymechanical or other action of the mechanism whatever or in respectof any mode or principle of construction of the article. " ( 2 ) THE petitioner is also a manufacturer of glass mosaic tiles andcarriers on his business in the name of Kalpana Tiles. It is not disputedthat he is a person interested to file the present petition for cancellation of theregistration of the design. The petitioner claims that he is hampered in histrade because of registration of the design. In the petition he has givengrounds on the basis of which he seeks cancellation of the design. ( 3 ) RESPONDENT No. 1 filed his written statement. He objected to thejurisdiction of this Court to try the present petition. He stated that prior tothe design the glass tiles which were being manufactured and sold in Indiawere of sharp edged corners and without mottles and that it was respondentno. 1 who conceived distinct and improved shape of the glass tiles and theregistration of the design was thus granted to him. He further stated that theoriginality and novelty in the design resided in the rounded corners of theglass tiles and mottling on its surface and the sides. ( 4 ) THE petitioner filed his replication. ( 5 ) ON the pleadings of the parties the following issues were framed : " (1) Whether the design No. 150873 in class 4 obtained by therespondent No. 1 is liable to be cancelled for the reasonsstated in the petition ? (2) Does this Court has jurisdiction to entertain the presentapplication ? ( 5 ) ON the pleadings of the parties the following issues were framed : " (1) Whether the design No. 150873 in class 4 obtained by therespondent No. 1 is liable to be cancelled for the reasonsstated in the petition ? (2) Does this Court has jurisdiction to entertain the presentapplication ? (3) Relief. " ( 6 ) THIS petition was instituted on 4/07/1983. Respondent No. 1instituted a suit for injunction and rendition of accounts against the petitionerin the Court of the District Judge, Delhi. This was on the ground thatm/s. Kalpana Tiles of which Ravinder Kumar Gupta is the proprietorinfringed the design of Ravi Raj Gupta ptoprietor of Randm Co. This casewas transferred to this Court subsequently and the pleadings in the case arecomplete. This is suit No. 1707 of 1983. It was stated by counsel forthe parties that in case the design was cancelled this suit (No. 1707 of 193)would fail and if the design was not cancelled the suit would succeed. ( 7 ) IN the present petition evidence was allowed to be led by means ofaffidavits with liberty to the parties to apply for cross-examination of any ofthe deponents. Request for cross-examination of almost all the dependentswas made by both the parties and the dependents were cross-examined. ( 8 ) SECTION 3 (5) of the Act gives the definition of the design and is asunder: . . . "design" means only the features of shape, configuration,pattern or ornament applied to any article by any industrial processor means, whether manual, mechanical or chemical, separate orcombined which in the finished article appeal to and are judgedsolely by the eye ; but does not include any mode or principle ofconstruction or anything which is in substance a mere mechanicaldevice and does not include any trade mark as defined in clause (v)of Sub-section (1) of Section 2 of Trade and Merchandise Marks Act,1958 or property mark as defined in section 479 of the Indian Penalcodes. " ( 9 ) THE design, therefore, takes into account the features of shape,configuration, pattern or ornament applied to an article (which appeal to andor judged snlely by the eye ). A new or original design which has not beenpublished in India can be registered under the Act (Section 43 ). Section 5l-A (l)gives the grounds for cancellation of registration of the design. A new or original design which has not beenpublished in India can be registered under the Act (Section 43 ). Section 5l-A (l)gives the grounds for cancellation of registration of the design. This sectionmay be reproduced here : "51-A. Cancellation of registration (1 ). Any person interestedmay present a petition for the cancellation of the registration design: (a) at any time after the registration of the design, to thehigh Court on any of the following groundsnamely: (i) that the design has been previously registered inindia ; or (ii) that it has been published in India prior to thedate of registration ; or (iii) that the design is not a new or original design ; (b) within one year from the date of the registration, tothe controller on either of the grounds specified insub-clauses (i) and (ii) of clause (a ). " ( 10 ) THE attack of Mr. Anoop Singh, learned counsel for the petitioneris two-fold ; one that the design had been published in India prior to the dateof registration and the second that the design in question was not a new ororiginal design. He submitted that the design, at best, was a mere tradevariant. In Gammeter v. Controller of Patents and others (AIR 1919 Calcutta887) it was held that : "the design should be protected provided it was not merely ananalogous and that the test of novelty is the eye