1. ' MUNIB AKHTAR, J.---This petition arises under the Registered Designs Ordinance, 2000 ("Ordinance"). The petitioner seeks cancellation of a design registered in favour of the respondent No, 1, being design No, 12247-D dated 09.05.2005 ("Design"). The Design is in respect of a "roller" pen.
2. Novelty is claimed in the shape of configuration of the pen, and different views of the pen are shown in the registration, both with and without the cap, and with the cap "parked" on the back. The first two respondents ("contesting respondents") are associated entities. The third respondent is the Registrar of Designs.
2. Learned counsel for the petitioner submitted that in 2007, the petitioner had two applications pending with the Registrar of Designs for registration of a design in respect of a "roller" pen.
3. However, one of those applications was declined on the ground of lack of novelty, by reason of the Design. Thereafter, the contesting respondents filed two suits in this Court alleging infringement of its design by the petitioner. These are Suit Nos. 1398/2008 and 1405/2008. In the first mentioned suit, an interim order was made on 09.10.2008. Learned counsel also referred to another suit filed by the contesting respondents against another party, Suit 134/2011, in which they were granted an interim injunction. Reference was made to the order, reported as Dollar Industries (Pvt.) Ltd. And another v.
4. Nisar Traders and others 2011 CLD 847. Learned counsel submitted that on appeal a learned Division Bench vacated the order. The contesting respondents then petitioned the Supreme Court for leave to appeal against the order of the Division Bench, but leave was declined by order dated 01.06.2012.
5. 3.The present petition was filed on 13.10.2008. Learned counsel submitted that the Design was merely the copy of a German design for a "roller" pen, which was well known much prior to 2005.
6. Learned counsel referred to section 10(1)(a) of the Ordinance, which provides that the registration of a design is to be cancelled if the "specific substantive requirements" of the Ordinance have not been fulfilled. Learned counsel then referred to section 3(2), which provides, inter alia, that a design shall not be registered if, before the date of the application, it has been "published anywhere in the world in respect of the same or any other article". Since the Design had already been so published much prior to 2005, learned counsel submitted that that it could not have been registered. Hence, the petition for its cancellation. Learned counsel candidly submitted that although the German pens were not as such available in Pakistan, they were nonetheless well known all over the world. In this context, learned counsel referred to an international exhibition held in Frankfurt, Germany in 1998, which, it was submitted, was attended by the representatives of the contesting respondents. It was thus contended that there could be no reasonable doubt that they were aware of the existence of the prior German design well before making their application for the Design. Learned counsel also relied on a catalog in respect of the German pens. The catalog is in German, and appears to have been published in 1995. It is in respect of "Hauser" pens, and learned counsel referred in particular to model No, 737, which is described in the catalog as "Hauser 737 MAYOR Rollerball". Learned counsel submitted that this was the very design for which registration had been obtained by the contesting respondents. Thus, the matter fell squarely within the prohibition contained in section 3(2), as relied upon. The Design should not have been registered, and ought therefore to be cancelled.
7. Learned counsel also relied on certain case law. It was prayed that the petition be allowed.
4. Learned counsel for the contesting respondents opposed the petition. Learned counsel submitted that they had been in the stationery business since 1954. It was not denied that the representatives of the contesting respondents had attended the international fair in Germany in 1998. In 2005, the Design was registered in their favour. The petitioner tried to enter the market by selling pens that infringed the registered design, which led to the filing of the two suits in 2008 referred to above. Learned counsel submitted that the contesting respondents had challenged the one design registered in favour of the petitioner in 2007 before the Registrar, and in the two suits an order had been made for those proceedings to be brought before this Court. The present petition was nothing but a counter-blast to the contesting respondents' suits. Learned counsel referred to the Design and its various features. Referring to the petition, learned counsel submitted that in para 4, the petitioner had averred that it had "partnered with several leading international companies; such as A. HAUSER GmbH & Co. ... Germany; who keep the Applicant up to date with the latest industry information and supply it with high quality raw materials".
