APL Apollo Tubes Ltd. Vs Surya Roshni Limited

Mr. Vipin Sanghi, J. - By this order, I proceed to dispose of the aforesaid application filed by the plaintiff to seek ad-interim injunction against the defendant under Order 39, Rule 1 & 2 CPC.

2. The plaintiff has filed the present suit alleging infringement of the plaintiff''s registered design in respect of a Hollow Section Pipe � which the plaintiff claims, as novel and original. The plaintiff claims that novelty and originality in the Hollow Section Pipe designed by the plaintiff resides in its shape and configuration which gives the Hollow Section Pipe an original, unique, new and distinctive configuration, look and feature, which was not available in the market earlier and the same was designed and introduced for the first time by the plaintiff. The plaintiff claims that its original and novel design was not published in India or in any other country, and it was not disclosed to the public anywhere in or outside India prior to the date of filing of the plaintiff''s application for registration of its design. The plaintiff claims that the novelty and originality of the design is as a result of research and development done by its designing team. The design of the plaintiff has special ocular features which appeal to the eye, because of its shape and configuration.

3. The said Hollow Section Pipe is claimed by the plaintiff to be in use in amusement parks, playground equipment, signages, leisure equipment, furniture, transport industries, ceiling support systems, support structures, prefabricated structures etc. It is used as a preferred alternative for rolled products like angles, channels and beams. It is also used for fluid and wire conveyance and can also be used as a door frame.

4. The plaintiff applied for and got registered its design under the Designs Act, 2000 (hereinafter "the Act") in classes 23-01 and 25-99. The applications were made on 25.07.2014 and registration was granted in respect of the Hollow Section Pipes in classes 23-01 vide design registration no.264233, and in class 25-99 vide design registration no.264234. Post registration of the aforesaid designs, the plaintiff claims continuous manufacture and sale of Hollow Section Pipes under the registered designs. The plaintiff claims that its Hollow Section Pipes under the registered design have built up handsome sales over a short span of time. From sales of Rs. 20 lacs in July 2014, the same have arisen to over Rs. 2 crores in January 2016.

5. The defendant is alleged to have knowingly and malafidely infringed the plaintiff''s aforesaid registered designs in Hollow Section Pipe. The defendant filed two applications for cancellation of the plaintiff''s registered designs on 05.02.2016. Upon receipt of notice thereof on 08.02.2016, the plaintiff learnt that the defendant had adopted same/similar designs as that of the plaintiff. The plaintiff states that the defendants have, without waiting for the outcome of the cancellation proceedings initiated before the Controller of Designs, Kolkata, copied all the essential and distinguishing features of the plaintiff''s registered design in Hollow Section Pipes manufactured by it and started manufacturing and selling its infringing products. The plaintiff submits that it became aware of the actual presence of the defendant''s infringing Hollow Section Pipe on 19th February, 2016 when the same became visible in the market.

6. The plaintiff has set out in the plaint itself, the pictures of the products of the plaintiff and the defendant to compare the said product as they appear visually. The pictures are extracted herein below:

7. In the suit, the plaintiff seeks a decree of permanent injunction to restrain the defendant from infringing or using, in any manner, the plaintiff''s registered design bearing nos.264233 in class 23-01 and no.264234 in class 25-99 and in relation to Hollow Section Pipes. Other consequential reliefs are also prayed for, apart from damages of Rs. 1.05 crores along with interest. Along with the suit, the plaintiff has filed the present interim application under Order 39, Rule 1 & 2 CPC to seek ad-interim orders of injunction against the defendant.

8. When the suit and application came up before the Court for the first time on 14.03.2016, the defendant appeared as caveator. Summons and notice were accepted by the defendant in Court and time was granted for filing the written statement/reply and documents by the defendant and for completion of other pleadings. Thereafter, arguments were heard on the interim application and orders reserved on 21.04.2016. Since the judgment could not be pronounced earlier, to recapitulate the submissions, the matter was fixed on 21.12.2016. Learned counsels were heard and judgment reserved.

9. The defendant has filed its written statement. The defendant claims to be engaged in the business of manufacturing and marketing electric, electronic and other allied goods, steel pipes, steel tubes etc. The defendant claims that it is engaged in manufacture of Hollow Section Pipe as well, which are being marked under its brand SURYA. The defendant avers that the impugned design registrations have been obtained by the plaintiff in respect of pre-published designs. The defence is premised on the existence of prior art in respect of the designs in question. The defendant also claims that the designs of the plaintiff have no design features which are appealing to the eye. The said designs are common to the trade, and many other parties are using it. The defendant has filed along with the written statement, documents in support of its plea that various Hollow Section Pipe had been produced by other producers and manufacturers having a similar design as that claimed by the plaintiff.