of the Judge whomust place the two designs side by side and see whether the one forwhich novelty is claimed is new. "i may also note that under section 2 (4) "copyright means exclusive right toapply a design to any article in any class in which the design is registered. ( 11 ) BEFORE I deal with the evidence and the judgments referred to. Imay note that Mr. K. R. Gupta, learned counsel for the respondent No. 1,did not press issue No. 2 relating to the jurisdiction of this court to entertainthe present petition. Mr. Gupta also conceded that he did not claim anyoriginality with regard to the mottling effect/design as he stated that mottlingeffect was already available in the market prior to the registration of thedesign. The controversy has, therefore, narrowed down to the question as towhether there is novelty in respect to the rounded corners of the tiles. Mr. Gupta also conceded that he did not claim anyoriginality with regard to the mottling effect/design as he stated that mottlingeffect was already available in the market prior to the registration of thedesign. The controversy has, therefore, narrowed down to the question as towhether there is novelty in respect to the rounded corners of the tiles. Toput it differently the challenge before me is to the following statement in theregistration of the design : "the novelty of this design resides in the shape and configurationand in particular to the rounded corners as illustrated. " ( 12 ) THEN Mr. Anoop Singh submitted that respondent No. 1 did notclaim any novelty in the rounded edges of the glass tiles and the registrationcertificate in question did not relate to the rounded edges and that no tile ofthe petitioner has been shown which may be considered to infringe theregistered design of respondent no. 1. He stated that the design was confinedto the rounded corners and that there was a difference between the edge andthe corner s. This submission was controverted by Mr. Gupta by sayingthat edge would also be a corner. ( 13 ) I think there is a difference between a comer and edge. While thecorner is where two line or even two edges meet, the edge is where two planesmeet. Edge would be a line. In common parlance also there is the differencein the word corner and the word edge . When the registration certificatesrefers to rounded corner it cannot mean rounded edge as well. Respondentno. 1. it appears, became conscious of this difference between a corner andan edge as in the affidavit filed by him he refers to the "tiles of round edgescorners" at various places. If I accept this contention of Mr. Anoop Singh,it would be unnecessary for me to refer to any further evidence or thejudgments referred to by the learned counsel for both the parties. ( 14 ) HARI Dutt who is Public Witness 1 is a glass technologist and expert of glassand ceramic. He was formerly a Deputy Director of Small Industries Serviceinstitute in the Central Government and fellow of the Ceramic Society ofindia. He is also a member of the Indian Standards Institute pertaining toisi specifications on glass. He described the process for the manufacture ofrounded glass tiles. He was formerly a Deputy Director of Small Industries Serviceinstitute in the Central Government and fellow of the Ceramic Society ofindia. He is also a member of the Indian Standards Institute pertaining toisi specifications on glass. He described the process for the manufacture ofrounded glass tiles. This evidence may not be strictly relevant for thepurpose of section 51-A of the Act but this evidence would show that perhapsit is not possible to get rounded corners in glass tiles without their beingrounded edges. Hari Dutt has stated that When sharp edges are heatedslightly above the melting temperature of that article it becomesrounded. One of the examples that he gave was that a slab of butterwhen chilled and cut with sharp edges and which when slightly heated, thecorners become rounded and also the sides. Hari Dutt stated that whenglass articles with sharp edges are heated above its melting temperature,i. e. about 800c these become rounded on edges automatically due tomolecular attraction or due to surface tension and that this rounding up ofthe edges is a time temperature effect on sharp edges. ( 15 ) THE question that then arises is: should respondent No. 1 bedenied relief on the ground that registration certificates project him only withregard to rounded corners and would not the rounded edges be covered by thewords "shape and configuration" of the glass tiles. Mr. Gupta is right whenhe contends that this question would not be relevant for the purpose ofdecision of this petition. Though, he also said that there could not be tileswith rounded corners without there being rounded edges. It is, therefore, notnecessary to refer to the arguments which were addressed in considerabledetail as to whether "edge" would be included in the word "corner" and Imay for the purpose of decision of the present petition even assume that thedesign in question includes rounded edges as well. ( 16 ) I am not quite impressed with the evidence that