1. ' FAISAL ARAB, J.---Both, Trans Pak (Pvt.) Limited as well as Mehran Plastic Industries (Pvt.) are engaged in the business of manufacture of plastic bottles and containers. The dispute between the two is with regard to the use of the same design of their 19 litre water bottle.
2. ' Brief facts of the case are that in the year 2002, Trans Pak purchased a mould from 'ASB', a Japanese Company in order to manufacture its 19 litre plastic water bottle. Thereafter, Trans Pak applied for registration of its design. Trans Pak claimed that the design of its 19 litre bottle is novel and its novelty resides in its shape and configuration. On such basis ,Trans Pak on 22-1-2003 succeeded in getting its design registered under Registration No,11028-D.
3. ' In May, 2004, Mehran filed the present proceedings seeking cancellation of Trans Pak's registration on the ground that the design of Trans Pak bottle is not novel as similar designed bottles were available both in the local market as well as in the international markets even prior to registration of design in favour of Trans Pak.
4. ' On the other hand Trans Pak has filed Suit No,959 of 2004 in August, 2004 on the ground that in the year 2004 it came to its knowledge that Mehran is also manufacturing identical 19 litre bottle after purchasing similar moult from the same Japanese Company i,e, 'ASB' in 2003. Trans Pak therefore, claimed that as it possesses exclusive right to manufacture such bottle under Registration No,11028-D, Mehran be restrained from manufacturing similar bottles.
5. ' In support of its case that similar bottles are available in local market, Mehran claimed that similar design belonged to another local company namely Pak Water Bottlers (Pvt.) Limited under Registration No,9223-D, dated 23-2-1995.
6. ' As to the argument that similar designed bottles are also available in the international market, the learned counsel for Mehran has drawn this Court's attention to a design which was originally made for Nestle Pure Life in 1999. The copy of this design has been annexed as annexure 'E-15' to the counter-affidavit filed in Suit No,959 of 2004 and also annexed as annexure 'B' filed in the present proceedings. The learned counsel for Mehran argued that the design which Trans Pak got registered on 20-3-2002 is identical to the design which was originally made for Nestle Pure Life in 1999 and therefore, when Trans Pak applied to Design Office in Pakistan for registration of its design, it was already known to the world and hence the requirement of originality or novelty of design did not exist. He explained that the design on the bottle made for Nestle Pure Life in 1999 also comprises of three broad ribs running all around the bottle in waves having dots all over it similar to the design of Trans Pak. He therefore, contended that such design having been already in existence, it was not registrable under section 3(2) of the Registered Designs Ordinance, 2000.
7. ' In support of his argument, the counsel for Mehran compared the provisions of old law as well as the law which is currently in force and argued that Trans Pak could have succeeded in establishing its case under the old law but after its repeal and the promulgation of Designs Ordinance, 2000, Trans Pak has no case. Elaborating his argument, he stated that the Patents and Designs Act, 1911 has been substituted by two separate Ordinances i,e, Patents Ordinance, 2000 and Registered Design Ordinance, 2000. He further argued that Prior to Registered Design Ordinance 2000, the novelty requirement was restricted within Pakistan only, which is evident from section 43 (1) of the repealed Patents and Designs Act, 1911. It reads as follows:-- "The controller may, on the application of any person claiming to be the proprietor of any new or original design not previously published in Pakistan, registered the design under this part."
8. ' The defendant's counsel then explained that the limits of novelty were enlarged under the new Ordinance and in order for a design to qualify for registration, it should not even exist anywhere in the world. He referred to section 3(2) of the Registered Designs Ordinance 2000 which reads as follows:--
3. Registrable designs:--
(2) Subject to the provisions of this Ordinance, a design shall not be registered unless it is new or original and, in particular, shall not be so registered in respect of any article if it is the same as a design which before the date of the application for registration has been registered in Pakistan or published anywhere in the world in respect of the same or any other article or differs from such a design only in immaterial details or in features which are variant commonly used in the trade.
9. ' From the comparison of the repealed law and the existing law it becomes quite clear that after the promulgation of Registered Designs Ordinance, 2000, any design, which is sought to be registered, if already existed anywhere in the world, the same cannot be registered in Pakistan. He submitted that since the Design No,11028-D was applied for registration on 20-3-2002 i,e, after the Registered Designs Ordinance, 2000 came into force: the case of Trans Pak is to be examined under the new law.