10. The defendant avers that the impugned designs of the plaintiff are not registerable under the Act, as they are not original or novel and they have already been public in India and other countries. The designs got registered by the plaintiff are functional and generic in nature and not solely judged by the eye. They did not have any aesthetic value and do not qualify as "design" within the meaning of Section 2(d) of the Act. The impugned registered designs are liable to cancellation under Section 19 and 31 of the Act.

11. The defendant avers that earlier, identical frames were easily available in wood. However, on account of scarcity of wood, innovations were done to replace wood with concrete and metal for purpose of manufacture of door frames. The same resulted in development and manufacture of Hollow Section Pipes, some of which are similar to the generic form of a door frame. The defendant has set out in the written statement, several manufacturers/dealers who have been operating since 1962 and are dealing in hollow metal door frames. The said tabulation reads as follows:

12. The defendant further avers that several major trade associations and non-profit organisations have published the designs in question in publications of industry standards and guidelines for manufacture of door frames, which establishes prior art in the field. The details of the same are disclosed as follows:

13. The defendant avers that various manufacturers of Hollow Section Pipe are making the goods in question for the last about 50 years. The alleged designs for Hollow Section Pipe have been published in India since 1960s i.e. prior to the date of the registration of the plaintiffs design on 25.07.2014. The designs of the plaintiff are thus liable to be cancelled. The defendant further avers that there is no element of innovation, novelty or originality in the plaintiff''s registered design. Design means only the feature of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, which in the finished article appeal to and are judged solely by the eye.

14. The submission of learned senior counsel for the plaintiff, Mr. Sandeep Sethi is that earlier, door frames were being manufactured in wood. He submits that the plaintiff was the first to start using Hollow Section Pipes for manufacture of door frames also known as "Chowkhat". He submits that the originality and novelty of the plaintiff''s design resides in the shape and configuration inasmuch, as, the product of the plaintiff manufactured with the registered design has a flat base/back which is affixed in the cement motor wall or is screwed on to the surface where the door frame is to be created/installed. He submits that the Hollow Section Pipes are also used for laying cables.

15. Mr. Sethi places reliance on Bharat Glass Works Ltd. v. Gopal Glass Works Ltd., (2008) 10 SCC 657 to submit that the change of material i.e. from wood to hollow metal frame would also tantamount to a new or original design in respect of the new material/substance. In this case, the respondent had imported rollers from a German company. The said rollers could be used for producing designs not only on glass sheets, but also on plastic, rexine and leather. The respondent had used the German imported rollers to produce designs on glass sheets. The appellant before the Supreme Court submitted that the designs were not new or original, as they had been used on the rollers. The Supreme Court rejected the argument of the appellant that the design of the respondent was not new or original, as there was no evidence to show that the design which was reproduced on glass sheets was ever produced by any other agency on glass sheets. The Supreme Court observed "Therefore the expression "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".

16. The Supreme Court further observed:

"32. 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 manufactured anywhere in the market in India or in the United Kingdom. There is no evidence to show that these rollers which were manufactured or originally designed by the Company were marketed by this Company to be reproduced on glass sheets in India or even in the United Kingdom. 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 the United Kingdom.

33. What is required to be registered is a design which 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 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 particular design on the glass, rexine or leather but we are concerned here with the reproduction of the design from the roller on glass which has been registered before the registering authority. Therefore, this design which is to be reproduced on 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 that this design was reproduced on a glass sheet in Germany or in India. The contents 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 anywhere in Germany".

17. Mr. Sethi submits that the plaintiffs registered design is that of a hollow product, whereas a wooden door frame is not hollow. He further submits that the earlier designs in metal sheet did not have a bottom/back surface like that of the plaintiff. He submits that the Hollow Section Pipes in prior art are a result of two steel/metal frames being welded, whereas the plaintiff''s Hollow Section Pipes are a bereft of any welded joints and when seen as a whole, give originality and novelty to the design. He submits that in these circumstances, the plaintiff is entitled to protection of its registered design.

18. On the other hand, Ms. Pratibha Singh, learned senior counsel for the defendant argues that the plaintiff admits that the design in question, admittedly, is known to be in use in wood. She submits that, according to the plaintiff, change of material amounts to change in design. She disputes this proposition canvassed by the plaintiff. She also disputes the plaintiff''s claim that the flat portion/base did not exist in prior art. While relying upon the definition of the expression "design" contained in section 2(d) of the Act, which "means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms ... ..., which in the finished article appeal to and are judged solely by the eye", she submits that any functional element/aspect of the article is not protected by design law.

19. Ms. Singh has referred to a large number of documents which are brochures published by other manufacturers, claiming existence of prior art in respect of the designs in question. The first such publication is in relation to "Calder Door" which sells and supplies metal doors and frames. Specific reference has been made to the following door frame of "Calder Door":

20. "Calder Door" has been in the business since 1930s. Reference is also made to the publication of "Ceco Door", which is also claimed to be one of the leading manufacturers of steel doors and frames for commercial, industrial and institutional construction. Particular reference is made to the following design of "Ceco Door":

21. Reference is also made to the following designs of "Ceco Door":

22. Ms. Singh submits that the aforementioned design also has a flat base/back which the plaintiff claims to be original and a novel feature of its door frame. She points out that the said publication is dated 08.01.2001. Reference is also made to a publication of "Door Fix", which is also similarly engaged in manufacture of steel door frames and particularly to the following design:

Double Rebate Standard Profile

Wrap Around

It is pointed out that the said publication dates back to 29.03.2001.

23. Reference is also made to the publication of "Karpen Steel" and, in particular, to the following design:

Sub-Block

This drawing is dated 29.03.2001.

24. Reference is also made to "Kutty''s Door Frames", and in particular the following:

25. She also refers to the publication of "Saraswati Steel Tubes", Faridabad and, in particular, to their following design of Double Door Frame pipe under the category Steel Pipes:

26. Ms. Singh also relies upon the publication of "Sehgal & Sehgal Industries", which is engaged in the manufacture of press steel doors and window frames, apart from hollow metal door frames since 1965. Reference is made to the ''Standard Profiles'' published by "Sehgal & Sehgal Industries", which include the following:

27. She submits that the Standard Profile also has a base/back which is claimed to be original and novel by the plaintiff. She also refers to the following design of "Sehgal & Sehgal Industries'' in relation to hollow steel door frames:

28. She also refers to a publication of "Specialty Wholesale Supply (SWS)'', USA and, in particular, to their following "Primed Double Rabetted Jamb", which also is similar to the registered design of the plaintiff:

29. Similarly, she has placed reliance on the publication of "Spence Doors", Victoria in relation to their metal hollow frames for doors and in particular to the following design:

30. In relation to the aforesaid design, she points out that the same also has a base just like the plaintiffs and the defendants product, which is clearly visible and evident from the fact that on the said base, screw/rivets have been affixed.

31. She also refers to the American National Standard Recommended Erection Instructions for steel frames as approved on 10.06.2011, which contains the following designs:

32. She also refers to the publication of "Styles", USA which publishes to design of the hollow metal window/door frames and contains the following publications:

33. The defendant has also filed on record the publication of "Fleming Steel Door and Frames", which contains the following published design:

34. She submits that the Bureau of Indian Standards (BIS) has also published the specifications of steel door frame in May 2003, wherein the similar design has been published which is as follows:

35. Ms. Singh submits that there is no originality in the design of the plaintiff. The expression "original" is defined in section 2(g) in relation to a design to mean "originating from the author of such design and includes the cases which though old in themselves yet are new in their application". In relation to the hollow metal frames for doors and windows, there is no originality in the designs of the plaintiff as demonstrated by the defendant. The application of the design is also not new inasmuch, as, the same designs have been used in relation to hollow metal frames for doors and windows in the past.

36. She also refers to section 4(a) of the Act to submit that a design which is not new or original shall not be registered. She submits that the designs of the plaintiff are, therefore, not registerable at all and, since the same have been wrongly registered, the registrations are liable to be cancelled under section 19 of the Act, for which the defendants application is already pending. Ms. Singh specifically relies upon clauses (b) and (c) of sub section 1 of Section 19 of the Act. Section 19 reads as follows:

19. Cancellation of registration.-

(1) Any person interested 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).........

(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.

37. She submits that the designs of the plaintiff are not registerable also on account of the fact that the same had been disclosed to the public in India as well as in other countries by publication in tangible form by use, and in other ways, prior to the date of filing of the plaintiffs application for registration (section 4(b)), and the plaintiffs designs are not significantly distinguishable from known designs or combination of known designs (section 4(c)).

38. Ms. Singh submits that merely because the Hollow Section Pipe of the plaintiff is not welded, whereas some of those in prior art are welded makes no difference. Ms. Singh submits that the test to ascertain whether a feature of a shape/configuration etc. applied to an article qualifies as a design or not is to see how it would be "judged solely by the eye" in the finished article.

Whether the Hollow Section Pipe is made as a single piece, or is a result of welding does not change the design since the features of shape, configuration does not change by adoption of one or the other process of making the Hollow Section Pipe. She submits that what is to be seen by the naked eye is the front portion of the Hollow Section Pipe, which would be visible after its affixation, and not the base or back of the hollow section since it would not be visible after it is fixed.