8. Learned counsel submitted that the catalog, referred to above, which purported to be in respect of "Hauser" pens ought to have been produced and filed along with the petition, but this had not been done. The catalog had only been produced at the heating of the main petition. The petitioner could not therefore rely upon it. In the documents annexed to the petition no specific pen had, as such, been identified the design of which had been published within the meaning of section 3(2). I may note that at the time of the hearing certain pens were also shown to be me by learned counsel for the petitioner, both as manufactured by the contesting respondents using the Design, and as had been manufactured by "Hauser". The latter were specifically relied upon by learned counsel as being the pen whose design had been copied by the contesting respondents. Learned counsel for the said respondents submitted that no credence could be placed on the "Hauser" pen so produced. Its provenance was wholly unknown. In this context, learned counsel referred to certain emails of August, 2008 annexed to the petition. These, it was claimed by the petitioner, showed correspondence between a German company (that had manufactured the "Hauser" pens) and some party in Dubai, which was interested in selling the "Hauser" pens there. However, the German company regretted its inability to supply the same.
9. Learned counsel for the contesting respondents referred in particular to the email of 29.08.2008, where the German company stated that it had ceased to manufacture the pens more than 10 years prior thereto. On this basis learned counsel questioned the pen produced at the hearing.
10. How, it was asked rhetorically, could a pen the manufacture of which, on the petitioner's own case, had stopped even prior to 1998 be produced before the Court in 2015?
5. Continuing with his submissions, learned counsel referred to various provisions of the Ordinance. Referring in particular to section 3(2), learned counsel contended that the mere publication of a design in a catalog (even if the said document was admissible) was not publication within the meaning of the said provision. Learned counsel referred to section 51A of the predecessor legislation, the Patents and Designs Act, 1911 ("1911 Act"). That section also dealt with the cancellation of a registered design. The earlier provision had listed three separate grounds, on any one of which the design could be cancelled. One of those was that the design was not new or original and the other, was that it had been published in Pakistan prior to the date of registration. Learned counsel submitted that this showed that the requirement of the design being "new or original" was distinct and separate from the publication of the design.
11. Reference was also made to the relevant Indian statute, the Designs Act, 2000 ("Indian Act").
12. Section 4 of the Indian Act dealt with the same matter as section 3(2). Learned counsel submitted that the Indian provision also listed the requirements for registration separately, with the requirement of newness or originality being treated separately from the matter of publication. On this basis, learned counsel submitted that the words "in particular", as used in section 3(2) and what followed thereafter (which related to publication) ought to be read and treated separately from novelty (i.e,, newness or originality). As to the proper meaning of "publication", learned counsel relied on a decision of the Delhi High Court, Indo Asahi Glass Co.
13. Ltd. v. Jai Mala Roller Glass Ltd. and another 1995 (33) DRJ 317 (available on the Indian Kanoon website). Publication had to be read contextually with the article in question (here a pen), and learned counsel submitted that the (legally admissible) facts as placed before the Court by the petitioner did not establish any publication within the meaning of section 3(2). Learned counsel also submitted, referring to the material relied upon by the petitioner, that there were material inconsistencies as to the German entity that purportedly had the earlier design. The company "A. Hauser" did not exist; the name of the company even on the correspondence relied upon by the petitioner was In nowell GmbH. It was prayed that the petition be dismissed.
14. 6.Learned counsel for the petitioner exercised his right of reply. It was explained that "Hauser" was the trademark or name, while the company was In nowell GmbH. The company had since closed its business. Learned counsel referred to a certificate, dated 24.10.2008, annexed to the affidavit in rejoinder. That certificate (which is in English) was, learned counsel contended, a confirmation by In nowell GmbH that in April 2004 it had sold its moulds for the "Mayor 737" pen to the contesting respondents. The certificate further stated that the "initial design" of the pen was "a creation of Hauser and had been included in our old catalogues for the years 1994, 1995, 1996 and 1998". Thus, learned counsel contended, there was no confusion or inconsistency at all.
15. All the material relied on by the petitioner unambiguously showed that the "Hauser" pen "Mayor 737" was the very design that had been registered by the contesting respondents as the Design.
16. Since the design was published much prior to the date of the application for registration, the latter disclosed no novelty and hence the registration ought to be cancelled.
