2016 C L D 1962 [Sindh] Before Sajjad Ali Shah, C.J. and Zulfiqar Ahmad Khan, J DOLLAR INDUSTRIES PAKISTAN through Authorised Attorney and another--Appellants Versus Messrs BROTHERS INDUSTRIES through Partner and another---Respondents H.C.A. No.212 of 2015, decided on 12th April, 2016. (a) Registered Designs Ordinance (XLV of 2000)------S. 3(2)----Registrable designs---'Ordinary observer'/'point of novelty'---Tests---Historical background. Sears, Roebuck & Co. v. Talge, 140 F.2d 395 (8th Cir. 1944); Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423 (Fed. Cir. 1984) and Egyptian Goddess v. Swisa (543 F3d 665 (Fed. Cir. 2008)) rel. (b) Registered Designs Ordinance (XLV of 2000)------S. 3(2)--- Registrable designs--- Visual aspect of designs---Relevance---Visual aspects are of seminal importance, which means that when someone looks at one design and then looks at the second design, and if he gets confused and it becomes hard for him to make a distinction between the two designs, then S. 3(2) of Registered Designs Ordinance, 2000 kicks in---For S. 3(2) of Registered Designs Ordinance, 2000 to be applicable, the complete and overall impression that stays in the intending purchaser's mind when he looks at the two designs is critical. (c) Registered Designs Ordinance (XLV of 2000)------S. 3(2)--- Registrable designs--- 'Ordinary observer'/'point of novelty'---Tests---Applicability and scope---Court, while deciding the cases about the design similarities routinely applies two tests: firstly, original 'ordinary observer' test and subsequently developed 'point of novelty' test'--In the ordinary observer test, court considers rival designs from the eyes of an ordinary observer, giving such attention as a purchaser usually gives and then determines whether or not through those eyes the two designs are substantially the same. Gorham Co. v. White, 81 U.S. 511, 528 (1871) rel. (d) Registered Designs Ordinance (XLV of 2000)------S. 3(2)---Patents and Designs Rules, 1933, R. 35(2)---Registrable designs---Determination--Classification of goods---In case two designs are identical, the law will prohibit the one that is copied or produced later; however, if the same are plainly dissimilar, they can co-exist freely and happily, because designs are personal choices---Diversity is the natural beauty of life and freedom to choose from a range of 'plainly dissimilar' designs is the driving force of today's economy--Designs are considered distinct if they have different appearances, even though they are related articles; for example, two vases having different surface ornamentation creating distinct appearances are required to be claimed in separate applications, because design protects only the appearance of an article of manufacture, and it is possible that minimal differences between similar designs can render each of them resgistrable--- Even change of material to two identical design makes a difference, that's why there is provided a classification of goods under Patents and Designs Rules, 1933, and R. 35 (2) thereof requires an applicant to state the class in which the design is to be registered and the article or articles to which the design is to be applied. (e) Registered Designs Ordinance (XLV of 2000)------S. 3(2)--- Registrable designs---'Ordinary observer'/'point of novelty'---Tests---Applicability and scope---'Plainly dissimilar/similar', doctrine of---Applicability---Plaintiff filed suit for infringement of the registered design of its pen by the defendant, whereas the defendant filed application before the Registrar of Designs for cancellation of the design of the plaintiff's pen, on the ground that the plaintiff's design was not original in terms of S. 3(2) of Registered Designs Ordinance, 2000, as the same was a copy of a prior published German design of a pen called 'Hauser 737 Mayer Rollerball'---Suit was subsequently transferred to the High Court for decision--Single Judge of the High Court, accepting the claim of the defendant, cancelled the registered design of the plaintiff on the basis of "Hauser Catalog" of the foreign pen and a certificate, holding that identical design of said foreign brand having been active in the international market since 1995, the plaintiff's design could not have been registered in Pakistan in 2005---Validity---Hauser 95 Catalog did not suggest that the same was for the year 1995, as the title page only said 95--Defendant had to prove that the said publication was of the year 1995 (or any date prior to the date of filing of the design by the plaintiff) to defeat the newness claim made by the plaintiff under S. 3 (2) of Registered Designs Ordinance, 2000, which onus of proof, unless discharged, could have been