39. Ms. Singh submits that there is nothing appealing to the eye in the plaintiff''s design. She submits that such a design is not capable of protection. In this regard, she has placed reliance on the decision of House of Lords in AMP Incorporated v. Utilux Proprietary Limited, (1972) RPC 103, wherein the House of Lords observed:

"... ... There must be a blend of industrial efficiency with visual appeal. If the shape is not there to appeal to the eye but solely to make the article work then this provision excludes it from the statutory protection".

(emphasis supplied)

40. She submits that the House of Lords accepted the submission of the respondent, viz:

i) that the designs contained no features (applied by any individual process or means) which, in the finished article, appeal to and are judged solely by the eye, and;

ii) that even if the designs contained any such features they were methods or principles of construction, or were features of shape or configuration which were dictated solely by the function which the articles to be made in that shape or configuration has to perform.

41. The House of Lords further observed:

"Mr. Collier very fairly acknowledged that no sort of artistic conception was involved in what they devised. All that they set out to do was to produce "the terminal that would do the job". He agreed that customers who bought electric terminals did not buy "on appearance but on performance and delivery and price". What Hoovers wanted was something "that would do the job for them". The terminals would have to be of the "flag" type, and would have to fit within the space available and would have to have a conductor channel capable of accommodating the three sizes of insulation diameters of the conductor wires".

"The question is raised as to the sense in which the features in a finished article are to appeal to and are to be judged solely by the eye. I think that it is clear that the particular feature which is in question or under consideration must be seen when the finished article is seen. But the words of the definition point, in my view, to considerations other than that of merely being visible. The phrases "appeal to" and "judged solely by the eye" denote features which will or may influence choice or selection. The eye concerned will be the eye, not of the Court, but of the person who may be deciding whether or not to acquire the finished article possessing the feature in question. This does not mean that the "appeal" or the attraction must be to an aesthetic or artistic sense � though is some cases it may be. The features may be such that they gain the favour of or appeal to some while meeting with the disfavour of others. Beyond being merely visible the feature must have some individual characteristic. It must be calculated to attract the attention of the beholder. Thus Lord Avonside in one case (G.A. Harvey & Co. (London) v. Secure Fittings Ltd. (1996) RPC 515 said that for a design to appeal it "must be noticeable and have some perceptible appearance of an individual character". In the same case he referred to what had been constructed as being "of a distinctive shape or configuration which appeals to the eye and that shape or configuration is an addition to or embellishment of the fundamental form of such a unit and is not dictated solely by function". In another case, Swain (Mathew) Ltd. v. Thomas Barkers & Sons Ltd. (1967) RPC 23, Lloyd � Jacob J spoke of "artistic variants" which had imported "genuine design characteristics" of "a striking feature making an immediate appeal to the eye". I find it unnecessary to consider the facts or the decisions in these cases but the words which I have quoted are useful by way of illustration of the meaning of the words now being considered.

It does not seem to me that the terminals now in issue possess features of shape which can be said to have any eye appeal. But whether this is so or not the words of exclusion which are in the latter part of subsection (3) are, in my view, applicable. The expression "design" does not include a method or principle of construction or features of shape or configuration which are dictated solely by the function which the article to be made in that shape or configuration has to perform. In my view, no question in relation to "a method or principle of construction" arises in this case but the question may be asked � why was it that the terminals were evolved with the features of shape which they possessed? There is no room for doubt as to the functions that the terminals when made would have to perform. Was their devising governed solely by the consideration that they must perform those functions? On the facts of this case I think that it is clear that was the sole consideration which actuated Mr. Collier. I would not, however, exclude from possible validity for registration a case where someone set out to produce an article that would perform a particular function but where in producing it he added or applied (by any industrial process or means) some feature of shape that was additional to or supplementary to what was functionally needed, with the result that in the finished article there was a feature that appealed to the eye. There might, then, be a feature of shape which was not solely dictated by or governed by the consideration that the article should do what it was required to do. In the present case the terminal was simply devised so that it should "do the job". It was to perform the function that was defined by Hoover''s requirements. The terminal is I think to be considered as and looked at as a unit. But if its constituent parts are considered I think that on the evidence each one was solely devised so that it should correctly perform its own particular function. There was nothing extra. There was nothing that could be regarded as any kind of embellishment. First and last and all the time the key-note was functional success. The terminals, unseen in the machines for which they were required (save by those who make or service the machines), had only to pass the test of being able to perform their functions. They would be judged by performance and not be appearance".

(emphasis supplied)

42. She also places reliance on Negretti and Zambra v. W.F. Stanley & Co. Ltd., (1962) 42 RPC 358. In this case, the plaintiff had obtained registration of its design in respect of a stove thermometer having the tube bent at an angle of 90 degree. The novelty claimed was the shape or configuration of the stove thermometer having the scale face ''A'' projecting and being inclined as shown. Representation of the plaintiffs design was as follows:

43. The plaintiffs alleged infringement of their design by the defendant. The defendants claimed that the plaintiff''s design was not, on the date of registration, new or original, and that the same had been previously published in the U.K. The design did not constitute valid subject matter for registration inasmuch, as, it was merely a mode or principle of construction of a mechanical device and mere trade variant of well known devices. The Chancery Division while rejecting the plaintiffs claim, inter alia, observed as follows:

"The defendants allege that this Design is not new and original, and that they have not infringed it. A number of prior documents and prior articles have been put in for the purpose of proving prior publication, and from those it is quite plain that stove thermometers were old; inlet tubes at right angels to the thermometer were old; the inclined faces of the scale of the thermometer to the stove were also old; and there is really nothing new about the present Design, except possibly the combination of the two lungs for the purpose of screwing the instrument on to the stove face in an article in which the inlet tube of the thermometer was at right angles to the thermometer itself. The plaintiffs instrument, like the defendants, is intended to be used with the thermometer lying in a horizontal position, so that any person standing in front of the stove can read it, the reading being facilitated by reason of the inclined scale attached to the stove. There is nothing whatever in the drawing of the plaintiffs design, when the heat figures are eliminated, to show whether the thermometer is intended to be used in a horizontal or in a vertical position".

"It seems to me that what the plaintiffs have done is to make a neat and handy instrument similar in character as compared with many which went before, but which contains no novelty, within the meaning of the Act, which renders it a new and original Design as distinct from the many very similar Designs which had previously existed, and all that has been done to apply ordinary trade variants or trade adjustments well known and common for the purpose of making an instrument useful for the purpose for which it was intended and not rendering it qua configuration or design anything substantially new and original at all."

(emphasis supplied)

44. She also places reliance on The Wimco Limited v. Meena Match Industries, AIR 1983 Del 537. The plaintiff had initiated action alleging infringement of its design to the chemical application applied on both sides of the panel of the match boxes, which when rubbed with the match stick ignites the same on account of friction. The Court while rejecting the plaintiffs claim, inter alia, observed:

"The features of the friction application incorporated in the match box are dictated solely by the function. The pattern/design possesses no additional feature. It is a mere mechanical device to achieve the same object of igniting the match head. The pattern claimed by Wimco is in rectangular form with multiple diamond-shaped spots. It is contained in the ''perspective view'' and ''side view'' also in the drawings. The same shape or pattern has previously been thought of in connection with the match box in the leather container in the said specification No. 29046 and the idea published. The previous idea will act as an anticipation of the later design. The eye and the eye alone, as Section 2(5) of the Act says, is to be the judge of the identity, and to decide whether one design is or is not an anticipation. I have looked into the general features of both the designs to find out if the one design is as good as the other and my conclusion arrived at by visual examination of the two is that they are identical. The registered design of Wimco is, of course, an exact copy or replica of the design of the Swedish Company in SM-1. It is settled that the underlying principle behind the law of infringement of design is that, while the commercial exigencies require that a specific design should be protected, the monopoly of a trade in respect of a common design previously published should not be encouraged."

(emphasis supplied)

45. Ms. Singh submits that the decision in Bharat Glass (supra) relied upon by the plaintiff is distinguishable. She submits that in that case the respondent had claimed to be the originator of a new and original design applied in the process of glass sheets. The glass sheets had eye catching shape, configuration, ornamental pattern, get up etc. which were got registered, and were pending registration under the Designs Act. The appellant before the Supreme Court had assailed the said designs on the ground that the said designs had been created by using the German imported rollers. The Supreme Court held in favour of the respondent on the premise that the rollers were a different article than the glass sheets on which the respondent had put the said design, and there was no evidence or material placed on record to show that the design in question had been applied on glass sheets. She submits that in the present case, the designs over which the plaintiff claims registration have been applied on hollow metal frames used as door and window frames. Thus, the decision in Bharat Glass (supra) has no application in the facts of the present case.

