Bharat Glass Tube Limited v. Gopal Glass Works Limited

Relevant Acts and provisions

Designs Act, 2000

Section 19(1)(b)Section 4

Provisions considered: Sections 4 and 19(1)(b) of the Designs Act, 2000, concerning novelty, originality and prior publication.

Brief facts

Gopal Glass Works held a registered design for a pattern embossed on glass sheets. Bharat Glass Tube filed a cancellation petition before the Assistant Controller of Patents and Designs, alleging the pattern lacked novelty because an identical design had already been published and used abroad before registration, relying on catalogues and correspondence concerning embossing rollers bearing a similar pattern. The Assistant Controller cancelled the registration; the Calcutta High Court restored it on appeal, and Bharat Glass Tube appealed further to the Supreme Court.

Issues before the Court

1. Must novelty of a registered design be judged by comparing the design as applied to the specific article, or the underlying pattern in the abstract?
2. Does prior existence of a roller bearing a similar pattern abroad prove prior publication of the design on glass sheets?
3. On whom does the burden of proving lack of novelty rest?

Court's findings

The Court held that novelty and originality of a registered design must be judged by the eye, comparing the design as actually applied to the specific article for which it is registered, here glass sheets, rather than an unrelated article such as an embossing roller bearing a similar pattern.

The Court observed that even if a roller carrying a given pattern existed abroad, that did not by itself prove that the pattern had earlier been applied to and published on glass sheets. It found that the appellant had produced no cogent evidence that the identical design had been used, published or registered before the respondent's application, and that the photographs and catalogues relied upon did not establish prior publication of the design as applied to glass sheets with the requisite clarity.

The Court held that the burden of proving lack of novelty and prior publication rests on the party seeking cancellation, and that this burden had not been discharged.

Decision

Appeal dismissed; the Calcutta High Court's order restoring the design registration was upheld.

Keywords

Cancellation Design Registration Novelty Originality Prior Publication