assumed by the Court---Certificate purported to have been issued by "Innowell GmbH" looked fake, and no German company would issue such an untidy document---No citation of the term 'Hauser 737 Mayor Rollerball' was available on the internet, which meant that the term was unknown to the virtual world and one could very safely assume in today's world the such a brand had never existed---Comparing the design of prior art pen appearing in the Catalog 95 alongside the design of the plaintiff's pen, there were apparent dissimilarities in the first look---Looking at the overall visual impressions of both the pens, one would note that the prior art was a roller ball/ball point, and the plaintiff's pen was soft-liner with a fixed line thickness of 0.3mm, which were intended to be used by a different class of purchasers looking for pens for different purposes, which discrepancy set apart the class of divergent users of each pen---Prior art being a roller pen used heavy pressure of hand and thus could create carbon copies; however, the soft-liner could not produce any carbon copies---Court also looked at the specific features of both the pens, such as differences between the nib, the cap, the colours, hardness of the material of the main body and the overall finish of the rival pens---Applying the 'ordinary observer' test through the eyes of an observer familiar with pens, High Court concluded that, based on the differences, the plaintiff's design and the prior art were plainly dissimilar---Differences, existing between the two pens, were enough to render the rival designs plainly dissimilar, and there was no possibility that an ordinary observer would be deceived by similarities of the two designs if the pens were available side-byside---Alleged "Hauser 737 Mayor Rollerball" pen was sufficiently distinct and plainly dissimilar with the plaintiff's pen on account of the existing differences which were clearly noticeable under the ordinary observer test---Registration acquired in respect of the plaintiff's design under Registered Designs Ordinance, 2000 was therefore not hit by 3 (2) of the Ordinance on account of the prior art's plain dissimilarity---Impugned order for the cancellation of the registered design of the plaintiff was therefore set aside---High Court appeal was allowed. Gorham Co. v. White, 81 U.S. 511, 528 (1871); Wing Shing Prods (BVI) Co. v. Sunbeam Prods 665 F. Supp. 2d 357 (2009; Minka Lighting Inc., v. Maxim Lighting International, Inc. No. 3:06-CV-995-K, 2009 WL 691594 (N.d. Tex. Mar. 16, 2009) and Ethicon Endo-Surgery, Inc. v. Covidien, Inc. (Fed. Cir. Aug. 7, 2015) rel. Barrister Khalid Jawed Khan and Ms. Sana Akram Minhas for Appellants. Monawwer Ghani and Abdul Hameed Iqbal for Respondents. Date of hearing: 16th March, 2016 ORDER ZULFIQAR AHMAD KHAN, J.---Brief facts of the case are that the appellant, who is a company engaged in the business of manufacturing, selling and exporting various kinds of stationery products including pens for the last many years, as the part of securing its intellectual assets, registered design of a pen under the provisions of the Designs Ordinance, 2000 (hereinafter referred to as "the Ordinance") bearing design No.12247-D on 09.05.2005 with the Patent Office, a certified copy whereof was attached as annexure Z-3 which comprised of four sheets of drawings depicting various features of the said pen. While sheet No.1 show full view of the pen with its cap secured on the top (thus nib and other interior parts cannot be seen), sheets 2 and 3 show body of the pen with its cap removed from the top wherefrom it could be seen that the said design incorporates an array of unified distanced parallel lines starting from the nib-end running to a reasonable distance (about one-and-a-half inch, or so) all across the periphery. Which array of lines while appearing aesthetically appealable, also aim to assist proper grip of the pen by the person using it for writing. This element of the design is reproduced in the following: Notwithstanding that the said design is registered under the Ordinance, it is also registered as a trade mark with OHIM (Office for Harmonization in the Internal Market) in respect of the countries of the European Union as of 06.08.2015. Respondent, the rival manufacturer of stationery items including pens, sought registration of its own design under the Ordinance bearing No.13314-D dated 14.03.2007, wherein as per the drawings submitted with the Patent Office, all the essential elements of the respondent's said design are restricted to the exterior of the pen since all the drawings show pen having its cap screwed on, thus it could not be seen what design embodiments of the said pen are