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Judgment
The Court : This appeal is directed against an order dated 27th February, 2012 under section 36 of the Designs Act, 2000 by which the application for cancellation of the design registered on 25th May, 2007 under the design sheet 2000 for article "plastic seal" in class 09-07 in the name of M/s Krishna Plastic Industries was allowed.
The novelty statement endorsed in each representation sheet reads: "The novelty resides in the surface pattern of a 'plastic seal'" as illustrated. The discussion in the impugned order reveals that the Deputy Controller has examined the shape and configuration of both the designs and only a single sentence in the impugned order refers to the surface pattern. Shape and configuration have been regarded as synonymous in various decisions including Saunders v. Wiel (1893) 10 R.P.C. 29 and in a fairly recent decision in Lambretta Clothing Co. Ltd. v. Teddy Smith (U K) Ltd. (2014) EWCA (Civ) 886. However, Lord Reid in Amp Inc v. Utilux Pty Ltd (1972) R.P.C. 103 at 108 and 111 held a view that configuration may have a meaning slightly different from shape. Again, it has been said that pattern and ornament can in the majority of cases be treated as synonymous (Kestos Ltd. v. Kempat Ltd. and Kemp (1936) 53 R.P.C. 139 at 152). A pattern or ornament, though it may stand out to a certain extent from the article to which it is applied, as in embossing or engraving, may to all intents and purposes be considered as something in two dimensions only, which is placed upon the article simply for the purpose of its decoration. However, surface features, particularly if they are pronounced, may be treated as features of shape or configuration, as in Cow & Co Ltd v. Cannon Rubber Manufacturers Ltd (1959) R.P.C. 240 at 347 where it was held that a series of ribs on the surface of a hot water bottle were features of configuration within the scope of the statement of novelty which claimed such features. Since novelty in the instant case is also claimed on surface pattern and from the reasoning of the Deputy Controller, it is not clear that surface features were treated as features of "shape or configuration" as in Cow & Co Ltd. (supra) a definite pronouncement on this aspect is required. Similarly, in Sommer Allibert (UK) Ltd v. Flair Plastics Ltd (1987) R.P.C. 599 at 621 it was held that grooves moulded into plastic garden chairs constituted part of the "shape and configuration" of the chairs. Since the said order is appelable, it is expected that a proper reasoning should be given by the Deputy Controller to arrive at a finding that there is no such distinctive surface pattern in the impugned design. There is no discussion in the impugned order in this regard. The distinctiveness of a design is to be judged by an eye alone. The ocular impression of both the designs does not prima facie appear to be the same. However, the matter is remanded to the authority concerned to reconsider the matter afresh taking into consideration that the novelty is claimed in the surface pattern of the plastic seal and this Court is not satisfied with the reasoning given by the Deputy Controller in allowing the application for cancellation, the impugned order is set aside. The reasoning does not reflect the mind of the deputy controller. The order dated 1st October, 2012 is set aside.
The Assistant Controller of Patent and Designs shall reconsider the matter afresh and decide the application for cancellation as expeditiously as possible on the basis of the existing materials on record after giving reasonable opportunity of hearing to the parties, uninfluenced by its earlier order or the observations made by this Court which are only prima facie.
The original samples produced before this court be returned to the parties.
AID No. 5 of 2013 is accordingly disposed of.