NOVELTY, PRIOR PUBLICATION AND THE BURDEN OF PROOF UNDER THE DESIGNS ACT, 2000

Case Name – Bharat Glass Tube Limited v. Gopal Glass Works Limited

Citation – (2008) 10 SCC 657

Court – Supreme Court of India

Coram – Justice A.K. Mathur and Justice Altamas Kabir

ABSTRACT

The verdict of the Supreme Court in Bharat Glass Tube Limited v. Gopal Glass Works Limited is the most authoritative decision regarding the definition of innovation and originality under the Designs Act, 2000. The respondent, Gopal Glass Works, possessed the sole right to use a diamond-patterned design on glass sheets.

The Court had to consider the threshold of novelty under Section 4, the burden of proof on a challenger seeking cancellation under Section 19, and the distinction between a design as applied to a finished article and the underlying tooling used to produce it when the appellant, Bharat Glass Tube, sought cancellation of that registration by claiming prior publication in Germany and the United Kingdom.

The Court denied the appeal, ruling that earlier publication must be demonstrated in connection to the design as it applies to the particular article in question, not just in reference to the tool or pattern from which it is derived. In this case comment, the Court’s reasoning is examined, the principles it established are critically analyzed, and the judgment’s lasting implications for Indian design law is explored.

INTRODUCTION

To develop an original ornamentational pattern over years, apply it to the article and get it registered as an industrial design and later be challenged by a competitor applying the same pattern on the same article and fighting out a legal battle that your registration was illegal as the same pattern appeared in some foreign catalogue years ago. This was what had actually happened with Gopal Glass Works and it was exactly this fact that forced the Supreme Court of India to lay down unequivocally what is meant by “new or original” in the context of designs in India.

The designs Act, 2000 was legislated to substitute the colonial design Act of 1911, and to keep pace with the international standards envisaged by the TRIPS Agreement. Essentially it confers a monopoly of limited duration to the inventor of a new or original design applied to an article manufactured by an industrial process. However, it is the very definition of novel, the cardinal principle of the Act that has been barely tested in India and that the Supreme Court clarified in Bharat Glass Tube v Gopal Glass Works which remains to date, the locus classicus on novelty, prior publication and burden of proof in design cancellation actions in India.

FACTS OF THE CASE

Gopal Glass Works Limited was in the business of manufacturing figured and wired glass sheets since 1981 and was using for applying a particular unique decorative design on the glass sheet which was in the nature of a diamond-square patterned structure, created by use of engraved rollers, procured from a German company namely M/s Dornbusch Gravuren GmbH, all rights over the Indian territory to whom were licensed to Gopal Glass. Gopal Glass applied for registration of this design under the Designs Act, 2000 on 29th October, 2002. Registration was allowed and design was registered as Design No. 190336, Class 25-01. The design marketed under the name “Diamond Square” became very popular.

Subsequent to this, on May 2003, after issuing a public caution notice against infringement, Gopal Glass realized that its designs were being manufactured and sold in the market by Bharat Glass Tube Limited and its ally IAG Glass Company Limited. Therefore, Gopal Glass filed a civil suit before the District Court, Mehsana, against the defendants.

Subsequently, IAG Glass filed an application for cancellation of Design No. 190336 before the Assistant Controller of Patents and Designs, Kolkata under section 19 of Designs Act, 2000 stating that the design is not new or original, it has been published earlier in Germany and the UK. This plea was upheld by the Assistant Controller and the registration was cancelled. Challenging the same before the Calcutta High Court, the Single Judge Bench reversed the decision of the Assistant Controller and sustained the registration of the design. Bharat Glass Tube Limited and IAG Glass Company Limited have appealed against the same to the Supreme Court.

ISSUES BEFORE THE COURT

The issues before the Court were as follows;

1. whether the design registered by Gopal Glass Works was a new and original one under Section 4 of the Designs Act, 2000 or whether the same has been published in India or abroad prior to the registration.
2. whether the onus of proof of prior publication is on the person who applies for the cancellation of registered design under Section 19 of the Designs Act, 2000?
3. whether a similar pattern on the catalogue of the German firm, or a registered design of United Kingdom with a different application thereof on a different article, could be deemed to be a prior publication of the design for use on glass sheets?
4. whether the design applied on the finished article was distinguishable from the designs relied by the appellant which were foreign in nature?

