Bharat Glass Tube Limited v Gopal Glass Works Limited

- Nilanjana Nair BBA LLB (b)

Facts Of The Case :

In this case, the respondent( Gopal Glass) was engaged in glass manufacturing business since 1981. The respondents
placed an order with a German Company to manufacture a specific roller and used the roller for making design in
various other articles like leather, rexin and plastic. However it was never used for glass.The rollers were registered
on 5.11.2002. In the meanwhile, the appellant and its associate IAG Company Ltd started imitating the said
registered design. As a result, the respondent was constrained to file a suit against the appellant in the District Court
and got a restraint order against this appellant. The appellant filed an application before the Controller of Patents &
Designs for the cancellation of the registration of respondent’s Design mainly on the ground that the design has
already been previously published in India and abroad and on the ground that the design was not new or original.

Issues :

(i) Whether the design was not new or original in view of the fact that the roller bearing the design is
published before the date of registration and the registered proprietor is not owner of design.
(ii) Whether the design was published outside India as well as in India prior to the date of application.
(iii) Whether the registered design was in public domain due to sale/use of the design prior to the date of
application of the registered proprietor.

Arguments Raised:

Appellant: The appellant mainly relied on two documents:

1. a catalogue of the German Company and letter dated 10.9.2003 of the German company
addressed to M/s. IAG Co. Ltd. the holding company of the appellant stating that the said
German Company had developed design in the year 1992, and
2. a document downloaded from the official website of the Patent Office of the United Kingdom on
22.9.2004 which indicated that the same design had been registered in United Kingdom in the
name of M/s.Vegla Vereinigte in 1992

Respondents :

1. An affidavit was filed stating that the German Company was not engaged in manufacture of the
goods other than engraving rollers.
2. The respondent also relied on the communication dated 4.3.2004 of the German company
confirming that the embossing rollers covered by Design No. 2950-910 had been sold to the
respondent on condition that all user rights available in India under Indian laws would vest
 exclusively with the respondent and that the respondent would be entitled to exclusive user rights
for at least five years.
3. The German company was aware of the registration of the Design No. 190331 and it had no
objection to the design being marketed by the respondent herein

Decision:

Supreme Court upheld the Calcutta High Court’s decision to allow the registration of the design for the following
reasons;

1. There is no evidence whatsoever produced by the complainant either before the Assistant Controller or before
any other forum to show that the design which has been reproduced on the glass sheet was manufactured anywhere
in the market in India or in United Kingdom.

2. This proprietorship of this design was acquired by this respondent from the German company. Therefore, he has
the right to register the same in India.

3. No evidence was produced by the complainant before the Assistant Controller that anywhere in any part of the
world or in India this design was reproduced on glass or it was registered anywhere in India or in any part of the
world. Therefore, this design is new for glass and the same is new and original one.

4. Finally Supreme Court also declined to consider the documents which have been downloaded from the UK Patent
Office website.