10. ' The learned counsel for Trans Pak Mr. Liaquat Merchant argued that the bottle manufactured by his client is novel in design, shape and configuration. He denied the claim of Mehran that the bottles of similar design are freely available in the local and international markets. Mr. Liaquat Merchant brought two bottles before this Court for examination, the one which was manufactured by Pak Water Bottlers (Private) Limited under Registration No,9223-D dated 23-2-1995 and the one which is being manufactured by Trans Pak. After comparing the two he explained that his client's registered design is distinct and different. Mr. Liaquat Merchant elaborated his argument by explaining that the three ribs on the Pak Water Bottlers bottle run in a straight line whereas the ribs on Trans Pak design run in waves. He therefore, contended that Trans Pak's design being distinct, the Design Office after duly satisfying itself granted Certificate of Registration to Trans Pak.
11. ' This Court need not have to decide whether similar design already existed in the local market as the counsel for Mehran when argued that Trans Pak may have a case under the old law but does not have any case under the new law, he practically conceded that design of Trans Pak, insofar as it is compared with the local design is unique and novel. However, the matter does not end with the comparison of Trans Pak's design with the design of Pak Water Bottlers. In order for Trans Pak to succeed, it is necessary to meet Mehran's other objection i,e, similar design was made for Nestle's bottle in the year 1999 and therefore, the design was already known to the world, when Trans Pak applied for its registration.
12. ' Before I proceed to examine Mehran's second argument that similar design was known to the world, the object of law of design be summarily examined.
13. The law of design is based upon the elementary rule that a design, which is unique in its character, should be protected and not allowed to be infringed by anyone to its advantage and to the detriment of the owner of the design. However, where the design is not novel or original, then in such eventuality permitting registration of such design would create ownership in person or entity which is not its lawful owner. Section 10 of the Registered Designs Ordinance, 2000 entitles any interested person to get a registered design cancelled inter alia also on the ground that the person in whose name the design is registered has no right to it. Section 2(e) of Registered Designs Ordinance, 2000 defines what is a 'design'. Section (e) is reproduced as under:-- "design" means features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged solely by the eye, but does not include a method or principle of construction or features of shape or configuration which are dictated solely by technical and functional considerations: Section 3 of the Ordinance provides for registration of design and explains what designs are not registrable. Section 3 is reproduced as follows;--
3. Registrable designs:-- (1). A design may, upon application made by the person claiming to be the proprietor, be registered under this Ordinance in respect of any article or the set of articles specified in the application.
(2) Subject to the provisions of this Ordinance, a design shall not be registered unless it is new or original and, in particular, shall not be so registered in respect of any article if it is the same as a design which before the date of the application for registration has been registered in Pakistan or published anywhere in the world in respect of the same or any other article or differs from such a design only in immaterial details or in features which are variant commonly used in the trade.
14. Under section 2(e) read with section 3(2) of the Ordinance 'Design' means such finished article, which appeals to the eye i,e, the design should be judged solely by the eye to be new and original.
15. The law makes the eye to be the Judge.
16. ' Now I proceed to examine the second argument of Mehran i,e, the Trans Pak's design was already known to the world. It is an admitted position that Trans Pak started producing its bottles after it purchased its mould in the year 2002 from 'ASB', a Japanese Company. Trans Pak has itself filed a document which is Annexure X-I with it rejoinder in Suit No,959 of 2004. This document is a letter dated 8-3- 2005 written by the Japanese Company, which also supplied identical mould to Mehran in 2003.
