In ARS Steels and Alloy International Private Limited vs The Controller of Patents and Designs & Ors. [IPDAID/43/2024], the Calcutta High Court set aside the Controller’s order rejecting the cancellation petition against the registered design bearing number 257980, comprising of a double “XX-Rib” shape on the surface of construction rods,and remanded the matter for fresh consideration by a different officer.

The design was registered in favour of Souvik Steels. ARS Steels sought cancellation of the design under Section 19 of the Designs Act on the grounds that the design had been previously published, lacked novelty and originality, had been previously registered, and was purely functional in nature. The cancellation petition was filed in response to allegations of infringement made by Souvik Steels against ARS Steels.

The Controller rejected the cancellation petition, holding that there was no prior publication, that the design was not in the public domain, and that the design possessed sufficient aesthetic appeal to qualify for protection under the Designs Act.

The High Court found significant deficiencies in the Controller’s analysis. The Appellant had produced substantial documentary evidence, including journal publications, newspaper publications, invoices, and market evidence suggesting that both X-Rib and XX-Rib patterns had been used and marketed long before the registration date of the impugned design. The Court observed that the Controller had failed to adequately examine this material while determining whether the design had been previously published or whether it was genuinely new and original.

Reiterating settled principles under the Designs Act, the Court noted that a design that has already entered the public domain through publication or prior use cannot be registered and is liable to cancellation. The Court clarified that for a document to qualify as prior publication, it must disclose the design with sufficient clarity such that a person possessing ordinary knowledge in the field is able to visualise the design from the document itself, without having to exercise any inventive faculty or reconstruct the design from mere ideas or suggestions contained therein.

The Court emphasised that novelty and originality require a substantive comparison with existing designs and the state of the art. Merely relying on the visual impression created by the registered design, without examining prior art and market evidence, is insufficient.

The Court further held that the Controller had improperly circumvented the issue of novelty by relying solely on ocular impression. The Controller also failed to consider whether similar X-Rib configurations were already available in the market in single, double, or multiple rib patterns and whether the impugned design created a substantially different overall impression from such prior designs.

The Court also observed that the Controller had not adequately considered the earlier decision in SRMB Srijan Ltd. v. Triveni Industries Pvt. Ltd., where an X-Rib design for TMT rods had been held to lack novelty due to prior publication and market availability. According to the Court, the implications of that decision and the evidence concerning the prevalence of X-Rib designs in the market were not properly considered.

On functionality, the Court acknowledged that a design may possess both functional and aesthetic features and still qualify for registration. However, the Court clarified that the enquiry cannot end there. It was necessary to assess whether the impugned features were selected solely for functional reasons or whether considerations beyond pure functionality also influenced their selection. It was thus held that the Controller’s conclusion on functionality was unsupported by adequate reasoning and required a more thorough examination.

Accordingly, the Court held that the Controller had failed to apply the correct legal tests for assessing prior publication, novelty, and originality, rendering the impugned order unsustainable.