Baboo Lall Jain, J.@mdashThis application has been made by M/s. Hindusthan Seals Ltd., inter alia, praying that the registration of design being No. 166050 dated August 18, 1993 be cancelled. The Petitioner seeks cancellation of the registered design is, inter alia, on the ground that the design is not a new or original design and that it has been published in India prior to the date of registration.
2. The case of the Petitioner is, that the Petitioner is engaged, inter alia, in the business of manufacture and sale of metal caps commonly known as P.P. Caps and/or ''Metal Caps'' and/or ''Chamfered Caps''. The Petitioner has been supplying such metal caps to various well-known companies spread all over India. According to the Petitioner, depending upon the requirement of the end user, the basic layout of the design is prepared by the Petitioner and colour, combinations are decided in consultation with the customers of the Petitioner. One of the processes of such manufacture is by printing the name and design and logo of the concerned customer on the outer surface of the cap. The other process for such manufacture is by embossing the design or the name or the logo anywhere on the outer surface of the metal caps. The caps manufactured by the second process are called as ''Chamfered Caps''. According to the Petitioner, the traditional process of manufacture of metal caps with designs on the same, was by printing thereon the name or the logo or the design of, the concerned customer. In or about 1988. the Petitioner states that it introduced in India a process of manufacturing Chamfered Metal Caps and since then it has been manufacturing and supplying Chamfered Metal Caps to the distilleries. The Petitioner is relying on various documents which show that the Petitioner has been supplying Chamfered Caps to various parties since i98S. According to the Petitioner, there are other manufacturers of metal caps including M/s. Larsen & Toubro Ltd., Shyam Industries. According to the Petitioner, the Petitioner and other companies have been manufacturing such caps including Chamfered Caps since prior to August 16, 1993 which is the dale on which the application for registration was filed by the Respondent Rajendra Somani. The Petitioner filed a request for search u/s 51 of Designs Act, 1911, with the Controller of Patents and Designs, Calcutta, on March 10, 1994 ; and by letter and/or order dated March 17. 1994 the Petitioner was informed that the exact article had been registered in Class-I bearing registered design No. 166050 in the name of ''Rajendra Somani of Oriental Containers Ltd. The Petitioner had requested for search about three designs of caps with Chamfered Logos on the sides �two of them having Chamfered Logos in or about the middle of the sides of the cap with the logos- of ''Peter Scot and ''Antiquity'' and the third one having a Chamfered logo on the knurl portion at the top. The said designs were-''said to be covered by the said registered design No. 166050.
3. Thereafter the instant application was filed by the Petitioner, inter alia, u/s 51A of Designs Act; 1911.
4. In the affidavit-in-opposition filed on behalf of the Respondents Nos. 1 and 2 a copy of the certificate of registration of the design is annexed. The said certificate is, inter alia, to the following effect:
Certificate of Registration of Design No. 166050 Date 18th August, 1993 Certified that the Design of which a copy is annexed hereto has been registered as of the number and date given above in Class 1 in respect of the application of such design to Chamfered Metal Cap in the name of Rajendra Somani of Oriental Containers Ltd., 1076, Dr. E. Moses Road, Worli, Bombay, Maharashtra, India an Indian national, in pursuance of and subject to the provisions of the Designs Act, 1911, and the Designs Rules, 1933.
5. The annexures to the said certificate,, inter alia, mention as hereunder:
PERSPECTIVE VIEW Endorsement of Novelty The Novelty resides in the shape, configuration, surface pattern and particularly to the portion marked ''A'' of the metal cap as illustrated in the bottom, view and-photograph (above).
Endorsement of Disclaimers (1) No claim is made by virtue of this registration to any right to the use as a trade mark of what is shown in the representation.
(2) No claim is made by virtue of this registration to any right to the exclusive use of the words, letters, logo appearing in the design.
(3) No claim is made by virtue of this registration in respect of any mechanical or other action of the mechanism, whatever or in respect of any mode of principle of the construction of the article.
(4) No claim is made by virtue of this registration to any right to the exclusive use of colour or colour combination appearing in the design.
6. In the said annexure in Sheet No. l there is a photograph of a metal cap showing Chamfered word ''McDowell'' in the knurl portion of the metal cap. In Sheet No. 2 of the said annexure there are two drawings on the left hand side of the endorsement of Novelty and endorsement of disclaimers which are supposed to give a side view of the design and the bottom view of the design. In the side view of the design, a side view of the metal cap is given with a rectangle in the knurl portion in which the word ''Logo'' is written. The bottom view shows a circle with two raised portions in two sides.