hiding underneath the cap. The appellant claims that soon after the registration of design of its pen on 09.05.2005, it commenced manufacturing, sale and export of identical pens, however, sometime around October 2008, pens manufactured by the rival respondent started showing up in the local market, wherein while the exterior of the pen resembled with the registered design No.13314-D, however, when the cap was removed, pen of the respondent had the identical design element comprising of the feature of parallel lines specifically protected by the appellant vide their design registration No.12247-D. A picture of the rival parties pens with cap are reproduced in the following: Appellant's pen with cap Respondent's pen with cap Pictures of the appellant and respondent's pen (without cap) are reproduced in the following: Appellant's pen without cap Respondent's pen without cap Being aggrieved of the said act of the respondent, the appellant filed Suit No.1398/2008 and Suit No.1405/2008 in this Court, alleging infringement of their aforesaid registered design, wherein by orders dated 09.10.2008 and 11.10.2008, the learned Single Judge was pleased to restrain the respondent from manufacturing and selling the products allegedly infringing the registered design rights of the appellant. Having come to know that the respondent had obtained registration of the said design (which, after removing the cap, appears identical with the appellant's pen), the appellant on 18.10.2008 filed an application before the Registrar of Designs for the cancellation of the respondent's registered design No.13314-D, which proceedings were subsequently transferred from the Registrar of Designs office to this Court, since the suit for infringement was proceeding before this Court. The counsel for the appellant submits that as a counterblast, respondent instituted JM No.41/2008 against the appellant under section 10 of the Ordinance, seeking cancellation of the appellant's registered design No.12247-D, on the basis that the appellant's design is: (i) not original and new, as required under section 3(2) of the Ordinance; and (ii) a copy of a prior published German design for a pen known to the world as "Hauser 737 Mayor Rollerball". The learned counsel contended that the order of the learned Single Judge is entirely based on the above referred German 'Hauser' 95 Catalogue, in terms of which, the learned Single Judge reached to the conclusion that there was no originality or newness in the design 12247-D of the appellant as mandated by subsection (2) of section 3, where for a design to be registered, international novelty is required. Since allegedly, a design, identical to the design registered by the appellant in 2005, was already published in a German ('Hauser') catalogue in 1995 and pens of identical design were sold since 1994 under trade mark "Hauser 737 Mayor Rollerball", registration of any similar design of pen in Pakistan was barred by the Ordinance, thus petition of the respondent was allowed and the appellant's registered design 12247-D was cancelled, whereupon the instant appeal is filed. Relevant paragraph from the orders of the learned Single Judge is reproduced in the following: 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 page 8 and page 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. [Emphasis supplied] Leveling his line of arguments against the above highlighted conclusion of the learned Single Judge, the counsel for the appellant submitted that the said Hauser catalogue did not mention date of publication, as well as, the certificate produced by the respondent in support of its claim that the Hauser 737 Mayor Rollerball branded identical pens were made available since 1994 by a company called Innowell of GmbH of Germany is also fake. Further, the counsel contended that the specimen of the pen presented before the learned single Judge as a Hauser pen was locally produced for the purposes of this case and was not even made in Germany. Levelling rival claims, the counsel for the respondent reiterated arguments that the appellant's deign was a copy of the German Hauser 737 Mayor Rollerball pen published in the Hauser 1995 Catalogue, thus its cancellation was rightly ordered by the learned Single Judge on account of design's failure to pass through the test of global novelty and newness prescribed under section 3(2) of the Ordinance. Heard the counsel and having perused the records, while we fully agree with the legal rationale of the learned Single Judge that once a publication has been made prior to the date of filing of a design in Pakistan and goods of the similar designs have been offered for sale anywhere in the world, there is no novelty