Failure to evaluate prior publication and novelty in light of industry-common designs renders a registration order unsustainable.

The Appellant and Respondent No. 3 (Souvik Steels Pvt. Ltd.) are TMT Bar manufacturers.

On November 6, 2013, Respondent No. 3 registered a design for "Construction Rod" (No. 257980) featuring a double "XX-Rib" shape.

Following an infringement notice from Respondent No. 3 in 2016, the Appellant filed for cancellation of the design under Section 19 of the Designs Act, 2000.

The Deputy Controller (Respondent No. 2) rejected the cancellation application on April 10, 2023, holding that the design was neither previously published nor purely functional, and possessed aesthetic appeal.

The Appellant challenged this order before the High Court, providing documentary evidence of similar "X-Rib" and "XX-Rib" designs available in the market since 2003-2004.

1. Whether the impugned design lacked novelty or originality due to prior publication and use in India before the date of registration

2. Whether the impugned design was purely functional or mechanical in nature, thereby being excluded from the definition of "design" under Section 2(d)

3. Whether the Deputy Controller failed to properly evaluate the documentary evidence and legal tests regarding novelty and prior art

Section 2(d) of the Designs Act, 2000, which defines "design" as features of shape or configuration judged solely by the eye, excluding mere mechanical devices.

Section 4 prohibits registration of designs that are not new, have been disclosed to the public, or are not significantly distinguishable from known designs.

Section 19 provides the grounds for cancellation, including prior publication and lack of novelty.

Bharat Tubes Limited vs. Gopal Glass Works, which emphasizes that design protection is for original research and labor.

SRMB Srijan Limited vs. Triveni Industries, where a similar "X-Rib" design for TMT rods was cancelled for lack of novelty and prior publication.

The Court found the Deputy Controller’s order "perverse" for ignoring substantial documentary evidence, such as trade journals from 2004 and invoices from 2002-2003 showing that X-Rib designs were common to the trade long before registration.

The court noted that "novelty" and "originality" require a mental conception that did not exist before; the mere introduction of trade variants does not suffice.

The Controller failed to perform a comparative assessment of the "state of the art" or "what was available in the market".

The Controller’s finding of ocular novelty was flawed because it did not address the judicial precedent in the SRMB Srijan case, which had already determined that the X-Rib pattern on TMT bars lacked novelty.

Regarding functionality, the court held that the Controller failed to provide sufficient reasoning on whether the specific features were dictated solely by function.

The matter was remanded to a different Officer to hear the rectification application afresh, granting an opportunity of hearing to both parties, with the exercise to be completed within three months; the appeal (IPDAID/43/2024) was allowed.