7. In the affidavits as also in the argument it was submitted by and/or on behalf of the Respondents Nos. l and 2 (hereinafter referred to as the'' Respondents'') that the order dated March 17 1994 was not, correct. The order dated March 17, 1994 was of Scientific Officer, in the office of the Controller of Patents and Designs and the same was not correct and that, according to the Petitioner, the registration of design only applied to one of the caps in the middle of the photograph with the word ''Vesco'' at the knurl portion and not to the metal caps with the words ''Peter Scot'' and. the word ''Antiquity''. The original records of the Controller of Patents and Designs were called for in respect of the request for search and the answer thereto as also in respect of the registration of the design and the application in the prescribed Form No. 15. It appears from the records produced by the Controller of Patents and Designs (Xerox copies whereof were retained in this Court, after the originals were produced). The application in Form No. 15 for registration of design was originally submitted on August 16, 1993.
8. The endorsement of the novelty in the said design wzl originally as follows:
The Novelty resides in the chamfered pattern provided in the upper portion of the side wall of the metal closure above the top groove ''G''. The chamfered pattern is formed by embossing of the upper portion the side walls of the metal closures by outwardly projecting numbers, letters, words, marks or logo and fine milling for fracturing their outer surface giving a glittering surface of said numbers, letters, words, marks or logo.
9. It also appears from the said records that the aforesaid original endorsement of Novelty and the endorsement of disclaimers as submitted on August 16,1993, ware cancelled by the Petitioner. Why was the aforesaid endorsement of Novelty cancelled and a new endorsement of Novelty submitted unless there was some resin behind it ? The aforesaid endorsement of Novelty at least confined itself to the upper portion of the side walls above the top groove marked ''G''. The new endorsement of Novelty is different and it does not exclude caps with chamfered logo on other portions, of the side wall. The language used in the changed endorsement of Novelty reads as follows:
The Novelty resides in the shape, configuration surface pattern and particularly in the portion marked ''A'' of the metal cap as illustrated in the bottom view and photograph (above).
It also appears that by letter dated October 18, 1993, the Patent office pointed out certain defects in the application of the Respondent No. l. It also appears that by letter dated October 22, 1993 the Respondent No. 1 submitted a corrected Form No. 15 and amended copies of photographs and copies of drawings.
10. In the affidavit-in-opposition filed on behalf of the Respondents Nos. l and 2 being the affidavit affirmed by V.B. Memani on June 22, 1994, it has, inter alia, been stated that chamfered caps were introduced in the foreign countries. It has also been stated that the Respondent company had been manufacturing and supplying chamfered pilfer proof caps since 1986-87. According to the Respondents Nos. 1 and 2, the design for caps incorporating the chamfered logo on the body of the cap was not registered and several manufacturers in India including the Petitioner had started manufacturing chamfered caps with a logo on the body below the knurling and top groove (beading) of long or deep drawn caps.
11. In sub-para. 4(m) of the said affidavit-in-opposition it has been staled as follows:
Prior to 1992, every pilfer proof cap had the traditional knurl with vertical serrations. In or about 1992 the Respondent No. 1 worked on a novel and original design for pilfer proof aluminum caps. For the first time, the knurl portion of the cap, which hitherto had vertical serrations intended to give a grip for opening the pilfer proof cap, was substituted and improved upon with a chamfered logo which would not only create the necessary resistance to provide the grip but would also enhance the aesthetic and trade appeal of the product. Such chamfering is to be done between the top of the cap and the first groove or beading. The total height available was 4 mm. The chamfering height is roughly about 2.8 mm. By introducing this design for the first lime in the world, the Respondent company made history in the pilfer proof caps industry. The novelty of the new design was that the knurling which was traditionally used for the function of the grip on the traditional cap was substituted by embossing the cap at knurling points and the embossed portion was chamfered which facilitates and works as a dual function, viz.
(i) Embossing facilitates proper grip of the cap.
(ii) Chamfering enhances visual appeal which is aesthetic and its glittering glow increases and attracts the customer appeal from the shelf.