17. FrOm the content of this letter it is evident that at the time of placing order for the mould, Trans Pak itself did not provide any design of its own to the Japanese Company nor employed the Japanese Company to design the bottle for them. On the contrary in order to select a design for its bottle, Trans Pak obtained a sample bottle from the Japanese Company which was already being used by Nestle. Trans Pak then using the Nestle's sample bottle as guideline for its bottle approved it by making only slight changes to it. A copy of the design which was made for Nestle has been brought on record by Mehran for comparison. It is filed as annexure 'E-15' to the counter-affidavit fil ec in Suit No,959 of 2004 and as annexure 'B' to this petition. The design, the shape and the configuration of both the bottles are so identical as if both have been made from the same matrix. If one is to take the outline of both the bottles, one finds that every single shape and contour of the bottle is identical. After seeing Nestle's bottle which was admittedly designed prior in time, Trans Pak's bottle does not strike the eye to be a new or original design. When both the designs i,e, the design of Nestle and of Trans Pak, are placed side by side, one reaches the inescapable conclusion that the design of Trans Pak is imitation of Nestle's design. There is only slight variation and that too in the placement of the middle rib which is insignificant. Slight variation in the placement of the middle rib cannot constitute novelty of design. There is absolutely no novelty or originality about Trans Pak's design. Section 3(2) of the Ordinance clearly provides that where a design of an article differs only in immaterial details or in features of shape that are variants commonly used in trade that too cannot be registered. Thus it is evident that the design in question was already known to the world and already existed prior to the registration of Trans Pak's design. Therefore, its claim of novelty of design is not established.
18. ' Though in the present case I have found only slight variation in design and that too can only be regarded as slight variation of detail, there can be a situation where even large variation in detail of two designs for all practical purposes could be regarded as same. It is not necessary that every minute detail should be identical. All that a Court is to do is to examine the designs with an instructive eye and see if there is any substantial difference between the two. Keeping in view the nature of any article there must not be a mere novelty of outline, but a substantial novelty in the design. Thus one can only conclude that the design in question at the time of registration was not new and original. It was already known design with its prior user and therefore, Trans Pak's design is not sufficient to define it as a novel or original so as to grant it the protection of law of infringement.
19. Section 3(2) of the Ordinance clearly provides that a design shall not be registered unless it is new or original and before the date of the application for registration, has not been registered in Pakistan or published anywhere in the world. Therefore, Trans Pak's design registered under Registration No,11028-D was already known to the world prior to its registration and therefore, is hereby declared as invalid and liable to be cancelled.
20. ' Mr. Liaquat Merchant has relied upon the following cases Messrs Western Brand Tea, Karachi v.
21. Messrs Tapal Tea (Pvt.) Ltd. PLD 2001 SC 14; Western Engineering Co. v. Paul Engineering Co. AIR 1968 Calcutta 109; Messrs Chas A. Mendoza v. Syed Tausif Ahmed Zaidi another PLD .1993 Karachi 790; White Hudson & Co. Limited v. Asian Organization Ltd. (1964) 1 WLR 1466 an unreported judgment in the case of Whitworths Foods Limited v. Hunni Foods (International) Ltd. And Reckitt & Colman Products Limited v. Borden Inc. Except for the Calcutta case reported as AIR 1968 Cal 109 none of the other cited judgments relate to a controversy on design. Even in Calcutta case AIR 1968 Cal 109 at page 111 it was held as follows:-- "Section 51-A, in my opinion cannot contemplate only cases where the two designs must be identical on every point if at all, there is to be at best an identity in difference. But the difference must not be of a substantial nature. It is absurd to suggest that a slight variation between the earlier design and the subsequent design would make the two designs different. It should be remembered that the underlying principle behind the law infringement of design is that, while the commercial exigencies require that a specific design which is novel and original should be protected, the monopoly of the trade in respect of common design with no special skill or originality should not be encouraged."
22. "One practical test, however, is to find out whether there are substantial differences between the design subsequently registered. These differences cannot be based on purely subjective or utilitarian or aesthetic consideration but difference must be objective in its essential features. A general view of the features of both the design should be looked into to find out if the one design is as good as the other and the conclusion is to be arrived at by visual examination of the two things.
23. Similarity of device in external appearance must be in the features in considering the substantial difference between the two, but is certainly not determining factor."
24. The ratio of the above judgment too is that only novel and original design should be protected and the monopoly of the trade in respect of a common design should be discouraged.
25. ' In view of the above discussion, J.M. 17 of 2004 is allowed. The Design registered in favour of Trans Pak (Pvt.) Limited under Registration No,11028-D dated 20-3-2002 is hereby cancelled. In view of this decision in these proceedings, Suit No,959 of 2004 filed by Trans Pak (Pvt.) Limited seeking protection of its right under Registration No,11028-D has become infructuous and is dismissed as such along with all listed-applications. However, there shall be no order as to costs.