46. She also places reliance on Metro Plastic Industries (Regd.) v. Galaxy Footwear, New Delhi, AIR 2000 Del 117, which is a decision of a Full Bench of this Court dealing with section 51A and 53 of the Designs Act, 1911. The Full Bench held that mere registration of a design does not prohibit any other person, who claims that the said registration is invalid, to use a similar design. Section 51A of the Designs Act, 1911 dealt with cancellation of registration. Section 51A of the Designs Act enabled the applicant to apply for cancellation of a registered design. Section 53 of the Designs Act, 1911 substantially provided that during the existence of copyright in any design, it shall not be lawful for any person to infringe the same. The Full Bench held that in the absence of an application for cancellation of the design, such a right could be enforced and no defence could be taken on the ground of cancellation. But once an application for cancellation has been made, then it would not be open to the Court trying the suit under section 53, to turn a blind eye to the pendency of such an application. In that situation, the Court must take into consideration all the relevant facts - which include the grounds raised in the application for cancellation, and then decide whether, or not, to grant any injunction in favour of the registered owner. Such a decision must be made judiciously, and the Court would apply the principles which govern grant of injunction under Order 39, Rule 1 &2 CPC. The grant or refusal of injunction must be based upon all relevant factors. The Full Bench also took note of the fact that under the Designs Act, there is no provision for advertisement or for calling for any opposition to the registration of a design. Merely on an application, a design could get registered if the registering authority felt that the same was new and original and one which had not been previously published in India.

47. Ms. Singh submits that though the said decision was rendered in the context of the Designs Act, 1911, the same principles are applicable to the present case. The fact that the defendants application for cancellation of the plaintiffs registered design is pending should be taken into consideration and the grounds on which the cancellation is sought, which have also been taken as a defence in the written statement, should be considered by the Court. Mere registration of the designs does not, in any way, grant any advantage or presumption of validity of the registered design in favour of the plaintiff.

48. In his rejoinder, Mr. Sethi submits that most of the publications relied upon by the defendant do not have a date, and it is not clear on a perusal of the same � whether they constitute prior art, or not. He submits that unless it is established by the defendant that the said publications are prior in point of time to the date of application of the plaintiff for registration of its design, the same would be of no avail to the defendants. In this regard, specific reference is made to the publication of "Spence Doors", Victoria relied upon by the defendants. Mr. Sethi further submits that several of the prior publications relied upon by the defendant are open sections having no base/back, such as the publications found in the "American National Standard", which recommends the erection instructions for steel frames. Similarly, the publication of "Stiles Custom Metal Inc." is also an open section. This is unlike the plaintiff''s design which, as aforementioned, has a flat base/back. Mr. Sethi also submits that some of the prior art as relied upon by the defendant is in the name of the dealers of the plaintiff to whom the products are supplied by the plaintiff themselves. Specific reference is made to Saraswati Steel Tubes in this regard. It is further submitted that the plaintiff''s design is not a mechanical device. There is no mechanism involved in the design of the plaintiff, it does not require any movement. It is only a frame which is fixed, inter alia, on doors/furniture and support structures.

49. Mr. Sethi has also relied upon Eicher Goodearth Pvt. Ltd. v. Krishna Mehta & Ors., 2015 (63) PTC 444 (Del). In the said decision, the Court took note of the well settled position in law that though the design may be old in itself, but if it is applied to a new article to which it has never been previously applied, the said design needs to be protected. He submits that the design of the Hollow Section Pipes may have been used earlier in wood but the same has not been used in metal frames earlier, which is a new article and, therefore, needs protection. The Court, amongst others, took note of the decision in Asian Rubber Industries v. Jasco Rubber, 2013 (1) Bom CR 393 and observed as follows:

"(d) In Asian Rubber Industries v. Jasco Rubber 2013 (1) Bom CR 393, Paras 3, 13, 14, 15 & 19, the defendants had challenged the validity of the design of the plaintiff on the ground that the said design of the footwear registered by the plaintiff was not new or original as the said design was developed from ''Padukas'' which design has been commonly available since centuries. In the said case, the Court was of the view that the plaintiff is not claiming to be the inventor of ''Padukas'' and is not claiming exclusivity by way of a patent right.

However, the plaintiff is claiming exclusivity in the ''Creative Expression'' and the ''Look and Feel'' of their products. It was further observed that in the recent past, it is not known that the said look and feel of Padukas with the modification of strap to support the foot has been applied by any person to footwear. Thus, application of design of Padukas - of its ''Look and Feel'', to footwear by the plaintiff in the recent past certainly falls within the meaning of ''Original'' as defined in the Act and includes the cases which the old and themselves yet are new in their application (Relevant paras 3, 13, 14, 15, 19)".

50. Mr. Sethi also places reliance on a recent decision of this Court in Bhatia Enterprises v. Subhash Arora, 2016 (65) PTC 364 (Del). In this case, the plaintiff alleged infringement of its registered design in a water jug. The defendants application for cancellation of the registration of the plaintiffs design was dismissed by the Asst. Controller of Patents & Design. One of the grounds was that the pictorial representations of the design of the water jug submitted by the defendant were not substantiated with the date of publication or sale. The alleged prior and pre-published design also did not show any date of publication, or date of its sale, to decide the period of disclosure to the public. This Court accepted the said position while deciding the interim application in favour of the plaintiff. The Court observed:

"In view of the above findings that the impugned design was not published prior to its date of registration and as well as the visual impression of the impugned design is different from that of the cited designs of the petitioner, I construe that the subject design is new. ...."