12. In the said affidavit-in-opposition it has also been stated that the unique nature and novelty of the said new design cap of the Respondent company is not merely in chamfering, but in incorporating at the knurl portion of the cap a chamfered logo in the place of the traditional vertical serrations therein and yet providing grip of the cap at the knurl'' portion. According to the said affidavit-in-opposition, what the Petitioner and others have been marketing arc merely caps with a. chamfered logo on the body below the top groove of the long or deep drawn pilfer proof caps, and not at the knurl portion of the cap in the place of the traditional vertical serrations therein.
13. In a sense the position taken by the Respondents Nos. 1 and 2 in their affidavit-in-opposition is that the chamfered caps with a logo on the sides below the knurl portion has been manufactured by the Petitioner as well as the Respondents since long prior to their application for the registered design. The Respondent No. 1 is not claiming any right so far as the manufacturing of deep drawn or shallow drawn pilferproof caps is concerned, they are also not claiming any right in respect of the coloring of the caps, they are also not claiming any right in respect of any embossing or chamfering and they arc also not claiming. any right so far as the placing of the log on the sides below the knurl portion is concerned. So far as logos arc A concerned the Respondents have only shown the name of ''McDowell'' and the said name could apparently be put in with the permission of McDowell & Co Ltd. The correspondence annexed to the affidavit- in-opposition also shows, that the said logo of the McDowell has been put under the permission of McDowell. The Respondents are not claiming any right in respect of the word ''McDowell''. In the endorsement of disclaimers also it has been made clear that the said Respondents are not claiming any right to the exclusive views of the words, totters ''logo'' appearing in the design. It is also made clear in the endorsement of disclaimer that no right is claimed to use as a trade mark of what is shown in the representation. In substance, the real right that is claimed by the Respondents is in respect of shallow drawn caps of the sizes of 30 mm. and below. The Respondents are not claiming any right in respect of either the shape of the cap or the colors to be put thereon and/or the logos of different parties that may be put, but they are claiming that so far as the removing of serrations at the top and the right to; put any logo in the knurl portion are concerned, they alone are entitled to do so and no-one else is entitled to do so.
14. The question that has been raised on behalf of the Petitioner is that there is nothing new or original in the alleged design alleged to be registered in favour of the Respondent No. 1. The certificate says that the design of which a copy is annexed to the certificate has been registered in respect of the application of such design to chamfered metal cap. In the annexed design no size* of the metal cap is given. The novelty that is claimed in the annexed design is in the shape, configuration, surface pattern and particularly to the portion marked ''A'' of the metal cap. In the portion marked ''A'' the word ''McDowell'' Is appearing. No right is claimed in respect of the user of the said word by the endorsement of disclaimers. No claim is made for exclusive use of the words letters ''logo'' appearing in the design. No claim is made by the /"registration in respect of mechanical or other action in the mechanism. No claim is made in respect of exclusive use of the colour or colour combination. By use of the words particularly to the portion marked ''A'' associated with the words ''Chamfered Metal Gap'' in the certificate, it can fairly be said that chamfering may be generally in any portion of the metal cap. Furthermore, metal cap of this design have been manufactured since 1988. Even according to the Respondent No. 1, the only case of the Respondent No. 1 is that in the knurl portion, the chamfered logo has been put in for the first time by the Respondent No. 1 and the removal of serrations has been done for the first time by the Respondents in the knurl portion. In the endorsement of novelty these things are not mentioned. That chamfered caps have been manufactured since 1988 is not disputed. It is also not disputed by the Respondents that chamfered logos have been placed on the sides of the caps.
15. Inasmuch as the Respondent No. 1 has not specified the novelty in so many words and inasmuch as the Respondent No. 1 has not specified as to what is the change in respect of the designs already manufactured and the design sought to be registered and" inasmuch as the Respondent No. 1 has claimed novelty in the shape, configuration, surface pattern of the metal cap, the Registrar in his answer to the request for search included all the designs of all the sizes with chamfered logo on different portions, as covered by the registration.
16. It was sought to be submitted on behalf of the Respondents that the answer to the request has been given by the scientific officer and not by the Controller himself. However, the records of the Controller produced before this Court show that the said order and/or answer was given from the Controller''s office by an officer of the ''Controller in the usual course, and it can fairly be presumed to be under proper authority and in the usual course. The request for search was filed in the office of the Controller � after payment of Rs. 50. It was for the Controller or his office to deal with the said request in the usual course. The Controller on receipt of. the request could ask his officers to deal with the matter and if an officer has dealt with the matter in the usual course, it cannot be challenged by a third party. Even looking at the certificate of registration and the documents annexed to the same, it does not appear that sufficient particulars are given with regard to the alleged novelty and/or with regard to the chamfered caps which are excluded from the claim of the chamfered caps of all sizes and does not exclude any chamfered caps with logos in any other place. .
