Bharat Glass Tube Ltd. Vs. Gopal Glass Works Ltd.

Bharat Glass Tube Ltd. Vs. Gopal Glass Works Ltd. : Burden of proving prior publication of Registered Design is on the Petitioner for rectification

Case Details:Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd.

Case No.: Civil Appeal No. 3185 of 2008 (Arising out of S.L.P. (C) No. 16321 of 2006)

Neutral Citation: MANU/SC/2096/2008

Equivalent Citations: AIR 2008 SC 2520, 2008 (37) PTC 1 (SC)

Court: Supreme Court of India

Bench: Justice A.K. Mathur and Justice Altamas Kabir, H.J.

Date of Judgment: 01.05.2008

Introduction:This case revolves around intellectual property rights in the domain of industrial designs, specifically regarding figured and wired glass sheets. The dispute concerns the validity of a registered design and whether it satisfies the statutory requirements of novelty and originality under Section 4 of the Designs Act, 2000.

The appeal was filed by Bharat Glass Tube Limited against the decision of the Calcutta High Court, which upheld the validity of the registered design of Gopal Glass Works Limited. The key issue was whether the registered design of Gopal Glass was new and original or merely a replication of a pre-existing design.

Factual Background:

Business and Design Registration: Gopal Glass Works Ltd. has been engaged in the manufacture and marketing of figured and wired glass sheets since 1981. They claimed to have originated a new and original industrial design applied to glass sheets using a mechanical process. They procured embossing rollers from a German company, M/s. Dorn Bausch Gravuren GMBH, which were essential for creating the design on glass sheets. Gopal Glass applied for design registration on 29.10.2002 under Class 25-01 of the Designs Act, 2000, and the design was registered on 05.11.2002. They marketed their glass sheets under the name Diamond Square, which gained popularity.

Allegations of Infringement: Gopal Glass discovered that Bharat Glass Tube Ltd. and its associate IAG Co. Ltd. were imitating their registered design. They issued a legal notice on 21.05.2003 warning competitors against infringement. They filed Civil Suit No. 1 of 2004 in the District Court of Mehsana, obtaining a restraint order against IAG Co. Ltd.

Counteraction by Bharat Glass: In response, Bharat Glass Tube Ltd. filed a cancellation petition under Section 19 of the Designs Act, 2000, before the Controller of Patents and Designs, arguing that: The design was not new or original. It had been published previously in India and abroad. The German company had already developed a similar design in 1992.The Assistant Controller ruled in favor of Bharat Glass, canceling the design registration.

Procedural Background:

• Assistant Controller's Decision (2004): Accepted Bharat Glass’s argument and canceled the design registration, citing previous publication in Germany and the UK.
• High Court Appeal (2005):Gopal Glass appealed to the Calcutta High Court. A Single Judge Bench reversed the Assistant Controller’s order, reinstating the design registration.
• Supreme Court Appeal (2008): Bharat Glass appealed against the High Court’s decision.
• The Supreme Court heard the matter and delivered its judgment on 01.05.2008.

Issues Involved:Whether the registered design of Gopal Glass Works Ltd. was new and original under Section 4 of the Designs Act, 2000?Whether the burden of proof to establish prior publication was discharged by Bharat Glass Tube Ltd.?

Submissions of Parties:

Appellant (Bharat Glass Tube Ltd.):The design was not new or original, as it was created in 1992 by a German company (Dorn Bausch Gravuren GMBH). A UK Patent Office document (downloaded from the Internet) showed the design was registered in 1992 in the UK by M/s. Vegla Vereinigte Glaswerke GmbH. The German company had already developed and sold embossing rollers carrying the same pattern.Since Gopal Glass had merely acquired the rollers, it could not claim originality. The Assistant Controller had correctly canceled the registration based on these facts.

Respondent (Gopal Glass Works Ltd.):The rollers manufactured in Germany were not used on glass sheets before in India. The design applied to glass sheets had never been registered or published in India or Germany.Previous registration of a pattern does not mean it was applied to the same article (glass sheets). The Assistant Controller did not consider the visual appeal of the finished product, which is a crucial criterion under the Designs Act.

Discussion on Judgments and Citations:

Key Judgments Cited:

Pugh v. Riely Cycle Co Ltd. (1912) 29 R.P.C. 196:Held that a design is an idea applied to an article, and not just a mere concept.

Dover Ltd. v. Nurnberger Celluloidaren Fabrik Gebruder Wolff [1910] 27 R.P.C. 498:Court rejected protection for a trivial or minor variation of a previously known design.

Interlego A.G. v. Tyco Industries Inc. [1988] 16 R.P.C. 343:Explained the eye appeal test: A design must be judged by how it looks on the final product.

Domestic Appliances and Ors. v. Globe Super Parts, 1981 PTC 239:Cancellation upheld where a design was already published in India before registration.

Gammeter v. Controller of Patents and Designs, AIR 1919 Cal 887:Explained that newness may arise from a new application of an old design to a new product.

Supreme Court’s Reasoning and Analysis:The burden of proof was on Bharat Glass to establish prior publication. The German company only manufactured rollers but never used them to produce glass sheets. No evidence was provided that the same pattern was ever used on glass sheets before registration. The UK Patent document was merely a design registration and not proof of its application on glass. The Assistant Controller failed to assess the visual appeal of the finished product, which is a statutory requirement under Section 4 of the Designs Act, 2000.

Final Decision:The Supreme Court dismissed the appeal with costs of Rs. 50,000, affirming the validity of Gopal Glass Works Ltd.'s registered design.

Key Takeaways from the Judgment:

• Burden of proving A registered Design to be prior published is on the petitioner for rectification.
• A design is judged based on how it looks on the final product, not just its conceptual existence.
• Prior publication must be clearly established with evidence of application to the same article.
• Simply acquiring an older design from a foreign company does not invalidate registration if the design is being applied in a new way.
• Thus, the Supreme Court upheld Gopal Glass Works' exclusive rights over its registered design on glass sheets.

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi