In a recent appeal case, Gopal Glass Works Ltd v AC of Patents & Designs Ors 2006 (33) PTC 434 (cal), Kolkata High Court examined the grounds for cancelling a registered design.
According to Section 19 of the Indian Designs Act (amended) 2000, "prior publication" anywhere in the world and prior registration in India are valid grounds for cancelling a registered design. In Gopal, the High Court provided further insights into what constitutes a "prior publication" as well as the test of novelty in general.
Gopal Glass Works held a design registration for embossed glasswork. Leveraging on the registered design, Gopal managed to obtain an injunction against an alleged imitator named IAG.
The aggrieved party (the respondent), in retaliation, applied for cancellation of the design under Section 19(2). The respondent relied on a prior design registered in the UK in 1992, by a German company. The Assistant Controller (AC), relying on Caron International's Design application (1981) RPC 179 p184, held that novelty alone is not sufficient; there must be sufficient originality. Based on the similarity of the two designs, the AC allowed cancellation on grounds of "prior publication". Gopal appealed.
The case focused on what constitutes a "prior publication". The UK design was similar to that of the appellants design but it was not the same. The design in question was never embossed on glass before Gopal did so. Should a prior design which was never embossed on glass be accepted as a novelty-destroying publication for a glasswork article?
The High Court, while overturning the cancellation, re-affirmed the cardinal rule for evaluating novelty of designs: the so-called eye-test. The Court held that when the novelty of an article is tested against a prior publication, the primary factor is the visual effect and appeal of the article. If the prior publication does not share the visual effect and appeal of the article, the publication does not destroy novelty.
The UK registered design, although similar, lacks the visual effect and appeal of the design embossed on glass. Accordingly, the UK design is not a valid "prior publication" (Rosedale Associated Manufacturers Ltd v Airfix Ltd (1957) RPC 239 was cited).
The High Court reinforced the "visual effect" doctrine established by Rosedale. It also clarified the test of novelty and set out that a mere registration is not sufficient to destroy novelty.
Source : http://www.managingip.com/