17. The next point for consideration is that even assuming that the claim of the new design is confined to chamfered logos in the knurl portion even then, can it be said that by changing the location of the logo from the middle portion to the top a new design has come into existence. So far as the question as to removal of serrations is concerned, it is not specified in the endorsement of novelty in the certificate for registration of design and, furthermore, there is evidence on record that shows that caps without serrations at the top or knurl portion were also in use. Such caps contain serrations� in the portion below the knurl portion.
18. After the affidavit-in-opposition was filed, the Petitioner came to know as to the contents of the certificate. The Petitioner had no right to inspect the records of the Controller in respect of the registered design and the certificate as annexed to the affidavit affirmed by V. Q* Mcmon on June 22, 1994, disclosed the contents thereof to the Petitioner for the first time. From the affidavit-in-reply and the various supplementary affidavits that have been filed thereafter by the parties, it appears that there is a cap in which serrations are in the middle and not at the top portion. From the affidavit-in-reply as also the supplementary affidavit it appears that the Petitioner supplied 25 mm. ''Vesco'' side embossed and chamfered caps to Vesco Products Co. on July 28, 1993, and Central excise duty in respect thereof was paid. The copy of the challan is also annexed to the affidavit-in-reply and a sample of the chamfered cap is also annexed to the affidavit-in-reply. There is also an affidavit affirmed by Bircndra Nath Pathak, one of the partners of Vesco Products Co. on July 5, 1994, in which he has stated that offers for supply of pilfer-proof caps was made in September 1992 and that samples were supplied in February 1993 and that regular supplies were made from July 1993. The Petitioner has also annexed copy of letter written by R.K. Aluminum Ltd., a sister concern of the Petitioner, to Shiva Distilleries Ltd. dated September 19, 1991, and reply thereto by Shiva Distilleries Ltd. dated October 25, 1991. with regard to the offer of similar type of cap with word ''Shiva'' embossed and chamfered in the knurl portion. There is another copy letter written R.K. Aluminum Ltd. to Reckitt & Colman of India Ltd. dated. September 19, 1991, offering similar cap with chamfered logo in the knurl portion and the reply thereto by Reckitt & Colman India Ltd. dated October 9, 1991. The Respondents were given an opportunity and they filed further supplementary affidavits being affidavits affirmed by V.B. Memoni on August 24, 1994, and August 31, 1994. The Respondents Nos. 1 and 2 have sought to make out a case as if the documents annexed to the said affidavit-in-reply were not genuine or that the payment of excess duty and/or the challans and/or the correspondences were not genuine. I do not think that Mr. V.B. Memoni. can allege as true to his knowledge, that the said documents annexed to the affidavit-in-reply are not genuine or that the same are false. Furthermore the Respondents produced certain purchase vouchers of Vesco Products and also samples thereof which did not have metal caps said to be supplied by the Petitioner. The Petitioner also caused an affidavit-in-reply to be affirmed and filed being the affidavit affirmed by Gokul chand Rawat on November 1(5, 1994. The Petitioner has produced bottles purchased from the Vesco Products Co.. The Petitioner purchased twenty bottles of different items of Vesco Products Co. which have 25 mm. caps with chamfered logo, at the knurl portion and the caps bear the initial H.S. of the Petitioner. A further supplementary affidavit was affirmed on behalf of the Respondents on December 15. 1994, and was filed on December 23, 1994, claiming that the entry glacial which had earlier won the India star ''94 award had been selected for award Gold Star 1994.
19. It cannot, in my opinion, be said that the claim of the Petitioner that the Petitioner has been manufacturing 25 mm. shallow drawn caps with the logo in the knurl portion and without serrations on the top is false or incorrect or that the documents relied on. by the Petitioner are manufactured or forged. An objection was raised as to why the Petitioner did not disclose these documents in the petition. The metal cap with the logo Yesco at the top in the knurl portion was one of the samples submitted along with the request for search .similar Section 51 filed on March 19, 1994,Jby the Petitioner and must have been produced by the Petitioner prior thereto. The Petitioner was not" entitled to inspect the records as t� the registration and the certificate of registration. The petition is made on the basis of the answer to the search which was the material in possession of the Petitioner at that time. In any event, sufficient opportunity has been given to the Respondents to deal with the allegations contained in the affidavit-in-reply. I am of the opinion that the Petitioner as also the sister concern of the Petitioner R.K. Aluminum Ltd. had offered for and supplied metal caps with chamfered logo at the top in the knurl portion, without serrations at the top, prior to the date of the application of the Respondent No. 1 for registration of the design.