REASONING

What Bharat Glass said – The appellant argued that the design registration granted to Gopal Glass was not new or original since a similar pattern was developed by the German firm Dornbusch Gravuren GmbH in 1992 as proved by the German firm’s own catalogue and a letter affirming the development of Design No. 2960-9010. Further reliance was placed on a document downloaded from the website of the UK Patent Office for a similar design registered in the UK in 1992 in the name of M/s Vegla Vereinigte Glaswerke GmbH, where it was argued by the appellant that the Assistant Controller rightly cancelled the registration of the said design on the basis of prior publication.

The Court ruled 

The Supreme Court confirmed the order of cancellation passed by the Assistant Controller which was later set aside by the Calcutta High Court. While dismissing the appeal with costs, the Court observed three crucial points: 

Firstly, the Court noted the question of novelty and the circumstances under which prior publication takes place, stating that a design can only be protected as it is applied to an article according to the Designs Act, 2000 and thus, in cases where registration has taken place as it is applied to an article, prior publication needs to be judged only with regard to the designs as they appear on the finished article i.e. Glass sheets in the case on hand. There was no evidence before the court that the German company had ever manufactured and sold the glass sheets of the claimed pattern nor the said company ever filed anything to show the application of this design to glass sheets while there was no evidence for the application of the United Kingdom design to glass sheets either and an affidavit was filed by the concerned company stating that they never manufactured glass sheets of this pattern. So there was no publication of the said design applied to the glass sheets. 

Secondly, the Court held that the burden of proof lies entirely on the applicant seeking the cancellation of the design registration and Section 4 of the Designs Act 2000 only stated negatively “A design which is not new or original shall not be registered”, but the granted registration carries with it a presumption that the design is new and it is for the applicant to prove otherwise. 

Third and final point was on the issue of visual appearance of the finished article and by referring to the Privy Council in Interlego AG v. Tyco Industries Inc. (1988) 16 RPC 343, the Court highlighted that design law protects the visual appearance of a finished product as viewed by an eye. Hence it is the comparison between the registered design applied to the finished article i.e. Glass sheets of diamond square pattern with the alleged prior publications that is important and as it was seen by the Court from the evidence on record, it is evident that the registered design was new and original.

CRITICAL ANALYSIS

In Bharat Glass Tube v. Gopal Glass Works, the Supreme Court has rightfully clarified two long obscure areas of Indian design law-prior publication and the allocation of burden of proof.

The clarification that prior publication is to be assessed by looking at the design as applied to a particular article, and not just at the pattern or the tooling, is technically and commercially important. Design protection is only afforded to the visual appearance of the finished product, and not to the means of production of the product. The carving roller used is a tooling. The glass sheet is the article. It is the appearance of the glass sheet which would capture the consumer’s attention, and not that of the roller that manufactured it. The decision, by making this distinction quite clear, would save the registered design from being infringed by manufactures who are able to defeat the registered design by merely producing evidence of a similar tooling pattern seen in foreign catalogs; this would have no relevance to whether the design, as applied to the relevant class of articles, had actually been made available to the public.

The assignment of the burden of proof to the challenger is equally satisfactory. While the registration under the Designs Act, 2000, would not be granted unless the Controller were satisfied that the design was new and original, there is no reason to compel the registered proprietor to repeatedly establish originality from mere unsubstantiated accusations of challenge. Imposing the burden of proof upon the challenger incentivizes it to bring an article-specific demonstration of prior publication to the court-just the standard that Bharat Glass was expected to adhere to.

Although all aspects of the judgment are welcome, there is still room for criticism. The discussion of “publication” in the judgment is somewhat lacking, and fails to define when foreign publication (in foreign journals) or international exhibition of the product would suffice for prior publication purposes-the subsequent question that has come up in litigations after this decision. Further, the discussion on “originality” too does not explore beyond the confines of novelty, and has subsumed the element of originality within that of novelty-a question which is constantly debated in Indian courts.

