IP Industrial Design Case Presentation

1. NATIONAL FANS LTD. VS. HAJI
MD. FIROZ AND ANOTHER
47 DLR (1995) HCD 285

2. A CASE FOR
CANCELLATION OF
DESIGN UNDER THE
PATENTS & DESIGNS
ACT, 1911

3. NATIONAL
FAN
NATIONAL
KINGS
FAN
FACT

5. SECTION 51A
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 Division on any of the following grounds, namely:-
(i) that the design has been previously registered in Bangladesh; or
(ii) that it has been published in Bangladesh prior to the date of
registration; or
(iii) that the design is not a new or original design;

6. RULES OF LAW
• Statutory Laws:
* Sections 2(5), 2(14), 46, 51A of the Patents & Designs Act, 1911.
* Rule 36, Patents and Designs Rules 1933.
• Case Laws:
Simmons Mathieson and Co. Ltd (1911) 28 RPC 480, Philips vs. Marbro Rubber
Company (1920) 37 RP C-233, Infield Ltd. vs. Rosen (1939) 36 RPC-163, Stratford
Auto Components vs. Britax London Ltd. 1964 RP C-183 and Western Engineering
Co. vs. Paul Engineering Co. MIR 1968 Col. 109.

7. ISSUE- 1
Whether the design of the respondent’s
fan is substantially similar in
appearance to the petitioner’s design
and whether the design of the
respondent is liable to be cancelled
under section 51A of the Patents &
Designs Act, 1911?

8. PETITIONER’S ARGUMENT
For the purpose of cancellation it is not
necessary for the respondent's design to be exact
copy of the petitioner's design to the minutest
detail. It will be enough if they appear to be two
species of the same design.

9. RESPONDENT’S ARGUMENT
The design must appear to the eye to be an
identical replica of the other and if visually a
difference can be found in the respective designs,
the courts would normally not allow the
cancellation of the registration.

10. HELD
• Respondent's designs are an infringement of the
petitioner's design .
• Slight difference of Respondent’s design from
the petitioners design cannot be the basis for
claiming the novelty and originality of a design.

11. REASONING
• similarity of the features is to be determined by
the eye.
• It is not essential for the respondent's design to
be an exact reproduction or copy of the
petitioner's design down to the smallest detail
for the purpose of design cancellation.

12. REASONING CONTD.
• For cancellation of design under section 51A of
the Patents & Designs Act, 1911, it will be
enough if they appear to be two species of the
same design.

13. ISSUE- 2
• Whether registration of design under
section 46 of the Patents and Designs
Act, 1911 is conclusive proof for a design
to be new and original?

14. RESPONDENT’S ARGUMENT
The design has been registered under
section 46 of the Patents and Designs
Act, 1911 and, the registration is the
evidence of its new and original
character of their design.

15. HELD
• Presumption of novelty and originality.
• may claim protection under the Act.
• entry in the register is not conclusive and the
presumption can be rebutted.

16. DECISION
• The Court allowed the application.
• Directed the Controller of Patents &
Designs, to remove the respondent’s
design from the record.

17. THANK YOU!