20. Even the Respondents have relief on their letter to McDowell & Co. Ltd. of November 24, 1992, which is 9 months prior to the applications for registration. By the said letter they have offered PP caps with logo en the knurl portion to the said company. The said company, McDowell & Co Ltd. by letter dated November 24, 1992 agreed to order for 15 million caps. McDowell & Co Ltd. in subsequent cases HS Bsdence also wanted them who get exclusive right to supply after such caps for two years. The Petitioner relied on the judgment delivered in the ease� of Dover Ltd. v. Nornberger Celhiloidwaren Fabrik Gebruer Wolf 27 R.P.C. 498 .
21. In the said last the Plaintiffs, as registered proprietors of a design in Class 3 for pattern ornament of hand grip for cycle handles, brought an action for infringement against a German firm of manufacturers and 2;gainst their London agents. Before trial they discontinued the'' action against the latter. The Defendants admitted making and selling cycle handles with a design resembling the Plaintiff''s registered design, was sot a new original design not previously published in the United Kingdom, and alleged that it was commonly known far many years prior to the date of the registration. It was held by Warrington J. that the design was new and original having regard to the kind of article for which it was registered, and that it had been applied by the Defendants to the cycle handles sold by them. An injunction was granted in the terms of the claim with delivery up of all infringing articles in this country, a certificate as to validity and an enquiry as to damages, the Defendants were order to pay the costs of the action, except the costs of the inquiry which were reserved.
22. The next case relied on behalf of the Petitioner is AMP Incorporated v. Utilux Proprietary Limited (1972) R.P.C. 103 . In the said case Lord Reid observed as follows:
Then there come the words "being features which in the finished article appeal to and arc judged solely by the eye". This must be intended to be a limitation of the foregoing generality. The eye must be the eye of the customer if I am right in holding that the policy of the Act was to preserve to the owner of the design the commercial value resulting from customers preferring the appearance of articles which have the Resign to that of those which do not have it. So the design, must be one . which appeals to the eye of some customers. And the words'' ''judged solely by the eye'' must be intended to exclude case where a customer might chose an article of that shape not because of its appearance but because he thought that the shape made it more useful to him.
23. The Petitioner also relied on the case of Aspro-Nicholas Limited''s Design Application (1974) R.P.C. 645 . In the said case it was held as follows:
To my mind, as the principles extracted from the cases mentioned above demand, the matter must be looked at as one of degree and, if all the applicant has done in composing his design is to make a like drawing of what will appear to the eye when well-known pills are put into a well-known capsule, then the difference is not sufficient to justify registration unless perhaps some new or startling shape results. In the present case, although I think it is fair to regard the capsule with the pills arranged in columnar form as an article within the Act, nothing of real significance has been added by these designs to the store of human knowledge and experience in the packaging art and it would to my mind be oppressive to manufacturers to give one of them, by means of a registered design, a practical monopoly of this method of selling dosage forms composed of standard containers and ingredients. In this connection it was accepted that pills in small glass containers in which they were arranged in columnar form were also a form of packing well-known for many years. In this respect therefore I respectfully agree with Astbury J.''s words in Allen West and Co. Ltd. v. British Westinghouse Electric Co. Ltd. (1916) 33 R. P.C. 15. quoted in Miss Belson''s decision. It may be that it would be possible for some one to produce a pill of a entirely novel, shape which, when enclosed in a transparent capsule created a substantial1 y new impression upon the human eye and, if this were so, it might be possible to register the derived design. I express no concluded view on the matter, but in my judgment it is not legally justifiable to allow registration of a design such as the present merely showing a number of pills of old shape in a capsule of shape equally old.