the design inquestion bad been published in India prior to the date of its registration. The evidence led by the petitioner is mainly on the point of pre-publicationof the design. ( 16 ) I am not quite impressed with the evidence that the design inquestion bad been published in India prior to the date of its registration. The evidence led by the petitioner is mainly on the point of pre-publicationof the design. Anil Singhania (PW 4) has said that be bad gone abroad inmay/june, 1980 from where he had brought one book on glass tiles whichshowed tiles with sharp and round corners According to Anil Singhania heshowed this book to many of his friends and also gave that book to thepetitioner during that period. Hari Dutt. Public Witness 1 stated that he had knownthat glass tiles with sharp corners as well as round corners were being manufactured in India for the last many years. Then evidence has been brought onrecord by the petitioner to show that be was in fact manufacturing tiles withround corners as well in 1980. Satwant Singh, Public Witness 6 is one of his customers. He stated that he did purchase round corner glass tiles from the petitioner during the year 1980-81. Shyam Mittal, Public Witness 5 stated that he purchased sometiles with round corners from the petitioner in the year 1980 and got thesefixed at his residence. No documentary evidence has been brought on recordto show pre-publication of the design. I cannot rely on the oral statement ofthese witnesses. Shyam Mittal is the maternal uncle of the petitioner. Anilsinghania is his wife s brother. Public Witness 6 stated that though he had got bill aswell as challan for having taken delivery of the round corner tiles from thepetitioner, he has not filed the same in the Court. It has been brought onrecord that while the tiles of the design manufactured by respondent No. 1have been affixed on various public places, tiles manufactured by the petitionerhave not been so affixed and the only evidence that the petitioner couldproduce was that of his maternal uncle for having affixed round corner tilesat his residence. I would, therefore, hold on the evidence in the case that thedesign had not been published in. India prior to the date of its registration. ( 17 ) THEN the question that arises is as to whether the design is merelya trade variant or a new and original design. Of course I am not concernedwith the process involved, though Mr. I would, therefore, hold on the evidence in the case that thedesign had not been published in. India prior to the date of its registration. ( 17 ) THEN the question that arises is as to whether the design is merelya trade variant or a new and original design. Of course I am not concernedwith the process involved, though Mr. Anoop Singh wanted to show that thetiles with round corners could be produced by merely subjecting the sharpcorner tiles to a particular heat. The test is solely of the eye. ( 18 ) REFERENCE was made to a case reported as Hajl Sayed Sikandarshah Sayed Habib Shah v. Mian Rahim Bakhsh Mian Fakir Mohd. (AIR1940 Peshawar 38 ). In this case a registered design was granted for a certainkind of cap. Formerly these caps were made in the following manner : "embroidery was sewn on a piece of cloth. Under that cloth wassewn a lining in which ribs were made and in these ribs wereinserted pieces of wick which were called "battis" or "paltas. "subsequently it became the habit to make the background for theembroidery stiffer. The embroidery was sewn on to a piece ofcanvas and between the actual embroidery and the canavs wasplaced a piece of leather or later of brown paper on which thepattern was stencilled. Owing to the thickness of this backgroundit was at first found impossible to insert ribs so that the outsideembroidery was left of more or less smooth surface whereas formerlyit bad ribs. Further stability was also given to the caps by coveringthe foundation with glue. The respondent claimed that he discoveredthe manner of being able to make ribs on this type of caps by usinga strong sewing machine. The question was whether this is a "new"or "original" design within the meaning of the Act. "it was held that this was not a new or original design within the meaning ofthe Act. The Court observed as under : "the shape and configuration of the cap which has been registeredby the respondent is admitted by him to be the same as was inexistence before a stronger foundation was given to the embroideryand it appears to me that what the repsondent has done is toinvent a new principle of construction. The Court observed as under : "the shape and configuration of the cap which has been registeredby the respondent is admitted by him to be the same as was inexistence before a stronger foundation was given to the embroideryand it appears to me that what the repsondent has done is toinvent a new principle of construction. To the eye, which is to bethe sole judge in these cases, there is no difference in shape,configuration pattern or ornament, although there is a differentmode and principle of construction. "though, Mr. Anoop Singh stated