Summary
ARS Steels and Alloy International Private Limited challenged the registered design of Souvik Steels Private Limited for a double "XX-Rib" pattern on TMT construction rods, seeking cancellation on grounds of prior publication and lack of novelty and originality under the Designs Act 2000. The Deputy Controller rejected the cancellation petition, finding no prior publication and holding the design to have aesthetic eye appeal. The Calcutta High Court, in appeal, set aside that order, holding that the Controller had disregarded substantial documentary evidence of prior use and publication, including trade journals, newspaper reports, and sales invoices dating to 2002-2003, and had failed to apply the correct legal tests for novelty and originality. The matter has been remanded to a fresh officer for reconsideration within three months. The ruling is a timely reminder that design registrations for industrial goods must survive genuine scrutiny of the prior art landscape, not merely a surface-level ocular impression.
Background
A double row of ribs on a steel bar may not sound like the stuff of intellectual property litigation, but in the TMT steel industry, the shape of those ribs can define market share, and, apparently, courtroom battles spanning over a decade.
ARS Steels and Alloy International Private Limited (“ARS Steels”) and Souvik Steels Private Limited (“Souvik Steels”) are both manufacturers of TMT bars, the ribbed steel rods that form the backbone of reinforced concrete construction across India. On 6 November 2013, Souvik Steels obtained registration of a design for its double “XX-Rib” pattern applied to construction rods under class 25-01, bearing Design Registration No. 257980. The XX-Rib pattern refers to a distinctive double-cross ribbing configuration on the surface of the rod.
In early 2016, Souvik Steels issued an infringement notice to ARS Steels, alleging that ARS Steels was using the registered design without authorisation. That notice set off a chain of proceedings: ARS Steels responded by filing a petition for cancellation of the impugned design before the Controller of Patents and Designs under Section 19 of the Designs Act 2000, while a separate infringement suit filed by Souvik Steels remained pending before the District Court at Bengaluru.
ARS Steels argued before the Deputy Controller that the XX-Rib design was liable to be cancelled on four grounds: that it had been previously registered in India, that it had been published in India prior to the date of registration, that it was neither new nor original, and that it was purely functional in nature. In support, ARS Steels filed an affidavit of evidence placing a substantial body of documentary material on record. This included publications in the Indian Concrete Journal from 2004, a Business Line report dated 8 September 2004, and a report in The Hindu dated 18 June 2011, all referring to X-Rib designs in the market. It also produced sales invoices showing X-Rib TMT rods being sold as far back as March and April 2003, and affidavit evidence from three steel manufacturers — M/s I Steel, Indus Steel and Alloys Limited, and M/s Blue Steel — each attesting to the market presence of XX-Rib pattern TMT bars before the date of registration.
By an order dated 10 April 2023, the Deputy Controller rejected the cancellation petition. The Controller found no prior publication, dismissed all the documentary evidence on record, and held that the design had aesthetic eye appeal and was not a mere mechanical device. ARS Steels appealed to the Calcutta High Court under Section 19(2) of the Act.
Issues
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- Whether the impugned design had been published in India prior to its registration date, thereby rendering it incapable of registration under Section 4(b) of the Designs Act 2000.
- Whether the impugned design was “new or original” within the meaning of Section 4(a) read with Section 2(d) of the Act, given the prior art and prior use materials on record.
- Whether the impugned design was liable to be cancelled on the ground of functionality under Section 19(1)(e) read with the exclusion of “mere mechanical device” from the definition of “design” in Section 2(d).
- Whether the Deputy Controller had applied the correct legal tests in assessing novelty, originality, and prior publication, and whether the impugned order disclosed adequate reasoning.
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ARS Steels’ Arguments
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- The XX-Rib design was not new or original because both X-Rib and XX-Rib configurations had been available in the Indian market well before November 2013, as demonstrated by trade journal publications, newspaper reports, and sales invoices from 2002-2003.
- The X-Rib design had been the subject of earlier litigation in SRMB Srijan Limited vs. Triveni Industries Pvt. Ltd., where the Calcutta High Court had found the X-Rib design to lack novelty and to have been in the market since 2001-2002. Given that the XX-Rib is a double application of the same motif, that finding was directly relevant to the present design’s registrability.
- Under the test in Gopal Glass Works Limited vs. Assistant Controller of Patents and Designs, prior publication is established where a document enables a reader with ordinary knowledge of the subject to see the design in their mind, without recourse to their own originality. The publications relied on met this standard.
- The design was purely functional in nature, serving only to enhance the bond between the rebar and concrete, which was a structural and mechanical purpose, and therefore fell outside the definition of “design” under Section 2(d) of the Act.
- The Deputy Controller had disregarded all the documentary evidence and had not applied the established tests for novelty and originality, including any comparison with the prior art or assessment of whether the design produced a different overall impression from what was already available.
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Souvik Steels’ Arguments
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- The Deputy Controller’s order was reasoned and well-considered, and ARS Steels had not discharged the burden of demonstrating prior publication by materials substantially similar to the impugned design.