17. 7.I have heard learned counsel as above, examined the record and considered the case law. The present dispute moves within a narrow locus. It hinges on the correct meaning and application of section 3(2) of the Ordinance. This provision is as follows: "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 variants commonly used in the trade.
18. ' Explanation-- Designs are not new or original if they do not significantly differ from known designs or combination of design features."
19. ' Section 51A of the 1911 Act may also be referred to. Its subsection (1) was as follows: "Any person interested may present a petition for the cancellation of the registration of a design-
(a) at any time after the registration of the design, to the High Court on any of the following grounds, namely:- (i)that the design has been previously registered in Pakistan; or (ii)that it has been published in Pakistan prior to the date of registration; or (iii)that the design is not a new or original design; or
(b) within one year from the date of the registration, to the Controller on either of the grounds specified in sub-clauses (i) and (ii) of clause (a)."
20. ' Whatever may have been the position under the 1911 Act, in my view, the requirement in section 3(2) that the design not be previously published relates directly to novelty, i.e,, its newness or originality. This is clear from the use of the words "so registered" that follow the words "in particular". These words refer and relate back to what has been said earlier, and that is of course that a design shall not be registered unless it is new or original. The words "in particular" reinforce the point because they clarify that whatever follows after them are but particular instances of what is not new or original.
8. For present purposes, the issue is, when can a design be said to have been "published anywhere in the world in respect of the same or any other article"? Two preliminary points may be made. Firstly, publication "anywhere in the world" necessarily includes publication in Pakistan as well. Secondly, the actual "use" of the design, e.g. in or on an article in such manner that the article is, or would be, disclosed to the public in the ordinary course, would also amount to publication within the meaning of the subsection.
21. 9.The publication with which I am concerned is of course publication outside of Pakistan. It is not publication in the sense of "use" as just explained since I accept the objection raised by learned counsel for the contesting respondents that the provenance of the pen showed to me as being the "Hauser Mayor 737" has not been established. Furthermore, as also pointed out by learned counsel, if the German company had stopped manufacturing the "Hauser" pens as long ago as 1998, it is open to question as to how the petitioner was able to produce such a pen in 2015. Even the certificate from Innowell GmbH relied upon by the petitioner refers only to catalogs up to 1998. Therefore, the nature of the publication sought to be relied upon must be other than any actual pen. It must be carefully ascertained. Before doing so however, it will be necessary to consider what, as a matter of law, is meant by the words "published anywhere in the world".
22. Since this appears to be a case of first impression, there is no Pakistani authority to give guidance or assistance. Therefore, the position in foreign jurisdictions will have to be looked at to see whether any assistance can be obtained. In this regard, the Indian Act can conveniently be the first port of call, especially since learned counsel for the contesting respondents has relied on a decision from that jurisdiction.
23. 10.It is not however necessary to consider the case actually cited in detail. This is so for two reasons. Firstly, with respect, the cited decision was under the Indian version of the 1911 Act, and there, as here, section 51A only allowed cancellation if the design was published within the country. The publication sought to be relied upon was the receipt of a catalog from Germany in India in what was essentially a private conununication. In such circumstances, the Delhi High Court had no difficulty in concluding that there had been no publication in India. Quite obviously, the facts here are different, since I am concerned with publication that admittedly took place outside Pakistan. Secondly, there is a more recent Full Bench decision of the same High Court, where the meaning of publication under the Indian Act has been considered. This is the judgment reported as Reckit Benkiser India Ltd. v. Wyeth Ltd. AIR 2013 Delhi 113. Before considering the judgment, it will be appropriate to set out. section 4 of the Indian Act, as presently relevant: "4. Prohibition of registration of certain designs A design which, (a)is not new or original; or (b)has been disclosed to the public anywhere in India or in any other- country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration; ... ' shall not be registered."