51. Mr. Sethi submits that in view of the said decision, the undated publications filed by the defendant are of no avail.

52. Mr. Sethi has referred to the publication of "Calder Door" relied upon by the defendant, which shows that the same is in relation to an open section i.e. without a base. Similarly, Mr. Sethi has referred to the publication of "Ceco Door" in this regard. He has also submitted that the design of "Ceco Door" set out herein above, is a very different design from that of the plaintiff and there is no similarity between the two. In relation to the design published by "Karpen Steel", he submits that the same is a combination of two different sections as would be evident from the publication itself - as there is a joint in the frame. However, there is no such joint in the case of the plaintiffs design. He submits that the design publication by "Kutty''s" is in solid hard wood and is not in relation to hollow pipes of steel section. He submits that the design published by "Sehgal & Sehgal Industries" relied upon by the defendant is very different from that of the plaintiffs. The visual impact of the same is different, which is what is relevant for the purpose of design registration and protection. Similarly, he submits that the design published by "Sehgal & Sehgal Industries" reproduced herein above, is an open section and it does not have base/back and is, therefore, different. Similarly, the publication of "Spence Doors" Victoria shows that the same is an open section. So far as the publication of "Specialty Wholesale Supply (SWS)" is concerned, the design appears to be hollow and it is made in hard wood.

53. Lastly, Ms. Singh while dealing with the submissions of Mr. Sethi made in rejoinder, submits that she also relies on the principles of law laid down in Eicher Goodearth (supra). She submits that the plaintiff is not correct in claiming that the door and window frames of Hollow Section Pipes are a different article than the wooden frame/choket. She submits that both the articles are the same and, therefore, the principles invoked by the plaintiff are of no avail to the plaintiff.

54. To begin with, it is essential to understand as to what meaning and scope of a "Design" which the Act protects. "Design" is defined in Section 2(d) of the Act in the following manner:

"(d) "design" means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958) or property mark as defined in section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957 (14 of 1957)".

(emphasis supplied)

55. Thus, design means only the features of shape, configuration, pattern, ornament, or composition of lines or colours applied to any article, which in the finished article appeal to and are judged solely by the eye. This fundamental characteristic of a design have been repeatedly highlighted by the Courts, not only in England but in India. In AMP Incorporated (supra), the House of Lords emphasized that the design should have visual appeal. If the element of visual appeal is lacking and the design of the article merely makes the article more user friendly, i.e. that the design is only functional, it would not be entitled to protection under the Act. The features of the design must have some individual characteristic. It must be calculated to attract attention of the beholder. It must be noticeable and have some perceptible appearance of an individual character. In AMP Incorporated (supra), the House of Lords further observed that the expression ''design'' does not include the method or principle of construction, or features of shape, or configuration, which are dictated solely by the function which the article to be made in that shape or configuration has to perform.

56. In Negretti & Zambra (supra), the Chancellery Division rejected the claim of the plaintiff for design protection on the ground that the instrument of the plaintiff was similar in character as compared to many which went before, but which contained no novelty within the meaning of the Act which would render it a new and original design, as distinct from the many very similar designs which had previously existed. In that case, the Court held that all that had been done by the plaintiff was to apply ordinary trade variants or trade adjustments well known and common for the purpose of making an instrument useful for the purpose for which it was intended. The instrument could not be said to be a substantially new and original design at all.

57. This Court in The Wimco Limited (supra) rejected the claim for design protection by applying the aforesaid principles. The Court held that the same shape or pattern had previously been thought of in connection with the match box in the leather container. The previous idea acted as an anticipation of the later design. On a comparison of the earlier design with one in respect whereof protection was claimed, the Court held that the two appear to be identical.