in the identical design and such a design cannot be registered in Pakistan under the Designs Ordinance. However, the test would be going deep into the rival claim that the catalogue was engineered and the numeral 95 mentioned thereon did not mean that it was 1995 - the year of publication of the said catalogue. Also, we would like to look at the claim that Hauser has stopped manufacturing and selling pens; and what is its relation with Innovell GmbH to determine genuineness of the certificate produced by the respondent. Last but not least, the design of the pen presented in the court as allegedly manufactured in Germany by Hauser in the year 1994, does it carry the standard of quality for goods manufactured in Germany. Notwithstanding therewith, of prime importance, would be the examination of criteria used by courts to reach to conclusion as to the circumstances in which a design infringes on a past design (commonly known as prior art) thereby, in our case, forming an obstacle for the registration of a subsequent design in terms of section 3(2) of the Ordinance. We will analyze these details in the following: 1. Trade Mark Hauser a. From the German Trade Mark Database it appears that the trade mark HAUSER PEN was filed by A. Hauser GmbH and Co. KG, Germany on 15.10.1993, however upon expiry on 14.10.2003, the mark was not renewed and its files were destroyed, as per the records available on-line. b. HAUSER trade mark was filed again in Germany on 31.10.2005 by National Pen and Plastic Industries India, the said mark is still in force. 2. Innowell GmbH and its Trade Marks a. Innowell trade mark was filed in 14.05.2009 by INNOWELL GmbH Writing Technology, Germany. The said company also filed trade mark INK Biotech Lab Chemie also in 14.05.2009 in class 16. No HAUSER trade mark is owned by Innowell GmbH as per the German trade mark database. b. In the USA, HAUSER trade mark was filed on 10.05.2006 by Hauser GmbH Germany, which was transferred to INNOWELL GmbH Writing Technology, Germany on 26.05.2009, who subsequently transferred this mark to National Pen and Plastic Industries, India in 23.07.2014. All links to National Pen and Plastic Industries, India lead to another Indian company called "Flair Pens Limited". 3. Hauser GmbH a. As per German company-house database, Hauser GmbH has its registered office in Nuremberg, Germany. Its current status is listed as "active". The company is registered at the trade register at the local court of Nuremberg with the legal form of private limited company (number HRB 24654). Trade register entry was last updated on Dec 17, 2014. The company reports contain information on the company's ownership structure and its 2 shareholders and the company deals in foreign trade and has one location. The company report was last updated on Feb 5, 2016. The said company is currently operating from Dr.Carlo-Schmid-Str. 224, Nuremberg, Germany and its website is located at http://hauserwriting.com created as of 27.03.2008. b. The company is still very well in stationery and writing instruments business and currently (as on 22.03.2016) was selling a large range of pens, which include the following Roller pens: A large number of such pens collections sold under brand of HAUSER could also be seen in a Catalog titled PROEMOTION_2013_Industriepreis present at the website http://www.hagenbaeumer.com which suggests that the said German company is still in business and very well selling pens. c. It is interesting to note that there is a company based in India operating as Flair Pens Limited which is using the identical HAUSER trade mark in relation to pens and other stationery items. As per its website http://hauserpen.in, the said Indian company is making HAUSER branded pens. Per whois, the said domain is owned by an Indian national named Rajesh Rathod, who created this domain on 15.05.2015 for Flair Pens Limited. d. Designs of pens registered by Hauser GmbH - As it was alleged that the said design is present in Hauser GmbH Catalogue No.95, one of the way to authenticate genuineness of this claim would be to make searches over in the German Design Database which is available freely at https://www.unternehmensregister.de wherein though we found a large number of pens designs in the name of Hauser GmbH, however, none of the designs resembled with the design of the pen in dispute. Net result of the above findings is that, contrary to the claim of the respondent, the German company Hauser GmbH is still in business of pens. It seems that the Indian company, Flair Pens Limited took over trade mark Hauser in USA on 23.07.2014 and now operating in this region selling Hauser branded pens, it is therefore a possibility that the pen