24. ' Section 19 of the Indian Act provides, inter alia, that the registration of a design may be cancelled if "it has been published in India or in any other country prior to the date of registration". As is clear, there are important differences between section 3(2) of the Ordinance and section 4(b) of the Indian Act. Our statute simply speaks of the design being published anywhere in the world. The Indian Act however requires the publication to be either in "tangible form" or "by use in any other way". The specific issue before the Full Bench (as presently relevant) was whether a design the records, drawings, specifications, etc. of which were available in the relevant registration office of a foreign country could be said to have been published within the meaning of section 4(b) by reason, or on the basis, of such records themselves. After an elaborate discussion and consideration of relevant decisions, including a judgment of the Indian Supreme Court reported as Bharat Das Tools Ltd. v. Gopal Glass Works Ltd. 2008 (10) SCC 657, the Full Bench concluded that even on the wording of the Indian Act, such records, etc. could of themselves amount to publication in appropriate circumstances. It was observed as follows (para 22): "What is publication is essentially a question of fact to be decided as per the evidence led in each case. Existence of a design in the publication record/office of a Registrar of design abroad may or may not depending on the facts of each case amount to prior publication and there would be prior publication only if the prior registered design is made public and has that much necessary clarity as applied to a specific article capable of judged by the visual appearance or the eye of the mind, that by use of the said knowledge and information in the public record of the Registrar of design office, an article can be made using that design which will be a piracy or violation of that design i.e, putting it differently unless and until there is complete clarity and understanding to the naked eye or the eye of the mind of the foreign registered design as found in the public record of the Registrar of design qua a specific article, it cannot be said that such public record will amount to prior publication."
25. ' The view from the Indian jurisdiction therefore suggests that, even on a provision worded as is section 4, the matter of publication is to be approached broadly.
11. Our statute of course puts the matter in what are arguably the broadest terms possible: "published anywhere in the world". Are these words to be applied literally or does a more nuanced reading accord better with the real intent of the law-maker? The concern here is not with the geographical limit--"the world", after all, means precisely that--but rather the nature, extent and circumstances of the publication. This brings me to the next jurisdiction that can be consulted, which is English law, as modified by EU law. The matter there is governed by Council Regulation 6/2002/EC of 12.12.2001 on Community designs, and the UK statute (the Registered Designs Act, 1949) has been suitably amended to accord with the EU regulation. The regulation was recently considered in the High Court in Magmatic Ltd. v. PMS International Ltd. [2013] EWHC 1925 (Pat). As explained by the Court (at [33]): "Article 7(1) [of the EU regulation] sets out the ways in which a design may have been made available to the public. In short, any disclosure which makes the design public in any part of the world will suffice. This is subject to two exceptions, however. These may conveniently be labelled "obscure disclosures" and "confidential disclosures". Only the first of these is relevant for present purposes. This applies where "these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community"."
26. ' See also the succeeding analysis at [34] to [41].) The "obscure disclosures" exception is sometimes referred to as the "safeguard clause". Thus, in EU (and UK) law the potentially unlimited scope of "publication" has been tempered. However, even here a relatively broad approach is taken. Thus, it has been observed in a standard English treatise (Intellectual Property Law by Lionel Bently and Brad Sherman (4th ed., 2014); internal citations omitted): "The tribunals have adopted a liberal approach when considering whether a disclosure would be something that could be known to the interested circles in the Community. As a result, the concern that the safeguard clause might have transformed the broad, objective novelty notion into a peculiar and complex form of local novelty has not eventuated. The approach taken to the safeguard clause can be seen, for example, in a decision [i.e,, the Magmatic case] in relation to a design for children's ride-on suitcase (known as the 'Rodeo'). In a challenge to the novelty of the design, the question arose as to whether disclosure of a concept board at the 1998 BASF/Institute of Material Designs Awards that showed the product in use was an obscure disclosure. It was agreed that the relevant sector was the suitcase sector. The question here was whether as a result of the awards ceremony, the design of the Rodeo could reasonably have become known in the nounal course of business to circles specializing in suitcases within the Community. The court found that the disclosure was not obscure and that it formed part of the relevant prior art for the design in question. This was because while the Designs Awards were for plastics, the Awards were well known in the field of product design in the United Kingdom. This was reinforced by the fact that the theme of the 1998 Awards was luggage." (p. 731)
27. ' Lastly, I turn to Singapore. The statute there is the Registered Designs Act of 2000. Section 5(1)
(b) provides that a design shall not be registered if it has been "published in Singapore or elsewhere in respect of the same or any other article" before the date of the application. It will be seen that this provision is quite similar to our section 3(2), and indeed the words "Singapore or elsewhere" are, as expected, taken to mean "anywhere in the world". The provision does not appear to have been judicially considered in Singapore. However, it is interesting to note that it has been opined that the better approach to the provision would be to regard it as limited in some measure, perhaps along the lines of the "safeguard clause" in EU and UK law: see Industrial Design Law in Singapore by George Wei Sze Shun (2012; pp. 174-176).