that this judgment was on all fours in thepresent case, I do not think so as the observation quoted by me above wouldshow. ( 19 ) IN Western Engineering C. v. Paul Engineering Co. (AIR 1968calcutta 109) the petitioner was the proprietor of a design in respect of lacksfor cycle and the novelty and the originality was in respect of the shape andconfiguration of the design of the lock as was illustrated in the annexure tothe certificate of registration. The respondent claimed to have a monopolyin the right to manufacture and sale of cycle lock of a design closely similaror identical to that of the petitioner and got the design registered. Thepetitioner challenged the validity of this design. After setting out provisionsof Section 2 (5) and Section 51-A (1) of the Act the Court observed that byreading the two sections together, it appeared that a subsequent design shouldbe the self-same or identical design registered earlier and that the designregistration of which is sought to be cancelled under Section 51-A must nothave different features of shape, configuration pattern etc. from those of theearlier design. The Court then held that the words "the design" in Section51-A should be judicially construed as "the substantially same design" and,therefore, applying these principles it was further held that : ". . . THE points of similarity and the points of difference which havebeen mentioned above and the examination of the two designsclearly indicate that the features in the shape and configuration ofthe respondent s articles are substantially same as those of thepetitioner. " ( 20 ) IN B. Chawla and Sons v. Bright Auto Industries ( 1981 RLR 373 ) adivision Bench of this Court held that "the basic question however, thatremains in proceedings under section 51-A of the Act is whether the registereddesign is new or not or original or not. " ( 20 ) IN B. Chawla and Sons v. Bright Auto Industries ( 1981 RLR 373 ) adivision Bench of this Court held that "the basic question however, thatremains in proceedings under section 51-A of the Act is whether the registereddesign is new or not or original or not. If the answer is in the negative, muchwould not turn on the design having been imitated with or without modification by others in the like trade. " In this case B. Chawla and Sons had gotregistered a design in respect of mirror being the new or original design. Bright Auto Industries prayed for cancellation of the design contending thatit was not a new design and it bad no originality about it and that such designswere common in the market. The novelty in the design was stated to be onaccount of the further curve in the slopping upper length side as it was notdisputed that rear view mirrors, rectangular in shape with rounded edges,width sides curved or sloping and the lower length side also sloping werecommonly available in the market. The only consideration before the Courtwas whether a further curve on either side in the sloping upper length sidesmakes the design in respect of rear view mirror a new or original designwhich B. Chawla and Sons were entitled to get registered and which was notliable to cancellation under section 51-A of the Act. The Court repelled thearguments of B. Chawla and Sons that the addition of the further curve oneither side was an appeal to the eye and that it was their design and thusentitled to protection. The Court observed that "it is a design indeed withinthe meaning of the term as given in the Act, the matter, however does notend there. What the appellants were required to satisfy was that their designhas a substantial novelty or a striking newness for the instructed eye. It ishere they fail as every design is not registrable. " The Court further observedas under : "we fail to see the hard labour which the appellants claimed tohave bestowed in creating the design they got registered. It is devoidof newness and equally devoid of originality. An addition of curvehere or there in a shape which is well-recognised shape of an articleof common use in the market cannot make it an article new ororiginal in design. It is devoidof newness and equally devoid of originality. An addition of curvehere or there in a shape which is well-recognised shape of an articleof common use in the market cannot make it an article new ororiginal in design. If it is made eligible for registration, it wouldcertainly hinder the progress of trade without there being anyjustification, whatsoever. "it will also be advantageous to refer to the decision of the single Judge in thiscase which was affirmed in appeal. This decision is of M. S. Joshi, J. and isreported in ILR 1978 (1) Delhi, 120, The learned Judge observed as under : "it goes without saying that in the matter of novelty the eye has tobe the ultimate arbiter and the determination has to rest on thegeneral ocular impression. To secure recognition for its newnessor originality it is imperative that a design identical with or evenmaterially similar to the relevant design should not have beenpublished or registered previously. A slight trivial or infinitesinalvariation from