presented to the Court allegedly claimed to have been manufactured by Huaser Germany may have been manufactured by the said entity as the said pen does not at all looks like a product matching the high German manufacturing standards which we are used to while using Rotring, Faber-¬Castell, Staedtler and Pelikan products. With regards Hauser 95 Catalog which formed basis of novelty attack on the appellant's design, the said catalog does not at all suggest that it is for the year 1995. Title page only says 95. May be it is a part of series of catalogues and publications of Hauser GmbH; which is more likely the case as the respondent has also produced a publication from Hauser GmbH numbered 96. It was on the respondent to prove that the said publication is of the year 1995 (or any date prior to the date of filing of the design by the appellant) to defeat newness claim made by the appellant under section 3(2), which onus unless discharged, cannot be assumed by the court. With regards the certificate dated 24.10.2008 purported to be issued by Innowell GmbH, it looks so abhorrently fake that we don't want to look at it twice. No German company would issue such an untidy document. Be that as it may, we hereunder reproduce a representation of Hauser 737 Mayor Rollerball ("prior art"), which is held to be identical with the appellant's pen design. First of all, let us admit that we when Googled "Hauser 737 Mayor Rollerball" there were no citations! Which means that this term is unknown to the virtual world, meaning thereby one can very safely assume in today's world that such a brand never existed. Notwithstanding therewith, when we look at the said design of prior art pen appearing on page 8 (and reproduced on page 20) of the Catalog 95 alongside the design of the appellant's pen, we find apparent dissimilarities in the first look. As rightly held by the learned Single Judge, in design cases, the visual aspect is of seminal importance, meaning thereby when someone looks at one design and then looks at the second design, if he gets confused and it becomes hard for him to make a distinction between the two designs, section 3(2) kicks in. But for section 3(2) to be applicable, the complete and overall impression that stays in intending purchaser's mind when he looks at the two designs is critical. So the question that needs to be answered is if an ordinary purchaser (who has bought pens in the past) looks at the prior art Hauser pen and in the second glimpse, looks at the appellant's pen, does he feel confused? Does he say "Oh my God! this chap has stolen the poor fellow's design"? To us, the likely answer is 'No'. While deciding cases about design similarities, courts routinely apply two tests. The original "ordinary observer" test and a subsequently developed "point of novelty" test. In the ordinary observer test, courts consider rival designs from the eyes of an ordinary observer, giving such attention as a purchaser usually gives and then determine whether or not, through those eyes, the two designs were substantially the same. (Gorham Co. v. White, 81 U.S. 511, 528 (1871)). Going a bit into history, the "ordinary observer" test evolved in 1871 by the US Supreme Court holding that the determination of substantial similarity (between two competing designs) should be made by the eye of an expert in the relevant trade, one who sees and examines the articles containing them side by side. Court in the above case held that "if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other". Those who are familiar with trade mark law, would immediately relate this finding similar to the side-by-side test used in the trade mark jurisprudence. This age-old "ordinary observer" test has gone through a sea of change with passing time. For example in Sears, Roebuck & Co. v. Talge, 140 F.2d 395 (8th Cir. 1944), the court while determining design infringement thought it must apply (1) the ordinary observer test, and (2) the accused device must appropriate the novelty in the patented device which distinguishes it from the prior art, a determination made by the comparison of the features of the patented designs with the prior art and with the accused design - "point of novelty" test. A major change came in 1984 in the case of Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423 (Fed. Cir. 1984), where court enunciated the "point of novelty" test. By holding that "for a design to be infringed...no matter how similar two items look, the accused device must appropriate the novelty in the patented device which distinguishes it from the prior art". Meaning thereby, even though the court can compare two items through the eyes of the ordinary observer, it must nevertheless, to