28. 12.As this survey of foreign jurisdictions indicates, publication in the context of section 3(2) is to be broadly construed and applied. That much is clear. In my view, that does not necessarily preclude a more nuanced or circumscribed approach. Whether that is implicit in the provision, once the, true intent of the law-maker has been judicially divined, is something that requires careful consideration. I do not however delve further into this aspect since, as will shortly become clear, it is not necessary for me to do so. I expressly leave the point open for further consideration in an appropriate case.
29. 13.The publication on which reliance is placed by learned counsel for the petitioner is the "Hauser" catalog. Additionally, there is the fact that there was an international exhibition at Frankfurt, Germany in 1998, which was admittedly attended by the representatives of the contesting respondents. That was also a year (and perhaps the last year) for which, according to Innowell GmbH, a "Hauser" catalog was published. I start with the catalog as annexed to the petition. It is quite obvious that this is a copy of the 1995 catalog as was shown to me at the hearing. Accordingly, the objection taken by learned counsel for the contesting respondents that the catalog cannot be taken into consideration cannot be accepted. The catalog clearly shows the "Hauser 737 Mayor Rollerball" pen, giving not merely its description but, much more importantly, also its photographs. As is well known, in design law the visual aspect is of seminal importance. In this regard, reference may be made to the definition of "design" as given in section 2(c) of the Ordinance. The "Hauser 737" is shown in at least two different places in the catalog, at pg. 8 and pg.
20. Even as appearing in the catalog, it appears to me to be, if I may be allowed the use of a colloquialism, a "dead ringer" for the Design as registered. Now, the "Hauser" catalog was clearly a trade catalog, which was intended to be circulated amongst customers and be freely available in and to the trade. As noted above, the contesting respondents claim to have been in the stationery business since 1954 and, on their own showing,. appear to be a major Pakistani entity in this sector. Reference may be made to paras 3 to 6 of the counter affidavit. It is only to be expected that the representatives of such a business would keep themselves abreast of developments and visit trade fairs and exhibitions for business purposes. As noted, it is admitted that they attended the 1998 exhibition in Frankfurt and it can be safely assumed that this was not the only time that they have attended such fairs. Indeed, the Frankfurt exhibition, or "Paperworld", appears to be a major annual international trade fair for paper, office supplies and stationery products, as a simple Google search reveals. It is only to be expected that the "Hauser" brand, itself of admittedly German origin, would be, and have, a major presence at such an international event. One can usefully compare the facts before me with the situation in the Magmatic case. There, the facts were perhaps much more conducive to the Court concluding that the "safeguard clause" ought to apply, but the High Court reached the contrary conclusion. Thus, even if section 3(2) were to be given a more nuanced reading (which is, I emphasize, a point that remains open) the present facts and circumstances would be well within the meaning of publication anywhere in the world. On a more literal reading, they readily pass muster. Keeping all of the foregoing factors in mind, I have no hesitation in holding that the contesting respondents' Design is the same as, and (in any case) certainly does not at all "significantly differ" from, the design of the "Hauser 737 Mayor Rollerball". I further hold that the design as registered by the contesting respondents was published much prior to 2005 within the meaning of section 3(2) and therefore the design is neither new or original and ought not to have been registered.
14. Accordingly, in view of what has been stated above, this petition is allowed. The contesting respondents' design No, 12247-D dated 09.05.2005 is hereby cancelled, and the respondent No, 3 is directed to act conformably with, and take all actions as may be necessary to give effect to, this judgment.
30. Petition allowed.