Magppie loses design registration for lack of novelty

India

In M/s Venus Industries v Magppie Exports (unpublished), the controller of patents, designs and trademarks has cancelled the defendant's design registration for lack of novelty, having concluded that the overall look of the registered design was not different from that of a prior published design.

Magppie Exports manufactures, markets and exports stainless steel accessories. In October 1998 the company obtained a design registration in India for a stainless steel colander. In December 2001 another Indian company, M/s Venus Industries, instituted proceedings to have the registration cancelled on the grounds that the design was not new or original. It claimed that in 1997 (ie, prior to the date of registration), Magppie had published in an international magazine - which was distributed in India and in other countries - a design similar to the registered design for the same type of product.

Magppie argued that the published document could not be considered a prior published design, as the design may not have been applied to any product at all. It further argued that the publication in a document of a pattern or picture does not destroy the novelty of the design. In addition, Magppie maintained that its design was registered under the old Designs Act 1911, which provided that in order to consider any document as part of the prior art, the document must have been published in India only.

The controller concluded that the overall look of the registered design was not different from that of the prior published design. It held that the magazine must be considered a prior published document with respect to the registered design and that, on comparison, the registered design was a mere trade variant and could not be considered as new or original.

In relation to the geographical limits for publication of the prior art, the controller held that while there is no specific definition of 'publication' in the Designs Act 2000 or the old Designs Act 1911, any design that has been made available to any person in India who is free to use or disclose it will be treated as published. It was further held that since Magppie operates on the international market, its claim that publication of prior art had to be limited to the jurisdiction of India was untenable. Consequently, the registration was cancelled and removed from the Register of Designs.

Gladys Mirandah, Ella Cheong Mirandah & Sprusons, Singapore

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