find infringement, attribute their similarity to the novelty which distinguishes the patented device from the prior art. However in 2008, courts radically overhauled the test for design infringement in the landmark Egyptian Goddess v. Swisa (543 F.3d 665 (Fed. Cir. 2008)) case. This decision eliminated the point-of-novelty test for infringement and court adopted a modified "ordinary observer" test as the sole test for design infringement. The court in Egyptian Goddess case held that a court might focus on "whether the accused design had appropriated a single specified feature of the claimed design," rather than looking to "whether the accused design had appropriated the claimed design as a whole" thereby rejecting the application of the "point of novelty" test, and made clear that the appropriate analysis should be an "ordinary observer test through the eyes of an observer familiar with the prior art." The court further held that consideration of the prior art was not required in every case, but only in cases where the patented design and the accused design are substantially the same. The court further explained that in cases where the two designs are not "plainly dissimilar," the infringement analysis will benefit from a comparison of the claimed and accused designs with the prior art. Since the doctrine of "plainly dissimilar" is vital in the instant case, we wish to reproduce the following examples: Wing Shing Prods (BVI) Co. v. Sunbeam Prods 665 F.Supp.2d 357 (2009) The courts in this case performed an in-depth analysis to decide whether Sunbeam's coffee maker was "plainly dissimilar" to Wing Shing's patented coffee maker design. The patented design and accused product are depicted below: The court first focused on two major differences in the designs - differently shaped bases and dramatically different tops. Considering whether these differences would be enough to render the designs "plainly dissimilar," the court concluded that in the "cluttered world of the drip-coffeemakers, it seems senseless to attempt to determine whether the ordinary observer would confuse two designs without looking to the prior art for a point of reference." Further, the court determined that it was unlikely that an ordinary observer would be deceived by similarities of the devices. The court concluded that an ordinary observer familiar with the prior art would not believe the AR 10/12 (the accused design) to be the 'same as' the '585' patent; thus found no infringement. Minka Lighting Inc., v. Maxim Lighting International, Inc. No. 3:06-CV-995-K., 2009 WL-691594 (N.D. Tex. Mar. 16, 2009) In this case, the court reviewed three different asserted designs directed to light fixtures and compared them to the respective accused products, two of which are shown below: In analyzing each of these designs, the court first looked at the overall visual impressions of the light fixtures, which it determined were distinctive, and then went on to analyze differences in specific features, such as differences between the silhouette, the finial, and the design of the lower medallion. The court concluded that, based on these differences, the patented design and the accused product in each instance were plainly dissimilar. Ethicon Endo-Surgery, Inc. v. Covidien, Inc. (Fed. Cir. Aug. 7, 2015) In this case Ethicon alleged that Covidien's Sonicision cordless ultrasonic dissection device infringed various utility and design patents. Each of the asserted design patents claimed a portion (or portions) of a design for a surgical device. In this case, the court used side by side comparison between the claimed designs and the design of Covidien's accused shears and determined that they were plainly dissimilar and, therefore, the design patents were not infringed. To apply the principles described in the above cases we examine the prior art and the appellant's pen in the following: If we look at the overall visual impressions of both the pens, one would note that while the prior art is a roller ball (i.e. ball point) pen, the appellant's pen is soft-liner with a fixed line thickness of 0.3mm, thereby intended to be used by a different class of purchasers looking for pens for different purposes. Which discrepancy sets apart the class of divergent users of each pen. For example, the prior art being a roller-pen uses heavy pressure of hand and can thus create carbon copies, however, the soft-liner cannot produce any carbon copies. Now having separated uses and class of purchasers, we look at few specific features, such as differences between the nib, the cap, the colors, hardness of the material of the main body and the overall finish of the rival pens. By using the "ordinary observer"' test