24. Mr. Bachawat, learned Counsel appearing on behalf of the Respondents Nos. 1 and 2 has'' relied on the cases, viz:, In re Clarke''s Registered Design - Gierke v. Julius Sax and Co. Ltd. 13 R.P.C. 351 and Wallpaper Manufacturers Ltd. v. Derby Paper Staining Company 42 R.P.C. 443 and also the case of M. Mela- chrino and Co. v. The Melachrino Egyptian Cigarrette Co. and Melachrino 4 R.P.C. 4225 submitted that the entire onus was on the Petitioner has failed to give the proof that the design is neither no owner the original. According to the Respondents, the allegations contained in the petition are only with regard to Chamfered Caps and not with regard to" caps with logo at the top of container without vertical serrations. In my opinion, on the materials which were then available to the Petitioner pursuant to the request for search, the Petitioner could and did proceed on the basis that the Chamfered Caps ''With'' logos in the sidewalls as also those with logo in the knurl portion were covered by the design. As per the answer to the search all the three samples submitted before the Controller were the subject-matter of the registration of design in favour of the Respondent No. 1. The cap with Chamfered logo in the knurl portion is also one of the samples submitted. Even the registration certificate disclosed does not say in so many words that it is confined only to the caps with Logo in the knurl portion. The Petitioner could not be expected to make any distinction between the three samples submitted. They are all Metal Caps with Chamfered Logo. I do not think that the petition is not maintainable, because some evidence has come out in the reply after the case of the Respondents Nos. 1 and 2 was known to the Petitioner only by the affidavit-in-opposition.
25. Furthermore, it is apparent that it is only through the affidavit-in-opposition that the Petitioner could have full knowledge with regard to the said registered design because prior thereto there was no occasion for the Petitioner to go through the contents of the certificate of registered design, or the records of the Registrar in respect thereof, since the Petitioner was not entitled to take inspection of such records. After the affidavit-in-opposition was filed the Petitioner in the affidavit-in-reply has given further evidence in support of the case made out in the petition and the Respondents also have dealt with the case made out in the affidavit-in-reply by further affidavit and had sufficient opportunity to deal with the same.
26. The Respondents also relied on the case of Heinriches v. Bastendorff in support of the proposition that eyes are the sole test to find out whether there was any novelty in the design or not. He also relied on the judgment made in Walker and Co. v. A. C. Scolt and Co. Ltd. 10 R.P.C. 160 to show that the design may be valid, although the parts are old except some particular parts only which are new or original. The novelty or originality of the particular part may be sufficient to impart the character of novelty or originality to the whole.
27. The Respondents next relied on the case of Brighto Auto Industries v. B. Chawla and Sons . In the said case Delhi High Court held in respect of rear view mirrors, that it could not be denied that rear view mirrors previously selling did not carry the type of curve which appeared in the Respondents''-design,- yet such innovation was too petty to earn for the Respondents the credit due to a new or original design. It was held that the Respondents'' design being neither new nor original its registration should be" cancelled.
28. The Respondents also relied on the judgment in Walpaper Manufacturer Ltd. v. Derby Paper Staining Co. 3 I.P.L.R. 28 for the proposition that new arrangement of old design will not create a new design and also for the proposition that-new" concept of old ideas creates new design. They also relied on the judgment made in Re Clarke''s Registered Design - Clarke v. Julius Sax and Co. Ltd. 9 R.P.C. 482 for the proposition that even commission from old design may create a new design. The Respondents also relied on the case of Humpherson v. Syer 4 R.P.C. 407 for the proposition that even modification or improvement in the design is a new design. According to the Respondents, they have improved the traditional design by the removal of knurling and by placing the Chamfered Logo in the knurl portion. Mr. Bachawat, learned Counsel, also placed before me the observations made in 48 Halsbury Laws of England (4th Ed., para. 378 and footnote 2) and submitted that, in order to be registered, a design must be new and original and, that it is a matter to be judged solely by the eye.
