India: Calcutta High Court decides when a Design can be stated to be anticipated by prior known designs

October 3, 2017


Recently, in the case of T.K Shawal Industries Pvt. Ltd. vs. The Controller Of Patents And Designs & Ors., the Calcutta High Court was approached in appeal by T.K Shawal Industries Pvt. Ltd. (hereinafter referred to as the ‘Appellant’) against the order of the Controller (hereinafter referred to as the ‘Defendants’) dated January 20, 2016.


Kay Cee Exports, had registered a scarf design under Class 02-05 bearing number 252082 dated March 5, 2013 with the Indian Patent Office. The novelty was claimed to be residing in the surface pattern of the scarf. The Controller after verification and satisfaction issued a certificate of registration of the aforesaid design.

A petition for cancellation of the registered design No. 252082, for ‘scarf’ was filed on February 12, 2014 under Section 19 of the Designs Act, 2000 (hereinafter referred to as the ‘Act’) by the Appellant.

Further, on January 20, 2016, the Deputy Controller had rejected the cancellation petition of the registered design.


The design registration was challenged on four grounds available for cancellation under Section 19 of Designs Act, 2000 namely

  1. that it has been published prior to the date of registration;
  2. that the design is not a new or original design;
  3. that the design is not registerable under the Act;
  4. that it is design is not distinguishable from designs or combination of known design.

Contentions of the Appellants

  • It was claimed that the design registered was capable of being anticipated by prior known designs.
  • The Appellant stated that it was also engaged in similar line of activities as the design registrant i.e. Kay Cee Exports. The Appellant also furnished on record copies of its invoices and shipment details of shawls of similar designs being exported to different countries, all dated prior to the registration date of the scarf design.
  • It was further claimed that the design lacked novelty since the surface pattern applied to the impugned design was nothing but combination of already known designs. There is no novelty in the surface pattern of the scarf which is the subject matter of the impugned design registration.
  • The Appellant referred to the decision of the Learned Single Judge in the case of
    Wimco Limited Vs. Meena Match Industries reported at 1983 (3) PTC 373 (Del) Paragraphs 11, 12, and 13 in support of the submission that the registered impugned design was well-known and published prior to the date of application of the design of Kay Cee Exports.
  • A reference was made to the decision in the case of
    ITC Limited vs. Controller of Patents & Designs, where it was held that an idea may be potentially capable of registration but it has to be reduced into a visible form to be identified with.
  • Furthermore, he also referred to the case of
    Anuradha Doval vs. The Controller of Patents & Designs & Ors., where the Calcutta High Court had the occasion to consider what would constitute prior publication. The Court had said that “if a document is to constitute prior publication, then a reader of it, possessed ordinary knowledge of the subject, must from his reading of the document be able, at least, to see the design in his minds eye and should not have to depend on his own originally to construct the design from the ideas which the document may put into his head.”

Contentions of the Respondents

  • The Respondents when presiding over the cancellation petition perused the evidence on record and reached a finding that none of the documents and/or invoices referred to the impugned design shows any prior publication of the design.
  • The Respondents also examined other documents to decide if the registered design could be considered as devoid of newness. Each of the said documents were scrutinized and the finding of the Respondents was that the pictures show variety of dresses including scarves in different color and pattern but none of these documents ascertain the details of the publication and the source of said documents.
  • The Respondents relied on the decision of the Delhi High Court in the case of
    Hello Mineral Water Pvt. Ltd. Vs. Thermoking California Pure reported at 2000 (20) PTC 177 for determining as to whether novelty could be claimed of the surface pattern.
  • The Respondents found that none of the documents /invoices showed any prior publication of the design. It appeared that the articles covered under the said invoices only relate to ‘shawls’ and not to ‘scarfs’ especially when they fall under different class of goods.

Decision of the Court

  • Justice Soumen Sen of the Calcutta High Court heard the matter and observed that the invoices and shipment details attached by the Appellant were pertaining to sale of shawls which is a different article from scarfs and fall under different class of goods under the Design Act, 2000. Therefore, the cancellation petition was dismissed.
  • >In absence of any cogent evidence to show that the pattern disclosed in the application for registration is taught by a prior published document, the findings of the Controller who is an expert in the field do not call for any interference.
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