- Relying on the ruling in Cow (P.B.) & Co. Ltd. vs. Cannon Rubber Manufacture Ltd., it was evident that a design that possesses both functional and aesthetic attributes remains registrable.
- The Deputy Controller had correctly assessed functionality and eye appeal, and had arrived at a conclusion that the design was not a mere mechanical device, a finding that warranted no interference.
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Controller’s Arguments
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- The impugned order did not warrant interference as the appellant had failed to demonstrate prior publication or prior disclosure substantially similar to the impugned design.
- All the contentions of both parties had been fully addressed in the order below, and the appeal should be dismissed.
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Court’s Observations and Analysis
The Standard for Prior Publication
The court noted that, as a legal proposition, a design that has been previously published is incapable of registration and is liable to be cancelled under Section 4(b) and Section 19(b) and (c) of the Designs Act 2000. The court reaffirmed the test drawn from Gopal Glass Works: for prior publication to destroy the novelty of a registered design, the publication must be in tangible form, of the design applied to the same article, and must enable a reader with ordinary knowledge of the subject to visualise the design without having to supply originality of their own.
Failure to Engage with the Evidence
The court found that the Deputy Controller had fundamentally failed to discharge the obligation to examine the prior publication question in light of the substantial body of evidence placed before it. ARS Steels had produced trade journal publications from 2004, newspaper reports from 2004 and 2011, invoices demonstrating sales of X-Rib TMT rods from as early as March 2003, and affidavit evidence from manufacturers attesting to the market presence of XX-Rib pattern bars before the registration date. The court observed that the Controller had dismissed all of this material without engaging with it, and had concluded without adequate basis that there was “no scope of enquiry” regarding similar products being available in the market. The court held that finding to be perverse.
The Novelty and Originality Test
The court observed that “original” means originated or conceptualised, while “new” means different from what has gone before. Together, they require that the design represents a mental conception expressed in a physical form that did not previously exist. The court stated that the proper method of inquiry demanded an instructed eye: the Controller was required to examine the two designs in question and assess whether they produced a different overall impression, having regard to the state of the art and what was already available in the market. The court noted that the introduction of ordinary trade variants into an old design does not make it new or original. It found that the impugned order had circumvented this inquiry entirely, relying purely on a general ocular impression rather than conducting the structured comparison that the law required.
The SRMB Srijan Precedent
The court found the Deputy Controller’s treatment of the earlier ruling in SRMB Srijan Limited vs. Triveni Industries Pvt. Ltd. to be selective and inadequate. That case had directly addressed the X-Rib design in the context of TMT rods – the same class of goods, and had held that the X-Rib design lacked novelty and had been published and available in the market since 2001-2002. The court observed that the Deputy Controller could not simply sidestep this precedent: the finding that the X-Rib design was in the public domain as early as 2001-2002 was directly relevant to any assessment of whether a double XX-Rib pattern constituted a new or original design in 2013. The court further observed that the SRMB Srijan ruling had also found the X-Rib design to be non-functional, which made it all the more necessary for the Controller to engage carefully with the functionality question in the present case rather than to dismiss it with a bare conclusion.
Functionality: A Partial but Incomplete Answer
The court acknowledged that a design with both functional and aesthetic attributes can be validly registered, as established in Cow (P.B.) & Co. Ltd. vs. Cannon Rubber Manufacture Ltd. However, the court held that the question is not whether the design has any aesthetic attribute, but whether, when a specific feature was chosen, anything other than purely functional considerations could have been relevant. A design is excluded only where its features as a whole are dictated by function. The court found that the Deputy Controller’s conclusion on this point was bereft of adequate reasoning and had not engaged with the background provided by the SRMB Srijan precedent.
Findings
In view of the observations and the arguments presented by both the parties, the Calcutta High Court held that:
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- The Deputy Controller’s finding that there was “no scope of enquiry” regarding similar products available in the market was perverse and ignored the substantial documentary evidence placed on record by ARS Steels.
- The impugned order failed to apply the correct legal tests in examining the novelty and originality of the registered design, relying on a general ocular impression rather than a structured comparison with the prior art.
- The impugned order dealt selectively with the binding precedent in SRMB Srijan Limited vs. Triveni Industries Pvt. Ltd., which had held that the X-Rib design for TMT rods lacked novelty and had been in the market since 2001-2002.
- The conclusion on functionality was bereft of reasoning and had not considered the relevant prior art context.
- The impugned order dated 10 April 2023 is set aside.
- The matter is remanded to a different officer for a fresh hearing on the cancellation petition, with an opportunity of hearing to be given to both parties.
- The re-examination is to be completed within three months from the date of communication of the order to the Controller of Patents and Designs (Respondent No. 1).
- All findings on the merits recorded in this judgment are expressly stated to be tentative in nature and shall not bind the officer conducting the fresh examination.
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Case Citation: ARS Steels and Alloy International Private Limited vs. The Controller of Patents and Designs and Ors., IPDAID/43/2024, High Court at Calcutta (IPR Division), decided on 07 May 2026. Citation: 2026:CHC-OS:160. Available on https://indiankanoon.org/doc/98878676/
Authored by Gaurav Mishra, IP Attorney, BananaIP Counsels