29. Having considered the arguments on behalf of both the parties as also the facts of the case, it appears to me that the Petitioner, had been producing and made supplies of pilferproof caps of 25 mm. size with Chamfered Logo containing the word ''Vesco'' in the knurl portion on July 28, 1993, and that excise duty was also paid on July 28, 1993, that is prior to the application or registration of the Defendant. I am also of the view that the Petitioner''s sister concern, R.K. Aluminum Ltd., had also made offers for the sale of such pilfer-proof Chamfered Caps to Shiva Distilleries Ltd. and Reckitt & Colman India Ltd. in 1991 that is long prior to the application for registration of the design by the Respondent No. l. Furthermore, I am of the view that the design sought to be registered under the said registration No. 166050 in- favour of Rajendra Somani is'' vague and uncertain and that it neither specifies the sizes of the metal cap nor does it specify the case of novelty as made on behalf of the Respondents Nos. 1 and 2 in their affidavit-in-opposition. The said registration and the endorsement of novelty may be utilized to cover all Chamfered Caps having Chamfered Logo on its sides in Chamfered Caps of different sizes. Statement or novelty does not mention that the novelty consists in removal of serrations in the knurl portion nor does it mention that the novelty consists in placing the logo in the knurl portion nor does it mention that it does not cover Chamfered Caps with logo in the other portions of the side of metal cap in portions other than the knurl portion. Furthermore, even if I would have taken the view that the Respondents are the only persons who had manufactured Chamfered Metal Caps with logo in the knurl portion with removal of serrations in knurl portion, even then I do not think that this variation could be utilized to be as new or original. Admittedly, caps with Chamfered Logo on sides were being produced by various manufacturers since long prior to the date of the application of the Respondent No. 1. The position of logo in such caps is not always in any identical place. Merely by shifting the position of the logo to the top portion of the cap, it cannot be said that a new and original design came into existence. No claim is made as to the logo or its shape or design or words or as to any particular logo. No claim is made as to existence of novelty in the shape or colour or any mechanical or other action of the mechanism or in any respect of any mode of principle. of the construction of the article as per disclaimers. The only thing that remains is the right to put a Chamfered Logo in the knurl portion without specifying or indicating such logo of logos. Logos admittedly belong to customers and they cannot be put or used in any place without permission of the customer concerned. There is no specific design or logo shown in the design. I do not think that a design can be registered which is not specific or that a space can be reserved for putting other logos in the shape of registering a design. It is the design which has to be specifically shown in the certificate and the annexures. The annexure shows the word ''McDowell''. If the word ''McDowell'' is ignored, the rest of the cap is traditional cap even according to the Respondent it has been manufactured in the market. No novelty has been claimed in the certificate regarding removal of serrations. The Respondents do not claim any title in the word ''McDowell''. They arc indirectly claiming a sort of restraint on persons having their own names or registered trade marks or logos, in putting such names or registered trade marks in the knurl portion. The right of publishing the names and/or the trade marks or logos of different parties are totally vested in the parties concerned who are the proprietors and/or owners thereof. They cannot be published even in the knurl portion without their consent or permission. In my opinion, the Respondent cannot be permitted to say that a party should not be permitted to put its own name or trade mark or logo on the cap in a place of its choice or on the knurl portion. No right is claimed by the Respondents in any other portion of the design in any manner whatsoever excepting the right of placing of the logo or name or the trade mark in a chamfered manner in the knurl portion. The trade mark and/or names of the parties have been published admittedly on the sides of the caps in Chamfered Logos. Now, out of the sides the Petitioner is practically seeking to reserve a portion of the side in the knurl portion for itself. This will operate as a restraint on the parties in putting the said trade mark and/or name in the portion they like of the cap which they use for their own bottles. I do not think that by mere change of place of the Chamfered Logo a new or original design can be said to be invented. Furthermore, a design, in my opinion, should be specific and not such that it will be a changing one with change of logos and a right be given to the Respondents exclusively to publish other trade marks or logos or that others should not have any right to put their logos in a place of their choice. Apart from the name the rest of the cap is claimed to be novel or original. Furthermore, a vague registration of design which may cover- hundreds of logos belonging to hundred of parties owning use of such logos, without specifying the logo and/or the place to be used, may lead to interpretation as has been done by the scientific officer of the* Controller of patent and designs and innocent trader''s manufacturing Chamfered Caps since long back, may be affected in their business.
30. The next point which was urged on behalf of the Petitioners is that there was a prior publication of the design by the Respondents Nos. 1 and 2, prior to the date of the application which was made on August 16, 1993.
31. The Petitioner has relied on Section 49 of Designs Act, 1911 which is following to the effect:
Section 49: Effect of disclosure on copyright:
The disclosure of a design by the proprietor to any other person in such circumstances as would make it contrary to good faith for that other person to use or publish the design and the disclosure of the design in breach of good faith by any person, other than the proprietor of the design, and the acceptance of a first and confidential order for goods bearing a new or original design intended for registration, shall not be deemed to be a publication of the design sufficient to invalidate the copyright thereof if registration thereof is obtained subsequently to the disclosure or acceptance.