a pre-existing design, will not qualify it for registration. Taking into account the nature of the article involved thechange introduced should be substantial. It is not necessary tojustify registration that the whole of the design should be new, thenewness may be confined to only a part of it but that part must bea significant one and it should be patent enough to impart to thewhole design a distinct identity, unless registration is sought for thesaid part alone. "and with reference to the controversy involved in the suit before him, it wasobserved as under: "the rear view mirrors previously selling in the market did notcarry this type of curvity in their upper side, it cannot be denied,but this innovation would appear by itself on a fair assessment tobe too petty to earn for them the credit due to a new originaldesign. The addition of the said small feature could not possiblyhave involved any appreciable intellectual endeavour and it shallhave to be termed as a routine type of trade variation. I amconstrained to find that the respondents design being neither newnor original it does not deserve protection to the detriment of thetrade in general and by granting the petition I order cancellationof the registration of the said design under Section 51-A the Designsact, 1911. " ( 21 ) THE decision of the Calcutta High Court in Western Engineeringco. v. Paul Engineering Co. " ( 21 ) THE decision of the Calcutta High Court in Western Engineeringco. v. Paul Engineering Co. (supra) was referred to in the decision of thiscourt in Mis. Western Engineering Co. v. M/s. America Lock Co. (ILR 1973ii Delhi 177 ). It was held in this case that generally the test for novelty andoriginality was dependent on determining the type of mental activity involvedin conceiving the design in question. If the design was original, then thedesigner must have conceived something new ; if the design was a mere tradevariation of a previous design, then the designer could be said to have merelykept an existing design in view and made some changes in that. It was further held that in order to determine whether a design was new or originalthere must be substantial difference from the designs which were known orhad been published prior to the date of registration and that what such asubstantial difference was, was a question upon which no general principlecould be laid down at all and it must depend upon the particular facts in eachcase and further that in one case a quite small variation in the details of adesign might be enough to make the design something quite different from anexisting design. On the other hand, it was observed, there were cases evenwhere quite large alterations in detail leave two designs for all practicalpurposes of the same and that the Court has to consider and look at thedesigns in question with an instructed eye and say whether there was or wasnot such a difference between that which has been published previously andthe registered design as to entitle the proprietor of the registered design tosay that at the date of registration there was a new or original design andtherefore properly registered. The Court held that the design of cycle lock ofwestern Engineering Company was not new and original. In the Calcuttacase Western Engineering Co. v. Paul Engineering Co. (supra) the design ofrespondent Paul Engineering Co. was cancelled on the ground that it wassimilar to the design already registered that of Western Engineering Co. Anargument was though raised by Paul Engineering Co. in the Calcutta casethat design of Western Engineering Co. was also not original. In the Calcuttacase Western Engineering Co. v. Paul Engineering Co. (supra) the design ofrespondent Paul Engineering Co. was cancelled on the ground that it wassimilar to the design already registered that of Western Engineering Co. Anargument was though raised by Paul Engineering Co. in the Calcutta casethat design of Western Engineering Co. was also not original. But thisargument was not allowed to be raised on the ground that a substantivepetition under section 51-A of the Act ought to have been filed praying forcancellation of the registration of the design of Western Engineering Co. ifthat was not new or original. ( 22 ) IN Wingate s Registered Design case (1935)52 RPC 126 it was observed that: ". . . WHAT a substantial difference is, is a question upon which nogeneral principle can be laid down at all ; it must depend on theparticular facts in each case. In one case a quite small variationin the details of a design may be enough to make thedesign something quite different from an existing design. On the other hand, there are cases even where quite largealterations in detail leave two designs for all practical purposes thesame. The Court has to consider and look at the design in questionwith an instructed eye and say whether there is or is not such asubstantial difference between that which had been publishedpreviously and the registered design as to entitle the proprietor of. the registered design to say that at the date of registration thatwas a new or original