through the eyes of an observer familiar with pens, it is thus not very hard to conclude that, based on these differences, the appellant's design and the prior art (Hauser pen) are plainly dissimilar. Borrowing the language from the Wing Shing Prods case, we are of the view that these differences are enough to render the rival designs "plainly dissimilar," and we do not see any possibility that ordinary observer would be deceived by similarities of the two designs if they were available side-¬by-side. Building on the foregoing outcome, let's imagine the Hauser 737 Mayor Rollerball was still on sale along with the pen of the appellant. An ordinary person walking into a stationery shop can inspect both of them and would be free to choose any pen of his liking out of these designs. A good stationery shop hosts more than a dozen designs of pens and one can purchase any, while they all do nearly the same job (of writing) but usually none of them look "plainly similar" with each other. This is the beauty of design law. Plainly dissimilar designs can co-exist happily. If two designs are identical, design law will prohibit one that was copied or produced later, but if they are plainly dissimilar, they can freely co-exist, because designs are personal choices. Like colors, one may like blue and other would like green or yellow, or whatever. A person makes his own choice and picks a color to wear. Diversity is the natural beauty of life and freedom to choose from a range of "plainly dissimilar" designs is the driving force of today's economy. The hard fact is that designs are considered distinct if they have different appearances even though they are related articles. For example, two vases having different surface ornamentation creating distinct appearances are required to be claimed in separate applications because designs protect only the appearance of an article of manufacture, it is possible that minimal differences between similar designs can render each registerable. Even change of material of two identical design makes a difference, that's why there is provided a Classification of Goods under the Designs Rules 1933, and pursuant to Rule 34(1), for the purposes of the registration of designs under these Rules, goods are classified in 14 different classes in the manner specified in the Fourth Schedule (reproduced hereunder) and when a person makes an application for registration of a design under the Ordinance, Rule 35(2) requires the applicant to state the class in which the design is to be registered and the article or articles to which the design is to be applied. Following is an extract of the said Classification of Goods: Class 1. Articles composed wholly of Metal or in which metal predominates, and jewellery. Class 2. Books and bookbinding of all materials. Class 3. Articles composed wholly of India-rubber, wood, bone, ivory, paper mache, celluloid, bakelie, or like substances, or of material in which such substances predominate (except articles included in Class 10). Class 4. Articles composed wholly of glass, earthenware or porcelain, clay (burnt or baked), or cement or in which such materials predominate. Class 5. Articles composed wholly of paper, card-board, mill-board or straw board (except articles included in Class-2, and paper hangings), or in which such materials predominate. Class 6. Articles composed wholly of leather or in which leather predominates, not included in other classes. Class 7. Paper hangings. Class 8. Carpets, rugs and floor coverings in all materials. Class 9. Lace. Class 10. Boots, shoes and the like foot-wear. Class 11. Millinery and wearing apparel (except articles included in class 10). Class 12. Goods not included in other Classes. Class 13. Printed or woven designs on textile goods (other than checks or stripes). Class 14. Printed or woven designs on textile goods being checks or stripes. It is for the above mentioned reasons, we hold that the alleged Hauser 737 Mayor Rollerball pen is sufficiently distinct and plainly dissimilar with the appellant's pen on account of the above identified differences which are clearly noticeable under the ordinary observer test, thus the registration acquired in respect of the appellant's design under the Designs Ordinance, being registration No.12247-D dated 09.05.2005 is not hit by section 3(2) of the said Ordinance on account of the prior art's plain dissimilarity. Thus the impugned orders made for the cancellation of the said design of the appellant from the register of designs are set aside and the respondent No.2 is directed to take all such actions to give effect to this order. The appeal is allowed. There is no order as to costs. AL/D-8/Sindh Appeal allowe