Apart from that, there is an element of policy underlying this judgment, which cannot be ignored. India is predominantly a manufacturing economy where a large section consists of the small and medium scale enterprises (SMEs). By imposing the burden on the challengers, it is protection being afforded to domestic design creators who invest a good deal of resources into designing unique products. At the same time, it opens up a Pandora’s box on the rigorousness of the Indian designs registration system itself, which granted registration to this design in merely 6 days.

SIGNIFICANCE AND IMPLICATIONS

Bharat Glass Tube v. Gopal Glass Works decision can still be felt across Indian design law 15 years on. This has, by now, become the most quoted authority under the Designs Act, 2000 on the issue of novelty and forms the foundation of every reported significant design dispute decided by the Delhi, Bombay, Calcutta and Madras High Courts.

Arguably, its greatest contribution to design law is the article-specificity principle – requiring proof of prior publication by reference to the article applied to the design registered for the particular article and nothing more. It has been rigorously followed ever since and has served to guard Indian design registrants against opportunistic cancellation proceedings based on superficially similar foreign designs. The judgment’s strict requirement that the burden of proof lies with the party seeking cancellation also continues to have significant consequences for design litigation: whether in standalone cancellation proceedings before the Controller or counterclaims in suits for infringement, the applicant knows he must present substantive article-specific proof of prior publication to succeed. For designers and industries, the decision has confirmed that Indian design registrations that have been properly acquired, represent significant and enforceable rights. For the glass and decorative product industry in particular, it settled that ornamentation on surfaces, no matter how simply constructed, can be the subject of a design registration and will be enforced.

CONCLUSION

It would be an understatement to say that the Supreme Court’s decision in Bharat Glass Tube Limited v. Gopal Glass Works Limited is a turning point in Indian IP jurisprudence. By rooting the inquiry for novelty into the design’s application to a finished article, by locating the burden of proof on the party challenging the design, and by reiterating the visual-appeal test as the criteria of the protection of a design, the judgment rendered some structure to what was essentially a directionless field of law. The judgment may not be entirely conclusive – whether pre-registration review in any form is actually meaningful, or the exact reach of “publication” and the self-evident nature of “originality” in design are yet to be debated – but as an enunciation of the law, the judgment holds firm and will last: a registration of a design is a substantive legal right, there is a presumption that the registration is valid, and those who challenge that validity must prove their case with evidence, not assumptions. A manufacturer who expends effort, skill, and imagination in creating and registering a unique visual appeal for his product can be confident of the law’s support-this is the purpose of the Designs Act, 2000, and in Bharat Glass Tube, the Supreme Court assured all that it was steadfast in its intention to preserve it.

REFERENCES

Designs Act, 2000 (Act No. 16 of 2000), ss. 2(d), 4, 19, 22.

Copyright Act, 1957 (Act No. 14 of 1957), s. 15(2).

Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), 1994, Art. 25.

Bharat Glass Tube Limited v. Gopal Glass Works Limited, (2008) 10 SCC 657 (Supreme Court of India).

Interlego AG v. Tyco Industries Inc., (1988) 16 RPC 343 (Privy Council).

Dover Ltd. v. Nernberger Celluloidaren Fabrik Gebruder Wolff, (1910) 27 RPC 498.

Domestic Appliances and Ors. v. Globe Super Parts, 1981 PTC 239.

Wimco Ltd. v. Meena Match Industries, 1983 PTC 373.

Office of the Controller General of Patents, Designs & Trade Marks, Manual of Design Practice and Procedure (CGPDTM, New Delhi, 2014).

Dev Gangjee and Robert Burrell, ‘Because You’re Worth It: L’Oréal and the Prohibition on Free Riding’ (2010) 73 Modern Law Review 282.

Prashant Reddy T., ‘Supreme Court Delivers Judgment under Designs Act’, SpicyIP (August 2008).