32. The Petitioners have relied on the cases of The Wimco Ltd., Bombay v. Mis Meena Match Industries (1983) P.T.C. 373 ; Sivakasi, and Ors. Mis. Domestic Appliances and Ors. v. Mis. Globe Super Parts (1981) P.T.C. 239 for the proposition that prior to its registration, if the design is published and if it is available to press, the public and if it is disclosed to some individual, member of the public who was under no obligation to keep it secret, then the same is prior publication and the design cannot be registered. In the instant case, the Petitioner has submitted that the Respondents themselves disclosed the design to their customers, viz., McDowell & Co. Ltd. and, according to the Petitioner, the said McDowell & Co. Ltd. had no duty to keep it secret.
33. Such declaration was said to have been made on November 24, 1992. Mr. Bachawat, on the other hand, has submitted that there is no publication by the Respondents, if circumstances are such that it would amount to relying on good faith on the part of the person to whom the design is disclosed.
34. In Blank v. Footman, Pretty and Co 5 R.P.C. 653 it was held that publication to a commission agent, employed by the designer on terms which gave him interest in the sale, to obtain his opinion as to whether he would take the articles, was no publication, as the communication was a necessary incident of the relations between the parties.
35. Mr. Bachawat also relied on the case of Henrichs v. Bastendorff. where it was held that there . was no . publication when the design was shown to ''advisor''. In the instant case the Respondents Nos. 1 and 2 had approached a customer in view of the relations between the two sides with a view to obtain business and the said customer was under a duty to keep it secret. It does in my opinion amount to a prior publication by the Respondents.
36. Mr. Goutam Chakraborty, learned Counsel for the Petitioners has submitted that in any event there was also publication of the design as claimed in the affidavit-in-opposition by the Petitioner and also by R.K. Aluminum Co. Ltd. So far as the publication said to have Jjeen made by the Petitioner and R.K. Aluminum & Co; Ltd. are concerned, the same are mainly relevant on the question that the design as claimed by the Respondent in the affidavit-in-opposition is not new nor original. I have dealt with that question earlier. However, it can also be said that the Petitioner as also R-. K. Aluminum Ltd. had published the design prior to the Respondents'' application for registration.
37. I have already held that caps of 25 mm. size with Chamfered Logo in the knurl portion were produced by the Petitioner and supplied by the Petitioner prior to the date of the application for registration of the design by the Respondent No. 1. The supply of such caps was made on July 28, 1993. The correspondence between R.K. Aluminum & Co. Ltd. and Shiva Distributors Ltd., and Reckitt & Colman Ltd.. in or about 1991 for obtaining orders for such caps was also long prior to the date of the application for registration of design which was made on August 18, 1993.
38. Various claims have been made by the Respondents that they have been recognised by various organizations, as a party to have come first with a shallow drawn cap with Chamfered Logo on the knurl portion. These may at best, be opinions of such persons without knowledge of true Facts. The fact for getting an award or awards do not signify that the Respondents are the only manufacturer of the article concerned.
39. I am of the opinion that the registered design is vague and uncertain. It does not contain particulars of alleged novelty as is now being alleged in the affidavits filed on behalf of the Respondents Nos. 1 and 2. There is no definite or certain design which has been registered. A mere right to put other logo in a particular portion of the cap cannot be registered as a design under the Act. Even the claims made in the affidavits filed on behalf of the Respondents do not make it as a new or original design and the change alleged to be introduced is merely as to location of the Chamfered Logo which is too insignificant and a petty change and does not make it a new or original Resign. Even apart from that the Petitioner as also R.K. Aluminum Ltd. had knowledge as to the alleged design as alleged in the affidavit-in-opposition since long prior to the date of application for registration of the Respondent no 1 and the Petitioner also supplied similar caps with the mark of Vesco at least about 20 days prior to the Respondent''s application for registration.
40. There will, therefore, be an order that registration of the purported design being No. 166050 dated August 18, 1993, by the Controller-General of Patents, Designs and Trade Marks is hereby directed to be cancelled. The certificate and/or certificates issued by the said Controller for purported registration of the purported design No. 166050 are also hereby cancelled. The Respondents Nos. 1 and 2 will pay the costs of this application to . the Petitioner. The prayer of the Respondents Nos. 1 and 2 for stay of operation of this order, which is being opposed on behalf of the Petitioner, is declined.
41. Parties will act on a signed copy of the operative part of this judgment and order.