design and therefore properly registered. " ( 23 ) IN Kestos Ld. v. Kempat Ld. and Vivian Fitch Kemp (1936)53 RPC139 Luxmoore J. was of the opinion that the question as to whether a designwas new or original was a matter of fact to be decided by the eye. If thesame shape or pattern, or one substantially similar, had previously beenthought of in connection with the type of article in question and the ideapublished, (that is, made available to the public) then the design was neithernew nor original. It was also observed "that the eye alone is to be the judgeof identity for the purpose of deciding whether a particular design has been anticipated or not by another has long been settled law. " ( 24 ) IN Allen West and Co, Ld. v. British Westinghouse Electric andmanufacturing Co. Ld. (1916)33 RPC 137 it was observed that there must be. " ( 24 ) IN Allen West and Co, Ld. v. British Westinghouse Electric andmanufacturing Co. Ld. (1916)33 RPC 137 it was observed that there must be. not a mere novelty of outline, but a substantial novelty in the design havingregard to the nature of the article. ( 25 ) A reference was also made to Copyright in Industrial Designs (Fourth Edition) by A. D. Russell Clarke on the submission that mere tradevariants were not registerable. At page 38 learned author states "a tradevariant is, therefore, some embellishment (useful or otherwise) which isknown, and sometimes, though not always, used in connection with a particular class of article or class of work. That a feature is shown in a singletrade catalogue is not sufficient to make it a trade variant. " He furtherobserved that in an infringement action the fact that the defendant hadcopied the plaintiff s design might be good evidence tending to show that thedesign was novel. ( 26 ) THUS, Mr. Anoop Singh submitted that change from sharp cornerto a round corner is at best a trade variant and registration of the designshould not have been permitted. He submitted that it was not disputedthat sharp corner glass tiles with mottling effect were in existence much priorto the date of registration of the design. ( 27 ) MR. Gupta however, submitted that the design was new andoriginal and was registerable. He stated that the idea was conceived byrespondent No. 1 and that the question if examined from the angle of the eye,he should succeed inasmuch as the perspective purchaser would certainlymake a distinction between the tiles with round corners and those with sharpcorners. He stated that even though the process by which round corner tileswere made might not be unknown, this was not relevant factor for the purposeof cancellation of the design under Section 51-A of the Act. He submittedthat it was a design with new shape and feature and was not a trade variant. He distinguished the decision of this Court in B. R- Chawla and Sons v. Brightauto Industries (supra) on the ground in that case there was only a very smallvariation while the change made by him in the present case was substantial. He stated that it was a new and novel idea conceived by him and on thatbasis the design was devised. He stated that it was a new and novel idea conceived by him and on thatbasis the design was devised. ( 28 ) TILES with sharp edges and corners were already in vogue prior tothe registration of the impugned design. Even these had mottling design onthe top and side walls. The respondent has brought out tiles with rounded edgesand corners. Process by which this has been achieved is not relevant. I haveexamined both types of tiles with sharp corners and round corners. Though,the tile with round corners may look a little different but I would not saythat it is altogether a new or a different design. Merely because tile withround corner was conceived by the respondent, he could not get it registeredas a new design as envisaged under Section 2 (5) of the Act. Some thinkingor mental process has to be gone into while effecting even a small change/variation in the existing design. When it is said that the design should beoriginal or new it does does not mean that it should be a copy or an imritatation or a variation of the existing design. It should be something likeinventive. By making the corners from sharp to round, it cannot be said thatsome new design has been created from ane s own mind and thought. new would be something you develop and which was not earlier in existence. It shouldbe striking new design. Round corner tiles may look fresh, but I would not say that there is any novel idea involved in bringing out a tile with roundcorner. ( 29 ) IF I apply the law and the principles as enunciated in the judgmentsreferred to above, the design in question would merely be a trade variant ofthe existing design of tiles with sharp corners and mottling effect. Both thedesigns are for all practical purposes the same. It cannot be said that thedesign which has been got registered by the respondent is something newor original. ( 30 ) I would, therefore, allow the petition and would cancel the designno. 150873 in clause 4 in respect of tiles. There will, however, be no order asto costs.