58. In the present case, the plaintiff is claiming design protection in respect of the Hollow Section Pipe made of steel. The plaintiff claims uniqueness of its design on the premise that Hollow Section Pipes in prior art and in use, did not have a base/back with the metal plate. Even if this submission of the plaintiff were to be accepted � though, the defendant has disputed the same and has claimed that their existed prior art in respect of the same design, i.e. with the flat base/back, the plaintiff has not been able to show as to how flat base/base allegedly introduced by the plaintiff for the first time, renders the design to be new and novel which appeals to the eye and eye alone, and is not merely functional. When one looks at the design of the plaintiffs Hollow Section Pipe as set out in paragraph 6 herein above, and compares the same with the admitted prior art, i.e. of the Hollow Section Pipe as depicted in paragraph 19 herein above onwards, there is absolutely nothing to suggest that the creation of the metal base/back has added to the visual appeal of the Hollow Section Pipe existing in prior art. Moreover, it is abundantly clear that the metal base/back in the Hollow Section Pipe of the plaintiff serves only the functional purpose, i.e. of providing a base for fixing the Hollow Section Pipe on the desired surface in whatever manner the user may decide to affix the same. The metal base/back of the Hollow Section Pipe may be affixed either by using rivets, screws or adhesives. The two Hollow Section Pipes � one with the base and the other without the base would look the same after affixation. Before affixation and use, they would look somewhat different, but the said difference cannot be said to have created, added to or enhanced the visual appeal to the Hollow Section Pipe with the base, as compared to the one, without the base. Thus, to me it appears that the metal base/back in the plaintiff''s Hollow Section Pipe is purely functional, bereft of any visual appeal whatsoever.

59. I also find merit in the submission of Ms. Singh that there was prior art available at the time when the plaintiff claimed registration of its design in respect of its Hollow Section Pipe. The documents, in relation to existence of prior art, were filed by the defendant along with its application seeking cancellation of the plaintiff''s design. Those documents have been placed on record by the plaintiff itself. No doubt, some of the documents of prior art relied upon by the defendant do not indicate the time of their publication, but there are several other documents placed on record by the defendant along with its cancellation application which do support the defendant''s claim that prior art existed in respect of the design over which the plaintiff claims proprietary rights. For the present purpose, it is not necessary to deal with each and every of the documents relied upon by the defendant to claim prior art, and it would suffice to refer to only some of them which, prima facie, support the said claim of the defendant.

60. The design of "Ceco Door" labeled as "Con" in respect of the hollow metal pipe shows that the said design was published on 08.01.2001, or earlier. Similarly, the design of "Door Fix" labeled as "Double Rabetted Standard Profile" and "Wrap Around" also appear to be the publications of the year 2001. From the literature placed on record it, prima facie, appears that the same refers to hollow metal frames. The publication of "Karpen Steel" which shows that the same is of 29.03.2001 is also a strikingly similar to the design of the plaintiff and the defendant.

61. I also find merit in the submission of Ms. Singh that the publication of the American National Standard Recommended Erection Instructions for Steel Frames approved on 10.06.2011 and Bureau of Indian Standards for Steel Door Frames-Specification dated May, 2003 also constitutes relevant prior art. The same also shows existence of hollow metal frames - similar to those of the plaintiff and the defendant. The only distinction is that the metal base/back is missing. However, as observed earlier, the addition of the metal base/back appears to be only functional, and does not create or enhance the visual appeal of the metal frame and the same is, therefore, of no consequence.

62. To deal with the submission of Ms. Singh that all that the plaintiff has done is to use the pre-existing design � earlier used in wooden door frames/chowkhats, by converting the same into hollow metal door frames, Mr. Sethi has placed reliance on Bharat Glass (supra). In my view, the said reliance is misplaced. As rightly pointed out by Ms. Singh Bharat Glass (supra) was a case where a new and original design was claimed to have been applied to glass sheets which had eye catching shape, configuration, ornamental pattern, get up, etc. for the first time. It was these features in respect whereof design registration was claimed. The defendant had opposed the said claim for design protection on the premise that the rollers used for creating the design on the glass sheets were imported German rollers. The Supreme Court held in favour of the plaintiff on the premise that rollers were a different article than the glass sheets on which the plaintiff had put the said design, and there was no evidence of the rollers being used for the said purpose earlier. The decision in Bharat Glass (supra) has no application in the present case for the reason that, firstly, there is no eye appeal in respect of the hollow metal frames of the plaintiff; and secondly, the design of the plaintiff was available in prior art.

63. It is well-settled that a mere registration of the design does not entitle the registrant of the design to claim protection and it is always open to the defendant to plead and set up a defence of lack of novelty or eye appeal and of existence of prior art (see Metro Plastic Industries (Regd.) (supra)). In my view, reliance placed by Mr. Sethi on the Eicher Goodearth Pvt. Ltd. (supra) is of no avail, since I am of the view that there is no appeal to the eye in respect of the plaintiff''s design and also in view of the fact that there is no novelty in the plaintiff''s design as the same existed in prior art. Reliance placed on Bhatia Enterprises (supra) is of no avail since the defendant has been able to show, prima facie, the publication of the prior art many years before the registration of the plaintiff''s design.

64. For all the aforesaid reasons, I find no merit in the present application and dismiss the same with costs of Rs. 50,000/- to the defendant. It is, however, made clear that the observations made by me in this order are founded upon only a, prima facie, evaluation of the materials placed before the Court and shall not prejudice the case of either party at the final stage post-trial.